Trademark and Unfair Competition - UVA Law

Flusche 1 of 9 Trademark & Unfair Competition – Outline I. Introduction (2) – reduce consumer search costs! II. Distinctiveness (2) A. Lanham Act – descriptive marks require 2nd meaning B. Generic Terms – What is genus? Does public think of term as referring to genus? C. Non-Verbal Identifiers – must be distinctive; can‟t be functional D. Edge of Trademark Protection – product design requires 2nd meaning – origin = producer of tangible object III. Functionality (3) – utilitarian OR aesthetic (competitive need to copy) IV. Use (3) A. Prerequisite for Rights – use in commerce – test: totality of circumstances – theory: investment, notice, EE B. Constructive Uses – pre-exploitation uses can be treated as when use began – intent-to use (3 yrs) C. Abandonment – presumption after 3 yrs of non-use w/ intent not to reuse OR genericide V. Registration (4) – notice, prima facie right, incontestable in 5 yrs – disparaging, deceptive, geographic VI. Scope of Rights (4) A. Tea-Rose Doctrine – remote junior user (good faith, separate area) – neither party gets injunction B. Territoriality Principle – use must be in U.S. – exceptions: token use, famous mark VII. Confusion-Based Liability (5) A. Evolution of Standard – started w/ confusion of goods, then source, now affiliation w/ TM owner B. Prerequisite: Unauthorized “Use” – D must use P‟s mark in way that would‟ve acquired rights for D C. Factors Analysis – proxies for actual confusion – strength, similarity (marks / products), intent, sophistication D. Initial Interest Confusion – can‟t lure customers – diversion of customer, purchase decision, credibility E. Post-Sale Confusion – making a knock-off is BAD – buyers are confusing other consumers F. Reverse Confusion – junior user adopts mark, floods market w/ ads – people think senior is bad actor VIII. Dilution (6) A. Evolution – allowed for truly famous marks – distinctiveness can be inherent OR acquired B. Tarnishment – drugs, nudity, sex, harm to reputation (decided by ct) C. Blurring – lessening strength of P‟s mark – don‟t confine to factor list D. Trade Dress – no dilution protection yet E. Misappropriation – TM doesn‟t extend here – but can‟t alter competitor‟s mark for your commercial benefit IX. Permissible (Unconsented) Uses (6) – balance TM, competition policies VS. free expression A. Fair Use – classic (describing D‟s goods, in good faith) – nominative (using TM to describe P‟s goods) B. First Sale – protect consumers & TM owner – material diffs (what D did, consumers think, P‟s goodwill) C. Parody – can use TM as a target, but not a weapon X. False Advertising (7) – materiality, P injured, standing, commercial ad – P must find a false stmt XI. Rights in One‟s Persona (8) A. Identity, Attribution, Endorsement – consumer protection – watch out for confusion (A) vs. deceit (B) B. Right of Publicity – property rights – celebrities can exploit their fame XII. Remedies (8) – enjoin (foot on P‟s side) – $ (damages, profits {burden shift, unjust enrichment, deterrent}) Flusche 2 of 9 I. Introduction A. Def: word, design, symbol, or combo; used by manufacturer to identify goods & distinguish from others B. Types: brand name, trade dress, service mark, certification mark C. Differs from copyright, patent, unfair competition – acquisition, essence of right, duration, etc D. Incentive: to provide info to consumers about goods/services marketed, to have consistent quality E. GOAL – reduce consumer search costs F. We want competition on the merits, but not unfair competition II. Distinctiveness A. Lanham Act 1. Can acquire TM rights, then register them 2. Registration = nationwide protection, constructive notice, incontestability 3. “Merely descriptive” marks can‟t be registered w/o 2nd meaning 4. IF mark is distinctive, it can be registered B. Spectrum 1. (Abercrombie, p. 51 – “safari” for jackets) – maps to Lanham registration a. Generic – can‟t be protected b. Descriptive – no protection at first – but protectable w/ 2nd meaning c. Suggestive – imply qualities – TM from day 1 d. Arbitrary / fanciful – technical TMs – that‟s all they do 2. Fish-Fri – protectable, but fair use allows competitor to use it (Zatarain‟s, p. 58) 3. Tests: dictionary, imagination, competitor‟s need, competitor‟s use 4. Patents.com = descriptive – look at commercial impression of mark, in context of goods (Oppedahl, s p. 7) 5. Why draw line? a. Easy marks don‟t deplete the language – there is plenty left over for others b. Descriptive – must let competitors be able to describe what they make 6. 