S & L Vitamins, Inc. v. Australian Gold, Inc. (E.D.N.Y.)
Jan 30, 2009
Partial SJ for S&L; verdict vacated; consent inj.
From Profressor Eric Goldman's Technology & Marketing Law blog:
In this case, S&L initiated a declaratory judgment against Australian Gold. By bringing a DJ, S&L kept the case in a Second Circuit jurisdiction--where courts recently have regularly rejected trademark lawsuits over keyword advertising and metatag inclusion. S&L's move paid off when the court says that buying keyword advertising and using metatags, without more, doesn't constitute a trademark use in commerce.
The remainder of the opinion includes lots of other interesting discussion, including:
* S&L took its own product shots of Australian Gold's products. The court rejects Australian Gold's claim that S&L declaring "All Rights Reserved" with respect to those product shots constituted false advertising.
* The "Australian Gold" trademark lacked sufficient fame to support a dilution claim.
* Australian Gold claimed that S&L violated its copyrights in its labels by taking the product shots. This is an obviously spurious claim because after-market product shots are exactly what 17 USC 113(c) was designed to permit--and Australian Gold's effort to invoke copyright to restrict product shots shows its desperation to restrict legitimate after-market activities (as the court says, "AG is attempting to force a claim with facts that do not really fit"). Unfortunately, the court sidesteps 113(c). Fortunately, the court nevertheless finds that S&L's product shots were fair use of the labels' copyrights. . . .
UPDATE: Jury verdict for Australian Gold -- http://www.likelihoodofconfusion.com/?p=1904
Vacated and consent injunction entered by the court.
Designer Skin, LLC v. S & L Vitamins, Inc. (E.D.N.Y.)
Sep 05, 2008
Most claims dismissed; injunction; no dams or fees
Citation is to summary judgment opinion. Final findings of fact and conclusions of law also found at 2008 WL 4174882 D.Ariz.,2008.
From Professor Eric Goldman's Technology & Marketing Law Blog:
An Arizona district court has ruled that the surreptitious use of trademarks doesn't create a likelihood of initial interest confusion, granting summary judgment on the trademark claims to the defendant.
This case is another enforcement action brought by a manufacturer trying to keep its goods from leaking out of its restricted channel and being sold on the Internet. For other lawsuits along this line, see Australian Gold v. Hatfield, S&L Vitamins v. Australian Gold (yes, the same S&L...and the same lawyer) and Standard Process v. Banks. The plaintiff tries the typical arsenal of claims to control the independent online retailer, including trademark infringement and dilution, copyright infringement for displaying product shots, interference with contract and other related claims. . . .
[C]ourts are realizing that they are being asked to facilitate anti-competitive practices, and wisely they are balking. Thus, a case like this illustrates that a judge will find limits to the initial interest confusion doctrine (a doctrine that otherwise has no natural doctrinal limits) and interpose pro-competitive defenses to trademark dilution.
The outcome of this case will be used as a precedent when deciding others and will bolster the argument that use of keywords in metatags and bidding on trademarked terms for search purposes is a legitimate practice. Fairly often, plaintiffs are more concerned about control of channels and control of competition than they are about trademark infringement.
From my own blog, Likelihood of Confusion, quoting the District Court's oral decision dismissing the remaining damages claims:
"The Court has, obviously, heard the evidence and heard the arguments of counsel and I have previously granted the motion to strike certain of the damage evidence from Miss Romero and set forth my reasons why. The Court has now granted the unopposed motion to dismiss the claim for statutory damages. I now grant the Rule 50 motion with respect to actual damages on the bases that there has been no showing of actual damages suffered as a result of the alleged copyright infringement.
"As I pointed out earlier, there has been a witting or unwitting conflation between the alleged lifting of the electronic image from Designerâ€™s website and pasting it on the S & L website, and yet weâ€™ve heard virtually all the evidence, in fact, I think itâ€™s fair to say all the so-called damage evidence, directed at product. In other words, the difference here is between the alleged copyright infringement in connection with the image and the product distribution issues.
"It is clear that the beef, if you may, on the part of the plaintiffs is the selling of product by S & L, and weâ€™ve heard evidence in terms of how much money Designer has spent in their product development, how much theyâ€™ve spent in their product image, the money theyâ€™ve spent in their diversion program, and it would appear that is all directed at seeking out product distributors such as S & L.
"But even if one could assume that somehow it is to seek out and take action against a copyright infringement of its images, there is no basis for this jury or any reasonable jury to attempt to connect how much of those expenditures are connected to the images themselves as opposed to the product distribution issues....
"So again, the only issue in front of this jury and before this Court is that narrow issue of the electronic image being lifted and pasted on the website, and thereâ€™s been simply no connection between that and any ascertainable damages."
DS has withdrawn its appeal.
Rolex Watch U.S.A., Inc. v. Rozenfeld (D.N.J.)
