HADM 4890 Prelim 2

Rolls Royce v. Rolls Royce Rizzy

"Even though there was no possibility of confusion by consumers, the rapper's image, could "create negative associations with [Rolls Royce's] products." -

Brookfield case

"Initial internet confusion"- Brookfield case- origin of the concept Ex. sign that says burger king next exit.. you pull off because you are hungry and you like greasy meat, so you go off on the exit and you get off and you have Not Burger king, its some local chain. You were confused. There was a bait, but by the time you got to the register at the local chain, you knew this was not burger king. So there is no infringement in the form of confusion, but they still did something wrong, sort of. It is false advertising. They baited you to the burger king and they switched you to the local chain. The local chain benefitted from this initial confusion. The interest was captured by the initial sign. Consumer based database search function- which they had been called movie Buff, confusion about who was the senior user- Brookfield has a robust movie base meant for movie industry professionals, now that west coast is putting this on the internet and calling it the same name, by the time you use the west coast one, you are not really confused that it is not the more robust one on the Brookfield site. But you got there because you were looking for brookfield's established industry standard. Commentary about how this was going to blow up trademark law because the internet provides so many opportunities for bait and switch, there are a lot of assistant professors out there who need to write articles, they pick at things that are controversial because then if they are right, they often get tenured.

Maxie's Ithaca

- licensed the restaurant concept to some folks in Milwaukee.. allowed Milwaukee to use some of the menus, logos, etc. It's a royalties agreement. Milwaukee received a letter from southern comfort the liquor maker. The original name was "Maxie's Southern Comfort". The letter says cease and desist using southern comfort in the name. There are a lot of restaurants that have southern comfort in the name. He writes a letter back to the liquor maker... Southern comfort is being use to describe more than just this liquor... southern comfort describes a style. He says that its generic to scare them... saying that they should not want to test it. For Maxie's... he buys them time but there is an issue, they have a federally registered trademark, think about transitioning out of this. Will try to get some money from them to help you with this. Worked out a deal where they gave 15k to help us with changing the name. He didn't want to fight them because they were not going to win in a lawsuit over them, for practical reasons. That fear of genericism is a potent one.. simply the fear of it made them change their tune.

Trademark Limits

1. Non-commercial use 2. Geography (for Unregistered marks) 3. Fair use- nominative, product comparison, (Does Coke have any problem using Pepsi in its advertisements? No, that is deemed to be good for the public because you are comparing products. But the product comparisons need to be truthful. How do you refer to something that has a trademark, how do you refer to it except for with the trademark?) 4. Parody- works in TM too

Miller v. California Test

1. Whether the average person, applying contemporary standards, would find that the work, taken as a whole, appeals to the prurient interest. (Community standards) • What community standards? The place where the prosecution is taking place. The internet sort of overrides geopolitical boundaries so could we expect that the standards are likely similar in different parts of the country? No. Ex. Thomas'- they are physically in California but there work is going all over the world. Should it be the most conservative jurisdiction? Avant garde art, ex. Karen Finlay has often been attacked on obscenity grounds, she needs to know what the obscenity grounds are, pornography. • Ex. Opportunity to pipe soft core porn into hotel rooms, set up a company in NY and did everything in NY but they sold their line of movies to hotel companies. They readily put them into hotels because they made money. They got a letter from a prosecutor in Utah.. that they would be prosecuted in Utah for obscenity. This was very watered down, didn't involve sex acts, involves nudity though. This concerns them, then they got another letter from a prosecutor in Alabama saying the same thing. Rather than risk anything, they just sit the whole thing down. To free speech advocates, this would be a chilling effect, they just shut the whole thing down after a threat. From a free speech standpoint, this is not the outcome that anyone would want. • Contemporary community standards means anywhere in the US, if im an Avant Garde artist, my work should cross the hurdle of the lowest common denominator, the most restrictive community.. not desirable • You do not know in advance until there is a jury verdict. Obscenity is the opposite end of the spectrum... we need to have a full blown trial to determine the outcome. No predictability, but it should be "fair" because you go through a full trial to determine the outcome. 2. Whether the work depicts of describes, in a patently offensive way, sexual conduct or excretory functions specifically defined by applicable state law federal level- sexually explicit conduct is defined in 18 U.S.C., but basically is any form of sex or the lascivious exhibition of the genitals or pubic area. State level- varies by state. • Was put in because it was being used as a political weapon, there was previously a very ambiguous definition of what was obscene. 3. Whether the work, taken as a whole, lacks serious literary, artistic, political or scientific value. The first two prongs are based on community standards and the last is based on a hypothetical "reasonable person" standard. What offends in Manhattan, Kansas may not offend in Manhattan, NY Even within the community standard you have the average standard. This is certainly not predictive, especially with the internet.

Defenses to Defamation

1. truth- absolute defense- because this is about false statements, not just injurious statements. it needs to be false in order for there to be an award. 2. privilege absolute privilege- immunity even if defamatory, e.g. between spouses, statements made by witnesses during judicial proceedings, and public officials for statements made in the course of their duties. (legislators, government officials, judicial officers, etc.) A complete defense, e.g. statements made by witnesses during a judicial proceeding are subject to absolute privilege, you want to encourage full, fair, open truth telling during testimony. Actions by our legislator, on the floor of the legislative body are protected by absolute privilege, you want unhindered debate on matters that our legislators are debating for laws. Absolute privilege is tantamount to immunity. If absolute privilege applies, if its defamatory there is simply immunity. Qualified privilege- where the person making the allegedly defamatory statement had some right to make that statement. if qualified privilege applies, the person has to prove the defamatory statement was made intentionally, recklessly, or with malice, hatred, spite, ill will or resentment (depending on the state's law). - Ex. When you are an employer and are called for a recommendation or referral for a former employee, you enjoy qualified privilege to speak truthfully about the worker's history. As long as you are truthful, you are protected, as long as you are relating your recommendation to their employment. i. Ex. I just interviewed Sally Smith, called former employer to find out if she was a good employee. He says that she was late to work everyday and was not a good employee. This is true and it is relating to the work, so you are protected by qualified privilege. If you go beyond that are say "I think she is a drug user" and you have no factual context, you could be sued. Also, if you say something relating to work but it's not true, you are not protected. Has this worked? A lot of people are taught to never say anything except to confirm dates of employment. Therefore, it probably hasn't really worked, because people still fear that they will be sued. E.g. government reports of official proceedings lower government officials such as members of town or local boards citizen testimony during legislative proceedings statements made in self defense or to warn others about a harm or danger. statements made by a former employer to a potential employer regarding the employee I cannot be held to defamation when I say something to a spouse, because of the nature of marital relations.

Trademark Dilution

4 elements: 1. the mark is famous 2. defendant is marking commercial use of the mark in commerce 3. Defendant's use began after the plaintiff's mark became famous. 4. Defendant's use presents a likelihood of dilution of the distinctive value Famousness factors (8) 1. The degree of inherent or acquired distinctiveness 2. duration or extent of the use or mark 3. duration and extent of advertising and publicity 4. geographical extent of the trading area 5. Channels of trade 6. Degree of recognition in the trading areas and channels of trade used by the mark's owner and the person against whom the injunction is sought 7. Nature or extent of the use of the same or similar marks by third parties 8. whether the mark was registered.

What kinds of things can be a trademark?

A color? What can brown do for you? Slogans? There is no substitute American by birth, rebel by choice the happiest place on earth sometimes you feel like a nut, sometimes you don't Coca cola bottle shapes- trade dress Trademark spectrum of strength- not all trademarks are equal For a trademark to work for your business, it has to be strong enough to be protected. Generally trademarks fall into five categories.

United States v. Mohrbacher

A defendant who downloaded two images of child pornography from a computer bulletin board system based in Denmark violated a federal statute prohibiting the receipt of such images, but did not violate a federal statute prohibiting the transportation of such images. The court held that a person who simply downloads an image is not guilty of "shipping or transporting" such an image.

What kinds of things can be a trademark?

A trademark is a word, name symbol device phrase or expression used by a manufacturer or merchant to help consumers identify and distinguish its goods from those of competitors. the right to use a trademark can become exclusive if certain legal requirements are met. Pretty much anything which services to distinguish your product or service can be used.

What does actual malice mean?

