TRADEMARKS NOTES by Jasonpet

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									TRADEMARKS Prof. Eric E. Johnson www.eejlaw.com eej@eejlaw.com See MacArthies (MacArthur?) on Trademark Final Open Book Open Note Syllabus on Website. Labor Theory: Investment is put into creating the goodwill in a mark so the investor should have proprietary rights in order to make a return on that investment. Timing: Trademarks can last forever as long as in use. Traditional Theory for Trademark: Protection of public, i.e. public knows what they are getting when dealing with trademarked property. Copyright Genesis: Parliamentary Charter in England. As result of printing press. Trademark Genesis: Comes from Tort Law (for reason of protection of public). If a knock off starts selling bad products with same mark then public may be mislead and hurt. Law and Economics View: Saves on Information Gathering Costs, therefore provides a net benefit to the Society. Right of Publicity Genesis: 20th Century legislation. Comes from 4 branches of right of privacy, (Intrusion Upon Seclusion, Public Disclosure of Private Facts etc) Trademark: Guarantees Source. Don‟t get by coming up with it, you get it by using it. ACTUAL USE in Commerce. Two types of Trademark Law: (1) Common Law a. Must have Bona Fide Actual Use b. Geographic Extent i. Define Territory 1. Where Customers Come From? 2. Where do Products Go? 3. Courts will provide a buffer for Zone of expansion c. Sale / Publicity / Advertising i. Use of trademark can just be advertising the mark even if the item is not being sold, but the item must be planned on being sold. d. 15 USC § 1125(a) Can claim protection under Lanham Act if have a common law trademark. (2) Federal Lanham Act a. Must have Bona Fide Actual Use i. A registered trademark allows constructive use all over USA

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ii. Just advertising does not cut it, you must actually sell something or transport it in interstate commerce (i.e. for consignment, but not for internal purposes). iii. Services must have to be actually rendered (no mere advertising) iv. If can put a trademark on it must put trademark on it. If can‟t put on it (Food) must put near it. Congress can only pass laws that the Constitution specifically gives congress to do. Here since not specifically enumerated, takes it from the Commerce clause. Therefore it must be used in commerce lawfully regulated by congress. i. Selling in more than 1 state ii. Exporting iii. Selling to Indian tribes iv. If has an interstate effect even though only selling in one state.(truck stop, interstate commerce always moving through). 1998 Trademark Revision Act: Intent to Use Application i. Allows to reserve a trademark ahead of time and gives 6 months after notice comes back to actually use in commerce. The Four Types of Marks under the Lanham act i. Trademarks –Identify Goods 1. Can be “Trade Dress” the way a package looks that identifies source. ii. Service Marks –Identify Services iii. Certification Marks – Certifies a standard. UL on bottom of computers. ISO. iv. Collective Marks – Rotary Club. “Realtor” Mark. Possible NBA. Designates membership in a group. v. There are special cases for personal and Geographic names. Four Types of Names used as marks i. Arbitrary or Fanciful (most protected): Kodak, Apple Computer. Automatic protection. ii. Suggestive: Coppertone, Jolt (Requires imagination and thought to connect). Automatic protection. iii. Descriptive: Merely descriptive of the good or service. Cartoon Network. Must have acquired secondary meaning to be protected. 1. Descriptive verses Suggestive Marks iv. Generic: Apple. Not protected in context. 1. Higher types of marks may fall into generic status if they lose their ability to determine origin. 2. Kellogg v. National Biscuit Co a. Shredded Wheat was not given a secondary meaning so it was a generic term. b. Primary Significance c. Fairness

