IP Law Daily, TRADEMARK—N.D. Ill.: Suit for infringement of the ALBERT EINSTEIN mark involving a mousepad rejected on fair use grounds, (Aug 2, 2022)

By Robert B. Barnett Jr., J.D.

The online seller sufficiently established that it used “Albert Einstein” to describe its product accurately rather than to infringe on a trademark.

Infringement claims by the university that owns the ALBERT EINSTEIN trademark were dismissed with prejudice because the online seller’s use of Einstein’s name in the description of a mousepad containing Einstein’s photograph constituted fair use, a Chicago federal district court has ruled. The use of ALBERT EINSTEIN by the online seller, dealzEpic, “provided an accurate and good-faith description of its mousepad,” the court said, and “there’s nothing to suggest that its use of the mark to accurately describe the content of its product was in bad faith.” DealzEpic was the only one of the 140 online sellers that The Hebrew University of Jerusalem sued for trademark infringement to respond to the lawsuit (The Hebrew University of Jerusalem v. dealzEpic, August 1, 2022, Shah, M.).

Background. In 1918, Albert Einstein co-founded The Hebrew University of Jerusalem in Israel. After Einstein’s 1955 death, the University became the residuary beneficiary of his estate, which included associated copyrights and trademarks. Over the years, the University has aggressively defended the Einstein intellectual property.

Among the Einstein-related trademarks that the University owns is the mark ALBERT EINSTEIN, which is registered with the U.S. Patent and Trademark Office. The University sued 140 online sellers who it believed were violating the Einstein intellectual property in Illinois federal district court, asserting claims for (1) trademark infringement, counterfeiting, and false designation of origin under the Lanham Act, (2) copyright infringement under the Copyright Act, and (3) violations of the Illinois Uniform Deceptive Trade Practices Act.

The only one of the 140 defendants to respond to the suit was dealzEpic, which took three actions: it moved to dismiss, it filed a counterclaim, and it moved to recover attorney fees on the ground that the suit was frivolous.

Copyright infringement. The court quickly dismissed the copyright infringement claim with prejudice on the ground that the complaint did not seek to enforce any copyrights against dealzEpic. This was a trademark case, not a copyright case.

Trademark infringement. DealzEpic sought dismissal of the trademark infringement claim on the ground of fair use (15 U.S.C. §1115(b)). To prevail, dealzEpic was required to establish that (1) it did not use ALBERT EINSTEIN as a trademark, (2) its use of the name was descriptive of its goods, and (3) it used the mark fairly and in good faith (SportFuel, Inc., v. PepsiCo, Inc., 932 F.3d 589, 595 (7th Cir. 2019)). DealzEpic’s argument that the complaint should be dismissed because “Albert Einstein” was a generic term was rejected both on the merits and because dealzEpic waived the argument by not raising it until its reply brief.

Fair use. The court agreed with dealzEpic, however, that its use of the name “Albert Einstein” constituted fair use.

First, dealzEpic did not use ALBERT EINSTEIN as a trademark. “Words or phrases function as trademarks when they are used by a source of a product to identify itself to the public as the source of its product and to create in the public consciousness an awareness of the uniqueness of the source and of its products” (SportFuel, 932 F.3d at 596). To determine whether words were used as a trademark, the courts look to whether the mark was used (1) in tandem with its own house mark, (2) as an attention-getting symbol or catchy slogan, and (3) more prominently than its own mark.

All of those factors, the court concluded “weighs in dealzEpic’s favor.” DealzEpic identified itself at the beginning as the brand and the mousepad manufacturer. It did not display “Albert Einstein” more prominently than its own mark. The use of a smaller font indicated that these were not official Einstein products. Thus, it was not “attention-getting” or “catchy.” Thus, dealzPic did not use the name Albert Einstein as a trademark.

Second, the court said, dealzEpic’s use of “Albert Einstein” provided “an accurate and good-faith description of its mousepad.” The use of the name “Albert Einstein” within dealzEpic’s Amazon listing accurately described it as a mousepad. It stated that the front of the mousepad contained a famous photograph of Albert Einstein. As a result, dealzPic satisfied the second requirement for establishing fair use.

Third, and finally, no evidence existed that the use of the mark to accurately describe the content of the product was made in bad faith. DealzPic, therefore, had satisfied all three requirements for proving fair use.

The court, therefore, dismissed the copyright infringement claim. Furthermore, the court said, the remaining federal and state claims were also to be dismissed because the University relied on the same facts and the same test for trademark infringement that it would need to prove those claims. The court then ruled that all of the claims were to be dismissed with prejudice because dealzPic had sufficiently proved its fair use affirmative defense.

Attorney fees. DealzPic also sought the attorney fees allowed under the Lanham Act for frivolous claims. The court first ruled that the request was premature because dealzPic’s counterclaim was still pending, which meant that no final judgment on the trademark claim could be entered. In dicta, the court added in its opinion that the claims did not seem to the court to have been frivolous. To defeat the trademark infringement claim, dealzPic had to prove fair use. Furthermore, this effort was not vexatious, with the matter resolved early in the litigation. In any event, dealzPic could raise the issue again when judgment was final.

The court, therefore, granted dealzPic’s motion to dismiss all claims with prejudice. DealzPic was asked to address the question whether it would continue to pursue its counterclaim.

The Case is No. 1:21-cv-05492.

Attorneys: Ann Marie Sullivan (AM Sullivan Law, LLC) for The Hebrew University of Jerusalem. Wesley E. Johnson (Goodman Tovrov Hardy & Johnson LLC) for DealzEpic.

Companies: The Hebrew University of Jerusalem; DealzEpic

Cases: Trademark IllinoisNews