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TRADEMARK

© 2015 Peter S. Menell

TM Basics

PI Simulations

TM Case Management

Digital TM

Trade Dress

These Ronald McDonalds are not affiliated with McDonald’s Corporation and were individually selected as paid endorsers of Taco Bell Breakfast but man, they sure did love it.

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McDonald’s Response: Imitation Is the Sincerest Form of Flattery

TRADEMARK BASICS

What is a Trademark?

Establishing TM Protection

Infringement

Defenses & Remedies

Dilution

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Trademarks: New Frontiers

1991 1997+1971 1977

.com

1987

Clarke’s Osewez®

High impact, fresh, floral fragrance reminiscent of plumeria blossoms

1964

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Guiding Principle

Customer Perceptionas a test of:

· VALIDITY

· INFRINGEMENT

What Is a Trademark?

§ 45. The term “trademark” includes any word, name, symbol, or device, or any combination thereof –

(1) used by a person, or(2) which a person has a bona fide intention to use in commerce

and applies to register on the principal register establishedby this Act,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Anything that identifies and distinguishes a source

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Distinctiveness Spectrum

Arbitrary&

FancifulSuggestive

DescriptiveLaudatory

Geographic NamePersonal Name

Generic

Inherently Distinctive Secondary MeaningRequired ™

California Cooler

• viewing mark as a whole: geographically descriptive term + genericterm could become a distinguishing mark.

Composite Marks: Anti-Dissection Rule

California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451 (9th Cir. 1985) (finding that composite mark had sufficient secondary meaning to support a PI)

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Best Buy!

What Is “Secondary” or “Acquired” Meaning?

Descriptive Secondary/Acquired Meaning

ASSESSING DISTINCTIVENESS

SECONDARY MEANING SURVEY

• Do you associate GATORADE with beverages from onecompany or more than one company, or do you not know?

• Do you associate VITAMINWATER with beverages from onecompany or more than one company, or do you not know?

• Do you associate ICED TEA with beverages from onecompany or more than one company, or do you not know?

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ASSESSING GENERICISM

NAME BRAND/% COMMON/% DON’T KNOW/%

STP 90 5 5THERMOS 51 46 3MARGARINE 9 91 1TEFLON 68 31 2JELLO 75 25 1REFRIGERATOR 6 94 -ASPIRIN 13 86 -COKE 76 25 -

TEFLON SURVEY

“Is ____ a brand name or a common name?”

Pop

CokeSoda

Soda

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ESTABLISHING TM PROTECTION

FEDERAL LAW

STATE LAW

• Federal Registration

• Statutory Protection• Common Law

• False Designations of Origin andFalse Descriptions §43(a)

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ACTUAL USE

CONSTRUCTIVEUSE = APPLICATION

TO REGISTER

PRIORITY OF USE

• priority of use, not priority of invention, controls• even small amount of usage sufficient if followedby continuous commercial utilization

Tacking: Evolution of the Quaker Oats Logo

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Advantages of Registrationon Principal Register

1. Enhanced Remedies (especially for counterfeiting) in Federal Court

2. Prima Facie Evidence of Validity and Ownership

3. Opportunity to Achieve “Incontestability” of Mark

4. Nationwide Constructive Notice of Ownership and Use

5. Right to Bring Federal Cause of Action

6. U.S. Customs Recordation and Opportunity to Stop Importation of Articles Bearing Infringing Mark

Federal TM Registration

Types:

• Use-Based Applications §1(a)• Intent to Use Applications §1(b)• Foreign Applications §44

Registers:

PRINCIPAL REGISTER

• Trademark

• Service Mark

• Certification Mark

• Collective Mark

SUPPLEMENTAL REGISTER

Words, shapes, and symbols capable of becoming valid trademarks

Note: Federal registration does not create a trademark. It merely records a valid trademark.

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Federal Registration Process:Bars to Registration §2

(a) immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection . . .

(b) Consists of or comprises the flag . . . or other insignia of the United States, or any State or municipality, or of any foreign nation, or any simulation thereof

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or [of a deceased US President during the life of his widow without her consent]

(d) Likely to cause confusion with a non-abandoned mark: unless the Director approves concurrent registration, subject to appropriate conditions and limitations

(e) (1) merely descriptive or deceptively misdescriptive; (2) primarily geographically descriptive, except as indications of regional origin [registrable under §4(collective and certification marks)]; (3) primarily geographically deceptively descriptive; (4) primarily merely a surname; (5) comprises any matter that, as a whole, is functional

Bars to Registrations: §2(a)Immoral, Deceptive, Scandalous, Disparaging Marks

™

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Bars to Registrations: §2(a)Immoral, Deceptive, Scandalous, Disparaging Marks

™

March 17, 2014Given that ‘REDSKIN’ in the mark is a derogatory slang term that refers to, and is considered offensive by, American Indians, registration of the applied-for mark must be refused. REFUSAL TO REGISTER “Washington Redskin Potatoes”

June 18, 2014TTAB cancelled the six Washington Redskin trademarks held by the team as disparaging to a “substantial composite of Native Americans.”

