Internet Trademark Case Summaries

Romeo & Juliette Laser Hair Removal, Inc. v. Assara I LLC

2009 WL 750195 (S.D.N.Y. Mar. 20, 2009)

Plaintiff Romeo & Juliette Laser Hair Removal (“Romeo & Juliette”) provided laser hair-removal services in New York City under the common law mark ROMEO & JULIETTE HAIR REMOVAL since 2000. Defendant Assara operated a competing laser hair-removal business in New York City. Both entities operated websites and advertised their businesses using search-engine sponsored ads. In 2007, Romeo & Juliette discovered that a Google search for the phrase “romeo & juliette laser” returned a sponsored ad that contained the phrase “Romeo and Juliette Laser” as its headline, but which linked to defendant’s www.assaralaser.com website. Assara’s website displayed the text from the sponsored ad―“romeo juliette laser Unlimited Laser Hair Removal-$599/Month Free Consultations.” Romeo & Juliette contacted the web- hosting company, ReachLocal, objecting to the use of the ROMEO & JULIETTE mark, and ReachLocal removed the objectionable text from the website. Assara claimed that its sponsored ads and website never contained any references to Romeo & Juliette and that it had never authorized its ads to refer to Romeo & Juliette. Assara also noted that its sponsored ads were managed by a third party, ReachLocal, which also hosted a “mirrored” Assara website to which the sponsored ads linked. Assara indicated that the reference to Romeo & Juliette appeared only on the “mirrored” website managed by ReachLocal. Romeo & Juliette sued for trademark infringement, among other claims, and moved for summary judgment. Assara cross-moved for summary judgment, claiming that the use of the Romeo & Juliette mark in the context of sponsored ads was noninfringing. The court found that Romeo & Juliette satisfied most of the elements necessary to prove trademark infringement. The court ruled, however, that Romeo & Juliette had not conclusively established Assara as the party that had used the mark, which created a genuine issue of fact regarding Assara’s role in the trademark infringement. For example, it was possible that ReachLocal was responsible for the disputed ads without any involvement by Assara. The court thus denied Romeo & Juliette’s motion for summary judgment. The court also denied Assara’s cross-motion for summary judgment, rejecting Assara’s argument that the use of Romeo & Juliette’s mark was an “internal utilization of a trademark in a way that does not communicate it to the public” under the Second Circuit’s 1-800 Contacts decision. The court found that the use of Romeo & Juliette’s mark was not internal because the mark appeared in Assara’s advertisement and on Assara’s website.