`
`MARA FOX,
`
`
`
`
`OPINION
`05 Civ. 3872 (DC)
`
`
`
`
`
`
`
`USDC SDNY
`DOCUMENT
`ELECTRONICALLY FILED
`DOC #: __________________
`DATE FILED: __7/31/08____
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`- - - - - - - - - - - - - - - - - -x
`DESSERT BEAUTY, INC.,
`:
`Plaintiff,
`:
` - against -
`:
`:
`:
`Defendant.
`- - - - - - - - - - - - - - - - - -x
`MARA FOX,
`:
`:
`Third-Party
`Plaintiff,
`:
` - against -
`:
`SEPHORA, INC. et al.,
`:
`Third-Party
`:
`Defendants.
`- - - - - - - - - - - - - - - - - -x
`APPEARANCES:
`(see last page)
`CHIN, District Judge
`At the heart of this litigation are two words: "love
`potion." Defendant and third-party plaintiff Mara Fox registered
`the trademark LOVE POTION for perfumed essential oils in 1995 and
`filed a declaration of incontestability for the LOVE POTION mark
`in 2001. In 2004, plaintiff Dessert Beauty, Inc. ("DBI")
`launched a line of beauty products that included two fragrance
`products described as "love potion fragrance" and "belly button
`love potion fragrance." At issue is whether DBI's use of the
`words "love potion" infringed Fox's LOVE POTION trademark, or
`whether the use was fair use, immune from liability.
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 2 of 25
`
`DBI seeks a declaratory judgment that it did not
`violate Fox's trademark; it also seeks to cancel the LOVE POTION
`trademark registration on the ground that it is generic. DBI
`additionally sues Fox for intentional interference with business
`relations arising from Fox's attempts to protect her trademark.
`In turn, Fox asserts claims against Sephora, Inc. ("Sephora") and
`other unnamed third-party defendants for trademark infringement
`under the Lanham Act and California law.
`The parties cross-move for summary judgment. For the
`reasons that follow, I conclude that DBI's use of "love potion"
`constituted fair use. Thus, DBI's motion is granted to the
`extent that judgment will be entered declaring that DBI did not
`engage in trademark infringement. Fox's motion for summary
`judgment is granted to the extent that DBI's claim that she
`intentionally interfered with its business relations is
`dismissed; her motion is otherwise denied.
`BACKGROUND
`
`A.
`
`The Facts
`The following facts are drawn from affidavits, attached
`exhibits, and deposition testimony submitted by the parties. For
`purposes of these cross-motions, the facts are construed in the
`light most favorable to Fox, except with respect to DBI's
`intentional interference with business relations claim.
`
`-2-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 3 of 25
`
`1.
`
`Fox's Love Potion Perfume
`Fox created the "Love Potion Perfume" in 1990. In
`1995, she registered the words "love potion" for "perfumed
`essential oils for personal use" with the U.S. Patent and
`Trademark Office ("USPTO"). (Fox Decl. Ex. A). In 2001, Fox
`filed a declaration of incontestability with the USPTO for the
`mark LOVE POTION. (Id. ¶¶ 3, 5).
`Fox concocted the Love Potion Perfume for a friend who
`"was having no luck in finding a relationship." (Krages Decl.
`Ex. 5). According to Fox's website www.lovepotionperfume.com,
`entitled "Love Potion: Magickal Perfumerie & Gift Shoppe," her
`Love Potion Perfume is the "first Magical, Mystical, Wearable
`Love Potion," "[c]omprised from Ancient Aphrodisiac Recipes."
`(Id.). Fox claims that she uses "the strongest ingredients known
`to inspire feelings of Love, Lust, Passion and Desire" and that
`her Love Potion Perfume "REALLY IS A Love Potion." (Id.
`(emphasis in original)).
`The Love Potion Perfumes are sold in a clear bottle and
`packaged in a clear plastic bag and an organza pouch :
`1
`2
`
`1
`
`"Organza" is a "sheer, stiff fabric of silk or
`synthetic material." The American Heritage Dictionary 876 (2d
`College Ed. 1991).
