Estee Lauder, Inc. v. Fragrance Counter, Inc.

189 F.R.D. 269, 52 U.S.P.Q.2d 1786 (1999)

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Estee Lauder, Inc. v. Fragrance Counter, Inc.

United States District Court for the Southern District of New York
189 F.R.D. 269, 52 U.S.P.Q.2d 1786 (1999)

Facts

Estee Lauder, Inc.; Origins Natural Resources, Inc.; Clinique Laboratories, Inc.; and Prescriptives, Inc. (collectively, the beauty companies) (plaintiffs) brought an action against The Fragrance Counter (TFC) and Excite Inc. (defendants) in federal district court. The beauty companies’ claims centered around allegedly unlawful online marketing practices by TFC and Excite. These claims included unfair competition, trademark infringement, false advertising, and trademark dilution. In response, TFC and Excite accused the beauty companies of bringing an objectively baseless suit designed to drive TFC out of business. Excite provided evidence that the beauty companies had attempted to block TFC’s lawful participation in the sales of the beauty companies’ products. TFC and Excite raised the affirmative defense of trademark misuse and unclean hands on the part of the beauty companies. The beauty companies moved to strike the affirmative defense and secure a protective order to preclude discovery in relation to the defense pursuant to Federal Rule of Civil Procedure 26(c).

Rule of Law

Issue

Holding and Reasoning (Sweet, J.)

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