Actual malice means that a statement was made with knowledge that it was false or with reckless disregard whether or not it was false. In addition, a plaintiff must show actual malice by clear and convincing evidence rather than the actual burden of proof in a civil case, preponderance of evidence Ex. David Beckham sued a magazine for defamation because they alleged that he had an affair with someone. He has to show that the publisher was motivated by actual malice. His case was thrown out because he could not prove actual malice. The financial element involved in the magazine's desire to publish the story. This is not one of the elements considered but it could have related to Beckham's damages if the case went on. You want a high standard of doubt in a criminal system, the penalty is extremely high, so you want to err on the side of caution, we would rather make a mistake in the criminal system and let someone guilty go free than have an innocent person have their freedom taken away. If a criminal defendant is facing the awesome power of the state to prosecute, the standard should be high. The burden of proof in a civil trial is a preponderance of the evidence. What is a preponderance? Preponderance can be likened to.. more likely than not. 51%. This is a much lower standard. You just need to prove more likely than not. As opposed to, beyond a reasonable doubt. Somewhere higher than preponderance but lower than beyond a reasonable doubt- malice. Tabloids make so much money in the publication of the defamatory statements that they are willing to sometimes pay out.

Playboy v. Terri Welles case

Also called "nominative fair use". How else can you refer to something that is trademarked? Was a playmate in the magazine Play boy. Years later, she started a website, terriwelles.com, some pictures of Terri, offered for subscription for people who want to see stuff, Playboy sued her for using the term "playmate". In the suit, she said she was actually a Playboy Playmate, and how else can she described herself? She should be allowed to describe herself as what she was actually called by Playboy. This is called "nominative fair use"- how else can you refer to something that is trademarked? New Kids on the Block case The new kids sued the newspaper, saying that they were using the trademark, how else do you describe them except by their name? This was honestly not smart, as it was publicity. It was nominative fair use. The newspaper won.

Stratton v. Prodigy

An unknown user posted statements on ISP Prodigy's "Money Talk" bulletin board indicating that Stratton had committed criminal and fraudulent acts in connection with an IPO. IPOs are not super common but they are major events in the life cycle of a business. Stratton vs. Progidy- Progidy was another early internet era ISP. Someone trashed Stratton, an investment firm, on the ISP, said the brokers were criminals and lawyers. Progidy advertised itself as a forum that would be moderated. Said that they were going to moderate the site so that it is kept under control. But when Stratton sued Prodigy, the court said high degree of editorial control, they said they were primary publishers, and this raised a lot of concern in the early internet era and people thought that this was going to kill the internet, and legislators said that this amounts to penalizing self regulation on the internet. Now anyone who has a grievance will sue the ISP instead of the speaker. In its argument that Prodigy was a publisher to the defamatory material, Stratton pointed to various newspaper articles where Prodigy stated that it exercised editorial control over the content of its servers. Stratton also pointed to the fact that Prodigy employed moderators for its bulletin boards, enforced content guidelines, and used software to screen content. The court agreed, finding Prodigy as liable for being a primary publisher. Much hue and cry ensued, the decision was heavily criticized by commentators and legislators who felt it would discourage ISPs from self-regulating content. If this were the case, any editorial control would result in primary publisher status which would severely disincentive ISPs from doing anything like that. This was seen as a troubling development.

Blumenthal v. Drudge

Blumenthal says he was defamed by the Drudge report. AOL contracted with Matt Drudge to provide articles. Doesn't that sound like what a newspaper does? Hire writers to write articles. Also, AOL has final say, that they get to make final controls over his articles. Why aren't they treated like the online version of the NYT or the New York Post? They have no incentive to take it down because they have blanket immunity. Drudge ultimately retracted the story. AOL eventually took it down. The court points to section 230... Yes, AOL broadly is a provider of interactive computer services, but they acted like a newspaper. Section 230 is being interpreted very broadly. Sidney Blumenthal is a prominent politician at this time, people are not likely to shed too many tears over this.

Blurring

Blurred- ex. Burberry plaid in JC Penny

Carafano vs. Metrosplash

Carafano was an actress, stage name was Chase Masters. Someone posted a profile of her on a dating service, a fake profile, in which they said, characterized her as licentious, promiscuous in a robust way, as a result she received a serious of unwanted communications including obscene telephone calls. Started to get propositions regularly, dudes showing up at someone's house ready. This is terrifying to the person to whom it is happening to. When suit is brought against the internet service, they point to section 230. Posted by a third party, okay you are not liable for the posting, but it has now been three weeks, take it down. There is no incentive for them to act rapidly. All of these cases say no liability.

NABISCO, INC. and Nabisco Brands Company, Plaintiffs, v. PF BRANDS, INC. and Pepperidge Farm, Inc., Defendants.

Catdog v. Goldfish cheesy cracker battle Catdog included cheese crackers in the shape of fish, bones and the half cat, half dog character called CatDog According to PF, while adults buy GF, it is usually at children's urging. They argued that Nabisco had chosen a fish shape that would confuse children and would also dilute the power of Pepperidge Farm's famous brand. "Nabisco's use of a goldfish cracker in Catdog will result in a blurring of its famous Goldfish mark. All of the factors favor Pepperidge farm. Pepperidge farm has centered its marketing and promotional efforts around Goldfish and it has spent considerable amounts of money maintaining the image of the Goldfish cracker. In essence, Pepperidge farm has taken a unique and fanciful idea- creating a cheese cracker in the shape of a goldfish, and turned this idea into its signature. Nabisco's inclusion of this signature element as part of the Cat Dog product strikes at the heart of what dilution law is intended to prevent: the gradual diminution or whittling away of the value of the famous mark by blurring uses by others." Over time, the presence of Nabisco's goldfish shaped cracker within the catdog mix is likely to weaken the focus of consumers on the true source of the Goldfish." Pepperidge farm showed that half of the purchases come from kids asking their parents to buy them. Because of the close proximity, it would be easy for the kids to confuse the two. The court held for Goldfish, Pepperidge farm. The CatDog thing is out there now, they just don't include a little fish. That was the only claim to be made by Pepperidge was that the little fish should not be included. Nabisco's use of a goldfish cracker in CatDog will result in a blurring of its famous Goldfish mark. All the factors favor Pepperidge Farm. Pepperidge Farm has centered its marketing on the little fish crackers. The court said that it is not likely that there would be infringement

Children's online protection act

Children's online protection act- separate obscenity standard when it applies to children. But they adopted some of the language from the miller test. But it is a lesser obscenity standard for children.

Avery Dennison v. Sumpton

Claim: dilution Issues: famous? Commercial use? (the boy named Pokey...) As a trademark? Claim: dilution Issues: Sumpton issues vanity email addresses. Avery.net and Dennison.net were available and those were trademarks held by Sumtpon but Avery Dennison are registered trademarks. They are heavily in the labels market. They are bringing a claim for dilution. So what are the issues in a dilution case? Who can bring a dilution case? The TM needs to be famous. Not so much They looked at the factors of famousness and taken together the court finds that while recognizing distinctive trademark, it is a secondary meaning based trademark. They are not made up words or highly distinctive. There is not the high public renown that is awarded to famous marks. The rights of a trademark come into conflict and are balanced in this case by the requirement of famousness. Famousness preserves this balance. As a holder of a non-famous mark, you cannot have an extended degree of control over the use of the term, is a non-commercial use every subject to a dilution claim? No

Coca Cola vs. Koke Co of America

Coca Cola 1886, invented by Pemberton, named for 2 principal ingredients, coca leaves and kola nuts. sold as a valuable brain tonic, an ideal nerve tonic and stimulant, as a cure of headache, neuralgia, hysteria and meloncholy, and of nervous afflictions. Asa Chandler bought the company in 1891, rapid growth thereafter, attracted competitors who tried to use the brand name. Brought suit against koke company of america to prohibit the use of terms "koke" and "dope" as being trademarks of the coca cola company. What does coca cola have to show to allege a successful case of trademark infringement? • US District Court- Koke co is trading off of coca cola's advertising, injunction is granted. On appeal, 9th circuit reverses on the unclean hands doctrine, essentially fraudulent advertising, • They stop using kola nuts because it was not the source of the caffeine and because they were too expensive. The argument was that coca cola was engaged in fraudulent advertising because it was possible that the uninformed would still believe there was cocaine in the product. Getting users by advertising an illicit drug in the drink. Because of that, illicit advertising so you cannot get a remedy from the court. Supreme court reverses again- argument is insufficient, can not use koke, it's infringement.

Tiffany v. Costco

Costco does something called the Tiffany setting (same style) Trademark dilution, they are trading on the name. One of the arguments in this case was that the word Tiffany had become generic. The court disagreed with this/ Costco is trying to make rings for a commercial purpose. Where does your right to sell things come from? Free speech

Controversial Trademarks

DISPARAGING MARKS: A Rare Constitutional Trademark Issue Ex. Red Skins "The government CANNOT REFUSE to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. " - U.S. Court of Appeals, Fed. Cir.

