Desoky v. Lazar

882 F. Supp. 395, 1995 U.S. Dist. LEXIS 5373, 1995 WL 234611
CourtDistrict Court, D. New Jersey
DecidedApril 19, 1995
DocketCiv. A. No. 93-5580
StatusPublished

This text of 882 F. Supp. 395 (Desoky v. Lazar) is published on Counsel Stack Legal Research, covering District Court, D. New Jersey primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Desoky v. Lazar, 882 F. Supp. 395, 1995 U.S. Dist. LEXIS 5373, 1995 WL 234611 (D.N.J. 1995).

Opinion

OPINION

WOLIN, District Judge.

This matter is brought before the Court on defendant’s motion for summary judgment. For the reasons set forth herein, defendant’s motion will granted and the Court will dismiss with prejudice plaintiffs trade dress infringement claims and dismiss without prejudice the plaintiffs pendent state law claims for breach of contract.

BACKGROUND

Plaintiff Mohamed Desoky is the president of Amitco Inc., which does business as Medical Weight Management Inc. Plaintiff markets a nutritional weight loss supplement, a powder drink mix that is ingested in place of solid food. Plaintiff uses the brand name Nutri-Lene on its product.

Defendant Allan Lazar is a physician and former owner of Medical Weight Management Inc. In 1990, Dr. Lazar sold Medical Weight Management Inc. to Mr. Desoky and assigned to Mr. Desoky the rights to the Nutri-Lene trademark. Beginning in March 1991 Mr. Lazar began purchasing privately labelled nutritional weight loss supplements. Mr. Lazar designed labels for these products using the brand name “Professional Weight Control.” Mr. Lazar sells these products to his obese patients to aid in weight loss.

Plaintiff has filed suit against Mr. Lazar alleging trade dress infringement in violation the Lanham Act, 15 U.S.C. § 1125.1 Both plaintiff and defendant sell their products in [397]*39727.3 ounce metal cans. Both cans state that the product contains “beta carotene.” Plaintiffs product states in the middle of the label: “Complete Nutritional Supplement.” Defendant’s product states at the top of the label: “Complete Nutrition Supplement.” These are the only similarities in the product dress.

There are numerous differences in the product dress. The most prominent feature on plaintiffs product is the name “Nutri-Lene,” which is accompanied by a medical symbol. The most prominent feature on defendant’s product is the name “Professional Weight Control.” The graphic designs on the two products are dissimilar. The color of the labels is different. The size and shape of the lettering on the products is different. The words used on each label are different.

DISCUSSION

I. Summary Judgment

A. Summary Judgment Standard

[1] Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment shall be granted if “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” See, Hersh v. Allen Products Co., 789 F.2d 230, 232 (3d Cir.1986). A dispute involving a material fact is “genuine” only “if the evidence is such that a reasonable jury would return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). The Supreme Court also observed that “[ojnly disputes over facts that might affect the outcome of the suit under governing law will properly preclude an entry of summary judgment.” Id. See also, Ness v. Marshall, 660 F.2d 517, 519 (3d Cir.1981) (role of district court is to determine whether genuine issue of material fact exists).

Furthermore, when considering a summary judgment motion, this Court must view all evidence submitted in a light most favorable to the party opposing the motion. Matsushita Elec. Industrial Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356-57, 89 L.Ed.2d 538 (1986); Meyer v. Riegel Prods. Corp., 720 F.2d 303, 307 n. 2 (3d Cir.1983), cert. dismissed, 465 U.S. 1091, 104 S.Ct. 2144, 79 L.Ed.2d 910 (1984). Although the summary judgment hurdle is a difficult one to meet, it is by no means insurmountable. “Where the evidence is so one-sided that it leaves no room for any reasonable differences of opinion as to any material fact” this Court will grant summary judgment. Tunis Bros. Co., Inc. v. Ford Motor Co., 763 F.2d 1482, 1489 (3d Cir.1985).

Accordingly, in Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986), the Supreme Court concluded that “[o]ne of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses, and we. think it should be interpreted in a way' that allows it to accomplish this purpose.” Id. at 323-324, 106 S.Ct. at 2552.

B. Summary Judgment in Trade Dress Infringement Litigation

The fact this lawsuit involves trade dress infringement does not render this case unsuitable for disposition by summary judgment. Although trade dress infringement cases often raise complex factual issues, the rules do not change simply because the case involves trade dress. The non-moving party still bears the burden of showing this Court a disputed issue of material fact. Thus, the Federal Circuit has advised: “[wjhere no issue of material fact is present ... courts should not hesitate to avoid an unnecessary trial by proceeding under Fed.R.Civ.P. 56 without regard to the particular type of suit involved.” Chore-Time Equipment v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed.Cir. 1983).

Courts in this District specifically have held summary judgment is appropriate on the issue of trade dress infringement, where there is no genuine issue of material fact. For example, in Resorts International v. Greate Bay Hotel and Casino, 830 F.Supp. 826, 835 (D.N.J.1992), former Chief Judge Gerry held: “the likelihood of confusion test involves a purely legal, rather than factual [398]*398determination. Because likelihood of confusion is a question of law it is an appropriate issue for summary judgment.” In this case, the Court held there was a genuine issue of fact whether the trademark “Paradise Island” was likely to be confused with the trademark “Paradise Isle.” Id. at 836. However, in other cases where the trademarks or trade dress were substantially different, courts have -ruled as a matter of law that there can be no likelihood of confusion. For example, in Specialty Surgical Instr. Inc. v. Phillips, 844 F.Supp. 1211 (M.D.Tenn. 1994), the Court granted summary judgment in a case involving trade dress infringement. The Court held as a matter of law that there was no likelihood of confusion between packages of surgical instruments.

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Related

Anderson v. Liberty Lobby, Inc.
477 U.S. 242 (Supreme Court, 1986)
Sk&f, Co. v. Premo Pharmaceutical Laboratories, Inc.
625 F.2d 1055 (Third Circuit, 1980)
Ideal Toy Corporation v. Plawner Toy Mfg. Corp.
685 F.2d 78 (Third Circuit, 1982)
Chore-Time Equipment, Inc. v. Cumberland Corporation
713 F.2d 774 (Federal Circuit, 1983)
Tunis Brothers Company, Inc. v. Ford Motor Company
763 F.2d 1482 (Third Circuit, 1985)
Specialty Surgical Instrumentation, Inc. v. Phillips
844 F. Supp. 1211 (M.D. Tennessee, 1994)
SK&F Co. v. Premo Pharmaceutical Laboratories, Inc.
481 F. Supp. 1184 (D. New Jersey, 1979)
Ness v. Marshall
660 F.2d 517 (Third Circuit, 1981)
Hersh v. Allen Products Co.
789 F.2d 230 (Third Circuit, 1986)
Coach Leatherware Co. v. Anntaylor, Inc.
933 F.2d 162 (Second Circuit, 1991)

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Bluebook (online)
882 F. Supp. 395, 1995 U.S. Dist. LEXIS 5373, 1995 WL 234611, Counsel Stack Legal Research, https://law.counselstack.com/opinion/desoky-v-lazar-njd-1995.