`Although Fox contends that she has used a variety of
`packaging over the years, she does not dispute that her products
`at one time were packaged in clear bottles and organza pouches as
`shown above. Furthermore, she has not produced any evidence of
`other types of packaging.
`
`2
`
`-3-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 4 of 25
`
`(Id. Ex. 4). A label with the words "Love Potion Perfume" is
`affixed to the bottle.
`2.
`DBI's Beauty Products
`In 2004, DBI launched a line of beauty products that
`were endorsed by celebrity Jessica Simpson. (Shimanoff Decl. Ex.
`16). As part of DBI's advertising and marketing campaign,
`Simpson told the story that "every time [her then husband] would
`kiss [her] lips or skin, he would taste [her] lipstick, body
`lotion, and perfume -- and hate it." (Id.). Thus, the DBI
`products were created to "smell and taste good" and were
`advertised as "lickable, tasteable, and . . . kissable." (Id.).
`Products such as the "Whipped Body Cream with Candy Sprinkles,"
`"Chocolicious Body Gloss," and "Powdered Sugar Body Shimmer" were
`named after ingredients used to make desserts to suggest their
`"edible nature." (Id.; Tr. 5). 3
`
`References to "Tr." are to the transcript of the oral
`argument on July 15, 2008.
`
`3
`
`-4-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 5 of 25
`
`In a catalogue entitled "Menu," DBI listed its products
`available in the Dessert Beauty line, such as "Bath Bubbles" and
`"Sugar Scrub." (Shimanoff Decl. Ex. 16). Two fragrance products
`are included. The "Love Potion Fragrance" was offered in three
`varieties: "Creamy, Juicy & Dreamy." (Id.). The "Belly Button
`Love Potion Fragrance," offered in "Creamy" and "Juicy," was
`intended to be applied to the navel and sold in a "roll-on"
`container. (Id.). The packages and bottles referred to the
`fragrance products as the "deliciously kissable love potion
`fragrance" or the "deliciously kissable belly button love
`potion." (Krages Decl. Ex. A; Shimanoff Decl. Ex. 13).
`
`(Shimanoff Decl. Ex. 13).
`DBI's trademark was DESSERT, which was indicated as
`such by the trademark symbol "TM" next to the word "Dessert" on
`-5-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 6 of 25
`
`all of its packaging and advertising materials. Its logo
`consisted of a pink lipstick stain and the mark DESSERT inside a
`black circle. Beneath the circle was the phrase "Sexy Girls Have
`Dessert" in script. The DESSERT trademark, in conjunction with
`the lipstick stain logo and catch phrase (the DBI "indicia"), was
`displayed prominently on every DBI product and used in all
`advertising materials.
`3.
`Fox's Actions to Protect Her Trademark
`Fox's lawyer routinely issued cease and desist letters
`to manufacturers and retailers that sold perfume products
`containing the term "love potion." (See Shimanoff Decl. Ex. 1).
`The record contains approximately 80 such letters sent to
`different vendors between 2000 and 2006.
`After learning in April 2004 that DBI was using the
`words "love potion" for its fragrance products, Fox's lawyer
`demanded that Randi Schinder, co-creator of the Dessert Beauty
`products, and David Suliteanu, president of Sephora USA LLC,
`"[c]ease and desist from any further use of the [LOVE POTION]
`mark" and "[p]rovide an accounting of any and all sales made to
`date." (Id. Ex. 17; see also id. Ex. 16). DBI's lawyer, on
`behalf of both DBI and Sephora, responded in a letter dated April
`23, 2004, stating that DBI's "use of the term 'love potion' is
`fair use within § 33(b)(4) of the Lanham Act." (Id. Ex. 17).
`After exchanging several letters regarding whether DBI's use of
`"love potion" was fair use, DBI voluntarily agreed to "cease and
`desist from the use of the term 'love potion,'" "change its
`
`-6-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 7 of 25
`
`website as soon as possible," and "delete the term 'love potion'
`from all bottles, packaging and advertising." (Id.). DBI
`steadfastly maintained, however, that its "use of 'love potion'
`in phrases like 'deliciously kissable love potion fragrance'
`[was] merely descr[i]ptive." (Id.). Despite DBI's agreement not
`to use "love potion," the parties continued to dispute the
`sufficiency of DBI's actions in removing the words "love potion"
`from its fragrance products.