Bally v. Faber

Faber's website- Bally sucks, a complaint page Bally logo with "sucks" right across it Bally sues for both infringement and dilution Not confusing, not commercial. "Courts have held that trademark owners may not quash unauthorized use of the mark by the person expressing the point of view." "This is so even if the opinion may come in the form of a commercial setting. In L.L. Bean, the First Circuit held that a sexually oriented parody of L.L Bean's catalog in a commercially oriented magazine was non-commercial use of the trademark." "If the anti-dilution statute were construed as permitting a trademark owner to enjoin the use of his mark is a non-commercial context found to be negative or offensive, then a corporation could shield itself from criticism by forbidding the use of its name in commentaries critical of its conduct. Faber's website, Bally Sucks, a complaint page. Bally sues Faber, they particularly don't like the fact that he is using their logo, with "sucks" right across it. But, this really clarifies who they are talking about. However, when you put "sucks" over it, you are never going to be confused between the two. It is not confusing, so no infringement. It is not commercial so there is no dilution. Simply because something is commercial doesn't necessarily mean it is commercial. Sucks sites are very valid expressions of free speech, this is now entry-level marketing is that when you create a brand, register likely criticism site domain names to prevent others from doing it.

Parody Examples

Mutant of Omaha example- Mutual of Omaha insurance company Dom Perignon vs. Dom Popignon Champop (popcorn)- they said it is a parody, and no one else laughed, not funny enough, unsuccessful parody. Beware "famous" people- trademark vs. publicity rights- there is trademark but there are actually individual trademark rights Here's Johnny... the world's foremost commodian- making fun of Johnny Carson, but he has individual publicity rights regarding using his name and like-ness and sound. Carson won. You need to be careful making a judgment about what is funny.

New York Times vs. Sullivan

case that determined that public figures need to prove malice, a government official that said that the NYT published materials that said that he did some actions in the Vietnam war that did not reflect well on him. The NYT case went to the supreme case and the USSC said you cannot prevail simply by negligence, you need to provide malice. He is seeking to limit public information about his role in the war.

Ad Run in Hustler Magazine

Falwell sued hustler for libel and infliction of emotional distress because the parody did not make false statements that were implied to be true, it could not be subject to damages under the new york times actual malice standard. the court thus reversed the judgment of the fourth circuit. We conclude that public figures and public officials may not recover for the tort of intentional infliction of emotional distress by reason of publications such as the one here at issue without showing in addition that the publication contains a false statement of fact which was made with actual malice.. i.e. with the knowledge that the statement was false or with reckless disregard as to whether or not it was true. Hustler's pubisher Larry Flynn, a first amendment proponent, probably because he is peddling smut. He had been a regular in the supreme court. He ran an ad targeting Jerry Falwell. He was a prominent politically active minister. He had a big church. He had a family oriented church-type message. Portrays Falwell as an incestuous drunk. Falwell, a religious man, is totally outraged by this. Sued for libel and emotional distress. Libel- does he have a claim for libel? False statement of claim and publication need to be present. Falwell is a public figure so he also needs to prove malice if he is going to claim defamation. This is a high standard. These Campari ads were very popular in the past, in the 80's.

Muppet Treasure Island

Feature's Henson's popular cast of puppets, known as the "Muppets" A new character, Spa'am. Spa'am is the high priest of a tribe of wild boars that worships Miss Piggy as its Queen Sha Ka La Ka La. Although the name Spa'am is only mentioned once in the entire movie.. Henson pokes a little fun at Hormel's famous lunch meat by associating its gelatinous, processed block with a humourously wild beast. Hormel claims infringement and dilution, both ways. Decision- successful parody

Trademark Spectrum of Strength

For a trademark to work for your business, it has to be strong enough to be protected. Generally, trademarks fall into 5 categories: Fanciful/coined- very strong. Ex. Kodak, Xerox, Haagen-dazs dazs (completely made up words are the most deserving of trademark because they do not mean anything else) Arbitrary- strong Ex. Apple, Amazon, Wishbone they are commonly used words but they are connected to something that you would not expect them to be. Suggestive- less strong Ex. Rent-a-wreck, Coppertone connotes an attribute of the product but it requires a leap to get to what the product is Descriptive- weak, maybe not a trademark Ex. InfoScreen Usually they describe the item, they are protected if there is secondary meaning. Generic-not even mark worthy once were powerful but lost their power completely over time. Part of being a trademark can be a bit of a negotiation. There is an inherent issue, when you are forming a business, most folks want to use a descriptive mark. If you start an ice cream company, what do you name it? Haagen Daas or creamy smooth ice cream? The trade off is that the mark is weaker. Ex. Ithaca Beer Company- you are selling beer and you are placed in Ithaca. Made the business decision to go with Ithaca beer and it worked anyway. Can acquire a secondary meaning over time and acquire a trademark. McDonalds- originally could not be trademarked, it was a very popular sur name.

Defamation- Fault amounting to at least negligence

Generally means a failure to exercise due care to determine truth or falsity a public figure must show more than negligence- actual malice, this is a much higher standard. generally, a failure to exercise due care to determine truth or falsity

Hasbro v. Clue Computing

Hasbro is claiming that CC is diluting the mark clue, like the board game, with their use of the mark clue for their software consulting company. One of the things that Hasbro brought forward was a letter from someone about being confused about the Clue website. Ruled that this was an example of actual confusion but not reasonable confusion. When they are talking about confusion.. like some people were looking for Hasbro's boardgames actually went to clue.com and they found CC's website.. they are typing in clue.com to type in the famous board game, and they come to CC. They are talking about confusion... it confusion a part of dilution? No it is part of infringement. They have sued for both infringement and dilution. Their argument for infringement is that consumers are being confused. They say this is not reasonable to be confused about the difference of the two websites. The court goes through all of the factors to clarify and comes up with the answer that no it is not infringement. They look at the 8 factor test for infringement, but ultimately conclude no, there is no infringement here, no actual evidence of reasonable confusion. If you cannot show confusion or any of the other elements here.. you can't show infringement. The court focuses on whether clue is a famous mark.. walks through the criterion. The court says there are many similar mark using clue. Clue is a regular English word, this is a very influential factor in this court's analysis. Ultimately concludes it is not a famous mark. Neither infringement or dilution will provide a remedy when you have two legitimate claims on the use of the domain name. Everyone wants that prime real estate of that domain name with the trademark in it. We know that infringement and dilution analysis is not going to help. Do you care if deltapretzels beats Delta airlines to delta.com. In the early days of the internet, this was more relevant, because more people typed in URLs. But, today, people use search engines. Should there be some other system of allocating domain names? You can allow two different companies to share a domain name. Ex. Scrabble in the US and Scrabble in other countries. There could be a joint use as a way to do. Everyone at delta would appear on the website delta.com This has not worked super well.. but it is a possible remedy. Share a landing page. Generally what we have is first come first serve. The bigger company has no better ability to get the domain name simply because they are more famous. Clue Hasbro could not get clue.com from a business that had a legitimate use for the trademark. CC got their name as part of a joke. They did not intend to infringe though they knew about the clue boardgame. Infringement and dilution are not going to provide a remedy. Shared landing page, give it to the most famous, none of those are satisfying. What the internet started with.. first come first serve.. is where we still are

Prurient

Having or encouraging an excessive interest in sexual matters "She'd been the subject of much prurient curiosity."

Slander per se

If it's slander per se, proving harm to reputation is not required. Disease, criminal actions, misconduct related to profession or business, sexual misconduct False statements involving these items are always actionable. these things are so powerful in injuring a reputation that you do not need to prove a dollar harm.

Defamation: A false statement purporting to be fact

In determining whether a defamation claim is sufficient, the court looks at whether the contested statements are reasonably susceptible of a defamatory connotation The court is going to be looking at the totality of the statement. so could include innuendo, insinuation, implication. E.g. "I think John hits his elderly mother to keep her in line." This is likely to be considered defamatory even though you have tried to couch it in non-factual information Opinion- something not provable as either true or false- is not defamation- "I hate the latest star wars movie."

Defamation and the first amendment

What about the first amendment? Doesn't the first amendment protect speech? congress shall make no law respecting an establishment of religion or prohibiting the free exercise thereof, or abridging the freedom of speech, or of the press, or the right of the people peaceably to assemble, and to petition the government for a redress of grievances. This is limited where it violates the rights of others. Ex. No first amendment right to yell fire in a crowded movie theater.

