eli lilly v natural answers incorporated

Eli Lilly & Co. v. Natural Answers Inc.
233 F.3d 456

Facts: Natural Answers, Inc. develops and markets alternative drug therapies to the public. These alternatives do not require a prescription and are designed to take the place of similar prescription products. The herbiscription at the core of this case is “HERBROZAC” and is marketed as a “mood elevator”. Natural Answers markets their Herbiscriptions exclusively through web-based mediums with the goal of obtaining distributorship throughout the country in brick and mortar health food and vitamin stores throughout the United States. Natural answers website proclaims “Think Herbs- Not Drugs” and even provides a table comparing their Herbiscriptions to popular prescription drugs, eluding to produce the same effect without the need for a prescription and with herbs instead of potentially harmful pharmaceuticals. Further, Natural Answers website contained a source code which included the term “Prozac” as a metatag, describing it is an effective alternative to the popular [prescription drug Prozac. This was done in an unsuccessful effort to guide those Internet users who typed Prozac in various search engines to the Natural Answers website.

Procedure: The United States District Court for the Southern District of Indiana granted a preliminary injunction for plaintiff and the defendant appealed to the Court of Appeals.

Issue: Eli Lilly, the drug manufacturer of Prozac brought suit against Natural Answers alleging the Defendant’s “HERBROZAC” product infringed and diluted its “Prozac” trademark. Did Defendant’s “HERBROZAC” product infringe and dilute Eli Lilly’s trademarked “Prozac”?

Pre-existing Rules: The “Trademark Dilution Act seeks to prevent both dilution by tarnishing and dilution by blurring, by protecting the trademark owner from the erosion of the distinctiveness and prestige of a trademark caused by a proliferation of borrowings, that while not degrading the original seller's mark, are so numerous as to deprive the mark of its distinctiveness and hence impact.” Lanham Trade-Mark Act, § 43(c)(1), 15 U.S.C.A. § 1125(c)(1).

Holding: The Court of Appeals upheld the lower Court’s granting of a preliminary injunction and held that:
1. The Defendant’s use of “HERBROZAC” likely caused confusion concerning the trademarked “Prozac” brand.
2. In order to prove dilution has occurred, a plaintiff only need to prove there is a likelihood of dilution, not specific proof of actual dilution.
3. The plaintiff satisfied proving dilution, in that “HERBROZAC” would likely cause confusion and dilution among United States consumers.

Reasoning: First, the Court examined and concluded that “HERBROZAC” and “Prozac” were highly similar. Second, “Prozac” has achieved the level of notoriety needed to maintain a dilution claim. The highly successful drug was mentioned in several best sellers, was the topic of many national news programs and a substantial portion of the general public would know what “Prozac” is and what it is intended to treat. Thus, meeting the elements necessary for dilution.

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