`In addition to direct communication with DBI and
`Sephora, Fox filed a report with eBay's Verified Rights Owner
`("VeRO") Program, which allows intellectual property owners to
`flag listings on eBay that purportedly infringe their trademark
`rights. (Fox Decl. ¶ 19).
`Fox also waged a public campaign on her website, which
`contained the following message:
`WE ARE A SMALL COMPANY DEFENDING OUR RIGHTFUL
`INCONTESTABLE TRADEMARKS AGAINST A
`CORPORATION THAT THINKS THEY CAN BULLY US
`BECAUSE THEY CAN AFFORD IT. IF YOU FEEL YOU
`MUST SEND AN ANGRY LETTER, PLEASE DIRECT IT
`TO THEM FOR THEIR ILLEGAL, IMMORAL, UNETHICAL
`BUSINESS PRACTICE.
`
`(Shimanoff Decl. II Ex. 5 (emphasis in original)). She hired a
`4
`public relations company, which issued a press release in January
`2006 about this lawsuit and DBI's alleged infringement of Fox's
`trademark. (Id. Ex. 1). The press release, quoting Fox's third-
`party complaint, stated that DBI "willfully and maliciously
`
`4
`
`"Shimanoff Decl. II" refers to Shimanoff's declaration
`submitted with DBI's opposition to Fox's motion for summary
`judgment.
`
`-7-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 8 of 25
`
`initiate[d] a campaign to flood the major internet search engines
`with key word spamming to direct any inquiries of LOVE POTION to
`their retailers." (Id.). Fox was quoted, stating that "in the
`first month following [DBI]'s launch, her sales were reduced by
`96%. The following month, they were down 97%." (Id.). The
`press release also indicated that DBI "reported sales exceeding
`$120 million dollars." (Id.). This press release was reported
`by numerous media publications, including the New York Post,
`which wrote that "the bimbonic blonde and her business partners
`ripped off [Fox's] trademarked cosmetics brand." (Id. ¶ 4,
`Ex. 1).
`B.
`Procedural History
`DBI commenced this action against Fox and Love Potion
`LLC for: (1) a judgment declaring that DBI did not infringe
`Fox's trademark, (2) cancellation of Fox's LOVE POTION
`registration, and (3) damages for intentional interference with
`business relations. Fox filed counterclaims against DBI and a
`third-party complaint against Sephora and others, asserting: (1)
`trademark infringement under the Lanham Act and state law, (2)
`false designation of origin under the Lanham Act, and (3)
`interference with prospective economic advantage.
`In April 2006, DBI and Sephora filed their first motion
`for summary judgment to dismiss all Fox's claims and to cancel
`Fox's trademark registration for "Love Potion." In a memorandum
`decision issued on August 7, 2007, I granted the motion as to
`Fox's tortious interference with economic advantage claim, but
`
`-8-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 9 of 25
`
`denied the motion as to Fox's federal and state trademark
`infringement claims and false designation claim. See Dessert
`Beauty, Inc. v. Fox, No. 05 Civ. 3872 (DC), 2007 WL 2244870
`(S.D.N.Y. Aug. 6, 2007). I also denied the motion to the extent
`DBI sought to cancel Fox's registration of the LOVE POTION mark.
`Both parties now cross-move for summary judgment. DBI
`and Sephora move again to dismiss Fox's remaining claims on the
`ground that there is no trademark infringement or, in the
`alternative, that DBI's use of the term "love potion" is fair
`use. Fox moves to dismiss DBI's complaint in its entirety. I
`heard argument on July 15, 2008 and reserved decision.