Blurring

causes a senior mark to diminish in distinctiveness over time death by a thousand cuts junior mark is out there creating connotations in people's minds.

Cubby vs. Compuserve

Internet defamation early days: ISPs being sued Why? Deep pockets, the person who sent out the defamatory statements are harder to find or they were anonymous ISPs were either hit with liability or protected from liability based on how much editorial control they were seen to exert. Don Fitzpatrick published a daily newspaper called "Rumorville". It was news and gossip pieces about the journalism industry. It was available to Compuserve users who subscribed to Compuserve's Journalism Forum, an electronic forum operated by a third party. Robert Blanchard and his company Cubby Inc developed a competing news source called SkuttleButt. They claimed that Rumorville had published defamatory remarks about Skuttlebut. Compuserve was treated as a secondary publisher, they have an ISP providing connections to people to the internet. Why are they sued for the statements of someone else? 1. Deep pocket 2. Locating that person who posted the material might be harder, especially in the early internet. Back then it was easy to be anonymous The plaintiff sued compuserve, and the court said that they were only liable if they knew. But, some would say they are really more like a phone company. If they exercise some editorial degree of whats posted, it feels okay. In addition to suing Fitzpatrick, the plaintiffs brought action against compuserve itself, alleging that as a publisher, Compuserve was liable for the statement's of its authors. The Court said, "Compuserve has no more editorial control over such a publication than does a public library, book store or newsstand, and it would be no more feasible for Compuserve to examine every publication it carries than it would be for every other distributor to do so." So- no editorial control or knowledge of the material, so Compuserve is treated as a secondary distributor. Not liable.

Community vs. National Standard- will it last?

Internet speech is received in every community of the nation. As a whole, the community standards as applied to a nationwide audience will be judged by the standards of the community most likely to be offended by the message. O'Connor- "Adoption of a national standard is necessary in my view for any reasonable regulation of Internet obscenity." Breyer- I believe that Congress intended the statutory word community to refer to the nation's adult community taken as a whole, not to geographically separate local areas. In United States v. Kilbride, the defendant argued that because they cannot control which geographic community their works will enter a geographic community standard for internet works unavoidably subjects works to the least tolerant community in the country. The Ninth circuit agreed, holding that a national community standard must be applied in regulating obscene speech on the internet, including obscenity disseminated by email. To avoid the need to examine the serious First amendment problem that would otherwise exist, we construe obscenity as regulated by 1462 and 1465 as defined by reference to a national community standard when disseminated on the internet. Nevertheless, the court found it to be harmless error and the conviction was upheld. However, in U.S. v. Little, 2010 WL 357933 (11th Cir. 2010), the Eleventh Circuit "decline[d] to follow the reasoning of Kilbride in this Circuit," and held that the District Court did not err in using a local community standard. Jurisdictions have been varied in determining liability for transmission of allegedly obscene material over the internet. So far it has lasted, but it is suffering increasing criticism. A national standard is needed as evidenced by some recent supreme court decisions. National community standard should be applied to the internet. So far there has been no act by congress to change the standard, but we are 25 years into the internet and there has been no change. Slow moving pendulum involving acts by the public. There is not a huge push or lobbying to push for changes in obscenity law. You have a few artists on the fringes and then you have pornography who go beyond pornography.

Defamation and the Internet

Internet: power to simultaneously publish to millions. Defamation is getting a lot of attention in the internet era because of the power of the medium a defamation machine- potential is real Two win a defamation case- a plaintiff must show four things 1. a false statement purporting to be fact 2. publications or communication of that statement to a third person 3. fault amounting to at least negligence (a limited amount of fault is necessary, this means you were negligent in determining whether this statement you are making is true or false.) 4. Damages, or some harm caused to the person or entity who is the subject of the statement All four elements are necessary. If you say something defamatory to the person directly, and they record it without you knowing, and then they publish it, it cannot be considered defamation.

What is a trademark?

It is something used by a manufacturer or merchant to identify the source of goods and services in commerce. Trademarks originally derived from hallmarks which the guild halls of early metalsmiths stamped into their work to indicate who had made them and to attest to the purity of the metal. Hallmark itself is a trademark for greeting cards made by Hallmark cards, although in that mark, "Hall" had nothing to do with guild halls- " hall was the name of the founder of the company. today, nearly anything that can distinguish your goods or services from your competitors can be considered a trademark.

What about the generic store brands that are packaged just like the famous brand?

It seems like trademark infringement doesn't it? How does target put out an x product that looks just like the advertising of the famously branded product. • You would have to think that sometimes the consumers are confused, it depends how similar the things are packaged. • A lot of times it says "comparable to...." • In some ways, that helps us as consumers, you have a choice between the cheap one and the expensive one and you know it is a similar product. • How come the name brands have not shut this down? What about Notkoke brand cola? • How can you be confused... it says "not coke?" • Would the coca cola company care? I think they would. You are using the fact that coca cola is a well known brand. Even though there is no confusion, this would be an example of dilution. • The standard benchmark for infringement is that it would be reasonably likely to confuse consumers. We don't have that there... we the intent argument is not relevant. We need a different cause of action so that would be dilution.

What interests are being balanced by Section 230?

What interests are being balanced by the act? • People's right to be free of defamatory statements posted about them • The right to freedom of speech • The develop of the internet and technology. This scale is really heavily tipped towards one of these interests- the development of the internet. This was intended by congress. Computer and internet industry pushed congress to get this act passed. Which of these agents will push for a change? Not the computer and internet industry... this protects them. There really has been no movement in congress. This a function of where congress has been... not really doing much.

Fanciful

comprise terms that have been invented for the sole purpose of functioning as a trademark or a service mark. Examples include: Exxon, Kodak, Aveeno, Neutrogena

Lack of Knowledge?

Lack of knowledge? Box maker in CA, and you're biggest purchaser is a porno company. Could you be held liable for obscenity. Probably not if they are just manila boxes. You have no knowledge of what's inside. What if you are asked to print titles or pictures that represent the video inside on the box. You have not even seen the video or the pictures that cross a line.. what line? The miller test line. Lack of knowledge of the sense of the jurisdictions is not a defense. Flickr? If you are posting broadly on flickr, you actually have to investigate every jurisdiction and limit your work to the most sensitive jurisdiction and that would be the only way to free yourself from action Is there a jurisdictional defense? Simply placing yourself into the stream of commerce? Didn't seem to work for Thomas You need to know what sensitive jurisdictions feel about your work, yet how can you possibly achieve that? This leads to all the comments by the jurists saying that we need a national standard. Consent as a defense? Thomas could say... the person who ordered this in TN knew what they were getting and they consented to receive it. Obscenity is a crime against the community, not against that one person.

Victor's Little Secret

Lawsuit by Victoria's Secret against a very small shop in Kentucky called "Victor's Little Secret" mish mash of sex stuff. But because he is using a mark that sounds a lot like victoria's secret, victoria's secret brings a suit Is victoria's secret famous? It is nationwide and there are stores all over the country now. Model's careers are made by being victoria's secret. Went all the way to the supreme court, what was the harm suffered by victoria's secret, victoria's secret is not being harmed, victor's little secret is like dirt on your shoe. This is a big barrier... not showing dilution, showing in an actual way how you are harmed by a dilutive mark, why should you have to wait until there is actual harm? Barnum and Bailey- widely known circus... "greatest show on earth." Utah put out a tourist attraction ad that said "the greatest snow on earth." Once the bell has rung, it can't ne un-rung. That is the argument on behalf of victoria's secret, why do we have to wait until there is harm. Holders of successful trademarks successfully lobby congress for a revision to the trademark dilution act. The trademark dilution vision act of 2006 says you just have to show a likelihood of harm A lot of times, the court interprets and the congress acts again to correct what they wanted. Congress' 2006 act reverses the supreme court opinion and now you just have to show likelihood of confusion. Cat dog vs. Goldfish fight- Catdog cartoon character... Pepperidge created a similar cat/dog character. The goldi All they need to show a likelihood of confusion case... not that it is actually happening. Cokesucks.com... is this a parody? Is it funny?

ACPA- Anti Cybersquatting Consumer Protection Act

Liability if- registration of domain name with bad faith intent to profit. Subjective If you register a mark with bad faith intent to profit from the mark, the ACPA is there as a weapon.