CANCELLATION“Washington Redskins”

Bars to Registrations: §2(a)Immoral, Deceptive, Scandalous, Disparaging Marks

Sept. 23, 2013“The Slants” is disparaging to Asians. REFUSAL TO REGISTER -- TTAB

Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?

Apr. 27, 2015En Banc Review granted

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Federal Registration Process:Bars to Registration §2

(a) immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection . . .

(b) Consists of or comprises the flag . . . or other insignia of the United States, or any State or municipality, or of any foreign nation, or any simulation thereof

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or [of a deceased US President during the life of his widow without her consent]

(d) Likely to cause confusion with a non-abandoned mark: unless the Director approves concurrent registration, subject to appropriate conditions and limitations

(e) (1) merely descriptive or deceptively misdescriptive; (2) primarily geographically descriptive, except as indications of regional origin [registrable under §4(collective and certification marks)]; (3) primarily geographically deceptively descriptive; (4) primarily merely a surname; (5) comprises any matter that, as a whole, is functional

Personal Name Marks

General Rule: proof of secondary meaning required for protectionand registration on Principal Register (registrable under §2(f))

Fair Use Defense:

• Marks capable of achieving secondary meaning can be registered on SR

Not registrable on Primary Register if “primarily merely a surname” §2(e)(4)

§2(f) Except as expressly excluded in paragraphs (a), (b), (c), (d), (e)(3), and (e)(5), nothing in this chapter shall prevent the registration of a mark which has become distinctive of the applicant’s goods in commerce.

• Early cases: Absolute right to use one’s own name

• Modern Rule: balance in using one’s own name with protection of senioruser and the consumer against likelihood of confusion

• Qualified/Limited Injunctive Relief: allowing use, subject to disclaimer,the addition of a prefix, suffix, or middle initial, or change in thestyle, size, or color of the mark

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Geographic Designation

Not registrable if §2(e)(2) primarily geographically descriptive, except as indications of regional origin [registrable under §4(collective and certification marks)]

§2(f) Except as expressly excluded in paragraphs (a), (b), (c), (d), (e)(3), and (e)(5), nothing in this chapter shall prevent the registration of a mark which has become distinctive of the applicant’s goods in commerce.

Consumers do not associate product with place

Arbitrary

“Cuban Cigars”(from North Carolina)

Geographic Designation

Descriptive

Deceptive Non-deceptive

“Waltham Watch Co”(registrable under §2(f))

Misdescriptive

Secondary Meaning

No Secondary Meaning

Not registrable if (e) (2) primarily geographically descriptive, except as indications of regional origin [registrable under §4(collective and certification marks)]; (3) primarily geographically deceptively misdescriptive

“New Jersey Bread”(from New Jersey)

Fair Use Defense: • early cases: an absolute right to use one’s location; • modern cases: balance this interest against protection of senior user and the consumer against likelihood ofconfusion through qualified injunctions (e.g., requiringdisclaimers, prefixes, suffixes)

Nantucket Shirts(from North Carolina)

Atlantic(from New York)

(ineligible for SR)(eligible for SR)

Philadelphia Cream Cheese

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NantucketIsland

Nantucket

Not registrable if (3) primarily geographically deceptively misdescriptive

Not deceptive if public does not associate goods with the place

?

Not registrable if (3) primarily geographically deceptively misdescriptive

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ContestabilityWindow

Federal Registration: Incontestability

OFFICIAL GAZETTE

TRADEMARKPRINCIPAL REGISTER

0 5 6

Incontestability §33(b)

registration constitutes primafacie evidence of validity

• challenger may raise any legal orequitable groundfor invalidity

• challenger may not contest that mark is: • merely descriptive (lacking secondary meaning)

• lacking priority

§§8,15 Noticeof Continuous

Use

• other challenges to validity remain §33(b)(including fraud, abandonment,functionality, genericness)

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§9 RenewalAffidavit

Trademark Infringement

1. Passing Off

2. Dilution

3. Contributory Infringement

• Counterfeiting

• Parallel Imports/Gray Market Goods

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Guiding Principle

Customer Perceptionas a test of:

· VALIDITY

· INFRINGEMENT

Test of Trademark Infringement ?