2nd meaning = TM meaning = all we care about! – just prove “single source” – customer surveys C. Generic Terms 1. Term either born generic or becomes generic (becoming the name of the thing) 2. Policy – competitors need term to describe the product‟s category – save search costs 3. Lanham Act § 14 – primary significance of mark to the relevant public a. Old test – 9th Cir – if consumers don‟t care about the source, word becomes generic – BAD 4. Genericism trumps all other TM law policies 5. Rationale! – lots of wiggle room for lawyers, but always get to the policy-based reasons behind them 6. (Filipino Yellow Pages, p. 69 – not generic – who are you? – P‟s lost – didn‟t police mark enough) 7. Two steps: What is genus? Does public think of term as referring to genus? a. (Dial-A-Mattress, p. 76 – look at mark in entirety – 888-mattress != genus of phone shopping) b. (SteelBuilding.com, s p. 13 – don‟t define genus too narrowly – refers to array of services – but still no 2nd meaning) 8. Prevent genericide: use as adjective, be consistent, don‟t use plurarl/possessive, capitalize first letter, put TM or R when in use, police others! D. Non-Verbal Identifiers 1. Basic rules – distinctiveness = prerequisite, functionality = limit 2. If inherently distinctive, trade dress gets protection 3. (Two Pesos, p. 93 – Taco Cabana had nonfunctional, distinctive trade dress) 4. (Qualitex, p. 102 – color can indicate source over time – need 2nd meaning – inconsistent w/ Two Pesos!) E. Edge of Trademark Protection 1. Need to be sure what we‟re protecting conveys distinctiveness 2. Product design NOT protectable as TM w/o 2nd meaning (Wal-Mart, p. 113) a. Don‟t want to deter competitors – protecting w/o 2nd meaning would invite lawsuits b. Places burden of showing 2nd meaning on P – makes TM suit less likely c. BeVier – TM isn‟t about protecting competition – really just make sure design has 2nd (TM) meaning Flusche 3 of 9 d. Doesn‟t overrule Two Pesos – just means that design of clothing can‟t be TM‟d 3. Product design CAN get protection WITH 2nd meaning (Slokevage, s p. 28 – Flash Dare jeans) 4. Overlap of copyright and TM – courts getting concerned about protection creep 5. Materially previously copyrighted that is now in public domain can NOT be TM‟d a. (Comedy III, p. 138 – clip of Three Stooges in background of movie scene – trade dress argument) 6. “origin,” § 43(a) = producer of tangible object, not producer/author of intellectual work a. (Dastar, p. 143 – redo of old movie series – labeled w/ new studio‟s name – ok) b. Lower courts read broadly – absence of copyright = strong signal of NO TM protection c. Consumers only concerned w/ who actually makes the product – that‟s all TM focuses on III. Functionality A. Similar to genericism – weary about functional marks, involves policy judgment, applies to trade dress B. First producers look to TM to secure protection for design of useful articles C. Test – separate kinds of functionality (Morton Norwich, p. 155 – spray bottle) 1. De facto – performs function 2. De jure – competitive need to copy D. Evidence – expired utility patent, other alternatives, advertising utility, design can‟t be dictated by function E. Can‟t monopolize pleasing design – test: will it hinder competition to protect? (Wallace, p. 168) F. Two tests for functionality (TrafFix, p. 199 – can‟t make the sign w/o dual spring) 1. Utilitarian – essential to use/purpose or affects cost/quality 2. Aesthetic – significant non-reputation-related advantage (= competitive need to copy) G. Utility patent = strong presumption of functionality 1. Vornado, p. 180 – 10th Cir – fan 2. TrafFix, supra – dual spring sign H. Inwood (1982) – essential to use/purpose or affects cost/quality I. TrafFix puts foot on scale for less TM protection J. One way to read TrafFix, Morton-Norwich factors stand – look at availability of alternates (Valu, p. 208) K. Could read TrafFix as having changed the test – focus on right to copy (Eppendorf, p. 215) L. Clothing features affect cost/quality & need to copy, but many ways to make a catalog (A&F, p. 217) IV. Use A. Prerequisite for Acquiring Rights 1. Must use mark in commerce to have ownership rights 2. First-in-time = first-in-right 3. Lanham § 45 – tightened up – “use in commerce” = limit of Congress‟ power – “bona fide use” 4. Why – require investment, notice, evidentiary 5. Test = totality of circumstances 6. Using mark in free software counts, if widespread & identifies source (Planetary Motion, p. 230 –coolmail) 7. Prelim activities – should provide some basis for protection, especially when they person actually uses later 8. Might interpret use in special way, to allow natural expansion of business (Brookfield, p. 240 –moviebuff) 9. Analogous use – actual use can be tacked to prior analogous use – but can‟t tack Moviebuff.com to store 10. Factors: open & notorious, directed to relevant public, sufficient to inform purchasers 11. Surrogate use – someone other than TM owner uses mark, inures to benefit of TM owner B. Constructive Use 1. Def – pre-exploitation uses can be used by TM owner, may be treated by courts as when actual use began 2. Token use – technical TM use – sell single item bearing TM to someone – allowed registration a. Congress amended § 45 to eliminate this 3. Now have intent-to-use – get 3 years to actually use 4. Can‟t enjoin use, once person files ITU (Warnervision, p. 258) 5. Defensive use – B uses after A filed ITU, B opposes – A wins, but only if & until A makes actual use 6. Offensive use – B uses & files after A filed ITU, A opposes – A wins, but only if A makes actual use 7. Can‟t be P in lawsuit for TM infringement, unless you‟ve used the mark 8. § 44 – implements Paris Convention – allows foreign mark registration in U.S., IF: Flusche 4 of 9 a. Registered in foreign country b. Bona fide intent to use in commerce c. “if eligible” – refers to § 2 – can‟t register surname w/o 2nd meaning (Rath, s p. 51) C. Abandonment 1. Lose TM right when you stop using it & abandon it – goes into public domain 2. § 45 – 3 years of non use w/ intent not to reuse OR act/omission, causing mark to become generic 3. Servicing old trucks, selling promotional items NOT enough use to keep mark (Emergency One, p. 281) 4. P proves 3 years of non-use – burden SHIFT to TM owner – must show intent to resume 5. Can‟t have assignments in gross or naked licensing – must police your TM 6. University allowed to register marks, even though hadn‟t tried for years – public used them to identify university = surrogate use (Wisconsin Badgers, p. 301) V. Registration A. Advantages – nationwide notice, prima facie EE of valid & exclusive right to use, incontestable in 5 yrs B. Exclusions (can‟t register mark, if): 1. Disparaging – § 2(a) – TM office becomes kind-of language police 2. Deceptive – § 2(a) – never registerable – but deceptively misdescriptive marks registerable IFF 2nd mean a. Test (Budge, p. 338): i. Is term misdescriptive of character, quality, construction, or use of goods? ii. Is misdescription the primary significance of the mark? iii. Is the misdescription likely to affect the decision to purchase (materiality)? – Y = deceptive b. Hard to believe why we shouldn‟t allow deceptive marks, if they have 2nd meaning 3. Geographic a. Test – these goods come from that place (recognizable place & public associates goods w/ that