Osram Sylvania Inc. v. Ledvance LLC

Background

Osram Sylvania Inc. owns the “Sylvania” trademark and licensed that mark and others to Ledvance LLC for specified products. Osram Sylvania alleged that Ledvance breached the licensing agreement and brought claims for breach of contract, federal trademark infringement, and unfair competition. Ledvance asserted counterclaims and third-party claims. Osram Sylvania moved for partial summary judgment on liability for its contract and trademark-infringement claims.

Contract claim

The contract gave Osram Sylvania the exclusive right to operate “SYLVANIA brand shops” on e-commerce platforms, unless the agreement provided otherwise. It allowed Ledvance to request permission to display licensed products in Osram Sylvania’s shops. If Osram Sylvania decided not to operate a brand shop on a platform, Ledvance could operate its own Sylvania-branded shop with Osram Sylvania’s prior consent, which could not be unreasonably withheld or delayed.

Ledvance operated an Amazon Storefront titled “Sylvania General Lighting” from October 2019 through November 2020. Ledvance admitted that this page was a brand shop under the agreement, but argued that it had permission to operate it. The court identified factual disputes about whether Osram Sylvania was operating its own shop through its vendor, Pattern; whether permission came through Stefan Schwarz or the European Brand Council; whether those individuals or that council had authority to act for Osram Sylvania; and whether Osram Sylvania waived or was prevented from enforcing the relevant conditions.

The court also found factual disputes about whether Osram Sylvania effectively revoked any permission by sending a cure notice in August 2020, whether Ledvance had a reasonable time to comply, and whether any delay constituted a material breach. The court further concluded that the agreement did not unambiguously establish that Ledvance’s renamed “The Ledvance Store”—which listed both Sylvania and non-Sylvania products—was a Sylvania brand shop. Finally, the court rejected Ledvance’s argument that Osram Sylvania had not shown damages as a matter of law, explaining that causation could be decided by a factfinder and was at least arguable on the record.

Trademark claims

Osram Sylvania also sought summary judgment on trademark infringement based on Ledvance’s alleged use of the “Quick Marks” after the license expired. The evidence consisted mainly of screenshots from sylvania.com, a website licensed to Ledvance. Ledvance argued that its use was permitted as “nominative fair use,” meaning use of a trademark to identify goods being resold.

The court found a factual issue because Ledvance presented evidence that it had fully purchased the relevant products from Osram Sylvania and might have been acting only as a reseller. The court separately noted that “Quick 60+” identified a warranty program that Ledvance had ended before the license expired. Whether displaying that mark inaccurately described the products, and whether any inaccuracy was material, also presented factual issues. The court therefore held that the trademark issues could not be resolved on Osram Sylvania’s motion.

Disposition

The court denied Osram Sylvania’s motion for partial summary judgment and directed the Clerk of Court to close docket entry 155. Judge Arun Susramanian did not enter judgment determining liability on the contract or trademark claims.