"Trademark Law - PowerPoint"
Trademark Law Nov. 27, 2006 Chapter 12 – Trademarks as Speech Chapter 13 – Remedies Trademark Law 1 Review - Federal cause of action Anticybersquatting Consumer Protection Act Also known as the ACPA 15 U.S.C. 1125(d)(1)(A) provides a civil action by the owner of a mark any mark protected under Lanham act without regard to the goods or services of the parties, that person Trademark Law 2 Review - 15 U.S.C. 1125(d)(1)(A) bad faith intent to profit from that mark; and registers, traffics in, or uses a domain name that- identical or confusingly similar to a distinctive mark; identical or confusingly similar to a famous mark; dilutive of a famous mark Trademark Law 3 Review - 15 U.S.C. 1125(d)(1)(B) determining “a bad faith intent to profit” consider factors (but not limited to) Defensive factors registrant’s rights in the domain name; legal name or commonly known by name; bona fide offering of any goods or services; noncommercial or fair use of the mark Trademark Law 4 Review - 15 U.S.C. 1125(d)(1)(B) determining “a bad faith intent to profit” consider factors (but not limited to) Offensive factors registrant’s intent to divert consumers to its site for commercial gain or to tarnish or disparage the mark registrant’s offer to sell domain name registrant’s uses fake contact information when registering registrant’s registration of multiple domain names that are TMs fame of mark within the meaning of subsection (c)(1) of section 43. Trademark Law 5 Review – In Rem Actions Allows for suing the domain name if you cannot obtain per. Jdx. Over the registrant. Split in circuits whether or not in Rem actions in infringement and dilution are provided Trademark Law 6 Review – Remedies for Cybersquatting In persona – Stat. or actual damages, attorney’s fees and costs In rem action - injunction only (a court order for the forfeiture or cancellation of the domain name) N.B. – always ask for the transfer! Trademark Law 7 Review - Understanding ICANN ICANN coordinates the assignment of the following identifiers that must be globally unique for the Internet to function: Internet domain names IP address numbers protocol parameter and port numbers Trademark Law 8 Review - Uniform Dispute Resolution Policy AKA the UDRP application of policy by contract ICANN - Registrar - Registrant Jdx is always proper Fast and cheap (but not always good) “Appeals” to court Trademark Law 9 Review - URDP - Prima Facie Elements Complainant has burden to prove all of the following three elements: The D.N. is identical or confusingly similar to Complainant’s mark; Respondent has no rights or legitimate interest in the D.N.; and Respondent registered and is using D.N. in bad faith.\ Trademark Law 10 Other Use of Marks and the Internet Geico v Google Trademark Law 11 Trademarks as Speech Referential Use Promotional Use Parody Trademark Law 12 Referential Use Use of Plaintiff’s mark to refer to the Plaintiff’s product How does the speaker refer to the mark-owner if not by the mark? Nominative fair use doctrine (9th Cir.) Contrast with Fair use doctrine Use of Plaintiff’s mark to refer to Defendant’s product classical fair use Trademark Law 13 Nominative Fair Use Defendant uses the plaintiff's trademark to describe the plaintiff's product, not its own Court crafted doctrine (9th Cir.) Trademark Law 14 Nominative Fair Use Test 1. the product or services in question must be one not readily identifiable without use of the trademark; 2. only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and 3. the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Trademark Law 15 Nominative Fair Use Sales or Servicing of trademark-bearing products Examples We specialize in Volkswagen Repairs" on a auto shop's sign For Sale: 1965 Ford-Shelby Mustang GT-350 Trademark Law 16 Nominative Fair Use Often used when the defendant needs to refer to the plaintiff's product (the use describes the plaintiff's product) it allows society to a way to identify the plaintiff's products Trademark Law 17 Nominative Fair Use How far is too far? Must not use the mark in a manner which is likely to suggest to prospective customers that there is an affiliation of sponsorship See Playboy v. Terri Welles [supp @ 222] Trademark Law 18 Comparative Advertising Is Comparative Adversiging a “Nominative Use” under the 9th Cir. test? Examples "Advil contains