Condé Nast’s Vogue Magazine Granted Summary Judgment Victory in Six Year Feud

Website vendor Active8, hired by Vogue to prepare a website for its September 2004 Fall Fashion Issue, sued Condé Nast in Atlanta seeking millions of dollars in damages after Vogue changed to a different website vendor for subsequent magazine issues, even though there has never been a dispute that Vogue was free to do so. Over the life of the six year case, Active8 asserted a number of charges against Condé Nast, including willful patent infringement, RICO violations, conversion, passing off, reverse passing off, unjust enrichment, unfair trade practices, conspiracy, trade secret misappropriation, unfair competition and trademark infringement.

The first victory was when the case was transferred, over Active8’s objections, to Condé Nast’s NYC home in the Southern District of New York, where the case was assigned to District Judge Karas. The next phase involved removal of the patent infringement claims from the case by successfully arguing for a favorable patent claim term constructions that forced Active8 to jettison its patent claims as untenable. (Judge Karas construed all twenty disputed patent claim terms in favor of Condé Nast.) The action was then reassigned to Southern District Judge Hellerstein after Judge Karas was transferred to the White Plains Courthouse. During this time, Vogue’s replacement website vendor, RichFX, was unable to bear the strain of the litigation and filed for bankruptcy.

The next successful phase included the dismissal of Active8’s numerous remaining claims on summary judgment by establishing they had no affirmative evidence to prove their case. After lengthy briefing and oral argument in October 2010, Judge Hellerstein dismissed all of Active8’s remaining claims against Condé Nast. However, he also gave Active8 an opportunity to replead a new claim for trademark infringement by affiliation (which alleged improper association due to several supposed references to Active8 in new 2005 marketing materials for Vogue Magazine advertisements), and to take discovery in support thereof.

Condé Nast then filed a new motion for summary judgment on Active8’s repled claim. That motion was argued on June 22nd and Judge Hellerstein granted Condé Nast’s motion for summary judgment.

The Kramer Levin Team on the June 22nd motion included IP partner Randy Lipsitz who argued the motions, special counsel Richard L. Moss, and associates Aaron Frankel and Heather J. Chase.