• includes potential customers andinvestors

• actual confusion not required• “probable”; not merely possible

Likelihood

• appreciable # of “reasonablyprudent purchasers”

Confusion

• source (including reverse)• sponsorship• affiliation

Confusion as to:

• initial interest confusion

Extent and Timing

• post-sale confusion

• “call to mind” is not confusion

• expected to exercise appropriate degree of care, caution, and power of perception in view of marketchoice

• 15% = “strong evidence” LOC

“Likelihood of Confusion”

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Proof of Actual Confusion Not Necessary

“Likelihood of Confusion”

just

Multi-Factor Testnon-exclusive list relevant to determining “Likelihood of Confusion”

1. Strength of the mark

2. Proximity of the goods

3. Similarity of the marks

4. Evidence of actual confusion

5. Marketing channels used

6. Type of goods;degree of care likely to exercised by purchaser

7. Defendant’s intent in selecting the mark

8. Likelihood of expansion of the product line

sight

sound

meaning

Strengththermometer

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)

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Determining “Likelihood of Confusion”

Sleekcraft Factors

1. Strength of the mark

2. Proximity of the goods

3. Similarity of the marks

4. Actual confusion

5. Marketing channels

6. Goods; Purchaser care

7. Defendant’s intent

8. Likelihood of expansion

Suggestive• weak

Non-competing, but close in use and functions

negligible

similar

High quality;Careful evaluation

No evidence of intent to confuse

Strong possibility

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Methods to Prove “Likelihood of Confusion”

1. Survey Evidence

2. Evidence of Actual Confusion

3. Argument Based on Clear Inference Arising FromComparison of Marks and the Context of Their Use

• sight

meaning• sound

• sight

Consolidated Freightways v. Central Transport, 201 USPQ 524 (ED Mich 1978) (prelim injunction granted based on LOC)

Freight Services

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Cygon vs. Phygon

• sound

(insecticides)

Dramamine vs. Bonamine(anti-nausea medications)

Cyclone vs. Tornado(link fencing)

Pledge vs. Promise(furniture polish)

meaning

Chicken of the Sea vs. Tuna O’ the Farm(canned tuna fish) (canned chicken)

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• sight

Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979) (LOC)

meaning

Tubular Metal Products

• sound

• sponsorship

Test of Trademark Infringement ?

Confusion

• source (including reverse)

• affiliation

Confusion as to:

“Likelihood of Confusion”

Gallo Cheese

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Non-Competitive Goods

Vitamins

“There is indeed a limit; the goods on which the supposed infringer puts the mark may be too remote from any that the owner would be likely to make or sell. It would be hard, for example, for the seller of a steam shovel to find ground for complain in the use of his trademark on a lipstick.”

Non-Competitive Goods

Caterpillar

L.E. Waterman Co. v. Gordon, 72 F.2d 272 (2d Cir. 1934 )

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Promotional Goods

Infringement Test: Do consumers perceive sponsorship?

feedback loop

Scope of TM ProtectionConsumer perception

Trademark Infringement: Parallel Imports

“territorial protection kicks in under the Lanham Act where two merchants sell physically different products in the same market and under the same name, for it is this prototype that impinges on a trademark holder’s goodwill and threatens to deceive consumers.”

“gray market products” violate the Lanham Act if the products: (1) were not intended to be sold in the United States; and(2) are materially different from goods authorized for U.S. sale

Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633 (1st Cir. 1992)

• Different product lines• Different quality control• Different warranties

Serial number/TM scratched off

Different Colors

Different quality control,composition, configuration,

packaging,price

different ingredients, instructions (metric system weights), poison control numbers

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Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996) ((citing Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 854-55 (1982))

Trademark Infringement:Contributory Liability

“defendant (1) intentionally induces another to infringe on a trademark or (2) continues to supply a product knowing that the recipient is using the product to engage in trademark infringement.”

Contributory Infringement forCounterfeit Goods

)))))

ContributoryTM infringement

for hosting online sales bazaar

v.

®

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Contributory Infringement forCounterfeit Goods

)))))

ContributoryTM infringement

for hosting online sales bazaar

v.

®

Tiffany v. eBay, 600 F.3d 93 (2d. Cir. 2010)

Inwood’s “knows or has reason to know” standard requires knowledge of specific counterfeits being offered for sale on the site.

• but “willful blindness” by the ISPcould violate Inwood test

™Dilution

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EXPANDING RATIONALE FOR TM

Avoiding Consumer Confusion and Reducing Consumers’ Search Costs

Property Interests in Image: Image as a Marketable Commodity

Encouraging Investment in Advertising and Good Will

TORT

PROPERTY

?