place) b. Primarily geographically deceptively misdescriptive, no registration IFF misdescription is material i. (California Innovations, p. 349 – treat this like 2(a) “deceptive,” but deny registration under 2(e)(3)) 4. SUMMARY: a. Deceptive – not protectable b. Deceptively misdescriptive i. If primarily geographical, not protectable ii. Else, protectable WITH 2nd meaning c. Not deceptively misdescriptive – protectable w/o need for 2nd meaning C. Incontestability 1. = conclusive EE of ownership, right to use 2. Basically, this is quiet title system – time limit on cancellation proceedings brought against you (5 years) 3. Exclusive right to use is presumed at registration – becomes conclusive in 5 years 4. Defenses: fraud, abandoned, misrepresenting product, prior user, Antitrust, generic, D (laches, estoppel) 5. § 33(a) – D can raise any defense allowed in CL action 6. Impact – PTO keeps descriptive marks from registration, unless they have 2nd meaning 7. Can‟t challenge incontestable mark for descriptiveness (Park „N Fly, p. 370) VI. Scope of Rights A. Tea-Rose Doctrine 1. Remote junior user defense – no infringement if used in good faith in a separate area (United Drug, p. 381) 2. Marks aren‟t really the same – they look the same, but mean different things in different regions 3. Advertising – goes to “remote use” – starts to become the same mark a. But also can go to good faith (or lack thereof) 4. No trade / no TM – look at trade in specific geographic areas 5. Factors: travel, assumption, senior‟s market penetration, junior‟s good faith, zone of natural expansion 6. Lanham – remote user can still use, but can‟t neither can win against each other – need likely confusion a. Court won‟t grant injunction unless there is confusion – P must use TM there (Dawn Donut, p. 387) b. Both lawyers can tell their clients “we won” – What-A-Burger, p. 81 7. Concurrent use – first to use gets nationwide registration, subject to concurrent use Flusche 5 of 9 B. Territoriality Principle 1. Must use TM in U.S. to register here – foreign use doesn‟t count 2. First in U.S. gets to keep out foreign company, gets TM registration in U.S. (Person‟s Co., p. 400) a. Cf: United Drug – 2 keeps 1 out of region – no requirement of good faith 3. Exception: token use – U.S. company can‟t block foreign entry w/ tiny use 4. Exception: famous mark = 2nd meaning + ID by substantial % of relevant U.S. market (Gigante, s p. 87) a. Still serves TM goals – really just worried about consumer confusion 5. Use is prerequisite AND it determines scope 6. Advertising in U.S. isn‟t sufficient, unless accompanied by sale of goods 7. Significant expansion & departure of law – “use in commerce” = ad in U.S. + Americans buy it a. (International Bankcorp, p. 406 – Luttig (majority) vs. Motz (dissent)) VII. Confusion-Based Liability A. Evolution of Standard 1. CL deceit – consumer sued infringer of another person‟s TM – consumer deceived into product was B‟s 2. Want producers to control their goodwill – permit suits btw them – protects consumers 3. Early days, courts took narrow view: a. Confusion of goods was only cause of action you had (Borden, p. 449) b. Consumer might believe source of the goods was the same (Fleishmann Distilling, p. 452) 4. NOW, what matters = consumer might affiliate product w/ TM owner B. Prerequisite: unauthorized “use” 1. TM use theory – limit actions – D must use P‟s mark in manner that would acquire TM rights (absent P) a. Alternate – use requirement plays different role here – D needs some leeway to freely use P‟s mark b. “Use theory” makes sense – prevent disruption of TM meaning by other uses of P‟s mark 2. D not liable for reserving “complementary” phone number (Holiday Inns, p. 460 – but can‟t explain why) 3. Test – look at particular context – will D‟s use sufficiently disrupt meaning of P‟s TM? 4. Possible to identify good reasons for D not to be liable (Google, s p. 114; WhenU, s p. 188) 5. D might be safe if no sales, just criticizing P (Boseley) – but criticism is key! C. Factors Analysis 1. List of factors varies among Circuits 2. Factors are proxies for actual confusion 3. Mainly: a. Strength of P‟s mark (but doesn‟t this cut against confusion?) b. Similarity of marks c. Similarity / relatedness of products AND likelihood that P will bridge the gap d. Intent of D (intent copy = inferred intent to confuse) e. Actual confusion f. Sophistication of consumers 4. Confusion is a finding of fact – appeals court should defer to lower court 5. Cases: Virgin, p. 472 – McDental, p. 478 – Libman, p. 485 6. Internet – more likely to find confusion (Goto.com, p. 506 – no EE; judge just knows it) 7. Discount goods – factors favor P – but D wins b/c of policy – this marketing saves consumer search costs! 8. Promotional – P has TM merchandising right – consumers know about licensing (Boston PHA, p. 512) D. Initial Interest Confusion 1. Lanham – competitor can‟t initially lure customers away 2. Meta-tag use of P‟s mark – simple free-riding – always bad (Brookfield, p. 521) 3. Using P‟s TM as D‟s domain name – not acceptable (Brookfield, p. 521) 4. If D isn‟t making money, simply criticizing P, favors D (Falwell, s p. 146) 5. Harms: diversion of customer, different purchase decision (caused by false impression), initial credibility 6. Limit to competition / loss of sales by P – don‟t let TM have web dilution cause of action 7. Unlabeled banner ads, linked to P‟s mark – must try on the facts (Playboy, p. 528) – label! 8. If no actual confusion at point-of-sale, no initial interest confusion for shape TM (Gibson, p. 152) Flusche 6 of 9 E. Post-Sale Confusion 1. Can‟t produce “knock-off” kit for famous car – P loses control over reputation, product (Ferrari, p. 535) 2. D isn‟t confusing the consumers who buy the kit – but buyers are confusing other consumers F. Reverse Confusion 1. Reverse situation of traditional (or “forward”) confusion (new entrant puts senior‟s TM on product) 2. Junior user adopts mark, floods market w/ ads – people will think senior user is the infringer 3. Fact intensive cause of action 4. Strength of mark – different than “forward” confusion G. Contributory Infringement 1. TM owners want to catch ppl who supply the materials to infringe 2. Cause of action for contributory infringement 3. Only triggered when D is willfully blind to infringing activity (Inwood) VIII. Dilution A. Evolution 1. Typical state statute – likelihood of injury to business or dilution of TM 2. Very difficult to see how consumers are hurt by diluting use, esp. if not confused 3. Allied – dilution is bad, sort-of like misappropriation – property right in your business‟s reputation 4. Like confusion, there are three types of dilution: a. Blurring – traditional sense – cf: confusion of goods b. Tarnishment – associating TM w/ negative things – cf: confusion of source c. Misappropriation – D free-rides on P‟s TM – cf: confusion of sponsorship 5. Tests (from state courts): no dilution w/o competition, factors, presumption from similarity of marks 6. SC eviscerated Lanham, requiring actual dilution (Victoria‟s Secret, p. 571) 7. Dilution Revision Act a. Seems to expand dilution – but limits it to truly famous marks b. More explicit about exclusions of protection (fair use, parody) c. Covers tarnishment d. Distinctiveness – inherent OR acquired B. Tarnishment 1. What tarnishes? – drugs, nudity, sex, harm to reputation (decided by ct) 2. Toys “R” Us cases, pp. 592 – adult toys v. guns – guns aren‟t tarnishing enough, but adult things are C. Blurring 1. Sweet factors – end up conflating fame & distinctiveness – looks too much like confusion a. Similarity of marks b. Similarity of products c. Sophistication of consumers d. Predatory intent e. Renown of senior mark f. Renown of junior mark 2. Congress‟ factors – whether user of mark intended to associate; actual association 3. Don‟t confine yourself to list of factors yet – Nabisco, p. 596 D. Trade Dress – no dilution protection yet – would