d. Hold: Doctrine of Functionality applies, can‟t change the name or shape without compromising quality and cost. 3. AJ Canfield v. Honickman a. Two tests to determine genericness: i. Primary Significance test: What the term means in the mind of the consuming public ii. Look to genus of the product (the name used to describe its state or functionality). If it is generic and it describes the items then it is just the word or string of words and not a valid trademark. iii. Anonymous Source Rule: Even if you don‟t know the source of a trademarked term, if most people think it is a trademark owned by someone it is still a valid mark. iv. Existence of alternatives test: If competitors needs to use the term to describe the product, then it is generic. f. Doctrine of Functionality i. Since trademark is about source, if a product attribute has functionality, and it is reason enough to buy the product, but is not source identifying, look for a utility or design patent. 1. Utility Patent: Useful, non-obvious, & novel 2. Design Patent: Lanham Act Numbering: Title 15 of the US Code. But USC Code numbering different from Lanham Act. Jurisdiction over Trademark Suits on P.11 3 Ways to get Juris with a Common Law Trademark claim 1) Sue under Lanham Act a. Sec. 43a on Lanham act creates a federal cause of action for Common Law trademarks. 2) Add a Federal Question Claim and add State Law claim under Supplementary Jurisdiction 3) Diversity Jurisdiction Jobs Daughter vs. Linenburg Co Sued under Diverse citizenship and sued under state law but relied upon Federal cases relying only on federal law. Bluebell vs. Fair Manufacturing (What Really Counts as Use) Federal Circuit Court: P. 34 2nd & 3rd Para. Labels must be affixed to the merchandise actually meant to be sold with that mark. He who moves product first wins.

Read: 41-63 White v. Paramount Pictures Loreal Case: P. 38 If Businesses knowing of another‟s intending use lose their rights to a mark, even if they made they first significant use in commerce, would reward ignorance. We don‟t want to promote that. So first to actually use in commerce or register intent to use. Bottom of P. 42. Registration: (1) Principal Register a. Provides Constructive Notice to everyone b. Registration is Prima Facie Evidence of Registrars exclusive right to use mark in commerce c. Allows seizure of counterfeit goods d. Right to treble damages and attorney‟s fees e. After 5 years cannot be contested? f. 39(b) of Lanham Act, protected against state restrictions. “No state of the US may require alteration of a registered mark or require additional marks or names be displayed in the mark in a manner differing from the mark as illustrated on the federal filing. This comes from the Constitutional supremacy clause. i. This comes up in: ii. Nevada Real Estate Agent Regulations (signs in front of people houses had to have certain info). Century 21 registered their sign and didn‟t want to change the format for Nevada. They got their way because of Lanham act. iii. Carmel – only natural wood signs for business names. Lanham act overrules and allows signs that are registered. (2) Supplemental Register a. Allows you to use the ®. b. Provides protection under s 39(b) of Lanham Act c. Provides International Protection under foreign treaties. d. May provide actual notice to trademark searchers. (3) White v. Paramount a. White tried to register “Romulans” b. There was a band with the name and white had sold a game based on the band. c. He kept no records. d. Paramount got summary judgment because no good faith use in commerce. e. Judge: Paramount coined the term Romulans to describe a race of aliens. (4) Warner Vision Entertainment vs. Empire a. Company A with a reservation on the name does not have a cause of action against company B using the same mark in commerce (granting common law rights) after the date of reservation by Company A until

Company A actually uses the mark in Commerce (then they get the benefit of the priority date. (5) Commodore Electronics vs. CBM a. Be sure to document commercial use (6) Abercrombie and Fitch v. Hunting World a. Trademark on Safari. b. Hunting World claims Safari is a generic mark so not protected. (7) TRADEMARK INFRINGMENT a. There is trademark infringement is there is a likelihood of confusion of the origin of those goods. b. The public perception that advertisers have to pay to use words that don‟t identify goods can cause a snowball effect and create actual confusion. c. Echo and Associates v. Gillotti Case i. Did a picture acquire a secondary meaning? ii. Case of Unfair Competition based on trademark infringement 1. Two Elements a. Validity of the Mark in Question i. Either: ii. Inherently Distinctive, or 1. Arbitrary, Suggestive, Fanciful. iii. Acquired Distinctiveness 1. If it is merely descriptive. 2. Has acquired Secondary Meaning (because of use in commerce a word acquires a new meaning) a. b. Exclusivity c. Length d. Amount & Manner of use e. Proof of Intentional Copying of trademark by alledged infringer. b. Infringement (likelihood of confusion) iii. Cannot File an Intent to Use App on a descriptive mark because it requires use to develop secondary meaning. d. Park n Fly vs. Dollar Park and Fly. i. “Senior User” is the term of art for first user. ii. “Junior User” is a subsequent user iii. Dollar Park and Fly claims Park n Fly‟s mark is merely descriptive therefore not trademark-able. iv. Their registering of the mark establishes that the senior user used the mark and therefore makes it incontestable. Therefore the fact that the mark is registered keeps it from being contested by the junior user. 1. If you get an examiner to register a descriptive mark and no one contests you for 5 years from time of initial

