Designer Skin v. S & L Vitamins Cases of Interest >  Cyberlaw

Designer Skin v. S& L Vitamins

Designer Skin, LLC v. S&L Vitamins, Inc., 2007 WL 841471 (D. Ariz. 2007)
Parties: S & L Vitamins as defendant. Designer Skin as plaintiff.
Procedural History: Plaintiff filed complaint. Defendant filed motion to dismiss. Plaintiff filed a response to motion to dismiss. Defendant failed to reply and time to reply has expired. The Motion to Dismiss is defendant’s second motion to dismiss and is based on FRCP 12 (b)(6).
Facts: Defendant sells plaintiff’s products on its website. Plaintiff claims that such sales violates plaintiff’s trademark and copyright and interferes with plaintiff’s contracts with its authorized distributors.
Issues: Whether plaintiff’s trademark, copyright, and contractual claims can survive pre-trial motions to dismiss under “first sale doctrine,” nominative fair use, and sufficiency of pleading requirements?
Holding: Yes, claim cannot be dismissed based on nominative fair use, “first sale doctrine,” nor under tortious interference with contractual relations requirements.
Reasoning: Nominative fair use asks whether 1.) the product must be one not readily identifiable without use of the trademark 2.) only o much of the mark is used as is reasonably necessary to identify the product and 3.) the user must do nothing that would, in conjunction with the use of the mark, suggest sponsorship or endorsement by the trademark holder. Because nominative fair use is an affirmative defense, the court cannot without defendant’s burden of proof, dismiss the claim based on the defense. In reference to the “first sale doctrine,” it reads that “the right of a producer to control distribution of its trademarked product does not extend beyond the first sale of the product… resale by the first purchaser of the original article under the producer’s trademark is neither trademark infringement nor unfair competition.” Again the court cannot grant the motion to dismiss based on the “first sale doctrine” because it is uncertain whether the defendant had been reselling a trademarked product or is leading the public to believe the “reseller” is actually affiliated with the original manufacture. Finally, the motion to dismiss hinging on plaintiff’s failure to allege requisite contractual interference is denied because the plaintiff has alleged all necessary contractual-tortious elements and the defendant failed to dispute the plaintiff’s alleged contractual interference.

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