`DISCUSSION
`For the following reasons, I conclude that DBI's use of
`the term "love potion" is fair use within the meaning of section
`33(b)(4) of the Lanham Act. Accordingly, I do not address the
`5
`parties' cross-motions with respect to the trademark infringement
`claims and proceed directly to the fair use analysis. Then I
`turn to the part of Fox's motion for summary judgment seeking
`dismissal of DBI's tortious interference claim.
`A.
`Summary Judgment Standard
`Summary judgment is appropriate only where the parties'
`submissions "show that there is no genuine issue as to any
`
`5
`
`There is "substantial congruence in California
`trademark law and the Lanham Act," and the fair use analysis for
`claims under the Lanham Act applies to claims under California
`law as well. Bell v. Harley Davidson Motor Co., 539 F. Supp. 2d
`1249, 1261 (S.D. Cal. 2008). Accordingly, I address only the
`federal claim.
`
`-9-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 10 of 25
`
`material fact and that the movant is entitled to judgment as a
`matter of law." Fed. R. Civ. P. 56(c); see Celotex Corp. v.
`Catrett, 477 U.S. 317, 322-23 (1986). Summary judgment is
`inappropriate if the Court, resolving all ambiguities and drawing
`all reasonable inferences against the moving party, finds that
`the dispute about a material fact is "such that a reasonable jury
`could return a verdict for the nonmoving party." Anderson v.
`Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986).
`B.
`Fair Use
`The fair use doctrine permits the use of protected
`marks to describe certain aspects of goods, but not as marks to
`identify the goods. Even if a party's conduct would otherwise
`constitute infringement of another's trademark, fair use provides
`an absolute defense to liability. See 15 U.S.C. § 1115(b)(4);
`see also Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's
`USA Co., 125 F.3d 28, 30 (2d Cir. 1997); Something Old, Something
`New, Inc. v. QVC, Inc., No. 98 Civ. 7450 (SAS), 1999 WL 1125063,
`at *6 (S.D.N.Y. Dec. 8, 1999). Section 33(b)(4) of the Lanham
`Act defines fair use as "a use, otherwise than as a mark, . . .
`of a term or device which is descriptive of and used fairly and
`in good faith only to describe the goods or services of [a]
`party." § 1115(b)(4). Accordingly, to avail itself of the fair
`use defense, DBI must have made use of Fox's LOVE POTION mark
`"(1) other than as a mark, (2) in a descriptive sense, and (3) in
`good faith." EMI Catalogue P'ship v. Hill, Holliday, Connors,
`Cosmopulos Inc., 228 F.3d 56, 64 (2d Cir. 2000). I address these
`elements in turn.
`
`-10-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 11 of 25
`
`1.
`
`Non-Trademark Use
`A trademark use occurs when a mark indicates the source
`or origin of consumer products. See Tommy Hilfiger Licensing,
`Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 414 (S.D.N.Y.
`2002) (defining non-trademark use in the context of trademark
`parody). Here, DBI did not use "love potion" as a trademark
`because the source of its fragrance products was not identified
`by that term. Instead, the source was indicated by its own
`trademark DESSERT in conjunction with the lip stain logo and
`catch phrase "Sexy Girls Have Dessert," which were prominently
`displayed on all DBI products. Words on a product's packaging
`generally do not serve as a trademark where there is also a
`conspicuously visible trademark that clearly serves that
`function. See Cosmetically Sealed, 125 F.3d at 30-31 (the "non-
`trademark use of the challenged phrase [is] evidenced by the fact
`that the source of [plaintiffs'] product is clearly identified by
`the prominent display of [their] own trademarks"). Moreover, DBI
`placed a TM symbol only next to the word "Dessert," highlighting
`the non-trademark use of "love potion." The TM symbol was not
`placed next to the words "love potion."
`Moreover, DBI used the words "love potion" within the
`phrase "Love Potion Fragrance" or "Belly Button Love Potion
`Fragrance" to identify particular products within the DBI line.
`These names are listed in the "Menu" of beauty products along
`with the descriptive or generic names of other products such as
`"Bath Bubbles" and "Sugar Scrub." (Shimanoff Decl. Ex. 16). The
`
`-11-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 12 of 25
`
`product names served to distinguish the love potion fragrance
`products from other DBI products rather than to distinguish them
`from non-DBI products. (Id.).