Dec 05, 2007
Rolex awarded over $1 million
A suit by Rolex against various defendants for preliminary and permanent injunctions, statutory damages, treble damages or profits, compensatory damages, punitive damages, pre-judgment interest, attorneysâ€™ fees, investigatorsâ€™ fees and costs from defendants for each of Plaintiffâ€™s marks that Defendants have willfully and maliciously counterfeited. Defendants were sued by Rolex as a result of Defendantsâ€™ sale, offers for sale, distribution, promotion and advertisement of watches bearing counterfeits and infringements of Rolexâ€™s federally
registered Rolex trademarks. The unlawful acts of Defendants constituted federal trademark infringement and counterfeiting, false designation of origin and false description and unfair competition under New Jersey common law.
Burch v. Nyarko (S.D.N.Y.)
Jul 31, 2007
Judgment for statutory damage and attys fees
Robert Burch is hardly the only photographer to find his work being copied online, but his recent victory in a lawsuit proves photographers have some recourse when it happens
A federal judge recently awarded Burch a $63,866 judgment against a New York City travel agency, finding that the site used four of Burch's photographs on its Web site without permission. . . .
In the U.S., Burch decided to pursue one of the most blatant infringers. According to the lawsuit, Burch discovered four of his photographs on the Black Star Travel Web site. Burch hadn't licensed them to this travel agency. He contacted Nyarko to try to solicit a fee for use of the images, but Nyarko refused. Burch tried to send in a bill, but Nyarko ignored it and the photos remained online. Eventually, the photos disappeared when the Black Star Travel site went offline; it was replaced by a redesigned site.
Burch had registered the photos with the copyright office years earlier. . . . The judge, after considering the values awarded in other cases involving photographs, awarded Burch $15,000 per photograph in damages, plus $3,280 in fees and $586 in costs.
Burch hopes other infringers will hear about his lawsuit and be convinced to stop ripping off his work. One other travel agent who was using his photos has already been in touch to work out a deal, he says. "I'd much rather have them as my friends," Burch says.
Dorsey v. Black Pearl Books, Inc. (D.N.J.)
Nov 14, 2006
Right of publicity - recall and statutory damages
From New Jersey Justice:
The unfortunately titled new novel, Legit Baller, written for the unfortunate genre of "street life," is the product of Black Pearl Books, a publisher of such high-minded fare as Snitch: No Rest, No Sleep and Hu$tlin' Backwards.
Legit Baller is the tender tale of a crack dealer and the two women who wait for him while he serves time in prison. Problem is, when the publisher needed a picture for the cover, they simply used a photo of a well-respected R & B singer named Marc Dorsey.
Dorsey claims he lost an endorsement deal after the book bearing his photo was published.
US District Judge Joseph Greenaway agreed with Dorsey, and this week ordered Black Pearl to stop using the photo and to recall distributed copies.
At an inquest, the Court awarded total damages in the amount of $500,000 ($250,000 in compensatory damages and $250,000 in punitive damages) plus attorneys' fees.
Buying for the Home, LLC v. Humble Abode, LLC (D.N.J.)
Oct 19, 2006
Cash payout to defendant after mixed SJ opinion
From Eric Goldman's Technology and Marketing Blog:
[T]he court denied the defendant's motion for summary judgment on the use in commerce issue. For more on why this result is wrong, see my writeups on the Edina Realty and 800-JR-Cigar cases.
In an ironic twist, the defendant alleges that the plaintiff buys the "Humble Abode" keyword at Google and displays an ad saying: "Save on Humble Abode. Find many of the Humble Abode.com beds at a significant discount" and providing a link to the plaintiff's website. I really don't understand how a plaintiff can complain with a straight face about competitive keyword purchases on its trademarks when it does the same thing itself. (But this seems to happen fairly frequently--for example, it was an embarrassing fact in the 1-800 Contacts case as well).
In this ruling, the defendant sought SJ on its counterclaim against the plaintiff for buying its trademarks. This should set up a mirror image opinion--if keyword purchases are a problem, the plaintiff should be liable too. The judge sidesteps this parallelism by ignoring the use in commerce question altogether, instead citing the possibility that the plaintiff is protected by the nominative use defense to deny the defendant's SJ motion on the counterclaim. Of course, this raises a highly ironic question, but the irony appears to have been lost on (or ignored by) the judge.
You may recall the Buying for the Home v. Humble Abode decision from last Fall, part of the topsy-turvy jurisprudence from 2006 on whether buying/selling trademarked keywords constitutes a trademark use in commerce. In the prior opinion, the defendant Humble Abode failed to win summary judgment to dismiss Buying for the Home's infringement claim. Further, Humble Abode brought a counterclaim based on Buying for the Home's purchase of keywords containing Humble Abode's trademarks, and the court also denied Humble Abode's SJ motion for its counterclaim.
