Name portrait or signature of a living person w/o consent
Word, name or other designation which is confusingly similar
Generic or functional items
Exception to the statutory bar – Section 1052(f). Surnames who acquired secondary meaning
Advantages of registration
§1115(a) à prima fascia evidence of a valid trade mark and ownership
basis for registration in foreign countries
Registering with Customs
use of symbol ®
Supplemental If don’t qualify for Principal Register, may be registered on Supplemental, if mark is capable of acquiring secondary meaning.
Geographical and market segmentation same mark may be used in for different things in different markets and/or areas
By Industry - Apple Bank, Apple Computers, Apple Records, Apple Insurance. Multi-part balancing tests about expanding into different industries
By Geography Pizzaz Coffee Shop in NY, and Pizzaz in New York
Prior User exceptions to what national registration will cover
Will geography become irrelevant because of the internet?
Traditional Trademark infringement: Senior user of a mark sues that junior user of a mark claiming consumer confusion: source/origin of the products, affiliation/sponsorship between the two companies.
Must prove: valid trademark, likelihood of confusion:
Likelihood of confusion test considers (Polaroid test):
Strength of trademark
Similarity of marks
Similarity of goods
Channels of trade
Sophistication of consumers
Whether the challenged use is within the senior user’s zone of natural expansion important factor
Passing Off Pretending ∆’s goods are really made by Π.
Reverse Passing Off – when D sells P’s goods, representing their source as from D (plagiarism-ish). Test for passing off varies from “bodily appropriation” to mere “consumer confusion” depending on the Circuit
Continued use of traditional interpretation Playboy v. Tel-a-talk Adult-sex.com Offers subscription called “Playboys Private Connection”, hyperlink to playboy.com, Email address playboy@adult-sex. Court found infringement for use of playboy name, and link to playboy might make people think there’s an affiliation.
Internet Related Changes:
also consider whether the defendant uses the internet for commercial purposes
Two most important points are now similarity of marks and simultaneous use. (Planned Parenthood v. Bucci, S.D.N.Y., plannedparenthood.com is actually anti-abortion; Goto.com v. Disney, 9th Cir., Δ used a stoplight sign similar to Π’s)
Initial Interest Confusion much more important in internet context
Permits a finding of a likelihood of confusion even if there is only a bit of confusion if consumer decides to purchase the goods from compeititor (Brookfield v. West Coast, consumers intending to get to Π’s site but got to Δ’s first because of Δ’s use of the domain name and metatags)
But, most cases requirethat the companies be directly competing. If two parties are not competing, there can be no interest confusion (Bihari v. Gross, bad interior designer, Δ’s use of Π’s trademark in his metatags OK because he was not competing with her, she has no website).
Brookfield communications v. West Coast Entertainment Corp (9th Cir. 1999) Brookfield has “Moviebuff” TM for computer software with database; West Coast Video had TMs with moviebuff in them. Court found initial interest confusion when West coast used moviebuff (w/o space) in its metatags
“Initial Interest Confusion” p. 85, diversion of consumer’s initial interest. Divert people looking for Brookfield to West Coast; trades on Brookfield’s goodwill
Billboard analogy Like posting a sign w/ competitor’s TM in front of your store. Say blockbuster posted a sign saying “West Coast Video” exit 7. In reality, there’s a Blockbuster there. Criticisms (See Playboy concurrence):
No misdirection: It doesn’t say get off here and show ∆; shows you how to get to both
No transaction costs of switching: on internet, it’s quicker to get another wesite. you just click “back” it’s not like you just pulled off the highway
Playboy v. Netscape By Keying advertisments, to Playboy TM, netscape is profiting from PEI TM by selling placement of banner ads keyed to searches for “playboy,” etc.
Majority will be OK by putting in disclaimers
Concurrence this doesn’t fit with Brookfield’s initial interest confusion
1-800 Conatacts vs. WhenU.com Users Downloaded software that gives you a pop-up ad. WhenU has directory of words, and sellsl advertisers right to be associated with these words
“Internal utilization of TM in way that does not communicate it to the public is analogous to individual’s private thoughts about a TM”
Holding: WhenU’s pop-up ads don’t display trademark. They aren’t selling specific terms; they do matching of terms to ads themselves.
