822 F. Supp. 2d 167
N.D.N.Y.2011Background
- Plaintiffs Car-Freshner Corporation and Julius Samann Ltd. sue Getty Images entities over alleged trademark and unfair competition violations relating to Tree Marks on Getty’s digital media licenses.
- Defendants allegedly used Tree Marks in images on their website to identify source and sell/licence images, with knowledge of the marks’ fame.
- Plaintiffs assert eight claims, including federal and common law trademark infringement, false designation of origin, unfair competition, dilution, and contributory/vicarious liability.
- Defendants move to dismiss under Rule 12(b)(6) or for summary judgment, and Plaintiffs cross-move seeking discovery under Rule 56(d).
- The court partly grants/partly denies the motions, declines to grant summary judgment at this stage, and orders discovery under Magistrate Judge Lowe; it analyzes fair use, nominative fair use, contributory and vicarious liability.
- The court treats at issue only the Amended Complaint and eleven representative images, deciding use, nominative fair use, and secondary liability theories for dismissal or retention.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendants used Tree Marks as trademarks | Plaintiffs allege use in commerce to identify source and license images | Defendants argue fair/nominative fair use bars liability | Denied; use plausibly constitutes trademark use and survives dismissal |
| Whether nominative fair use applies to bar liability | Second Circuit has not clearly adopted nominal fair use; assume applicability for argument | Nominative fair use should shield Defendants | Denied; doctrine assumed applicable for this case but not dispositive; claims survive dismissal |
| Whether Plaintiffs state a claim for contributory infringement | Defendants induced/incentivized infringement by licensing images | No liability absent direct infringement by third parties | Denied; contributory infringement properly alleged and survives dismissal |
| Whether Plaintiffs state a claim for vicarious liability | Partners/joint control over photographers/licensees; imagined liability | Conclusory and insufficient to show partnership or joint ownership | Granted; vicarious liability claim dismissed |
Key Cases Cited
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (recognizes potential ambiguity of nominative fair use; discusses likelihood of confusion)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (addressed nominative fair use viability in Second Circuit context)
- Dow Jones & Co. v. International Securities Exchange, Inc., 451 F.3d 295 (2d Cir. 2006) (describes use of a mark to describe a product; limits misleading implications)
- Gucci Am., Inc. v. Frontline Processing Corp., 721 F. Supp. 2d 228 (S.D.N.Y. 2010) (discusses vicarious/contributory liability standards (district court))
- Procter & Gamble Co. v. Haugen, 317 F.3d 1121 (10th Cir. 2003) (conveys elements of contributory liability (knowledge and supply))