`Fox argues that a product name can constitute trademark
`use. (See, e.g., Tr. 14). Product names, however, generally do
`not amount to trademark use because such names, as a "common
`descriptive name of a product," are generic, San Francisco Arts &
`Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 532 n.7
`(1987), and generic terms cannot be trademarked under the Lanham
`Act, see, e.g., Papercutter, Inc. v. Fay's Drug Co., 900 F.2d
`558, 562 (2d Cir. 1990). Product names identify a category or
`class of goods, but do not indicate the source of the goods. For
`instance, "perfume" is a product name that indicates that the
`product emits a fragrant scent when sprayed, but the word
`"perfume" does not indicate who manufactured the particular
`product. Accordingly, at least two courts in this Circuit have
`held that "regardless of whether or not a person knows that [a
`given word] is a trade-mark, if he uses the trade-mark word as
`the name of the product, it is used in a descriptive sense and is
`therefore generic." Am. Thermos Prods. Co. v. Aladdin Indus.,
`Inc., 207 F. Supp. 9, 20 (D.C. Conn. 1962); see also W.R. Grace &
`Co. v. Union Carbide Corp., 581 F. Supp. 148, 154-55 (S.D.N.Y.
`1983) (holding that a product name is not a trademark use, but is
`generic). Hence, because DBI used the words "love potion" not to
`describe the source of the product but as a product name in a
`generic, descriptive sense, the use was not trademark use.
`
`-12-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 13 of 25
`
`2.
`
`Descriptive Use
`Fox argues that "love potion" can never be used in a
`descriptive sense when referring to perfume products because
`"love potion" is "a liquid consumable that is drunk" and "has not
`been used in its common parlance to describe [or] refer to a
`fragrance." (Tr. 18-19). Fox thus raises the question whether
`the term "love potion" can describe a product that is not, in
`actuality, a love potion. I conclude that it may for purposes of
`the fair use defense.
`A use of a mark is descriptive if "the words were used
`to describe the 'ingredients, quality or composition' of a
`product, not the source of the product." JA Apparel Corp. v.
`Abboud, No. 07 Civ. 7787 (THK), 2008 WL 2329533, at *19 (S.D.N.Y.
`Jun. 5, 2008) (citing In Re Colonial Stores Inc., 394 F.2d 549,
`551 (C.C.P.A. 1968)). Though the Lanham Act recognizes the fair
`use defense where the name or term is used "to describe the
`goods," § 1115(b)(4), the Second Circuit has explained that the
`statute "has not been narrowly confined to words that describe a
`characteristic of the goods, such as size or quality. Instead,
`[the Second Circuit has] recognized that the phrase permits use
`of words or images that are used, in Judge Leval's helpful
`expression, in their 'descriptive sense.'" Cosmetically Sealed,
`125 F.3d at 30 (citing Car-Freshner Corp. v. S.C. Johnson & Son,
`Inc., 70 F.3d 267, 269 (2d Cir. 1995)).
`For instance, the Second Circuit has held the fair use
`defense applicable to a clothing manufacturer's use of the phrase
`
`-13-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 14 of 25
`
`"Come on Strong" as "describing a presumably desirable effect" of
`its menswear, even though articles of clothing do not literally
`"come on strong." B & L Sales Assocs. v. H. Daroff & Sons, Inc.,
`421 F.2d 352, 354 (2d Cir. 1970). The Second Circuit has also
`held that even though "the words 'Seal it with a Kiss' do not
`describe a characteristic of the defendants' [lipstick], they
`surely are used in their 'descriptive sense' -- to describe an
`action that the sellers hope consumers will take, using their
`product." Cosmetically Sealed, 125 F.3d at 30. In Jean Patou,
`Inc. v. Jacqueline Cochran, Inc., 201 F. Supp. 861 (S.D.N.Y.