Illegal to have triggering mechanism that displays an ad partially or wholly covering paid advertising or other content on internet website
NOTE: 1-800 contacts was heavily lobbying the act
Utah court issued preliminary injunction against enforcement based on dormant commerce clause WhenU vs. Utah
GEICO v. Google Google is selling right to show a sponsored link if you enter a company’s trademark
Case not dismissed Google is actually selling the mark to competitors; Sale of search term could falsely imply a relationship
At trial GEICO failed to show any likelihood that a Google user would be confused by sponsored links displayed in response to user’s search on GEICO’s TM term
Trademark Dilution: The lessening of the capacity of a mark to identify and distinguish good or services regardless whether consumer confusion exists. Dilution is all about TM preservations, NOT about the consumer.
State Law Dilution
Blurring à Typically Π has very strong marks, and ∆ uses the same or highly similar mark on different goods or services. Blurs the distinctiveness of a mark by trying to disconnect association between product and source. Based on property law (value of association). Factors include:
Similarity of the marks
Similarity of the products covered by the marks
Sophistication of consumers
Renown of the senior TM
Renown of the junior TM
Tarnishment (Disparagement) à Creates negative image of TM through an association with unsavory, unrelated goods. No need to show confusion. May be a way to prevent people from parodying your stuff! (Debbie does Dallas, Enjoy Cocaine).
Federal TM Dilution Act 1995 – created §43(c) of the Lanham Act
Requirements -- Owner of a famous TM can enjoin another’s commercial use if:
Use causes dilution to the distinctive quality of the mark (actual harm)
“Famous” factors -- §43(c)(1)
Degree of inherent distinctiveness
Duration and extent of use of TM in connection with goods/services
The duration and extent of advertising and publicity
Nature and extent of use of similar TM’s by 3rd parties
Whether the TM was federally registered
NOTE: can bring state dilution claims against non-federally registered TM
Penalties: Injunction subject to equity and commercial reasonableness, Willfulness as a factor
125(c)(4) 4) dilution defensesdefenses (ends up including “sucks” websites)
news reporting and news commentary
Dilution on the internet - Don’t have to show actual confusion, jus blurring and Tarnishment
Topin invented new form of dilution: “dilution by cybersquatting”
ACPA made cybersquatting illegal in itself
Dilution claim is not longer so important; instead it’s Cybersquatting as it applies to domain names
does not require that a trademark be a household name/nationally recognizableHasbro v. Internet Entertainment Group, Candyland mark is famous since 95% of mothers with small children know it, Δ cannot use mark as its porn site URL; Teletech v. Tele-Tech, Π’s mark is famous in a Niche market, Δ cannot use it as its URL
Conflict as to whether dilution covers famous marks that are not inherently distinctive
2nd Circuit in TCPIP v. Harr/7th Circuit
9th Cir has narrower view of famousness
Selling a domain name qualifies as a commercial use under the dilution act (Panavision v. Toeppen)
Avery Dennison v. Sumpton requirement of significant use: ∆ acquired a bunch of .net domains corresponding to surnames, including avery.net and dennison.net. Avery-Dennison objected – already had .com domain names
no confusion, so went for dilution
District court was sympathetic to plaintiffs; thought there was bad faith
Court of appeals holds for Sumption
Moseley v. V Secret Catalogue USSC requires showing of actual dilution
Statute says “causes dilution of distinctive quality”
Backlash Statutes afoot to reverse this case.
2nd Circuit interpreted court to believe that identical mark is per se dilutive, but if it’s not identical, need to show real harm
First Amendment Concerns:
“Use of another entity’s mark is entitled to First Amendment protection when his use of that mark is part of a communicative message, not when
Genericty Association between goods and category. Look to see if the primary significance of the TM to the public is the common name of the product or service. Does everyone need to use the word to compete?
