Revision Legal’s trademark attorneys brought home a legal win for their client, Goodies for Kiddies (Goodies) in Rohn v Viacom, 14-cv-83, in the Western District of Michigan. Goodies, a small business that resells children’s clothing purchased from retail stores, was roped into a lawsuit between the owner of the trademark GUPPIE and several large companies including multimedia conglomerate Viacom/MTV.

Defendants used the BUBBLE GUPPIES mark on a slew of products, including t-shirts and other items. Revision Legal’s client, Goodies, purchased those items from the big-box stores and sold the items online.

Plaintiffs brought suit for trademark infringement. Revision Legal filed a Motion to Dismiss and the Honorable Janet T. Neff granted the motion, dismissing Goodies as a Defendant. The opinion is available here: 07-15-15_opinion (PDF).

The First Sale Doctrine

Goodies relied on the first sale doctrine in its motion. Like copyright law, the first sale doctrine in trademark law immunizes those whom sell unaltered, lawfully purchased goods from trademark infringement.[1] As long as the goods have not been materially altered, they can be sold freely without the seller infringing on the trademark. The doctrine is grounded in the idea that the trademark owner should not have the ability to restrict and/or charge licensing royalties after an initial receipt of payment for the product in the original sale.

Plaintiffs argued that the first sale doctrine did not apply to Goodies because the trademark was not legitimate in that it infringed on Plaintiffs’ trademark. Plaintiffs cited the case at bar for proof that the validity of the trademark was in question and thus the first sale doctrine should not be applied to Goodies. Goodies responded by asking the simple question: if we are not protected here, what is the point of the first sale doctrine? Essentially, Goodies argued that the first sale doctrine exists for this exact reason. Goodies bought t-shirts and sold them having not altered them in any way. The shirts featured the unaltered BUBBLE GUPPIES mark, and thus the shirts would not confuse consumers about their source, namely, the owner of the mark BUBBLE GUPPIES. Goodies concluded that if Plaintiffs’ arguments were right, every time anyone wanted to re-sell products on Amazon, eBay, etc, they would have to hire an attorney to run a trademark clearance lest they open themselves up to third-party lawsuits.

Conclusion

The court ultimately agreed with Goodies and granted its Motion to Dismiss, removing Goodies from the lawsuit. The court’s decision illustrates the importance in hiring attorneys who know the field and understand the nuances and policies underlying the law—even before litigation begins. Goodies was able to detach itself from a large lawsuit at the outset and in the process save itself thousands of dollars.

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[1] Polymer Technology Corp. v. Mimran, 975 F.2d 58, 61, 24 U.S.P.Q.2d 1189 (2d Cir. 1992) (“As a general rule, trademark law does not reach the sale of genuine goods bearing a true mark even though the sale is not authorized by the mark owner . . . Thus, a distributor who resells trademarked goods without change is not liable for trademark infringement.”).