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Mary Kay, Inc. v. Weber 2009 WL 426470 (N.D. Tex. Feb. 20, 2009).

Article Excerpt
ABSTRACT

The Northern District of Texas denied defendants' motion for summary judgment on the affirmative defense that their resale of plaintiff's genuine goods was protected by the first-sale doctrine because the expired nature of the products created a genuine issue of material fact as to whether they were "materially different." Regarding defendants' keyword advertising, the court held that defendants were not barred from asserting the fair-use defense for the purchase of keywords, but the way plaintiff's mark was used in the keyword-triggered ads (and on their website) created a genuine issue as to the likelihood of confusion that precluded summary judgment. Finally, the court denied plaintiff's motion for summary judgment on its laches defense because any delays by plaintiff in commencing this action were reasonable.

CASE SUMMARY FACTS Plaintiff Mary Kay, Inc. ("Mary Kay") sells cosmetics, toiletries, and skin-care products under the mark MARY KAY and is known for its use of the color pink. Mary Kay distributes and sells its products through Independent Beauty Consultants ("IBCs"), who purchase the products at wholesale rates from Mary Kay and resell them to consumers for a profit. Defendant Amy Weber was an IBC for more than four years, during which she accumulated a large inventory of unsold products. Weber, with the help of her husband and others (collectively "Weber"), began selling her inventory on eBay via an online store she named "marykay1stop." Mary Kay demanded that Weber cease using its MARY KAY trademark as part of her store name and remove all copyrighted Mary Kay photographs.

Weber removed the copyrighted materials and changed the name of her eBay store to "Touch of Pink." She also created a website at www.touchofpinkcosmetics.com through which she continued to sell her inventory of Mary...

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