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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Carolyn Albert v. David Spencer

1998 U.S. Dist. Lexis 12700 (S.D.N.Y., August 17, 1998)

This trademark infringement action arises out of the use by two separate parties of the same title, "Aisle Say," in connection with their publication of theatre reviews. Plaintiff, the senior user, commenced use of the title in approximately 1979. She currently publishes theatre reviews under this title in the "Singles Almanac", a print publication distributed to approximately 40,000 people in the New York metropolitan area. Plaintiff's reviews do not, however, appear on the Internet, and she has no plans of making them available in that medium. Defendant has, for the past three years, published theatre reviews on his website, which also operates under the "Aisle Say" title. The court determined that defendant had independently and in good faith adopted the "Aisle Say" title.

Plaintiff brought suit, charging defendant, inter alia, with trademark infringement and unfair competition. The court dismissed plaintiff's action, and ruled that defendant, the junior user, could continue to use the "Aisle Say" name in connection with his web publications.

The court's decision rested on its determination that consumers were neither likely to be confused by defendant's use of the "Aisle Say" title nor misled by it into believing that plaintiff authored or was affiliated with defendant's reviews. The court recognized that the titles were identical, that plaintiff and defendant both used the title in conjunction with the same product and that consumers of that product might not pay sufficient attention to discern their different sources. Nonetheless, the court found that consumers were not likely to be confused. In making this decision, the court relied principally on the fact that the parties' theatre reviews appeared in different mediums, and that defendant had placed a disclaimer on his site, announcing his lack of affiliation with the plaintiff. Said the court:

If one considers the product simply as theatre reviews, plaintiff and defendant's products are in direct competition. However, it is more appropriate to ask whether plaintiff's reviews compete with defendant's reviews for readers. The answer to that question is no, because plaintiff's reviews appear in print in a specific magazine while defendant publishes his reviews only at his web site. Thus, this factor favors defendant.

The outcome of this case appeared to be based in large part on the court's balancing of the harm that would be caused by an adverse determination to two innocent parties. Said the court:

Given the fact that there is no real competition between plaintiff's and defendant's reviews and that defendant has added a disclaimer to his web site, it is unlikely that plaintiff will suffer any real economic disadvantage or damage to her reputation if defendant is permitted to continue to use AISLE SAY to identify his web site. To enjoin defendant from using the name AISLE SAY would cause him far greater harm.

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