In a
May 5, 2014 ruling, Judge Katherine B. Forrest denied a motion to dismiss the plaintiffs’ amended complaint asserting a Lanham Act violation. The original complaint included copyright infringement claims which were dismissed after the Supreme Court’s 2013 ruling in
Kirtsaeng “that the first sale doctrine applied to purchase of publications outside of the United States.” In declining to dismiss the Lanham Act claim for false representation or description, Judge Forrest wrote:
The allegations in the Amended Complaint provide specificity as to how defendants are alleged to have mislead purchasers of foreign editions of publications. In short, plaintiffs assert that defendant has used the International Standard Book Number (“ISBN”) for English language editions of publications, as well as images of the covers of English language editions, in a manner that conveys a “net impression” that the buyer will receive an English language edition of the publication. Defendants I fact sell foreign editions. Because foreign editions may have different content and publication quality, plaintiffs are concerned that sales of one masquerading as the other will result in harm to their goodwill and reputation. The Lanham Act prohibits actions which deceive consumers and impair a producer’s goodwill.
The Court rejected the contention that the ISBN is not a trademark, noting first that plaintiffs’ claim is for false description and finding that it “is plausible that a unique mark associated with a good – such as an ISBN number – would represent or describe origin.”