`1962), aff'd, 312 F.2d 125 (2d Cir. 1963), the plaintiff was the
`owner of the registered trademark JOY for use on perfumes and
`sought to enjoin the defendant from using the phrase "Joy of
`Bathing" on its bath products. But the court concluded that the
`challenged phrase was "designed to suggest the pleasure which
`will accompany the use of defendant's product in one's bath, and
`thus performs a descriptive function." Jean Patou, 201 F. Supp.
`at 865. Accordingly, when determining whether a use is
`descriptive, courts in the Second Circuit consider not only
`"whether the mark used describes certain aspects of the alleged
`infringer's own goods," but also "whether the mark as used
`describes an action the alleged infringer hopes consumers will
`make of its product." EMI Catalogue, 228 F.3d at 64-65.
`Viewed in this broad sense, it is clear that DBI used
`"love potion" descriptively. First, the words, by themselves,
`are descriptive. Dictionary.com defines "love potion" as a
`
`-14-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 15 of 25
`
`product "believed to arouse love or sexual passion toward a
`specified person." (Shimanoff Decl. Ex. 7). See Radio Channel
`Networks, Inc. v. Broadcast.com, Inc., No. 98 Civ. 4799 (RPP),
`1999 WL 124455, at *3 (S.D.N.Y. Mar. 8, 1999) (consulting
`dictionary definitions when determining whether term "radio
`channel" was used in the descriptive sense). Although the words
`"love potion" do not describe an actual quality of DBI's
`fragrance products, they are used to describe the effects that
`the products may have on whoever "kisses" or "tastes" the
`products worn by the wearer, or at least to describe the purpose
`with which consumers will use the product.
`Second, the term "love potion" is a common term in the
`English language. The very fact that "love potion" is defined in
`several dictionaries as a product used for the purpose of
`attracting the opposite sex reflects the ordinary usage of the
`term to describe products used for those purposes. Moreover, the
`record contains approximately 80 cease and desist letters that
`were sent by Fox, indicating that "love potion" was commonly used
`by many sellers in the cosmetics industry to describe a product's
`purported effect on others.
`Third, that many merchants received warning letters
`from Fox for using "love potion" demonstrates that there is no
`other reasonably available word to describe the meaning captured
`by the term "love potion," namely, that the opposite sex will be
`attracted to the wearer of the product. Descriptive use is
`evident in such situations "[w]here a mark incorporates a term
`
`-15-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 16 of 25
`
`that is the only reasonably available means of describing a
`characteristic of another's goods." EMI Catalogue, 228 F.3d at
`65; see also New Kids on the Block v. News Am. Publ'g, Inc., 971
`F.2d 302, 308 (9th Cir. 1992); 2 McCarthy on Trademarks and
`Unfair Competition § 10:14 (4th Ed. 1999) ("Since the use of a
`descriptive title cannot serve to prevent others from using the
`title in a descriptive, non-trademark sense, others may be able
`to use the title as the only term available."). "To expect
`[plaintiffs] to use unwieldy or long terms would be contrary to
`the purpose of the fair use defense, [and Fox] cannot monopolize
`words and images that are used descriptively." Something Old,
`1999 WL 1125063, at *7.
`Finally, descriptive use is often evident in the manner
`of use, such as the "physical nature of the use in terms of size,
`location, and other characteristics in comparison with the
`appearance of other descriptive matter or other trademarks," EMI
`Catalogue, 228 F.3d at 65 (quoting Restatement (Third) of
`Unfair Competition § 28 cmt. c. (1995)), as well as "the presence
`of the defendant's own trademark in conjunction with the
`descriptive term," § 28 cmt. c; see also Something Old, 1999 WL
`1125063, at *6 ("In determining descriptive use, the total
`context of the allegedly infringing term is considered, including
`lettering, type style, size and placement."). The factors noted
`above that indicated non-trademark usage -- such as the prominent
`use of the DESSERT brand name -- also demonstrate DBI's
`descriptive use of "love potion." For instance, the presence of
`
`-16-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 17 of 25
`
`a TM symbol next to DESSERT, contrasted with the absence of the
`symbol next to the words "love potion," suggests not only that
`"love potion" on the DBI products was a non-trademark use, but
`also that it constituted descriptive use. Moreover, on all the
`packaging, the words "love potion" were placed off-center and
`printed in a smaller font size than the trademark DESSERT. Most
`indicative of descriptive use is that "love potion" was used with
`other words to form a phrase describing the products.