Free Speech and Parody

Louis Vuitton just can't take a joke. LV very known for suing to protect its trademark. Judge Furman- better to accept the implied compliment in a parody and to smile or laugh than it is to sue. parody- want you to remember the original and they want you to realize that they are making fun of it. Chewy- Jimmy chew- ex. Dog products based on famous designers. Protected- no one thinks they are actually designer. Protected through free speech.

Panavision v. Toeppen

Many would go and register domain names and sell them at a much higher price to the rightful owner. Then, companies like Panavision started to fight back. Panavision said it is trademark dilution. Toeppen registers Panavision.com and he puts pictures of Pana, Illinois on it. This is in commerce because he bought it with the intent to sell it at a profit, that is the business model. Are they using panavision's trademark as a trademark, by owning the domain name, you make it so that other people who want to use the real product cannot find it easily and it tarnishes the name and makes it hard to find. He has made a business model out of this... hijacking the domain names, he is extracting settlements. If you take someone a little different who does not have a history of this and does not make the offers for the money, what about then? Is dilution a remedy in that case? NO. Selling someone else's trademark name is the issue here. To Klausner, this case is not 100% well decided... but it addresses cybersquatting. There was a jurisdictional question in the beginning. All Toeppen did was send letters to Panavision in CA... he doesn't contest it. "Aiming" doctrine that fits here with jurisdiction. Why 13,000? He is hoping that it will just settle and that it will not go to a court case at all. 13K is certainly what Panavision will need to spend on lawyers and appeals. Toeppen doesn't want to go to court. Is this a commercial use of the mark... probably not unless we impute other things about the defendent.

Muppets

Muppet treasure island features Henson's widely popular cast of puppets, known collectively as the muppets. A new character, Spa'am, Spa'am is the high priest of a tribe of wild boars that worships miss Piggy as its Queen Sha Ka La Ka La Although the name "Spa'am" is mentioned only once in the entire movie, Henson pokes a little fun at Hormel's famous luncheon meat by associating its processed gelatinous block with humorously wild beart. This is more troubling, marketing campaign around tHIS. Any possibility of confusion? Might some people think Hormel put that out to represent that meat product. No, probably not. There was no infringement liability, this was a successful parody. They claimed both tarishment and blurring. Comes down to an assessment over whether it conjures up the original and then smacks it around a little bit. Yeah, it smacks them around but it is not confusing anyone and it is not likely to dilute.

Northland Insurance vs. Bayblock

Northlandinsurance.com criticism site ACPA bad faith? Not clear, Compare with VW case Bait and switch claim? No bait - noncommercial use "Initial interest confusion" Brookfield case- origin of the concept Happens post ACPA- gives Northland another weapon. Criticism site- Blaylock was disappointed with how Northland handed the claim with damage to his boat. They sued claimed ACPA violation. ACPA Bad faith- Not clear. Facts? Compare with VW case. They made an offer of like 500 dollars to buy the site for him, this would have been an easy way to deal with this if they offered enough money for him to sell. He responded with clips of other websites that sold for huge amounts of money, news clipping of those sales of domain names. Had he said, it is worth a lot more to you than that.. I'll sell for "x$". Can you infer bad faith from a more presented counter offer? Maybe you could. Comes down to a court, jury, judge, deciding what that bad faith is because it is a subjective standard. There were a few more facts. They made this sort of demand. That was enough to say bad faith. Really motivated by criticizing them. Testimony was just that he wasn't asking for X$ he was just saying no to the offer at hand. Bait and switch claim? No switch- non-commercial use. There was no switch here... there was nothing he was trying to sell. By using the domain name itself, it prevented us from using it and in some ways that the switch in the bait and switch, was their argument. Not a firm enough argument. Bait and switch on the internet is not a novel claim.

How famous is famous?

Not every trademark holder can claim dilution, only famous trademarks. What is a famous trademark? Is it self evident? Not necessarily. Congress did not intend the FTDA to protect trademarks unless they are truly famous. How to measure a mark's famous is an important and controversial issue in trademark law. Congress provided an eight-factor fame test that courts "may" consider in determining a mark's fame. But no one factor is dispositive, it is very loose. There is no definition of fame in the trademark act. Simply put, courts may have differed significantly in their interpretation of the FTDA's fame requirement. Relevant famousness factors- 1. degree of distinctiveness- must be high Ex. How distinctive is the mark McDonalds? Very significant majority associate it with the burger chain. Why? Because they are inundating us with advertising for decades. 2. duration and extent of use 3. duration and extent of advertising 4. geographical extent of the trading area within which the mark is used- big factor, should be nationwide 5. channels of trade- how diversE? amex? more channels? wider recognition. 6. Comparative degree of recognition in the channels of trade for each. A court decides whether the senior mark is well recognized enough in both markets such that junior use could lead those in its market to associate its goods and services with the goods and services of the senior user (kind of a blurring test)- The court determines whether the senior mark is well recognized enough in both markets 7. Nature/extent of use of the same or a similar mark by third parties. Requires a court to determine the exclusivity of the mark. The more the mark is used by third parties, the less likely it will be a famous mark. Mutants of Omaha- claimed parody... Mutual of Omaha was able to claim tarnishment. Is it famous? Apply the factors and make a judgment.

Dilution Distortion?

Papalvisit.com? Archdiocese Of St. LOUIS Vs . Internet Entertainment Group, Inc. Plaintiffs are the owners of the common law trademarks- "Papal Visit 1999" "Pastoral Visit" "1999 Papal Visit Official Commemorative Items" "Papal Visit 1999, St. Louis " since 1998. Plaintiffs have demonstrated a probability of success of proving that defendant internet entertainment group, has been diluting the distinctiveness of the plaintiff's family of marks by using the name papal visit 1999 and derivatives thereof to describe a sexually explicit internet site and by using the name string "papalvisit1999.com" and "papalvisit.com" as internet domain names which provides internet users throughout Missouri and everywhere else with internet access to these sites. Defendant's use of the plaintiff's common law trademarks as its internet domain names tarnishes the plaintiff's family of marks by associating them with adult entertainment venues that are inconsistent with the positive and spiritual uplifting image plaintiffs have striven to create and maintain in connection with the pope's upcoming visit to St. Louis. Pornographer gets this website, they know that people will click on and be disgusted but they are paid for the page clicks. But are any of these marks famous? They are sued by the Archdiocese of St. Louis. No the pornographer should not be able to make money off of the pope's visit, but there was no remedy other than trademark law to protect the archdiocese. So they claim dilution. The famousness requirement is overlooked to do something right. Dilution as a whole and famousness as a requirement is very difficult to pin down. Anti Cybersquatting Consumer Protection Act- would have given a remedy to Archdiocese had it been in effect at the time. Congress has acted to do something to make law like they are supposed to.

Parody

Parody- this is a hard thing to do. You need to convey two simultaneous messages. That it's the original, but that it's not the original. You have to be funny. If it's not funny, enough so that it shows the viewer that you are making fun of the mark, making fun of it and not likely to have any connection with the mark, -Pokes fun at the mark, but doesn't confuse the public as to the source of the usage. Balances the public interest in free expression vs. avoiding confusion. Ex. LL Bean catalog, Spa'am vs. Hormell. There was a Muppet named Spam and a muppet named Spa'am, they were not so happy that their product was being made into a muppet, and the storyline was offensive to them in some way. Spam is a meat product. LL Bean back to school sex catalog- joke, conveyed both the original mark of LL bean and it was being made fun of because no one would confuse the "wholesome products" for the sex catalog. Successful parody defense. Pokes fun at the mark but does not confuse the public as to the source of the image. Balances the public interest in free expression vs. avoiding confusion. Ex. LL Bean Catalog, Spa'am vs. Hormell But: "Enjoy Cocaine" - Coca Cola)- someone put this on t-shirts... Coca Cola was successful in saying this is not a parody, not even funny. Cocaine's effects on the heart is widely unpredictable. To successfully make a trademark parody- Step one- bring the original mark to mind Step two- exaggerate or distort the original with humor so to clearly distinguish the parody from the original. If you fail, its infringement, not parody. Witness: Mutant of Omaha example Dom Perignon vs. Dom Popignon Champop Beware famous people- trademark v. publicity rights "here's johnny... the world's foremost commodian" Ex. Walocaust and Wal-Qaeda on beer steins and T-shirts. Trademark Parody- a little more To successfully make a trademark parody: step one- bring the original mark to mind Step Two: exaggerate or distort the original with humor

Arbitrary

comprise words that are in common linguistic use but when used to identify particular goods and services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods and services. Examples: Dove, Apple, Sun microsystems, tide bears no relation to the actual product automatically protectable

Planned Parenthood v. Bucci

Plannedparenthood.com registered by anti abortion activists. plannedparenthood.com registered by anti abortion activist, very heavy anti-abortion material. Sells a book about his anti abortion views on the website. But, he has plannedparenthood.com, this is where you land and it is very unlike what you would expect. Could there be trademark infringement? Likelihood of confusion? Probably not once you looked at this. But, the splash page was "welcome to plannedparenthood.com" Dilution? Would this blur, tarnish or be similar to cybersquatting? Is this a commercial use or is this like Pokey? Court enjoined him from using the domain name. They claimed it was commercial because he was selling a book. But the book was about his political views. Klausner thinks it's not.. a free speech protected use. Dilution as a the square peg being squeezed into a round hold. Doesn't quite fit but a tool that is used to do justice. By creating a domain name you are submitting to the jurisdiction of the UVRP. If you have a trademark in the domain name, that is a powerful basis upon which to use the UVRP, you can get it back as long as you don't have the other party with a claim to the mark as well.

