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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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Interstellar Starship Services Ltd. v. Epix, Inc.

983 F. Supp. 1331 (D. Oregon, Nov. 20, 1997), aff'd. 184 F.3d 1107 (9th Cir.), petition for cert. denied, No. 99-925 (Feb. 2, 2000)

Defendant Epix, Inc. owned a federal trademark in the mark "Epix" which it used in connection with its business of manufacturing and selling video imaging hardware and software. Plaintiff operated a website at "" On its site, plaintiff publicized the activities of a theater group, including displaying digital images of cast members in a production of "The Rocky Horror Picture Show" being performed by the troupe. For those who are unaware, this show might be considered offensive by some members of the public.

Defendant charged that plaintiff's use of "epix" in this fashion constituted trademark infringement in violation of the Lanham Act, as well as unfair competition in violation of Section 43 of the Lanham Act. Plaintiff sought a declaratory judgment that its use of defendant's mark did not constitute trademark infringement. Both sides moved for summary judgment.

The court concluded that plaintiff's use did not constitute trademark infringement.

"Unlike a patent or copyright, a trademark does not confer on its owner any rights in gross or at large. The law does not per se prohibit the use of trademarks or service marks as domain names. Rather, the law prohibits only uses that infringe or dilute an owner's trademark or service mark."

A central element of both defendant's trademark infringement and unfair competition claims was "whether the public is likely to be deceived or confused by the similarity of the marks" being used by the parties. The court concluded that given the differing nature of the businesses in which the parties engaged in, no such confusion was likely. No one who arrived at the site seeking defendant's products would leave confused, because plaintiff did not offer any product similar to defendant's for sale. Said the court:

The use of "" as an Internet address by Interstellar Starship could confuse actual or potential customers of Epix, Inc. initially. If Interstellar Starship provided the same goods or services as Epix, Inc., Epix, Inc. would be entitled to prevail under applicable trademark law. ... The court finds that the use of the Internet website "" by Interstellar Starship to publicize the "Rocky Horror Picture Show" is not likely to confuse any actual or potential customer seeking to purchase printed circuit boards and computer programs from Epix, Inc. While the court concludes that Epix. Inc. is the owner of the valid ... trademark ... under the facts of this case the court finds no infringement by Interstellar Starship.

In reaching this conclusion, the court was undoubtedly influenced by the innocent nature in which plaintiff came to be using the mark in question. The court found that plaintiff "selected "" as a domain name for reasons unrelated to Epix, Inc." Rather, it was "selected ... as a domain name as a shorthand designation for "electronic pictures."

The full text of this decision can be found on a website maintained by the the Berkman Center for Internet and Society at Harvard Law School.

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