Competitor’s use of the mark
Plaintiff’s use of the mark
Testimony or persons in the trade
Consumer surveys à Look at how many people identify TM vs. how many of those folks can identify the source (or at least know that it’s from one source)
A finding of genericty isn’t necessarily the end of the line. Might still have a passing off claim! May be subject to labeling remedies.
Trademark holders cannot prevent internet search engines from linking advertisements to searches on particular terms that are words in the English language and not simply a trademark, especially when others beside the Π have trademarks involving a set of words (Playboy v. Netscape, Π cannot stop Δ from matching advertisers when users search the terms “playmate” or “playboy” because those terms do not refer exclusively to Π’s product).
Abandonment §1127 – Mark is assumed abandoned if not use for 3 years.
Discontinued Use – with no intent to resume. 3 year hiatus = prima facie abandonment. TM holder can rebut presumption by offering evidence of intent to resume.
Loss of Distinctiveness – protects public because it assures that marks send consistent messages
Naked Licensing (without goodwill attached) à License TM without adequate supervision –no assurances that product/services will retain original characteristics, and risk consumer confusion. To protect against this, assignor must make routine inspections or have some other quality control system in place. Dawn Donut.
Policy à consumer will benefit by lower pricing.
First Sale Doctrine à Authorized initial sale exhausts right to maintain control over resale, and thus exhausts protections of the Lanham Act. Origin has not changed, and customers should not be confused.
Fair use / Nominative Use – use of a mark that is used fairly and in good faith only to describe the goods or services of the owner of the mark. Often found in Parody, Comparative Advertisement, etc.
Nomative Use identifies self by having to talk to TM
Fair Use is comparing self to TM product.
Bottom Line for protection of website: disclaimer, comparisons, good faith use, non-commercial
The 3 Factor Test - § 1115(b)(4) . ∆ must prove
Used in non-TM capacity
Descriptive of goods or services
Fairly and in good faith only
The NKOTB Nominative Use Test:
Product service not readily identifiable w/o naming TM
use only as much as reasonably necessary to ID good/service
can’t do anything that would suggest affiliation/sponsorship endorsement
FACTS of that case: Newspaper contest for favorite boy band. Court said allowed to mention NKOTB, even though they’re using it to sell papers
First Amendment Issues NKOTB has 1st Amend issues; commercial vs. non-commercial use
Fair Use Under Dilution Claims: Nominative use does not per se dilute trademarks and may constitutes a fair use
West Coast Entertainment:Moviebuff without a space is NOT fair use; Movie buff would be OK. Metatags were not fair use, but banner was. ∆ attracted people to its website for economic benefit.
Bihari v. Gross: ∆ puts up gripe site to criticize ∆’s interior business. Fair use because Δ could not have described his website without using Π’s name.
Playboy v. Welles (Terri Welles, PMOY) – Can use TM simply to ID as long as no implication of sponsorship. Welles’ use of PEI’s TMs were all nominative uses (Except for use of PEI’s mark in the wallpaper of her site). Should would be unable to ID herself as a past “Playmate of the Year” if she couldn’t use the phrase. Simply descriptive of past sponsorship, not current. And she had a disclaimer on there. Nominative uses do not dilute.
Different from NKOTB in that Welles was describing herself as TM, newspaper was not
Policy Issue contracting around fair use Rights Could Playboy contract with its Playmates to not identify themselves, or to use trademarks (but still allow some description), etc.? Make it look most like a one on one transaction, instead of right against the world.
Domain Names (subset of TM)
InterNIC company contracted to govern domain name system
NSI Netsol had rights and had internic running things
ICANN international body, experiment in governance.
