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Monsey, NY
Litigation Lawyer at Monsey, NY
Practice Areas: Litigation, Arbitration ... +3 more
OUTCOME: Dismissed on motion at jury trial
Dispute over complex business and technical relationship severed upon the moving of my client's business operations from defendant's web hosting data center.
OUTCOME: 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 ju ... risdiction--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. . . . http://blog.ericgoldman.org/archives/2007/10/yet_another_ny.htm UPDATE: Jury verdict for Australian Gold -- http://www.likelihoodofconfusion.com/?p=1904 Vacated and consent injunction entered by the court.
OUTCOME: 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. http://ericgoldman.org/archives/2008/06/keyword_metatag_1.htm From WebProNews: 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. http://www.webpronews.com/topnews/2008/06/05/bidding-on-trademark-terms-okayed-by-court 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 Designer’s website and pasting it on the S & L website, and yet we’ve heard virtually all the evidence, in fact, I think it’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 we’ve heard evidence in terms of how much money Designer has spent in their product development, how much they’ve spent in their product image, the money they’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 there’s been simply no connection between that and any ascertainable damages." http://www.likelihoodofconfusion.com/?p=1567 DS has withdrawn its appeal.
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