Kramer Levin Defeats Suit for Permanent Injunction Against Client Neutrogena

On June 8th, 2011, Kramer Levin won the latest battle in a long-running "sunscreen war" between our client, Neutrogena Corp., and its competitor Schering-Plough, the maker of Coppertone brand sunscreens, when the United States District Court for the District of Delaware denied Schering-Plough's motion to permanently enjoin Neutrogena's marketing of certain sunscreens under the "Helioplex" trademark, which Neutrogena uses to market sunscreens that provide a high level of long-lasting sun protection. The Court initially held that Neutrogena had defined Helioplex to require certain ingredients and that therefore, Neutrogena's subsequent marketing of products under the Helioplex trademark that did not include those ingredients was false. Nevertheless, Kramer Levin defeated Schering-Plough's motion for a permanent injunction when the Court agreed with Kramer Levin's arguments that (i) even after an advertisement is found false, a Lanham Act plaintiff is not entitled to an automatic injunction but still must satisfy the test set forth by the Supreme Court in eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006); (ii) evolutionary formula changes, such as the changes in Neutrogena's Helioplex products, particularly when coupled with adequate notice to the public of those changes, do not vitiate trademark rights; and (iii) Schering-Plough had not demonstrated any harm due to the alleged false advertising of products under the Helioplex trademark, whatever the ingredients in those products. For those reasons, the Court denied Schering-Plough's motion for a permanent injunction - in effect, a total victory for our client, which remains free to innovate and sell products under its Helioplex trademark. The Kramer Levin team consisted of Litigation partners Harold P. Weinberger and Jonathan M. Wagner, and associates Jeremy A. Cohen and Dannie Cho.