Weak and nebulous ties to US. Accused of being US dominated
If experiment fails, telecoms are set to take it over
Controls internet’s technical infrastructure root file in charge of internet for certain TDLs (.com, .net, .org)
Adhesion contracts for top level domains
Registrars have to give contracts to registrants
Registrar Accrediation Agreement Contract on p. 277
Verisign Service Agreement (p. 279)
If you want to be in the system, you need to agree to this
Registrars and Registries
Registrant person who registers second-level domain name
Registrar grants registrant right to sue SLD. Must impose certain contracts on registrants
ICANN’s UDRP (must follow to get on internet)
promise not to spam
submit to jurisdiction of courts and ICANN
guidelines for administrative proceedings
Private governance to a certain extent it’s all governed by contract
Harms of taking a URL w/ TM
Increased consumer search costs
Efficiency losses (diminished capacity of TM
Harm to companies identified by TM
Free speech and Domain names
Name.Space, Inc. v. Network Solutions, inc. Name.Space wants NSI to authorize TLDs that are last names, e.g. .kaplan, or .kaplanformayor, but NSI won’t do it
Π complains that this is a violation of first amendment
Court: First Amendment doesn’t infiltrate here existing TLDs are not expressive, BUT not foreclosing possibility of DNS becoming expressive; Cites Bucci
NOTE:used to be that NSI was only registrar,
Planned Parenthood v. Bucci anti-abortion activist registers www.planedparenthood.com to do protest, ∆ claims first amendment
Court: more analogous to source identifier than communicative message. DNS not in 1st amend territory here
If Bucci registered plannedparenthoodsucks.com, would the case have come out the other way? Probably yes after Taubman
Taubman v. Webfeats ∆ registers shopsatwillbend.com and taubmaksucks.com. Π (who owns The Shops at Willow Bend) sues for dilution. Court ruled that website was no commercial, and there wsa not likely to confuse.
Notes on Sucks sites
ICANN policy is Less solicitous of “sucks” cites
US courts are more protective
What can the real company do?
link to it and say you like free expression?
Linking and framing
No cases in book all cases brought and settled
Could owner bring action against people for linking?
What about “deep linking” to page w/in cite that is not front page?
What about “framing” your website has some other website around it?
Generic name speculation (cars.com, café.com, sex.com, etc.)
Speculation on business names (eddiebaur.com, )
Labeling people “cyber-squatters” in effect decided the question
Toeppen v. Panavision Toeppen was registering various domain names, including Panavision.com with.arial pictures of Pana, IL
Personal jurisdiction ∆ was in IL, and Π was in CA; 9th Cir grants jurisdiction under “effects doctrine”
Case expanded dilution beyond tarnishment and blurring
domain name is a valuable corporate asset
domain name identifies entity that owns the website
puts reputation at website owner’s mercy (p. 186) could be associated with unimaginable amount of messages
Commercial use Offering domain name for sale is a commercial use; Preventing panavision’s own commercial use
Naked TM problem: Doesn’t matter that he didn’t attach the use to a product
McCarthy (p. 200) “poor fit between actions of cybersquatter and dilution law”
offering to sell domain name identical to TM is commercial use, but mere registration has never been held to be commercial use
Reverse Domain Name Hijacking somebody tries to take domain name from somebody who does have a right to it (e.g., Amazon bookstore)
Protest Site Cases
PETA case (4th Cir) People Eating Tasty Animals registering peta.org was violation.
Bosley Medical Institute v. Kremer Kremer doesn’t like services he gets, sets up website criticizing them at bosleymedical.com (hair replacement case “baldfaced effort to get even”)
Consumer commentary for non-commercial use does NOT constitute infringement
Court disagrees with 4th Circuit
dangers Lanham Act was designed to address are not at play: not misleading consumers about source, not capitalizing on goodwill
no commercial links
Harm is in parody, not in diluting distinctive impact of TM
Footnote 2 not official at odds with Panavision, but in tension;
Ty, Inc. v. Perryman Bargainbeanies.com: selling second-hand beanie babies (“the aftermarket”), but also selling other stuffed toys; Ty sues for dilution; Website had disclaimer saying not affiliated with TM owner
Court reverses summary judgment for Π, and gives summary judgment to ∆
Posner Ty is being overzealous in trying to police mark against becoming generic
p. 189 producers don’t own their after-markets
Contrast with p.102, n.1 Promatek v. equitruck: company may not use metatags of its website the TM of competitor, even where company services products made by competitor and identified by TM
Generic Domain Names vs. TM domain names Policy questions
If you register a generic mark, you can keep it for $50
If you register a TM, you have to give it to owner
Why should people who get there first profit?
