• There Has to Be Confusion

    by  • June 7, 2011 • copyright, trademark

    Plaintiff DeliverMed transferred its marks for pharmaceutical delivery – “DeliverMed,” “Right at Home” and this logo

    to defendant Medicate Pharmacy as part of a joint business venture.  The venture failed, but Medicate Pharmacy continued to use the marks to promote its own business, enclosing a card bearing the marks with every prescription and using the logo on its web page.

    DeliverMed sued under § 43(a) of the Lanham Act.

    But the Lanham Act claim was a no-go, dismissed under Fed. R. Civ. P. 12(b)(1) for lack of subject matter jurisdiction.  Citing to International Armor & Limousine Co. v. Moloney Coachbuilders, Inc., 272 F.3d 912 (7th Cir. 2001), the court held that it had no jurisdiction:

    The Lanham Act claim DeliverMed pleads in its original complaint is really a contract dispute over the existence and meaning of a joint venture agreement. This dispute over the use of the marks cannot be principally distinguished from the dispute in International Armor. If the joint venture agreement existed and transferred DeliverMed’s marks to Medicate, Medicate owns the marks. If the agreement did not exist or did not transfer the marks, DeliverMed owns them, and Medicate’s use of those marks violates the Lanham Act. The existence and effect of a joint venture agreement is a matter of contract, not trademark, law. In this way, the case at bar is just like International Armor and, as with International Armor, presents no Lanham Act question.
    Medicate Pharmacy’s potential defense under the Copyright Act (a claim that one of the defendants owned the copyright in the house and pestle logo) did not create federal jurisdiction, as we know from Holmes Group v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002).  DeliverMed was, though, allowed to amend its Complaint to add a declaratory judgment claim for copyright non-infringement, keeping federal jurisdiction alive.

    DeliverMedHoldings, LLC v. Schaltenbrand, Nos. 10-cv-684-JPG-DGW, 10-cv-685-JPG-DGW (N.D. Ill. May 27, 2011).

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