Cooler heads have prevailed, and the parties settled the case. Both agreed not to use the other's trademarks on their websites. However, as far as I can tell, the parties did not agree to stop buying each other's trademarks as keywords--a pretty big omission if that's what started the lawsuit in the first place. Further, the settlement deal includes the initial aggressor, Buying for the Home, paying the defendant, Humble Abode, $10,000. So Buying for the Home initiates the lawsuit and beats Humble Abode's motions for SJ, but nevertheless settles the case without stopping Humble Abode from buying its trademarked keywords, AND ends up writing a check to Humble Abode to boot? What gives?
Lawson v. N.Y. Billiards Corp. (E.D.N.Y.)
Aug 10, 2004
Overcame motion for summary judgment
Plaintiffs, a former employee and his wife, filed an action against defendants, a corporation and two officers, alleging breach of employment contract and wrongful discharge, malicious prosecution, intentional infliction of emotional distress, slander and libel, and loss of consortium. We were substituted into the case at the end of discovery. Defendants filed a motion for summary judgment. The court granted partial summary judgment but did not dismiss the malicious prosecution claim. Eventually a settlement was reached.
Favorable rulings for our client cited in Am. Jur. 2nd "Malicious Prosecution" Â§Â§ 34, 60, 141; "Actual belief on part of prosecutor as element of probable cause in action for malicious prosecution," 65 A.L.R. 225; "Unreversed conviction as conclusive in action for malicious prosecution," 69 A.L.R. 1062; "Defendant's acquiescence in, approval of, or silence regarding, acts of another for which he was not otherwise responsible as ground of liability in action for malicious prosecution or false arrest," 120 A.L.R. 1322; "Dismissal by magistrate or other inferior court for lack or insufficiency of evidence as a final termination of prosecution as regards action for malicious prosecution," 135 A.L.R. 784.
The Donna Karan Co., et al v. Deziner Wholesale (S.D.N.Y.)
Oct 22, 2002
Lawsuit by designer Donna Karan against a company that sold knockoffs of her trademark-protected eyewear on a website.
Louis Vuitton Malletier v. Veit (E.D. Pa.)
Jun 28, 2002
Statutory damages of $1M for TM counterfeiting
From the website of the Finnegan Henderson law firm:
Defendantâ€™s sold counterfeit LOUIS VUITTON handbags and OAKLEY sunglasses and offered those products at various websites, including â€œwatchreplica.com,â€ â€œreplicatime.com,â€ and â€œlouisvuitton-replicas.com.â€ Plaintiffs sent a cease-and-desist letter to defendants, but they continued to sell counterfeit products on their websites. Defendants continued to sell counterfeit products even after plaintiffs sued defendants for trademark counterfeiting, infringement, dilution, and cybersquatting. The court granted plaintiffsâ€™ motion for default judgment holding that defendantsâ€™ use of plaintiffsâ€™ marks and the domain name â€œlouisvuitton-replicas.comâ€ constituted trademark counterfeiting, infringement, dilution, (federal and state), and cybersquatting. The court awarded $1,500,000 in statutory damages for defendantsâ€™ willful counterfeiting ($1,000,000 for the six LOUIS VUITTON marks and $500,000 for the two OAKLEY marks) and $100,000 in statutory damages under the ACPA. The court awarded the maximum $100,000 under ACPA because of the defendantsâ€™ â€œegregiousâ€ use of plaintiff Louis Vuittonâ€™s trademark as part of a domain name to sell counterfeit LOUIS VUITTON products. And the court awarded plaintiffs $46,504.88 in attorneyâ€™s fees in costs. Finally, the court permanently enjoined defendants from using plaintiffsâ€™ marks at issue or any other confusingly similar or dilutive marks. The court rejected plaintiffsâ€™ request to enjoin defendants from using about 80 trademarks owned by plaintiffs, not just the eight marks at issue in the case. Although the court found defendants likely infringed more than these eight marks, plaintiffsâ€™ complaint failed to allege violations regarding other marks, and plaintiffs failed to introduce any supporting evidence regarding additional marks with its motion for default.
Cartier, Inc., et al v. United Vision Sales, et al. (S.D.N.Y.)
Apr 04, 2002
A satisfactory settlement was reached.
We represented Cartier, Chanel, Guess, Donna Karan, Polo / Ralph Lauren and Calvin Klein or their licensees. Defendants sold knockoff versions of plaintiffs' designer sunglasses at kiosks or carts in malls and transit terminals.
We alleged that the defendants infringed and the designers' Trademarks by encouraging and even supplying kiosk/cart advertising displays that boldly and prominently utilize the Plaintiffsâ€™ respective trademarks for the purposes of attracting consumers by the use of such trademarks. A thin "compare to" approach was used on the packaging, but the consumer was fundamentally being attracted by the prominent use of the designers' trade names on the boxes of the merchandise. Arguably the theory of recovery here was initial interest confusion.