It is generally understood that trademark law protects against a third party’s use of your mark or a confusingly similar mark to mislead consumers into thinking goods manufactured by someone else were made by your company. But what happens if those goods were in fact made by your company, but you didn’t authorize their sale? The Eastern District of New York recently answered one version of that question in granting Hallmark summary judgment on its trademark infringement and trademark dilution claims against defendant Dickens, where Dickens obtained twenty trailers of Hallmark greeting cards and related paper products that were intended for destruction, and began to sell them for resale to the public.
Your client is sued for failure to pay on a contract and says it shouldn’t have to pay because the prices were fixed by a cartel or that it was strong-armed into paying for a “bundle” of services or distribution channels even though it only wanted a subset of the bundle. Is that a defense? After all, aren’t contracts for unlawful ends unenforceable?
The answer, most often, is “no.” A recent decision by a New York Commercial Division judge provides a useful reminder of the fairly limited allowance of antitrust defenses to contract claims.