give protection for goods configuration that is not patentable E. Misappropriation 1. TM doesn‟t extend to misappropriation – courts limit protection 2. Can use “Beanies” to describe Ty Beanie Babies (Ty, p. 602) 3. Can NOT alter competitor‟s mark & use it for your commercial benefit (Deere, p. 606) a. It‟s OK to use logo to identify competitor – but can‟t make fun of competitor at the same time IX. Permissible (Unconsented) Uses – balance TM, competition polices VS. free expression A. Fair Use 1. Can use TM for comparative ad – free-riding, but saves search costs & aids market entry (Channel, p. 696) 2. Classic fair use (§ 1115(b)(4)) = defense against incontestable mark, IF used: Flusche 7 of 9 a. Otherwise than as a mark (i.e., to describe D‟s goods) b. Descriptively of D‟s goods/services c. Fairly, in good faith (interpreted in Century 21:) i. Comparison must be helpful / useful / really necessary ii. Only so much of P‟s mark is used as necessary iii. The less prominently featured, the more fair 3. D has no burden to negate confusion, to claim fair use – confusion irrelevant to fair use (KP, s p. 181) 4. Nominative fair use – D uses TM to describe P‟s product a. Product in question isn‟t readily identifiable w/o use of TM b. Only so much of TM is used as is reasonably necessary c. User doesn‟t suggest/imply sponsorship by TM owner d. Theory – there are some things you can‟t talk about w/o using TM (ex: “we repair Ford cars”) 5. Difference: a. Classic – D is using P‟s mark to describe b. Nominative – D is using P‟s mark as a mark 6. Issues to remember: a. Relationship of defense to likelihood of confusion b. What D must prove to make out the defense 7. Names – difficult – ppl should be able to use their surnames – but names become well known B. First Sale 1. Context – someone buys TM‟d goods – D repackages / refurbishes goods & resells – goods have changed! 2. Gray market goods – goods purchased abroad & imported 3. Theories: a. Protect consumers – TM owners do this, vicariously – producers compete directly on quality & price b. Protect TM owner – encourage investment in goodwill, protection of reputation 4. D can use TM, if the good fits into the category of what consumer thinks he‟s buying (Champion, p. 720) a. BUT if reconditioning is so extensive that it would be a misnomer to use TM, can NOT do it 5. Real task of courts – police quality control by TM owner – make sure it is genuine a. Ex: Halls put sell-by date on bags – can‟t sell to discount store – these aren‟t real Halls cough drops 6. Issue – whether there are material differences between D and P‟s products – significant to consumer? a. Ex: importing tractors not allowed – can‟t get serviced in U.S. – material difference (Gamut, s p. 199) 7. Questions to ask: a. What D did to the product b. What will consumers think when encountering the product? c. To what extent is P‟s goodwill at stake? C. Parody 1. Can make a target out of TM, but can‟t use it as a weapon to make fun of another (Mattel, p. 742) 2. TM‟d literary title is ok, unless no artistic relevance to work itself OR misleads public about work (2nd Cir) X. False Advertising A. CL – no cause of action – except: passing off, if P had monopoly on particular product B. Lanham 1. Original – courts inferred cause of action for competitor suits for false ad 2. TMRA – § 43(a) amended – Congress blessed courts, enacted § 43(a)(1)(B) C. Advertising – lowers consumer search costs (provides info about products, consumer tastes, etc) D. Harms of false ad – consumer (if he thinks ad has false msg), competitors (stolen business) E. Courts – false ad only protects interest of commercial competitors – consumers don‟t have standing F. Who‟s hurt by false stmt? 1. Source or sponsorship – TM infringement – consumers deceived into buying D‟s product, thinking it‟s P‟s 2. D‟s product 3. P‟s product G. Elements Flusche 8 of 9 1. Materiality – judicial interpolation 2. Whether P has been injured – P just demonstrated that