registration, there is continual use, you may register for incontestability. Must declare no one contesting. a. Exception: If becomes generic. b. But can lose secondary meaning but not be generic and still keep incontestability. v. Defenses: 1. Incontestibility 2. § 33 1115 3. Mark becoming generic 4. Fair Use REGISTERING A TRADEMARK 1. Register with USPTP (must have use in interstate commerce), if denied 2. Trademark Arbitration Board (TTAB), then 3. District Court – de novo 4. Federal Circuit Personal Names: Hutchinson technology Inc. 1. Surnames may not be trademark-able if generic 2. However, perhaps when paired with other terms the aggregate term may be trademark-able. 3. Look to see if merely descriptive and if it has acquired a secondary meaning. a. The difference is does the name designate a PARTICULAR source or just ANOTHER source of the product. Taylor Wine v. Bully Hill Vineyards 1. Taylor Wine sues for injunction asking to enjoin Bully Hill from using name Taylor Wine on their bottles (Bully Hill owner is named Taylor descended from name Taylor as Taylor Wine). 2. Trademark protects source, but here it traces back to the same source. 3. You cannot just sell a trademark, must sell it with an ongoing business. 4. There is no longer an absolute right to use your name. (Used to be). Courts will now look to fashion relief that goes down the middle. Factually Inaccurate Marks: Three prong test: RULE: 1. Mark mis-describes Goods 2. Consumers are likely to believe the description is accurate 3. Consumers are likely to base decision on purchase on misdescription a. Arbitrary = 1 b. Deceptively Mis-descriptive = 1+2 = requires secondary meaning to be register-able i. If Geographic Mark that is deceptive and misdescriptive: Dec. 8th 1993 – If it acquired secondary meaning before this date, then it is registerable. If it acquired afterwards it is not registerable. This is because of NAFTA.

ii. Geographic: If not Deceptive and Misdescriptive then just descriptive and requires secondary meaning. c. Deceptive = 1+2+3 = Can’t be registered at all. 4. EX: IRON ROOF a. For computer software is arbitrary b. For a restaurant is descriptive but won‟t base purchasing decision to buy on it. (1+2) c. For a tornado shelter (1+2+3) – if made out of wood is deceptive and will base decision on. Geographically Deceptively Misdescriptive Marks American Waltham Watch Co. vs. US watch Co. In Re Easter National 1. “Independence Park” does not mean a particular geographic place in the minds of Americans, although in Philidelphia it does mean a particular park. 2. Rule: If the court finds it is primarily geographically descriptive then applicant needs to show secondary meaning or may not be registered. (p.139). Factually Inaccurate Marks 1. Deceptive vs. Deceptively Misdescriptive Marks a. Anything can be registered as a trademark except certain exceptions: b. Falsely suggests connection with a person dead or living. 2. Geographically Deceptively misdesceptive Marks a. Rule: Registration shall not be refused unless the mark is primarily geographically deceptively misdescriptive b. See Subsection 2(e), 2(f) Something can acquire distinctiveness and can get over the statutory bar. c. If primarily geographically descriptive need to show secondary meaning to register. d. If primarily geographically deceptively misdescriptive can‟t register at all. i. Dec. 8th 1993 – If it acquired secondary meaning before this date, then it is registerable. If it acquired afterwards it is not registerable. This is because of NAFTA. e. Example: (and it‟s from Maine) i. Alaska 1. Does it have primary geographic significance? 2. Is there a public association between goods and location? ii. Alaska Salmon iii. Great Alaskan Crab iv. Alaska Ice Skates v. Alaska Bananas

