In School of Visual Arts v. Kuprewicz, 3 Misc 3d 278, 285, 771 N.Y.S.2d 804 [Sup Ct, NY County 2003][Richter J.]), one of the few New York state cases to address a claim of false association under the Lanham Act, the plaintiff School of Visual Arts ("SVA") 'complained of certain false job postings by defendant that, "caused negative associations with and thus diluted the distinctive quality of plaintiff SVA's service mark in violation of 15 U.S.C. 1125[c]" (Id. at 285).
The plaintiff also claimed that by posting the false job listings the defendant violated 15 U.S.C. § 1125(a) by using "in commerce" a false designation of origin which caused deception, confusion and mistake as to her connection and affiliation with the school and as to plaintiff's approval of her activities (Id.).
In dismissing the Lanham Act claims, Justice Richter wrote that:
The term "use in commerce" is defined as "the bona fide use of a mark in the ordinary course of trade," 15 U.S.C. § 1127, and "contemplates a trading upon the goodwill of or association with the trademark holder" (Karl Storz Endoscopy-America Inc v. Surgical Technologies, Inc., 285 F3d 848 (9th Cir. 2002). Thus, "courts have rejected efforts to extend the Lanham Act to cases where the defendant is not using or displaying the trademark in the sale, distribution or advertising of its goods and services" (International Assn. of Machinists & Aero. Works v. Winship Green Nursing Center, 103 F 3d 196, 209 [1st Cir 1996]) (concurring opinion). (Id.).
Justice Richter concluded that even accepting all the allegations in SVA's complaint as true the "posting of job listings containing SVA's mark was neither 'in commerce' nor 'in connection with ... goods or services" (Id. at 285, citing 15 U.S.C. 1125[a]).