Would it be OK for first come TM owner (e.g., Apple Records) to sell domain to someone with same TM (e.g., Apply Computers)?
Is it antiquated to think people will search for things by typing in random URLs?
Why allow generic Domain names, if no generic TMs? s?
Domain names are source indicators
BUT no domain name exclusivity unique addresses; only one company can have them; no genericity
Should we forbid giant speculation in generic domain names?
What if two TM owners want the same domain name?
Virtual Works Volkswagen wanted vw.com mixed motive of good faith and profit seeking
∆ had a TM in Tunisia
Court held that TM was registered in bad faith. No reason to register Madonna
Gives some rights to people using own name in good faith
In Rem action if you can’t find person, or don’t have personal jurisdiction
Statutory Damages §1117 of up to $100k
Defenses:r use and Free speech
What is bad faith intent to profit? Not always clear
In rem actions
How do you prove Bad faith for in rem actions?
Is there adequate notice? Is it constitutional?
How is US interacting with UDRP and ICANN
Electronics Boutique v. Zuccarini(EDPA 2000) FACTS: ∆ registered different misspelling of eb’s name. Suit brought under ACPA
“type-squatting”or “mousetrapping” Not classic cybersquatting but Legislative history indicates that was the concern behind the act
Definitely bad faith intent to profit
EB wins $500k damages
P. 224, n.2 “pure heart and empty head defense”
Statute “bad faith intent will not be found in any case in which court determines person believed and had reasonable grounds to believe use of DN was fair use or otherwise lawful”
Court will probably not let guy off if they think he is nasty
TMI v. Maxwell registered trendmakerhome.com (no “s”). When registration ran out, ∆ re-registers .info website
Court can’t sue for dilution, because not commercial use
Conclusion noncommercial grip cite violates none of the statutes
Gripe Site Immunity
Avoid anything that looks commercial
No advertising links (especially advertising for competitors)
No selling anything
Put “sucks” or “is bad” in the domain name
Best bet Show you’re in good faith, and convince the judge you’re a good guy
NOTE: ACPA applies to non-commercial Use: See P. 229, n.12
ACPA and Registrar liability see N.3 on p. 224
APCA tries to limit registrar liability to narrow circumstances based on its “refusing to register, removeing from registration, transferring, temporarily diabling, or permanently canceling a domain name.”
Damages liability only if Registrar has bad faith
Subject to injunctive relief only if it fails to tender control of domain name to court, modifies status of domain name except pursuant to court order, or fails to comply with court order
Hawesv. NSI sued NSI for transferring control of DNS to French Court (where L’Oreal was suing him) 4th dismissed claim
Kremer v. Cohen Sex.com (9th Cir 203) Π stated claim for conversion under CA law against registrar that transferred ownership of sex.com in response to forged authorization letter
Case seems to say that domain names can be property rights w/ 3 part test
interest capable of precise definition
capable of exclusive possession or control
putative owner must est. legit claim to exclusivity
Radin this should be like a service, not a lease on property
UDRP Proceedings Overview
WIPO world Intellectual Property Organization
UN administered in Geneva
Panels are sponsored by WIPO
Is WIPO interfering with national law (when national laws differ)?
Tunisian TMs are easier to get
US requires use in commerce (or bonafide intent)
What about competing identical marks from different companies?
“Use of IP assets has become more international than the enforcement provides for?”
UDRP Proceeding Requirements:
Registeration in bad faith
hard to say if you have valid TM somewhere
Use in bad faith
Contrast with US standard Bad Faith Intent to profit
Convene panel (“arbitration”)
Domain name will either be cancelled or transferred