Glow Industries, Inc. v. Lopez, CV 02-06167 MMM (PJWx).

• Citation: 252 F.Supp.2d 962
• Decision Date: 18 December 2002
• Docket Number: No. CV 02-06167 MMM (PJWx).,CV 02-06167 MMM (PJWx).
• Court: U.S. District Court — Central District of California
• Parties: GLOW INDUSTRIES, INC., a California corporation, Plaintiff, v. Jennifer LOPEZ, Coty, Inc., a corporation and Does 1-20, inclusive, Defendants.

252 F.Supp.2d 962

GLOW INDUSTRIES, INC., a California corporation, Plaintiff, v. Jennifer LOPEZ, Coty, Inc., a corporation and Does 1-20, inclusive, Defendants.

No. CV 02-06167 MMM (PJWx).

United States District Court, CD. California, Western Division.

December 18, 2002.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Kenneth I Sidle, Corey J Spivey, Gipson Hoffman & Pancione, Los Angeles, CA, Arthur Aaronson, Aaronson & Aaronson, Encino, CA, Katherine Hendricks, 0 Yale Lewis, Jr, Hendricks & Lewis, Seattle, WA, for Glow Industries Inc, a California corporation, plaintiff.

Joseph M Gabriel, Glen Allen Rothstein, Liner Yankelevitz Sunshine & Regenstreif, Los Angeles, CA, Lisa Ann Pearson, James D Weinberger, Fross Zelnick Lehrman & Zissu, New York, NY, for Jennifer Lopez, Coty Inc, a corporation, Does 1-20, defendants.

ORDER DENYING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION

MORROW, District Judge.

On August 7, 2002, plaintiff Glow Industries, Inc. ("Glow, Inc.") filed this action against defendants Jennifer Lopez and Coty, Inc., alleging trademark infringement, trademark dilution, and federal, California statutory and common law unfair competition. Glow, Inc. has sold bath and body products under the mark GLOW since 1999, and has filed an application for federal registration of the mark that it contends is in the final stages of approval. Glow, Inc. asserts that defendants have infringed the GLOW mark by initiating national sales, promotion, and advertising of an eau de toilette, lotion, and shower gel under the name "Glow by J.Lo." Glow, Inc. seeks a preliminary injunction restraining defendants from making further use of the GLOW mark pending trial on the merits.

I. FACTUAL BACKGROUND¹

Plaintiff Glow Industries, Inc., a California corporation, first used the GLOW mark in commerce on February 28, 1999, in connection with the sale of "fragrant bath and body products."² It applied for a federal trademark on GLOW on April 29, 1999.³ Terry Williamson, the founder and President of Glow, Inc., states that she "named the product line GLOW because of the positive feeling the word evokes."⁴ Glow, Inc.'s trademark application specifies that the mark is used in connection with the sale of skin soaps, bubble bath, skin lotions, skin moisturizers, and candles.⁵ Williamson states that her company's initial offerings, as reflected in the trademark application, were "lotions, oils, shower gels, candles and bath products." She asserts, however, that a GLOW perfume was developed, tested, and sold at Glow, Inc.'s retail store in fiscal year 2000. The perfume was launched on a national scale in 2001.⁶

A. Glow, Inc's Use Of The GLOW Mark

The GLOW line was sold at Glow, Inc.'s retail store in Los Angeles commencing in 1999. It was offered through the national beauty website begining in the Spring of 2000.⁷ Following a launch at the Paramount Hotel in New York City attended by approximately forty members of the national press in April 2000, the line was offered at Bergdorf Goodman in New York City commencing in the Fall of 2000.⁸ GLOW products are currently sold at various retail establishments across the country, including: Nordstrom stores in many states; Ritz Carlton Hotels; Glow, Inc.'s own store in Los Angeles; and retail stores in California, Washington, Utah, Montana, New York, New Jersey, Pennsylvania, Illinois, Michigan, Ohio and Florida. They are also offered on Glow, Inc.'s internet site .⁹ The products are physically present in stores in thirteen states, and have been sold in all fifty states through boutiques, department stores, the internet, and mail order.¹⁰ Glow, Inc. has also participated in co-branding ventures with prominent national companies such as Reebok and the Ritz-Carleton.¹¹

Williamson started Glow, Inc. using her own resources, and asserts that the company has been engaged in grass-roots marketing since its inception.¹² GLOW products have been featured in magazines such as "InStyle" (featuring GLOW oversized allnatural bath cakes in February 2002; GLOW bath and body products, including body oil, shower gel, and lotion in May 2001; and the GLOW "Male Pail" gift basket with bath and body products for men); "Los Angeles Magazine" (featuring GLOW aromatic bath products, including lotion and lip balm in July 2000); "Harper's Bazaar" (featuring GLOW aromatherapy oils in September 2002); "The Hollywood Reporter" (featuring GLOW bath and body gift pails and boxes in November 2000); "Mademoiselle" (featuring GLOW "naughty night pillow mist" in November 2000); "Marie Claire" (featuring GLOW soaps in September 2000); "Seventeen" (featuring GLOW bath truffles in September 2000); "Redbook" (featuring GLOW chamomile and lavender salt scrub and GLOW tub truffles in September 2000); "Gourmet" (featuring GLOW mini-bundt cakes and bath truffles in July 2000); "Lucky" (featuring the GLOW gardenia glowlight votive candle and GLOW bath truffles in May 2002); "Entertainment Weekly" (featuring GLOW bath and body products in September 2002, and mentioning this litigation); "W" (featuring GLOW mini-bundt cakes and bath truffles in March 2001); and "Detour" (featuring GLOW bath and beauty products as newly available at Bergdorf Goodman in New York).¹³