1. Primarily Geographical? Yes 2. Misdescriptive – will be given fact. 3. Likely to Believe? No vi. Alaska Ice Cream Company 1. Geographically Suggestive but no one will think it drove down from Alaska. 2. Selling it‟s own brand f. In re Nantucket i. Analysis: ii. Is the name of primary geographic significance? 1. If no, then public does not associate th 2. If yes, then go to three step analysis iii. Must consider if the public makes a goods-place association. 1. if not, not deceptively misdescriptive g. In Re Wada i. Disclaimer of generic or descriptive matter. Can disclaim the word in a stylized mark of which a generic word is the substance. 3. Bronco Wine vs. US Department of Treasury a. Just because something can be registered as a tradfemark does not mean it can be used in any context. It does not displace other federal laws. 4. Confusing Marks (1) DuPont Case a. USPTO refused to register Dupont mark “rally” for a auto cleaning agent as it might be confused with Horizon‟s pre-existing mark “rally” for an all purpose detergent. b. Dupont had purchased a right to use the mark on its product from Horizon in the auto business. It claimed a right to use allows a right to trademark. c. Hold: Court ruled Du Pont could register the mark, but not because of the right to use, but rather because each side had covenanted to seek to avoid confusion by not advertising or selling in each other‟s markets. (2) d

Immoral, Scandalous and Disparaging Marks (1) Harjo v. Pro-Football, Inc a. Issue: A few Indians wanted to cancel some Redskins trademarks because they claim they are disparaging towards Indians. b. Analysis: A trademark registration is not required to use a mark, it just let‟s you preclude others from using a mark. c. Rule: Immoral, Scandalous and Disparaging marks are not allowed to be trademarked. d. Hold:

(2) Disparaging goes towards a group (3) Scandalous goes towards everyone Trade Dress and Distinctiveness Two Pesos Inc v. Taco Cabana (1) Issue: §43(a) case. Two Pesos is a new taco shop with very similar colors and architecture to Taco Cabana. (2) Rule: Distinctiveness in trade dress is protectable. Trade dress law does not expire. Proof of secondary meaning isn‟t required to prevail on a claim under § 43(a) where the trade dress at issue is inherently distinctive. Product Packaging vs. Product Configuration ??? Qualitex v. Jocobson Products Rule: Color isn‟t protectible, it falls legally into the descriptive category, unless it has developed secondary meaning Ex. John Deere green tractor or Pink for insulation.. Sunrise Jewelry Case: Rule: If something becomes extremely common it can lose trademark protection. Therefore: Don‟t let others use the tradedress. Send “scary‟ letters, if doesn‟t work, then settle. Also, advertise the design association with the brand (good for evidence). Wal-Mart Stores v. Samara Brothers PROTECTING INDUSTRIAL DESIGN: Design Patents (as opposed to regular functional utility patents) A design patent in contrast has to be non-functional as opposed to useful, novel and non-obvious. (1) Patentable Subject Matter (2) Ornamental (3) Non-Functional (4) Novel (really new) (5) Non-Obvious i. Someone who is a designer with ordinary skill in the decorative arts. The Design Patent lasts 14 years. Usually a useful article but the design itself is ornamental. Effective upon issuance. Requirements of Trade Dress (catch all when Patent and Copyright and Trademark won‟t protect) (1) Non Functional. (2) Distinctive

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a. Depends on whether packaging or b. Product Configuration. Lasts forever as long as still being used. Effective upon use if inherently distinctive or upon achieving secondary meaning. Morton Norwich Case: If you want to copy a trade dress must show you need to copy because it is one of the best or few superior designs available and therefore essential to the design. a. Non-Functional unless, b. There is competitive need to copy, i.e. c. No functionally equivalent alternatives available, or d. One of the best or the best. Traffix Devices Inc Case: Issue the effect of an expired patent on a trade dress claim. a. Functional If: b. Essential to use or purpose, OR c. Affects cost or quality, I.E. d. If exclusive use would put competitors at a significant nonreputation-related disadvantage. e. P. 223 (know this case). f. 2nd circuit and 5th circuit say that Traffix superceded Morton Norwhich. Other circuits don‟t see Traffix as superceding Morton Norwhich.. Wallace Case: a. ?? Hartford House vs. Hallmark a. Hartford makes greeting cards. b. Not Ok to copy case. c. A competitor of hallmark, indicated there is room for innovation and profit without duplicating another products. d. “A seller should not be able to create a monopoly over a products appearance” e. “Trademark law is not intended to protect originality” Publications LTD

Copyright (1) Protects works of fine art (2) Can get protection on elements of expression that are “conceptually severable” from the actual product (i.e. the label on the box). (3) A bottle could be a work of sculpture. (4) A T-shirt is not copyrightable, but the picture on the T-shirt could be copyrightable. (5) Effective as soon as design fixed in tangible medium of expression. Trademark Infringement (P. 274) Test: Bottom Line: Must prove likelihood of confusion.