D is a competitor 3. Standing – § 43(a) – only competitors, not consumers 4. Commercial advertising / promotion – commercial speech, by D competitor, to influence consumers H. False stmt of fact 1. Questions: literally false, false by necessary implication, false by implication, puffing 2. P must persuade ct that ad makes false stmt, hopefully literally false OR by necessary implication a. This avoids having to do consumer survey 3. Literal = consumers understand it immediately 4. Implied = needs more mental work 5. P unable to persuade ct that ad actually made claim that all roaches died in 24 hours (Clorox, p. 765) 6. Puffery – claim fails, since there‟s no objective proof of falsity – consumers know it (Papa John‟s, p. 775) 7. Materiality – § 43(a)(1)(B) – courts use this as gatekeeper – false stmt must matter to purchasing consumer XI. Rights in One‟s Persona A. Identity, Attribution, Endorsement – consumer protection aspect 1. § 43(a)(1)(A) – action for infringement of unregistered TM (and trade dress) – confusion-based 2. § 43(a)(1)(B) – based on deceit 3. Mimicking singer‟s voice in radio ad = confusion (P had EE of actual confusion – Waits, p. 794) a. Might fit this in B (deceit) – false stmt that Waits endorses Doritos 4. Tiger Woods – no TM in name/likeness – seems contrary to Waits – but focus on confusion re sponsorship 5. Only competitors get standing under (B) – but Waits could sue since competitors couldn‟t really vindicate 6. Attribution a. TM “origin” = producer of the tangible good (Dastar, p. 143) b. Possessory credit not allowed under (B), but can‟t prevail under (A) after Dastar (King, p. 802) i. But “based upon” credit ok, since movie would be prohibited under copyright – it IS “based upon” c. No major right of attribution in American law, but strong norms against plagiarism B. Right of Publicity – property rights 1. Source – statute and CL, depends on the state 2. Emerged from right of privacy – don‟t want over-intrusive, gossip – also can‟t use likeness w/o permission 3. Turned into – right of celebrities to exploit their fame (Carson, p. 828 – almost natural right to make $) 4. Since celebrities have property right, producers can remedy injustice w/ negotiation (Coase, White, p. 831) 5. If D only takes value out & doesn‟t add anything, not ok (Presley, p. 844) XII. Remedies A. Injunction 1. Most cases start & stop here a. Damages are hard to prove, uncertain b. Win TM case by proving ppl are likely to be confused 2. Preliminary a. Usually hard to get in civil litigation b. But TM cases get court‟s foot on P‟s side c. Test: i. Threat of irreparable harm to P, if preliminary injunction is denied ii. Balance of hardships tips in favor of P iii. Likelihood of success on the merits d. Usually presume irreparable harm to P, if P can prove likelihood of success – damage to reputation! e. Ex: Goto.com, p. 869 (need a lot of money to litigate against Disney) B. Monetary 1. Lanham § 35 governs a. Ct can modify award, if damages are inadequate or excessive b. Damages are compensatory, NOT punitive c. Deep uncertainty about goal of TM Flusche 9 of 9 2. Allows damages (P‟s loss) and profits (D‟s gain) 3. Damages – P has burden of proof – how much were you harmed by D‟s action? a. Tend to allow money for corrective advertising, esp. in false ad cases b. Sometimes allow damages for discounts that P had to put in place 4. Profits a. P proves: D infringed my mark, D made a profit b. Burden shifts to D – really the key in “profits” c. Problem – don‟t want to give P a windfall; causation link btw D‟s profits & TM infringement d. Conceptually – license fee to D – D pays for unjustly enriching himself e. Deterrent – take the profit out of what D did f. Willfulness? – circuit split: a factor in some courts; others require it – forum shopping risk XIII. Domain names A. Anti-Cyber Squatting Consumer Protection Act – Lanham § 43(d) B. UDRP – uniform domain name dispute resolution policy – procedural vehicle – arbitration