Defamation- Publication or communication

Publication or communication of a statement to a third person. -Letter to person: "You are a bedwetter sir"- this is not defamation because it is not a publication. Online? yes, everything online is libel.

Sensie

Section 2d Refusal- likelihood of confusion Sections 1& 45- Specimen refusal Merely a rendering Id of "goods amendment"- required explanation of mark's significance Yoga "gut feeling" inspired app vs. heart app spelled "Sensi"

"Serious redeeming value"

Serious redeeming value- not a community standard it's a reasonable person standard. "As nasty as they wanna be"- hard core raunch rapper, he went to trial, brought in sociologists who spoke to the value of his work. He was successful in persuading the supreme court

Hobby Blog Monster Fish Keepers vs. Monster energy drinks

Served cease and desist papers regarding use of the mark A rare win for the little guy over monster. Blogger sought the help of law students in Boston

Heckler's veto

Standard of the country that is most country and most willing to veto

United States v. Matthews, 11 F. Supp. 2d 656 (D. Md. 1998).

The court denied defendant reporter a First Amendment defense to charges of violating federal child pornography laws, where defendant downloaded and transmitted images of child pornography as part of newsgathering for a story. The court held that since the pictures are not protected by the First Amendment, defendant could not avail himself of a First Amendment defense on the basis that he only used the pictures as a means of researching his story.

Trademark infringement

There is a balance between trademark infringement and non-infringing uses of the mark. There is a requirement of a likelihood of confusion. if no confusion, there is no conflict. e.g. delta airlines and delta faucets But what about trademark dilution? Does the near monopoly over the mark's use overwhelm non-infringing uses? Where is the balance? The famousness requirement.

Why do public figures need to show malice? What policy considerations are behind it?

There is so much information out there. Public figures have a natural podium to correct information. But, when the law around this evolved, that was not necessarily true. By being a public figure, you have inserted yourself into the public discourse. You are inviting publication about you, you are inviting discussion about you. Being a public figure, you have inserted yourself into the discourse, you need to accept the risk and have a thicker skin. The discussion is beneficial to society, you do not want to hinder it. Public officials also count as public figures. They have the same burden of proving malice. Governor suing a reporter for a defamatory statement has to show actual malice.

Pokey

There was a boy who was 11 or 12 and his nickname was Pokey. He was known widely as this. He put up a website... pokey.org. It was the type of stuff you would expect from an 11 year old. Pokey was sued by the company that owns Pokey, the little rubber horse figure. Is Pokey the boy who is posting childhood musings really infringing on the trademark? No, because his use of the mark is not in commerce. Test of a trademark- likelihood of confusion, that is. Consumers are likely to confused by two sodas with the same name, but what about this website. Is the proposed mark so close to an existing mark that it is likely to confuse the intended consumer as to the source of the goods? When determining likelihood of confusion, courts use several factors derived from a 1961 case, these factors sometimes known as polaroid factors may vary slightly as federal courts apply them throughout the country.

Virtual Works v. Volkswagen

They had vw.net... they want to volkswagon saying they would sell the domain name to the highest bidder and you have 24 hours to make a decision about if you want to buy it. When they made this domain name, they knew that it could possibly be confused for volkswagon. What did Virtual Works do? Computer software. If you look at the bad faith factors listed in the case, one of them is, the person's prior use if any in connection with the bonafide offering, this would cut against bad faith. Apparently they are using virtual works but not really using VW. There is a coercive auction demand. In depositions, they state that the domain name was used for the company but they would sell out to volkswagon for a lot of money. Statement that when they formed, yes they were aware of Volkswagon and they would sell out for a lot of money. They could have gone a little further with the use of VW.. they have a business named Virtual works. They easily could put themselves into that category. The fact that they were admitting that they were thinking about selling.. seems to be bad preparation. No real question here that VW is famous although that is not a requirement. How distinctive is the mark. This law seems to have set out with accomplishing its purpose. Brief flurry of legislation about the internet in the 90's. Some of it has gone well and some of it has gone less well.. like section 230. But there has been a long silent gap since, in terms of internet legislation. Technology moves so fast that slowness in this area is generally a good thing... lawmaking should take into account what is going on and try to move forward. This is not always easy when things are moving so fast. If they did not admit to what was in their brains, all they would have is the coercive auction style. Maybe that would have been enough. They have vw.net not vw.com. Every vw.net wanted something with vw in the domain name, and the manufacturer already had vw.com. Maybe VW wants this.... And let them decide how to distribute the domain name. Then that results in the ill-considered phonecall to the trademark office. For those reasons, most companies and cybersquatters have gotten smart. They don't pitch it to the target and they know the target will probably come to them.

US v. Thomas

Thomas couple has a bulletin board system. How does a bulletin board differ from a webpage? They are text based listings and then by selecting the listing, you could download what was behind it. The Thomas' were selling pornographic material through the internet. To join, you need to call them, communicate with them, give a credit card, a number and an address. Sentenced in San Jose for 3 years and 2.5 years. The original complaints amounted to crimes that would've been 55 years in prison. The authorities had already investigated them in CA and found it was not obscene. But, in a more sensitive jurisdiction it is jail time. They knew where the purchasers were, because they were collecting that information directly. It's not like this was a claim based simply on posting something. They were engaged in transactions where they had to know where they were sending things. Tells you that if you're gonna ship stuff somewhere, you need to know the sensitivity of the jurisdiction. Could the Thomas' have made a judgment as to whether their material was obscene in Tennessee? What would they have had to have done? They would have to go state by state in determining the community standards. This isn't a bright line rule, it is very cumbersome and you cannot always figure it out. The Thomas' knew where they were sending it.

Trademark Infringement

Three elements: 1. Valid mark 2. ownership 3. Use causes a likelihood of confusion. Likelihood of confusion (8 Factors): 1. Similarity overall 2. Similarities of the goods and services 3. Strength of the mark 4. Evidence of actual consumer by consumers. 5. Intent of the defendant 6. Physical proximity of the goods in the retail marketplace. 7. Degree of care likely to be exercised by the consumer 8. The likelihood of expansion of product lines

Is use as a domain name a trademark use?

To find infringement or dilution, You must have... Use as a trademark Use in commerce or for commercial purposes.

Balance w/ Trademark infringement and dilution

Trademark infringement- balance between the TM infringement and non-infringing uses of the mark. The balance is the likelihood of confusion, if there is no confusion there is no conflict. E.g. Delta airlines and delta faucets. What about trademark dilution What is the balance? Does the near-monopoly over the mark's use overwhelm non-infringing uses? The balance in dilution is the requirement of famousness.

Anti Cyber Squatting Protection act of 1999

Trademark owners are facing a new form of piracy on the internet caused by the acts of cybersquatting. This refers to the bad faith, and abusive registration of internet domain names in violation of the rights of trademark owners.