Strong: Does plaintiff have a strong mark? Mark: Degree of similarity between the marks Produces: Proximity of marks in the marketplace Bridges: Likely hood the senior mark will enter the junior mark‟s market., or Actually: Actual Confusion Good: Defendant‟s good faith in adopting mark (or Junior users good faith intent) vs. any intent to profit on the goodwill of another‟s mark. (7) Quality: Quality of Defendant‟s Product (do consumers notice or know of a difference in quality. a. “Or so my” (8) Sophisticated Relatives: Sophistication of buyers and their understanding of what they are buying. If so sophisticated must know the difference then no infringement. This is a definitive factor. a. “tell me” Other Factors used in other circuits:: (9) Relatedness of Goods (10) Similarity of Marketing (11) Likely Degree of purchaser Care Notes: Generally courts will not rely on a difference in actual logo design to prove differentiation. Home Depot vs. Office Depot Ok but McSleep vs McDonald‟s cannot. Generic back ends like depot, mart and city are not strong. Terms to Know: Causes of Action: Passing Off (aka “Palming off”) Confusion of Sponsorship: Putting another brand in conjunction with your product. Reverse Passing Off – Taking another‟s product and saying it‟s mine. Reverse Confusion of Sponsorship: Putting your product into another brand?? McSleep Case: Can‟t TM Family of Marks NHL Boston Hockey Case (Texas): (1) Ignores Likelihood of Confusion. (2) Goes Copyright / Patent route. a. Direct Test: Did Def. Copy? b. Indirect Test: i. Was there substantial similarity? ii. Was there access? (3) This is a whole new test and is cookoo. Makes a new law on the spot. Takes goods out of the equation and looks to likelihood people know the trademark not what it is associated with.

(1) (2) (3) (4) (5) (6)

(4) Can only sell a trademark in conjunction with a business. If otherwise lose the mark. (5) Look to the 5 elements for this new Cause of Action (P 297). a. Dup P 296 “Reverse Confusion Context” 1) Promotional Goods and Trademark 2) Boston Professional Hockey Association v. Dallas Cap & Emblem a) Issue: Whether the unauthorized, intentional duplication of a professional hockey team‟s symbol on an embroidered emblem to be sold to the public violates any legal right of the team to the exclusive use of the symbol. b) Restated: A reproduction of a trademark itself is being sold, unattached to any other goods or services. Is this infringement? c) Analysis: Trademark protects use of marks in conjunction with a good to denote source. i) The major commercial value of the emblems is derived from the efforts of plaintiffs. ii) Defendant sought and ostensibly would have asserted if obtained, an exclusive right to make and sell the emblems iii) The sale of a reproduction of the trademark itself on an emblem is an accepted use of such team symbolic in connection with the type of activity the teams are engaged in. d) Rule: § 1114 Cause of Action for Registered Mark Infringement e) Rule: § 1125 False Designation of Origin f) Hold: i) Re § 1114 the mark is in and of itself the product here, therefore infringement. ii) Re: § 1125 Yes because mark was associated by consumers to team and not the unauthorized manufacturer. 3) Jobs Daughters v. Lindeburg a) P. 308 Analysis 4) Modern Day Thinking: If we create in the public mind that anytime a product shows up in a tv show or movie, and if people sleep on their rights to protect their trademarks as used in films, …Must think of the practical application of the decision, are the judges kids infringing? 5) Dastar Case: a) TV series produced. Book passes to public domain. Fox reacquires tv rights to the book. Then restores and re-releases original series. b) Dastar also grabs original TV series and do their own edit and packaging. Sells cheaper than Fox. c) Claim: Reverse Passing Off, Fox claims Dastar takes Fox‟s trademark and passes off their product as that brand. d) Passing off: Putting your trademark on someone else‟s product. e) Reverse Passing Of: Putting your product on someone else‟s trademark. f) Side Example: Reverse Passing off? If Pepsi figured out Coke‟s formula by legitimate means and started manufacturing and distributing Coke recipe under Pepsi brand name.

