Imprimisrx, Llc V. Osrx, Inc. Et Al

Case Background

On July 20, 2021, Plaintiff  Lori LaRock filed a Trademark Infringement lawsuit in the United States District Court, Southern District of California (Case number: 3:21cv1305). This case was assigned to Judge Cynthia Bashant and referred to Magistrate Judge David D. Leshner.

Cause

In this case, ImprimisRx, LLC, a leading compounding pharmacy, alleged that OSRX, Inc. and Ocular Science, Inc. engaged in unfair competition, false advertising, and intellectual property violations. ImprimisRx specializes in high-quality compounded medications used in ophthalmology and optometry, holding trademarks and copyrights that reflected its innovations and trusted formulations. OSRX allegedly duplicated these formulations and infringed on ImprimisRx’s trademarks, promoting false claims about their safety and efficacy without FDA approval. ImprimisRx argued that OSRX’s deceptive practices undermined its competitive advantage and goodwill in the pharmaceutical market.

Injuries

ImprimisRx reported significant harm to its business, reputation, and trademarks due to OSRX’s actions. OSRX allegedly misled healthcare providers and patients by making unverified claims about their compounded medications, violating labeling and promotional rules. The widespread dissemination of false advertising created confusion in the marketplace, leading to lost sales and damage to ImprimisRx’s standing in the pharmaceutical and healthcare sectors. Additionally, OSRX’s trademark infringement and copyright violations diluted the value of ImprimisRx’s proprietary rights.

Damages

The damages sought by ImprimisRx included lost profits, reputational harm, and the cost of countering the false advertising and intellectual property violations. ImprimisRx requested monetary compensation of at least $1 million, injunctive relief to prevent further misleading advertising, and the destruction of all infringing materials. The claims also included punitive damages to address the deliberate and willful nature of OSRX’s conduct

Key Arguments and Proceedings

Legal representation

  • Plaintiff(s): ImprimisRx, LLC
    • Counsel for Plaintiff: Keith J. Wesley | Lori Sambol Brody | Matthew Lawrence Venezia | George Laiolo
  • Defendant(s): Ocular Science, Inc. | OSRX, Inc.
    • Counsel for Defendants: Carolynn Kyungwon Beck | Dale Richard Bish | Allie M. Fellows | Charles A. Talpas | Mikaela Burkhardt | Thomas James Martin | Zachary Truman Elsea | Dylan J. Liddiard

Key Arguments or Remarks by Counsel

“We are certainly pleased by the size of the jury award in this case, but it really speaks to the value of our client’s trademarks and how absolutely vital it is to defend them,” said Ellis George managing partner Keith Wesley, who served as co-lead counsel for the plaintiff.

“We appreciate the hard work the jury put in. It was a smart, attentive group, and they clearly understood the damage that is done when a competitor refuses to respect trademark rights and insists on using another company’s brand names,” said Ellis George partner Christopher Arledge, co-lead counsel for the plaintiff.

 Claims

ImprimisRx’s complaint included multiple claims against OSRX, emphasizing the following:

False Advertising: OSRX misrepresented the safety, effectiveness, and unapproved uses of its compounded drugs, misleading physicians and patients. By falsely claiming that their products were FDA-approved, OSRX created confusion regarding the legitimacy and regulatory standing of their medications.

Trademark Infringement: OSRX illegally used ImprimisRx’s trademarks in marketing materials, infringing on intellectual property rights. This infringement harmed ImprimisRx’s brand identity and led to consumer confusion about the source of the products.

Copyright Infringement: OSRX copied ImprimisRx’s proprietary order forms, which were registered with the U.S. Copyright Office. This violation resulted in both direct financial damages and harm to the company’s ability to maintain control over its intellectual assets.

Unfair Competition: OSRX’s deceptive practices unfairly competed with ImprimisRx in the ophthalmic drug market. These actions deprived ImprimisRx of sales and tarnished the value of its trademarks and formulations.

Defense

The defendants, OSRX, Inc. and Ocular Science, Inc., argued that ImprimisRx’s claims were largely meritless and unsupported by evidence. They denied infringing on any trademarks, asserting that the alleged marks were generic abbreviations of active ingredients without secondary meaning. The defendants stated that they explicitly disclosed on their website and marketing materials that their compounded medications were not FDA-approved, directly addressing any misconceptions.

They rejected allegations of false advertising, emphasizing that their marketing accurately described their products’ compliance with legal and safety standards. Furthermore, the defendants accused ImprimisRx of engaging in false advertising, misleading customers about its compliance with sterile manufacturing and safety standards, and operating in unsanitary conditions according to FDA investigations. OSRX and Ocular Science also sought a declaratory judgment to invalidate ImprimisRx’s trademarks, arguing that these lacked distinctiveness and did not merit protection. Finally, the defendants requested relief, including cancellation of the trademarks, compensation for damages, and declarations of non-infringement and no false advertising.

Jury Verdict

On November 20, 2024, The jury determined that OSRX, Inc. infringed on multiple registered trademarks owned by ImprimisRx. OSRX was found to have willfully infringed on the following ImprimisRx trademarks: PRED-GATI-BROM, TIM-BRIM-DOR-LAT, MOXI-BROM, PRED-BROM, PRED-MOXI-BROM, TIM-BRIM-DOR, and TIM-LAT. The total amount of damages attributed to this trademark infringement was $10,560,000.

Additionally, the jury found that OSRX infringed on the PRED-MOXI and DEX-MOXI trademarks owned by ImprimisRx. The total amount of damages attributed to this additional trademark infringement was $4,000,000. In total, the jury awarded ImprimisRx $14,560,000 in damages due to OSRX’s willful and unlawful infringement of ImprimisRx’s registered trademarks.

Court Documents:

Documents Available for Purchase on Request

Press Release:

https://www.morningstar.com/news/business-wire/20241125910308/ellis-george-llp-awarded-349-million-plaintiffs-verdict-in-closely-watched-federal-trademark-dispute