Comparing Trademark to Patent and Copyright Law

Trademark: Constitutional Foundation: Commerce clause- see the trademark cases 100 US 82 (1879) Basic Goal: to protect consumers Patent and Copyright Law: Constitutional Foundation: patent and copyright clause Basic goal- protect the author/inventor, to promote progress

Trademark Dilution

Use of a famous mark in commerce by another that blurs or tarnishes the famous mark protects the investment made in the mark by the owner protects a select class of marks- ones with such powerful associations that even non-competing uses are damaging "Recent" in statutory law (1995) Associating the famous mark with something unsavory? When porn was shown in movie theaters, they would chose titles that mimicked popular movie titles. Edward Scissorhands porn parody... makers of the original movie have a claim for dilution. No one is going to think that the makers of Edward Scissorhands made the porn movie. It both blurs and tarnishes. Since seeing that, you cannot think of one movie without thinking of the other. Candyland.com... what if you went to this website and there was porn there. The makers of candyland can sue.. are they going to win on infringement? No. dilution is the remedy. requirements: the mark is famous, defendant is using the mark in commerce, defendants use began after the mark was famous, defendant's use presents a likelihood of dilution of the distinctive value of the mark NOTE: Consumer confusion is irrelevant! Competition is irrelevant. Dilution: protects a select class of marks, ones with such powerful associations that not even non-competing uses are damaging. Very close to a monopoly in a mark- concerning? Critics of dilution- it contradicts the tenet that trademark rights are not property rights, but rather merely the right to exclude others from use on similar goods. And.. anti competitive too... greater risks for new business owners attempting to select a trademark, while senior mark users gain power with which to defeat new non-infringing uses. Having a trademark is not a property right.. doesn't give an exclusive right to use, protections consumer associations to evaluate the mark.

Walmart

Wal-ocaust and Wal-Qaeda- on beer steins and T-shirts- Target is the one selling this. What is the point of selling this? Walmart would object. What are you trying to say? Is this really about selling t-shirts or beer steins. No it is about how Walmart employees are treating poorly and comparing it to the most horrific things you can imagine. This was really about making a political commentary about Walmart and its hiring and labor practices. Even though it is a commercial context it is not really commercial.

Obscenity

What is obscene? Subject of passionate debate. Why? If obscene- no first amendment protection Practitioner that famously said "I know it when I see it." Admission that it is hard to define. Why is it that debate over something with obscenity is so passionate. Has to do with the first amendment... if it is obscene, even though it's a form of speech, it enjoys no first amendment protection whatsoever. Not all speech is protected, there are limits. Ex. when speech brings harm, there is no right to yell fire in a crowded movie theater Pornographic but not obscene, protected. "Congress shall make no law infringing the freedom of speech or association." - First amendment. What is the point of the first amendment? To protect political debate.. All ideas even those having the slightest redeeming social importance, are protected. Hateful ideas enjoy protection. Obscenity falls across the line.. utterly no social importance, they can prohibit our rights, and is done so. No protection at all. But, whether something is obscene or not is a legal preclusion. The problem in legal rule making, between bright line legal rules, obscenity law is anything but a speed limit because you do not know if it is obscene until after a court declares it obscene, there is really 0 advanced note.

U.S. v. Thomas

Why isn't this case about the community standards on the internet issue we've discussed?

Zeran v. AOL

Zeran is from Seattle. After the Oklahoma city bombing, an unidentified person posted on AOL that Zeran is posting these highly offensive shirts. If you are interested, call "Ken" at his home number. He receives a waterfall of calls. At one point it is every couple of minutes that he is getting a death threat or a nasty call. It was amplified by the radio station that also reported on it. By the time things were subsiding, he was still getting 15 a day. He brings suit against the anonymous person and also against AOL. It is a lot harder to be anonymous today. To get an account on AOL you need to give personally identifying information. You can still go to lengths to obscure your identity but it is harder. Anonymity on the interest is a good thing was an idea that was promoted in the early computer days. AOL is sued because they have deep pockets and you can locate them. They are not sued for the publication but for failing to take it down after they are notified. The claim is that they should be treated like a secondary distributor, once you have knowledge, your obligation should be to take it down. The claim is based on them failing to take it down. AOL says section 230... content posted by another user and AOL squarely fits within the legislative purpose. Immunity to AOL. Congress' purpose was to remove disincentives for self regulation. Is that how AOL has acted? No, they used the immunity to say that they do not need to do anything. It would be nice if AOL acted quickly to reduce harm to others... but they are within the confines of the law. Is Zeran asking that AOL be treated as a publisher or speaker? Zeran is saying treat them as a distributor.. the law actually says don't treat them as a the primary publisher. So was the court right?

Jane Doe vs. AOL

a child sex predator posted advertisements for video taped sexual acts with children including a particular boy, the mother of the boy learned that this was posted on AOL and that this occurred in a chat room on AOL, she asked AOL to pull this down, this guy is offering a sex tape of her child, this is a criminal act but that is a separate issue. AOL doesn't pull it down. When she sues, AOL points to section 230.. total immunity. Now, we are in trouble, that this has gone perhaps too far. Section 230 after all represents a balancing of interests. What interests are being balanced by section 230? Many courts has shown a discomfort with how this is playing out. It seems like we are splitting words between publisher and speaker. Distributor is something different and Klausner thinks that they could have interpreted this differently. Many people have called for amendment to this act, but it hasn't happened.

tort

a civil wrong the cause of action for a defamation falls under a tort. Someone said something or wrote something and I am looking to right the defamation. If you are hearing the words, it needs to be slander, if you are reading the words it needs to be libel.

defamation

a statement that injures a third party's reputation so, if i am talking to you, I cannot defame you, because it needs to involve a third party.

service mark

a trademark used in connection with a service

tarnishment

connects senior mark to unsavory or shoddy goods Candyland example the pornography company that got candyland.com spent about 1M dollars between acquisition of the domain name and advertising, they dumped into this without ever having done any legal analysis of what the outcome would be, any TM lawyer would have been able to tell them they would have a problem with porn at candyland.com Domain names are often chosen impulsively without a whole lot of thought.

The history of trademark

early potter marks (rome and greece) 10th century merchant marks middle ages: guild halls 19th century industrial revolution ushers in modern form of trademark.

Generic marks and fair use

fair use requires the use of the mark in good faith genericide- can invalidate a valid trademark registration. Uber may become generic, used descriptively. Doesn't happen as much because trademark law is enforced.

sliding scale of protection- trademark

fanciful and arbitrary, suggestive- inherently distinctive descriptive- requires proof of secondary meaning generic- no trademark protection How strong a trademark is depends on where on the spectrum a trademark falls. Trademark is not a monopoly in the use of the word. There is a tension between the owner of the trademark and the public's use of the word. Apple is a trademark but it is also a common word that we use all the time. Trademarks offer protection as the identification of the source of goods in a particular class of goods. No competition between Apple computers and Apple car tires, for example. The consumer association with the source of the goods is not in competition. But once they are on the internet, every "apple" company wants the domain names. There is a huge rash of conflict over domain names. The strength of the mark always becomes an issue. The original use of a trademark was to protect consumers and how they associate symbols with goods and services. Recently trademark law has developed to protect company's investments in those marks. If we allow increasingly protection of the mark itself, we get closer and closer to a monopoly in the use of the word. Protection against even non-competing use. Markholders rights vs. the use of our rights as the public to use the word

Loss of rights

genericide, non-use, improper use, failure to police, failure to renew, cancellation • Failure to police- Users on ebay sell Tiffany goods, and most of them are counterfeit. Tiffany sued Ebay. They said that eBAY was making money off of the sale of the counterfeit goods. There was no recovery for Tiffany against ebay. It is up to the markholder to police the mark. Tiffany has to take action against those sellers. Ebay has no liability for trademark infringement as a result of the users seeking to trade in counterfeit goods. Another example: fly fishing rods, someone selling the fly fishing rods made in China, low cost, undercutting the company but using the trademark. His first instinct is to sue Ebay as they are profiting off of it in tiny little piece • Failure to renew- you need to keep your mark current, you need to re-register it • Cancellation- ex. Washington RedSkins trademark because it is offensive

Trademark

is a word, phrase, symbol or design or a combination of words, phrases, symbols or designs that identifies and distinguishes the source of the goods of one party from those of others. Trademark protection is the law's recognition of the psychological function of symbols. Avery Dennison Corp v. Sumpton Two goals of trademark law: protect consumers who have formed particular associations with a mark and to protect the investment in a mark made by the owner. Under trademark law- ownership is decided based on a priority of use.

Defamation Damages

libel- the damages are presumed, they don't need to be proven. You do not need to show in a pecuniary dollar way how much you were damaged. slander- you must show actual economic loss, except slander per se- damages are presumed, need not be proven. this is a category of damages that are so heinous that you do not need to prove

Proper use- avoiding genericide

once a trademark, not always a trademark the mark is originally distinctive, and protectable, but becomes over time generic. a trademark that is "too successful"?