g) The Constructive use you get through Federal Registration is subject to the Common law rights of prior use. 6) Circuit City v. Carmax a) Circuit City had federally registers mark “CarMax” b) An Ohio company was using to sell cars. c) Claimed had in use prior to Circuit City obtaining a federal mark. d) RULE: No finding of likelihood of entry or irreparable harm is necessary for injunctive relief in trademark infringement or unfair competition cases. e) 7) Burger King v. Hoots Case: a) Issue: Geographic limitation of trademark use b) Hold: Plaintiff can expand enterprise and use of mark as far as reasonably foreseeable, however defendant can use it in the geographic area in which they are established. c) Rule: Two businesses in ignorance of one another can use unregistered marks in different geographic areas and can continue to do so once they discover each other. d) Rule: Registration gives constructive notice and use nationwide, except for prior uses in geographically limited areas. e) Tie this back into Ali’s BBQ and the Con Law rule: Rational Basis and … test to see if commerce clause applies, then subject to Federal jurisdiction. f) 8) CONCURRENT USE OF MARKS: 9) Wiener King, Inc v. Wiener King Corp p. 322 a) WKNC was a small chain with a total of 4 restaurants in 1966. b) In 1970 another group in a N. Carolina started the big chain. 137 stores in 34 states by 1975. Registers a trademark. c) WKNC registers a mark later. Applies as a concurrent user. d) Hold: District Court holds that little Weiner King can have exclusive use 15 miles around its 4 restaurants of the name. The larger chain gets the rest of the US. 10) IMPORTANT DOCTRINE:ON CONCURRENT USE OF MARKS a) Concurrent Use of Common law Trademarks (both a senior vs. junior user item as well as a defense to a trademark infringement action). i) Each user has trademark rights in zone of use + a larger zone that is the extent of reputation and business presence. For physical establishments 15-20 miles in the case law for each establishment. (1) Consider when defining radius of reputation and business presence: (a) The geographic extent of advertising (b) Extent to which customers transport the products away (c) Places from which customers come ii) Many courts also recognize a “zone of expansion” around the reputation and business circle. (1) Look to: (a) Previous Business activity (b) Previous expansion of lack thereof (c) Dominance of contiguous areas

(d) Presently planned expansion (e) Possible market penetration of products brought in from other areas. 11) Hard Rock Café Licensing Corp v. Concession Services, Inc (KNOW) a) Issue: Vicarious and Contributory Liability theory under trademark law. b) Analysis: You have to know or have reason to know infringement is going on. c) Rule: 12) Case 10/30/06 a) Collateral Uses b) Comparative Advertising i) When the mark is used in a way that does not deceive the public, then no problem using the mark to tell the truth. c) Talked about using trademarks in different geographic spaces on products that are in fact slightly or wholly different. d) Champion v. Sanders Case: i) 13) Fair Use / Affirmative Defenses a) Aka failing to the likelihood of confusion standard. b) Defense to using a trademark on refurbished goods is tantamount to no likelihood of confusion because consumer will know used goods and source is true. c) P. 434 and 435 on Volkswagen cases. d) Anheusuer Busch V. Balducci (P. 460) i) Parody Ad that references a shell oil spill in a river that Anheuser uses for water. Anheuser sues based on likelihood of confusion. ii) 6 Factors are listed off: (1) Strength of trademark (2) Similarity between plaintiff and defendant‟s marks (3) Competitive proximity of the products (4) Intent to confuse public? (5) Evidence of actual confusion? (6) Degree of care rx expected of plaintiff‟s expected customers. iii) Court: You should copy no more of the trademark than is necessary for the parody iv) Johnson: Why can‟t you go all the way if you are making a parody? 14) Trademark Abandonment a) Non-Use by original owner b) Intent to Abandon c) 2 Consecutive Years (See P 492 – statute amended to 3 years). 15) Right of Publicity a) Tenessee allows to last forever as long as kept in use. 16) Naked Licensing (letting someone else use mark) & Assignment in Gross (P. 498) KNOW a) First Interstate Bankcorp v. Stenqust i) Definition: Licensing without any quality control over goods created by licensee. Result of a naked license is termination of trademark rights.

