Designer Skin LLC v S and L Vitamins Inc

Designer Skin, LLC v S&L Vitamins, Inc

Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008).

Facts: Designer Skin made an agreement with distributors that prohibited the selling of Skin’s products to Internet sellers. S&L sold Skin’s products on its websites after obtaining them from tanning salons, not directly from any of Skin’s distributors. S&L also displayed thumbnails of Skin’s products and identified them with Skin’s trademarks. Additionally, Skin’s trademarks were used in the metatags of S&L’s sites. For its part, S&L posted a disclaimer that it is not associated with or authorized to sell products by any tanning lotion manufacturers.

Procedural Posture: Skin filed suit claiming trademark infringement and dilution, copyright infringement, intentional interference, and unfair competition. S&L counterclaimed for unfair competition and sought declaratory judgments of noninfringement of trademark and noninterference with contract. Both parties then moved for variable degrees of summary judgment.

Issues: 1.) Is there a likelihood of consumer confusion found in the present case?
2.) Is S&L’s use of Skin’s marks protected by a nominative fair use defense?
3.) Did S&L’s use of Skins electronic renderings receive fair use protection?
4.) Did S&L cause a breach of contract with Skins and its distributors?

Reasoning: Examining trademark infringement under Playboy and its confusion factors, the court determined Skins failed to show that S&L was deceptive in its practice, in addition to finding that S&L’s site contained use of Skin’s marks to truthfully tell customers where they could find Skin’s products. The court also found that S&L never appeared near the top of any searches for the Designer Skin site. The court thus found no traditional trademark infringement. Next the court used the Welles and New Kids on the Block analyses for nominative use to find that the use of Skins’ marks were necessary to use for some extent sans a substitute. Furthermore, Skins provided no support that S&L did anything to suggest sponsorship by Skins. Thus, the court again found against Skins. Next the court examined the fair use factors of 17 USC §107 to find that although S&L’s use was minimally transformative, the use was also only indirectly commercial. Then the court found that the renderings were designed for the functional purpose of selling products and were published on the Internet before copying. The court then found that S&L copied the entire work and used it for the purpose Skins had made it for. Finally with Skins’ concession that the market for the copyright work of the images was not damaged by S&L’s use, the court balanced the factors together and determined this issue could go to trial. Finally, the court determined that no reasonable jury would conclude that S&L had induced or caused Skins’ distributors to breach the distribution agreement.

Holding: The court granted summary to S&L on all claims except the claims for copyright infringement and unfair competition(which was allowed to proceed due to its association with the allowed copyright infringement claim).

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