Communications Decency act of 1996

passed after reaction to Stratton v. Prodigy. Contained section 230: No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider. In analyzing the the availability of the immunity of this provision, courts generally applied a three prong test. A defendant must satisfy each of the following three prongs to gain the benefit of the immunity. This gives websites that have interactive forums that receive content from users some protection against users. This goes against the previous case. 1. The defendant must be a "provider or user" of an interactive computer service. 2. The cause of action asserted by the plaintiff must treat the defendant as the publisher or speaker of the harmful information at issue. 3. The information must be provided by another information content provider, i.e. the defendant must not be the information content provider of the harmful information at issue. In passing the act, the house explicitly stated its intent to overturn the result reached in the Prodigy case. Act's explicit purpose: to promote the continued development of the internet and other interactive services and to remove disincentives for the development of screening and blocking technology. Now, we have cases like Zeran. What the default has been is instead of treating common providers like youtube as a secondary publisher, communications decency act, as its been interpreted treats them all like common carriers even if they know and have been told. When they are sued they can point to section 230 even if they knew about defamatory material. Speaker can certainly be sued. But people usually want to sue the deep pocket. This is not about forgiving defamation, but it is saying that providers of internet infrastructure should not have to face these suits. They would be fielding law suits constantly, but what the cases are going to reveal is that by treating them as common carriers we are not actually achieving what congress set out to achieve in passing section 230. Contrary to the way Prodigy was penalized for moderating and adding additional services, congress wanted to incentive blocking and screening technologies and incentive the services that we wouldn't anticipate when this was passed. They wanted the ISPs to moderate and exercise editorial control.

Traditional defamation law

primary publishers of defamatory material could be held liable regardless of whether they wrote it or not. A newspaper which exercises editorial control over their newspaper- the newspaper is equally libel as the author because they bear control over what they publish and they can check facts before they publish. If you are the NYT and your writer has defamatory material in the article, the newspaper is equally liable What about the news stand or book store that sells it? No they are considered a secondary publisher. They are only libel once they have been told that there is defamatory material, they need to withdraw the material they are on notice. Common carrier- phone company is never going to be liable for defamatory statements between person a and person b, they are the infrastructure. 1. primary publishers- bodies that exercise editorial control, they are liable for defamatory statements, newspapers, authors 2. secondary publishers- only liable if there is knowledge- bookstores, newsstands. 3. Common carriers- i.e. phone company, never liable This was the basic structure heading into the internet age. Categorization from never to always. Degree of editorial control over the material.

secondary meaning

primary significance of the term in the minds of the consuming public is not the product but the producer. Factors: consumer surveys, amount and volume of advertising, volume of sales, length and manner of use, direct customer testimony. At the beginning, McDonald's was not trademarkable.. it was just someone's name. Now, it has acquired secondary meaning.

How to get a trademark

similar to copyright but more based on brand name. Ex. Starbucks, Big Red If you are going to start a business, the first thing you should do is to get the trademark. You want to make sure no one can limit the use of the name of your own business. 1. USPTO- Registration is merely descriptive. But... it is not a palace? 2. Kubs- the pairing of the word "gin" with "palace" creates a fanciful mark. fanciful- then you can trademark 3. USPTO- the individual terms retain their descriptive significance within the composite mark and the composite mark creates no new meaning. 4. Kubs- palace means- the "official residence of an emperior, a king, pope or other sovereign ruler." Trump v. Caesar's World 5. USPTO- You win Trademark lawsuits did not used to be that prevalent. Counterfeits infringe on the trademarks and these counterfeits are now well known.

Defamation liability

sliding scale based on control 1. primary publisher- speaker or author, newspaper always liable 2. secondary publisher/distributor- newsstand, bookstore, library -only liable if they knew or should have known of the defamatory material 3. Common carrier- e.g. phone company, telegraph company, never liable. Sliding scale is based on how much control the party exerts. This sliding scale worked well for a long time but then comes the internet.

collective marks

special purpose marks such as "IGA" for members of the independent grocers alliance and certification marks (the good housekeeping seal of approval or the underwriters lab marks.) they all work in more or less the same way, so just call them all trademarks

slander

spoken statements of defamation

Gazette Newspapers Inc vs. New Paper Inc

the court applied the FTDA to protect the use of gazette, but there are at least seven major newspapers around the country that use gazette in their titles. The FTDA provides an extraordinary remedy to trademark owners creating a broad zone of exclusivity around famous marks. Bad decision- Klausner thE FTDA's use of non-exclusive factors in the determination of a mark's fame makes it difficult to predict whether any mark will be determined to be famous. Three examples of truly famous diluting marks are: DUPONT shoes, BUICK aspirin, and Kodak pianos Other "famous marks" include BUDWEISER beer, POLO clothing, Toys r us retail toy sales. Conversely, trademarks such as Bongo, weather guard, and golden bear have been denied protection under the FTDA. Said that it was dilution in using the term Gazette.. clearly it was not a very distinctive mark as Gazette is used in dozens of major newspapers and probably hundreds of minor ones.

Trademark infringement

the use of a mark, in commerce, and as a trademark, so as to create a substantial likelihood of confusion between the sources of goods test of a trademark- likelihood of confusion- is the proposed mark so close to an existing mark that it is likely to confuse the intended consumer as to the source of the goods when determining a likelihood of confusion, courts use several factors derived from a 1961 case. These factors are sometimes known as the polaroid factors: may vary slightly as federal courts apply them throughout the country. Factors: 1. strength of the senior user's mark (the established trademark). the stronger or more distinctive the senior user's mark, the more likely the confusion. e.g. maid in america the cleaning services. This is not a strong trademark, it is very descriptive, not even sure it is trade-markable. This would go against finding a confusion because they have a week mark to begin with. 2. Similarity of the mark- the more similarity between the two marks, more likely there is confusion. pledge and promise? dutch masters and little dutchman for cigars? Consumers can be confused because the marks mean the same thing in the case for pledge/promise. Pledge is a totally different word than promise. Because the meaning exists, there is an argument that exists for confusion. In the other case, the dominant term dutch makes them similar marks. 3. Similarity of the products or services. the more that the senior and junior user's goods or services are related, the more likely the confusion. E.g. when used on bleach is more likely to be confused with chlorox, but lexus on automobiles was determined not to confuse users of lexis database services. 4. Likelihood that the senior user will bridge the gap, if it is probable that the senior user will expand into the junior user's product area, the more likely there will be confusion. 5. the junior user's intent in adopting the mark, if the junior user adopted the mark in bad faith, confusion is more likely. 6. evidence of actual confusion- proof of consumer confusion is not required, but when the trademark owner can show that the average reasonably prudent consumer is confused it is powerful evidence of infringement. 7. Sophistication of the buyers- the less sophisticated the purchaser, the more likely there is confusion. 8. quality of the junior user's products or services, in some cases, the lesser the quality of the junior user's goods the more harm is likely from consumer confusion. • No one factor is weighted more, not even all the factors may be relevant in a particular case, and some may be more potent in a particular case.

Suggestive marks

those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion, as to the nature of those goods and services. Ex. Coppertone, 711, Glad, Greyhound suggests some characteristic automatically protectable Descriptive: describes some characteristic/quality protectable if there is a secondary meaning A mark is considered merely descriptive if it describes an ingredient, quaLITY, characteristic, function, feature, purpose, or use of the specified goods and services. Examples include: Spray N' wASH, hamburger helper, park n fly

Proper use- avoiding genericide

use the r symbol where appropriate distinguish from the surrounding text by using: quotation marks- "mercedes- benz cars" larger sized print all capital letters initial capitals distinctive print color use the tm/SM symbol where appropriate

Generic Marks

words that have ceased to serve as trademarks identified with category or type of product, rather than one company or source. Aspirin, jello, escalator, thermos, kleenex, xerox

generic

words used to name a class or category of a product or service and are incapable of functioning as a mark denotes a general class of products Examples include: zipper, escalator, aspirin, butterscotch, shredded wheat, thermos, cellophane, car, computer

libel

written statements of defamation

Fair Housing Council of San Fernando Valley v. Roommates.com, LLC, 521 F.3d 1157 (9th Cir. 2008) (en banc).[43]

• Immunity rejected: • the service elicited information from users concerning their roommate preferences (by having dropdowns specifying gender, presence of children, and sexual orientation), and the manner in which it utilized that information in generating roommate matches (by eliminating profiles that did not match user specifications), the matching service created or developed the information claimed to violate the FHA, and thus was responsible for it as an "information content provider." The court upheld immunity for the descriptions posted by users in the "Additional Comments" section because these were entirely created by users If the site creates the options that you can select based on... then the site is posting and creating the discrimination. The site is saying you can protect based on ex. National origin, which is protected by the fair housing act.