ii) 9th circuit requires that enough control to avoid deception be used by the licensor over the licensee. iii) Court looks to actual supervision. iv) Defense: Length of relationship made the licensor confident in the licensee. Court says this is not dispositive. There still must be supervision. v) Reason for naked licensing: Source confusion. Want to keep integrity of the market in place as to the source. If there is no control from licensor over the licensee, then there is essentially two sources. vi) Naked licensing is easy to avoid if you maintain the right formalities. Get a sample, give the ok, withdraw ok if fails to meet quality standards. b) Sugar Busters LLC (P. 506) i) Trademark is a symbol of goodwill. Therefore a trademark cannot be sold or assigned apart from the goodwill which it symbolizes. ii) The sale or assignment of a trademark without the good will it represents is “in gross” and is invalid and the trademark ceases to exist. (1) I.e. Trademark right transferred to a product or service that is not substantially imilar to the original product or service is likely a transfer without the goodwill it represents. c) Starter v. Converse – Permanent Injunction may be granted sua susponte when declaratory judgment is entered. d) Counterfeit Marks i) Intentionally trafficking or attempting to traffic in goods or services using a counterfeit mark in connection with those goods and services. 18 USC 2300 ii) Subject to criminal prosecution: iii) Individual can receive a penalty up to $3M if individual, or $5M if corporation, or 10 years in jail. iv) Second infringement, Individual $5M and up to 20 years in prision. v) 18 USC 2320 A Counterfeit mark is defined as: (1) Something that is usedin connection with trafficking goods or services (2) It is identical with or substantially indistinguishable from a mark registered on the principle register. (3) The use of which is likely to cause confusion, mistake, or to deceive. (4) Must prove intent with regard to each element. (a) It is not a crime to be carting around a bunch of trademarks because it is no in connection with goods. (b) Genuine labels on non-genuine goods is a crime. vi) 18 USC 2318 Exception (1) If labels are for a copyrightable product (software, DVD‟s, phonorecords), then just having the labels is a crime. 17) Exxon v. Kellogg Case a) Exxon used a cartoon tiger as a logo, ad agency suggested move to live tiger as logo because needed something less whimsical. Kellog sues over tony the tiger infringement once Exxon begins selling food.

b) Defenses to infringement: c) Laches: i) Two elements (1) Inexcusable delay (2) Causes prejudice d) Acquiescence (1) Inexcusable delay (2) Causes prejudice (3) Implied or express consent e) Progressive encroachment. i) Court says that statute of limitations should begin to run from the time that the encroacher actually infringes and trademark owner knows or should have known. Patent Law is about rewarding creativity. Once created you get the reward of creating it. When takes it they are taking ur creation. Trademark law is about identifying source and creating goodwill. So if don‟t create goodwill, then a user should not be punished because they really didn‟t take anything. . Initial Interest Confusion (1) Signs on the FWY for ice cream at Fosters Freeze. When get off FWY turns out it is a Dairy Cream not Fosters Freeze. Signs put up on purpose. (2) This was big in meta tags for internet websites before Google. (3) Liable for trademark infringement. Post Sale Confusion (1) Sign on table that says “this is not a Gucci purse” but purses look identical. (2) Person buys and gives to grandmother. (3) Grandmother thinks it is Gucci purse, and when it degrades quickly the bad quality will harm the goodwill of the trademark owner. 1. Corporate Concepts v. Ferrari a. Plaintiff took Pontiac fierro, modified, and came up with a Ferrari 328GT looking car. No Ferrari logo or badges. No copying of the curves or lines „of any other car‟. b. No one thought they were buying a Ferrari. If get up close clear not a Ferrari. c. This is a Trade Dress case. i. Hold: Ferrari has a trade dress interest in the shape and lines of their car. False Light No damage but putting in false light. Intrusion Upon Seclusion Peeping tom.

