March 2012 Issue
Lovely Skin, Inc. v. Ishtar Skin Care Prods., LLC,
2012 WL 379930 (D. Neb. Feb. 6, 2012)
Plaintiff Lovely Skin, Inc. (“Plantiff”) sold skin-care products under the registered mark LOVELY SKIN and operated a website at lovelyskin.com. Defendant Ishtar Skin Care Products, LLC (“Defendant”) sold skin-care products from its website at livelyskin.com. Plaintiff sued Defendant, asserting that its use of the name Lively Skin constituted trademark infringement, among other claims. Defendant asserted numerous affirmative defenses, including unclean hands.
To prevail on its “unclean hands” defense, Defendant had to show that Plaintiff “engaged in inequitable conduct or bad faith” and that the misconduct had “a material relation to the equitable relief” that Plaintiff sought in this case. Defendant claimed that Plaintiff bought keyword advertising containing Defendant’s company name alone and in combination with its headquarters location, including “livelyskin,” “lively skin el granada ca,” “lively skin granada hills ca,” and “livelyskin san fernando.” Plaintiff claimed that it often bought keywords reflecting misspellings of its name to “maximize its adword search traffic.” The court, however, noted that Plaintiff did “not explain how the purchase of adwords that added geographical terms close in proximity to [Defendant’s] place of business in California was an aid in the correction of potential customers’ spelling or typographical errors.” Plaintiff also argued that even if its purchase was inequitable, it stopped purchasing the keyword “livelyskin,” but Defendant claimed that the advertisements were recently displayed. Despite the court’s questioning of Plaintiff’s explanation for its keyword activities, it nonetheless denied both parties’ motions for summary judgment, holding that there were “genuine factual issues” in the case “that must be more fully developed at trial.”
This decision is interesting because defendants frequently raise unclean hands as a defense in Internet-based infringement and cybersquatting litigation, but such defense is rarely, if ever, successful.