`3.
`Good Faith
`Fair use analysis also requires a finding that
`defendants used the protected mark in good faith. A "lack of
`good faith [is equated] with the subsequent user's intent to
`trade on the good will of the trademark holder by creating
`confusion as to source or sponsorship." EMI Catalogue, 228 F.3d
`at 66. In analyzing the good faith element, "the focus of the
`inquiry is . . . whether defendant in adopting its mark intended
`to capitalize on plaintiff's good will." Id. Furthermore,
`"[b]ecause the good faith inquiry in a fair use analysis
`necessarily concerns the question whether the user of a mark
`intended to create consumer confusion as to source or
`sponsorship, . . . the same contextual considerations [evaluated
`in a likelihood of confusion analysis for a trademark
`infringement claim] apply to a court's analysis of good faith in
`the fair use defense." Id. at 66-67. Thus, "a court must take
`into account the overall context in which the marks appear and
`the totality of factors that could cause consumer confusion" just
`
`-17-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 18 of 25
`
`as it would "[w]hen considering the likelihood of confusion and
`assessing the similarity of two marks." Id. at 66. In addition,
`the court, on a motion for summary judgment, must consider all
`evidence in the record pointing to the alleged infringer's both
`good and bad faith. Id. at 76.
`Turning to the evidence in the record, Fox argues that
`the following facts raise a material issue for trial concerning
`plaintiffs' alleged bad faith: first, DBI did not conduct a
`trademark search prior to the launch of its beauty products; and
`second, both DBI and Sephora failed to take necessary action to
`discontinue the sale of allegedly infringing products after
`receiving Fox's cease and desist letters.
`With respect to DBI's failure to conduct a trademark
`search, it is well established that "failure to perform an
`official trademark search . . . does not, standing alone, prove
`. . . bad faith." Savin Corp. v. Savin Group, 391 F.3d 439, 460
`(2d Cir. 2004) (citing Streetwise Maps, Inc. v. VanDam, Inc., 159
`F.3d 739, 746 (2d Cir. 1998)) (internal citations omitted); see
`also EMI Catalogue, 228 F.3d at 67; Car-Freshner, 70 F.3d at 270.
`Even if plaintiffs had prior knowledge of Fox's trademark, that
`fact would not demonstrate lack of good faith without additional
`evidence supporting an inference of bad faith. See, e.g., Savin
`Corp., 391 F.3d at 460; Arrow Fastener Co. v. Stanley Works, 59
`F.3d 384, 397 (2d Cir. 1995); EMI Catalogue, 228 F.3d at 67; Car-
`Freshner, 70 F.3d at 270. Thus, as a matter of law, DBI's
`failure to conduct a trademark search prior to using "love
`potion," standing alone, does not demonstrate bad faith.
`-18-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 19 of 25
`
`Fox also points to DBI's alleged failure to discontinue
`
`the sale of products with the words "love potion" after she
`provided notice of the alleged trademark infringement. But the
`"failure to completely abandon the use after receiving a cease
`and desist letter is insufficient to support an allegation of bad
`faith" as a matter of law. Something Old, 1999 WL 1125063, at
`*7; see also Wonder Labs, Inc. v. Procter & Gamble Co., 728 F.
`Supp. 1058, 1064 (S.D.N.Y. 1990) (failure to abort advertising
`campaign upon receipt of cease and desist letter "is absolutely
`no proof that the defendant acted in bad faith to capitalize on
`the plaintiff's trademark"). Notice of Fox's trademark rights --
`either by her trademark registration or the cease and desist
`letters -- "does not preclude use of the words contained in
`[Fox's] registered mark in their primary[, descriptive] sense,"
`Wonder Labs, 728 F. Supp. at 1064, especially where DBI believed
`that its use was descriptive, see Something Old, 1999 WL 1125063,
`at *7. Indeed, the numerous letters exchanged between the
`parties indicate that DBI had maintained the position that its
`use of "love potion" was fair use. (See, e.g., 4/23/04 Letter
`("our client's use of the term 'love potion' is fair use");
`5/24/04 Letter (same)). In its June 4, 2004 letter to Fox, DBI
`6
`"for business reasons, [agreed] to cease and desist from the use
`of the term 'love potion,'" but nevertheless maintained that its
`"use of 'love potion' in phrases like 'deliciously kissable love
`potion fragrance' [was] merely descr[i]ptive." (6/4/04 Letter).