Right of Publicity: Cartoon Cards v. MLB – Makes cartoon cards of major league players. Cartoons looked to get declaratory judgment that this is ok as a parody under the 1st Amendment. MLB fired back that it was a violation of right of publicity of the players. Appellate court found right of publicity was violated, but was 1st amendment an affirmative defense? Court held it is not commercial speech because the cards are a great learning tool.?? Balanced free speech rights against rights to publicity. Economic Interest Justicification for Right of PUblicity: Labor Deserts theory. People should be protected if their work builds their reputation. Prevention of Unjust Enrichment: Cartoons was adding a significant creative element. Related to natural rights idea. It is unsavory for someone to make money off you with out paying for it. Publicity rights are meant to protect against loss of financial gain and not mental anguish (circular argument). “The last thing the first amendment will allow is for public figures to keep people from mocking them” Note 4 P. 660: Restatement 3rd. Rule: Each person should be able to control the commercial use of their persona. It started as a tort and is now seen as a property right that is decendable and transferable. Exception: (1) News. (2) Any other commercial purpose meets black letter law of what a violation of right of publicity is. a. However certain affirmative defenses available: i. 1st Amendment Production. ii. Copyright Pre-emption 1. i.e. waiver of right of publicity through copyright preemption. Such as a actor in a movie or a singer on a song. Only need to get license from copyright owner, not people showcased in the work. iii. Slick Jurisprudence 1. If someone is not absolutely identifiable in the work the claim is not actionable. iv. Implied Licenses 1. Courts will liberally find implied licenses.

a. Girls gone wild cases. i. Owner says they knew the camera was there and they purposely acted therefore giving an implied license. ii. Question is how far did the implied license go? It was probably not to be commercialized in a DVD distributed nationally. b. We want Scholarly or Historical uses to be ok. Coca-Cola v. Tropicana Case “False Advertising” :30 tv commercial where defendant Tropicana showed an Olympic athlete squeezing an orange with the juice going into a carton and it says only leading brand not made with concentrate. Coca Cola makes Minute maid and sues for false advertising a violation of the lanham act. Elements of False Advertising (in Note 2): (1) Must be Factually Inaccurate (2) Substantial amounts of consumers will be deceived. (3) In a manner that is material to the purchasing decision. Any one who uses false advertising in the stream of commerce may be liable to anyone who has a mark that is injured??? Elements for a prelim injunction: Irreparable Harm, and Likelyhood of success on the merits, or Serious questions, and Balance of hardships favors decidedly on the part of the party seeking relief. Here hard to prove irreparable harm from ads. Court said must prove actual lost sales. To prove likelihood of success, must show false on its face, or can be impliedly false and that‟s when must go to balance of the hardships. US healthcare v. Blue Cross US healthcare started an HMO and started taking customers from Blue Cross. Then blue Cross created a PPO and started an ad campaign against HMO‟s. US Healthcare sued for: (1) Cause of Action: § 43a of Lanham Act False Advertising = Affirmatively Misleading

Commercial Disparagement: Statement to cast down another person‟s property. Difference from defamation is it is about a product, not a person. Puffing: You are allowed to get away with. “The greatest show on earth” “The best education”. Basically just boasting. The court was looking to see if the ads were actionable under each type of analysis (false advertising, commercial disparagement, defamation). Mac vs. PC ads: Close to Commercial Disparagement. Might be puffery. The “I don‟t have to worry about virus‟s” is actionable because Mac doesn‟t have nearly the market share so people don‟t write virus‟s for it. Another defense would be parody, parodying the Best defense is that no particular company has been identified so no one has standing. FTC: Authority to protect consumers. Passes regulations on deceptive advertising. Also acts as executive branch in prosecuting violations of self promulgated regulations. Reason FTC setup that way is because congress wants it to be bi-partisan and not very open to lobbying. Test: 3 Hours all essay Open Book Open Note Open Outline 1 general fact hypo Short Answer questions Policy Question, that is hypothetical, pretend you are a lobbyist hired to write an op ed to support a position of law. Rules are no points. Analysis is all the points. See eejlaw.com for past essays.


								
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