A November 2001 article in the "New York Times Magazine" mentions Glow, Inc.'s store as "the place for all things lotiony, bathalicious and good smelling, where nothing is made with chemicals," while a February 2002 edition features GLOW miniature bathtub bundt cakes.¹⁴ None of this press coverage was purchased advertising.¹⁵

Williamson states that a producer from the E! television network approached her in September 2001, and sought permission to use the GLOW mark for a show regarding fashion and beauty to be hosted by defendant Lopez's sister, Lynda Lopez. Williamson gave permission, and GLOW products were featured on one episode of the show.¹⁶ Williamson was also contacted by staff for the daytime drama, "The Young and the Restless," following cast members' positive response to GLOW gift baskets they had received. The show asked that Williamson permit it to call a fictionalized product line including makeup and perfume "Glow by Jabot." Williamson "took this as an honor and compliment of GLOW products," and gave her consent.¹⁷ The storyline began to air in August 2001.¹⁸

Entertainment companies frequently ask Glow, Inc. to provide gift baskets to cast and crew members. Williamson asserts that a GLOW gift basket was delivered to defendant Jennifer Lopez in March 2001.¹⁹ The invoice for the delivery indicates that the basket included sandalwood lotion, a sandalwood candle, a "CVP GLOwstick," and a vanilla bath truffle.²⁰

B. The GLOW BY J.Lo Product Line And Its Impact

Defendant Jennifer Lopez, also known as J.Lo, is an internationally known singer, dancer, actress and fashion designer.²¹ Defendant Coty, Inc. is one of the world's leading manufacturers and marketers of women's and men's fragrances, cosmetics and skin care products.²² On February 25, 2002, Lopez filed an application to register the trademark GLOW BY J.LO for "fragrances, cosmetics, and skin care products."²³ On March 15, 2002, Coty, through its Lancaster Group division, entered into an exclusive worldwide licensing agreement with Lopez's company, Sweetface Fashion Co., LLC. The agreement contemplates the development and marketing of fragrances and cosmetics under the J.Lo brand, using the Jennifer Lopez name.²⁴ Although Lancaster Group issued a press release that day, announcing the agreement, the release did not mention the GLOW BY J.Lo mark.²⁵

Catherine Walsh, Vice President of Marketing, Cosmetics and American Licenses for the Lancaster Group, states that Coty and Lopez chose the mark GLOW BY J.Lo "because Ms. Lopez is known for her lovely glowing skin and her inner `glow,'" and because "we also like the rhyming element of the phrase."²⁶ Coty announced the launch of the GLOW BY J.Lo line in June 2002.²⁷ The anchor product is an eau de toilette (diluted perfume) packaged in a stylized bottle. The bottle is intended to represent the shape of "a slightly asymmetrical woman's body." It is draped with a necklace bearing the J.Lo design logo. The GLOW BY J.Lo line also includes a skin lotion and a shower gel, both of which are packaged in conventional squeeze tubes featuring the GLOW BY J.Lo mark. All three products are sold in white boxes featuring the GLOW BY J.LO mark superimposed over replications of the J.Lo design logo.²⁸ Each product has the same scent, i.e., a blend of orange flower, grapefruit, rose, sandalwood, soft amber, transparent jasmine, vanilla, musk and orris.²⁹

GLOW BY J.LO was launched, with extensive media coverage, on June 27, 2002, at a private apartment in the Trump Tower in New York City. The event featured a grand finale in which fireworks over the Hudson River illuminated the Glow by J.Lo mark.³⁰ Defendants have since initiated an intensive U.S. consumer marketing campaign; their expenditures totaled $2.1 million by July 3, 2002, and are $5.2 million to date.³¹ The first Glow by J.Lo products were shipped to stores on June 28, 2002.³² Plaintiffs attorney, Arthur Aaronson, states that he has personally seen numerous advertisements for Glow by J.Lo products "in magazine[s], [on] billboards, television[,] ... at shopping malls and on the internet." ³³ According to Glow, Inc.'s Williamson, a billboard advertising Glow by J.Lo products is located approximately one mile from the Glow retail store.³⁴

Williamson first became aware of Lopez's intent to release a perfume, body lotion, and shower gel under the name GLOW BY J.Lo in June 2002.³⁵ She then began receiving inquiries from her retail and wholesale customers, who exhibited confusion regarding the relationship between defendants and Glow, Inc. On June 21, 2002, Williamson received a fax from the "NFX Apothecary" in Florida, stating, in pertinent part:

"Just a quick note with regard to something we saw in U.S....