a non-prescription strength of ibuprofen, the medicine found in the prescription brand, Motrin” "If You Like ESTEE LAUDER... You'll love BEAUTY USA." Trademark Law 19 Fair Use Often applies in cases with a descriptive mark it protects the right of society to use words or images in their primary descriptive sense, against the trademark owner's claims to exclusivity Trademark Law 20 Fair Use Descriptive uses Examples THE DENTISTS' CHOICE FOR FIGHTING CAVITIES -- in advertisement describing CREST toothpaste SWEET-TART -- describing cranberry juice flavor Trademark Law 21 Fair Use Referential use defendant's use of the plaintiff's trademark refers to something other than the plaintiff's product See 15 U.S.C. 1115(b)(4) Trademark Law 22 Fair Use Test (do you recall this??) 1. Defendant's use of the term is not as a trademark or service mark; 2. Defendant uses the term "fairly and in good faith"; and 3. "Only to describe" its goods or services. Trademark Law 23 Remedies Injunctive relief Preliminary and permanent injunctive relief Disclaimers Profits and/or Damages Statutory Damages Corrective advertising Attorney’s fees Monetary Damages Trademark Law 24 Preliminary Injunction Each Cir. Has its own standard for when a Prelim. Injunction is appropriate. (I won’t test on the differences between each circuit’s test…) In Church of Scientology (2nd Cir.) Moving party demonstrates: Irreparable harm; and Either: Probability of success on the merits; or Sufficiently serious questions going to the merits to make them fair grounds for litigation and a balance of hardships tipping decidedly in the moving party’s favor. Trademark Law 25 Preliminary Injunction Standard Ninth Circuit Law, a plaintiff is entitled to a preliminary injunction in a trademark case when they demonstrate: A combination of probable success on the merits and the possibility of irreparable injury OR the existence of serious questions going to the merits and that the balance of hardships tips sharply in his favor Trademark Law 26 Disclaimers Can be used to avoid the problem of objectionable infringement by significantly reducing or eliminating consumer confusion by making clear the source of a product. Disclaimer should be in close proximity to the infringing statement The infringer bears the burden to demonstrate the effectiveness of the proposed disclaimer Trademark Law 27 Recalls and Destruction Courts have broad powers to fashion equitable relief As long as a court isn’t abusing its discretion, these remedies are enforceable 15 USC 1118 provides for destruction of infringing goods In any action arising under this Act, in which a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a), or a willful violation under section 43(c), shall have been established, the court may order . . . [the infringement] shall be delivered up and destroyed. Trademark Law 28 Monetary Damages Profits and/or Damages 15 USC 1117(a) recovery of defendant’s profits; damages 1125(a) 1125(c ), if willful 1125(d) sustained by plaintiff (up to treble); and costs of the action Note the tone of the cases re awarding profits and bad faith/willfulness Trademark Law 29 Treble Damages 15 USC 1117(b) for action under 1114(1)(a) - the court shall ... start at treble damages court may adjust lower if equitable but not as a penalty for action under 15 USC 1125 – the may ... start at actual damages court may adjust higher if equitable up to treble but not as a penalty Trademark Law 30 Statutory Damages 15 USC 1117(d) statutory damages $1,000 - $100,000 per domain name for violation of 1125(d)(1) the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, as the court considers just Trademark Law 31 Corrective advertising General Compensatory damages Why: to make the Plaintiff whole How do you unwind a harmful advertising campaign (one that, for example, deeply penetrates the public consciousness)? With Corrective advertising How much should P have to pay to “correct” its mistake? Trademark Law 32 Attorney’s fees Only in an “exceptional case.” When equitable considerations justify such award Not just b/c you win Willfulness is not required to prove an exceptional case Must involve culpable conduct on the losing parties side… such as: Exceptional is not limited only to the infringing acts Trademark Law 33 Bad faith Fraud Malice; or Knowing infringement The end. Trademark Law 34