`
`6
`
`These letters are found in Shimanoff Decl. Ex. 17.
`-19-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 20 of 25
`
`These letters show that DBI believed that its use of "love
`potion" was descriptive.
`On the record before the Court, no reasonable jury
`could find bad faith; to the contrary, a reasonable jury could
`only conclude that DBI acted in good faith. An indication of
`good faith is "the display of defendant's own name or trademark
`in conjunction with the mark it allegedly infringes." EMI
`Catalogue, 228 F.3d at 67, citing Cosmetically Sealed, 125 F.3d
`at 30. This is so because the use of a distinct trademark
`minimizes any likelihood of confusion as to the source or
`sponsorship of a product. See W.W.W. Pharmaceutical Co., Inc. v.
`Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993) ("Where a similar
`mark is used in conjunction with a company name, the likelihood
`of confusion may be lessened."). As discussed above, all DBI
`products had the DESSERT trademark and indicia, reflecting DBI's
`efforts to differentiate its products in the marketplace rather
`than to trade on Fox's, or any other seller's, good will.
`Furthermore, in light of "the overall context in which
`the marks appear and the totality of factors that could cause
`consumer confusion," EMI Catalogue, 228 F.3d at 66-67, the
`dissimilarities between the products are patently obvious as to
`dispel any inference that DBI was trying to pass its products as
`one of Fox's Love Potion Perfumes or to confuse consumers as to
`source or sponsorship. The only similarity is the term "love
`potion," which alone is insufficient to establish a likelihood of
`confusion. See Clairol, Inc. v. Cosmair, Inc., 592 F. Supp. 811,
`
`-20-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 21 of 25
`
`815 (S.D.N.Y. 1984) ("the mere fact that two marks may share
`words in common is not determinative" in assessing likelihood of
`confusion).
`The differences between the products and their marks,
`however, are manifest -- a fact that Fox herself concedes. (Tr.
`19). "Love potion" is written in different fonts on the parties'
`products; on the DBI labels, "deliciously kissable love potion
`fragrance" is written in sans serif font, but "Love Potion
`Perfume" is written in cursive. In addition, "Love Potion
`Perfume" is written on a white label strung to the perfume
`bottle. In contrast, the DBI product names and trademark are
`emblazoned directly on the bottles and packaging. Moreover,
`Fox's Love Potion Perfumes are sold in a diamond-shaped bottle
`and packaged in a clear plastic bag and organza pouch. On the
`other hand, DBI's love potion fragrance is packaged in a long,
`cylindrical tube with a pumping device; its belly button love
`potion fragrance is sold in a roll-on container and packaged in a
`rectangular box.
`Notwithstanding both parties' usage of the words "love
`potion," a reasonable jury could only find that it was not likely
`that consumers would be confused. In short, no reasonable jury
`could conclude that plaintiff acted in bad faith to capitalize on
`Fox's trademark. Indeed, the evidence only shows plaintiff's
`good faith. Because there is no material issue warranting trial
`with respect to the fair use defense, plaintiff's motion for
`summary judgment on the trademark claims is granted and Fox's
`cross motion is denied.
`
`-21-
`
`
`
`Case 1:05-cv-03872-DC Document 98 Filed 07/31/08 Page 22 of 25
`
`C.
`
`Intentional Interference with Business Relations Claim
`The remaining claim is plaintiff's intentional
`interference with business relations claim against Fox. To
`sustain a claim for tortious interference with a business
`relation or prospective economic advantage, "a plaintiff