Plaintiff sold BLACK ICE car fresheners. Defendant sold a ‘dual scent’ car freshener – the package had a dial that allowed the user to choose between two scents – MIDNIGHT BLACK or ICE STORM. The two names appeared as MIDGNIGHT BLACK ICE STORM (See above). Defendant was very aware of plaintiff and its BLACK ICE products. One employee suggests getting as close to BLACK ICE as possible lawfully. The Second Circuit states “Rarely does an infringement case reveal such explicit evidence of bad faith.” I don’t know if the Court is excluding counterfeiting from its definition of infringement, but even if it is, that statement seems a bit much. Summary judgment in favor of defendant reversed and remanded.

bonus query: Why didn’t defendant reverse the product name to ICE STORM MIDNIGHT BLACK?

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Car-Fresher sells Little Trees car fresheners. Sun Cedar is a Kansas not-for-profit founded to provide jobs for the at-risk population. It sells, among other things, cedar tree-shaped cedar wood ornaments.

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Scented-tree infringement case brought by ‘Car Freshners’ via Newsday.

Readers of the blog know that the CAR FRESHNER people, owners of the mark consisting of the product configuration of a tree-shaped air freshener,  know where the court is located, having sued various third parties selling tree-shaped fresheners.  It has now sued Getty Images, owners of one of the larger stock photo agencies.  Getty maintained at least 11 images in its inventory that depicted a tree-shaped air freshener.  Car Freshner sued on multiple counts, including trademark infringement.  Getty moved to dismiss the trademark count, arguing that it was not using the mark as a trademark, and if it was, such use was either nominative or descriptive fair use.

The interesting part of the discussion begins in the NDNY decision below on page 11.  The Court held that plaintiff plausibly alleged that photos that depict the freshener (of which the one above is attached to the complaint as illustrative exhibit) are arguably trademark use of the freshener, and may possibly not be either nominative or descriptive fair use.   I note that the 11 photos attached to the complaint vary in their treatment of the fresheners, as some ‘incidentally’ depict the freshener within a photo as above, while others could be deemed to be ‘beauty shots’ depicting the freshener alone.

Given that Getty has 80 million images, it may have some agita that its fair use defense did not defeat a 12(b)(6) motion, given that perhaps some others of its 80 million photos that may depict recognizable trademarks as well.  Some may not be sad about that.

 Decision Tree Freshner Getty(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();