DILUTION

An association arising from the similarity between an accused mark and the famous mark that either:

• harms the reputation of thefamous mark (Tarnishment)

• impairs the distinctiveness of the famous mark ( )BlurringBlurringBlurring

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BLURRING

ROLEX

ROLEX CANDIESROLEX CANDIES

BLURRING

ROLEX SHOVELS

RO

LE

X

RO

LE

X

RO

LE

X

ROLEX ROLEX ROLEX

Lexis™ offers products and services for legal, business, academic, and government professionals.

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Nothing Runs Like A Deere®

Model D604G 17 HP/42" AutoDrive™ Lawn Tractor with Cruise Control

List Price: $1,499.00

L100 Lawn Tractor

List Price: $1,200.00

Features:•••

Features:•••

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1. Ownership of a “famous” mark as measured by the totality of the four factors listed in §43(c)(2)(A)

Plaintiff must prove:

2. Defendant is making use of the challenged designation as a mark or trade name

3. in interstate commerce (or, in U.S. import or export trade that can be regulated by Congress)

4. Defendant’s use began after the mark became famous.

5. Considering the six factors listed in §43(c)(2)(B), defendant's use is likely to cause dilution by blurring by creating

6. a likelihood of association arising from the similarity of the marks from the standpoint of the ordinary consuming public of the U.S.

7. that is likely to impair the distinctiveness of plaintiff’s mark

TM Dilution (§43(c)): Elements for BlurringBlurring

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Fame: §43(c)(2)(A)

(A) . . . a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

FAMEMark Strength Thermometer

32o

Trademark

Secondary meaning

Famous mark

212o

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(B) . . . "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

: §43(c)(2)(B)BlurringBlurring

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

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Must a mark be inherently distinctive to protected against dilution?

Blurring definition -- Factor iii: “the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

§43(c)(1) Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled . . .

But – important safety valve:

Likelihood of Association

Identical use of a coined, fanciful mark (such as Kodak, Rolex) is evidence that the ordinary consumer, when confronted with the identical mark on far removed goods or services will make an “association” with the famous mark because there is no other significance to the word other than as the famous trademark

“Kodak Pianos”

Coined, Fanciful Marks Non-Coined Fanciful Terms

AMAZON on-line seller, POLO wearing apparel, SATURN autos, TIDE detergent, TIME magazine

It cannot be presumed that the ordinary consumer, when confronted with these kind of marks used on nonconfusing, far removed goods or services, will inevitably and necessarily think of the famous mark. Therefore, “association” must be proved.

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What is “association”?

Call to mind

“Call to Mind” Confusion=

Harvey Cartoons v. Columbia Pictures, 645 F.Supp. 1564 (SDNY 1986) (no likelihood of confusion)

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“Call to Mind” Confusion=

Harvey Cartoons v. Columbia Pictures, 645 F.Supp. 1564 (SDNY 1986) (no likelihood of confusion)

“Call to Mind” “Association”=

But no dilution because they are not similar enough;Fame?

Likelihood of Association: Amazon

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Amazon Garden Service Amazon Hiking and

Survival Training

Amazon Restaurant

Amazon Women’s

Health Spa

“[T]he mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. . . . [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA.”

Likelihood of Association Likelihood of Blurring≠

Moseley v. V Secret Catalogue, Inc.,537 U.S. 418, 433 (2003)

Blurring is a kind of injury or damage to a mark, defined by the statute as an impairment of the distinctiveness of a mark that is caused by “association.” The two elements of “association” and “blurring” are separate and distinct.

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If one bee sting of a non-confusing use is only very rarely followed by a damaging number of others, then why should the courts always assume without proof that others will inevitably follow?

Proving Causation

Relevant evidence:

• multiple unpermitted uses of other famous marks in similarmarkets

• other uses of plaintiff’s mark which have been challenged

• at a minimum, a plausible argument that this kind of famousmark in this mark will be likely to attract multiple uses

Defenses

Safety Valves

43(c)(3) Exclusions: The following shall not be actionable as dilution . . .:

(A) Any fair use . . .

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.

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v.

Cherry Chewy Vuitton Bag Toy The handbag every woman wants is now the toy every dog needs. Plush exterior with a squeaky that drives dogs crazy. Every Pampered Pup should have one. 6" x 8".

$12.99$885

CHEWY VUITTON

Louis Vuitton v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007)

Trademark Defenses

1. Genericness

2. Functionality

3. Abandonment

• Unsupervised Licenses

• Assignments in Gross

4. Fair Use

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ASSIGNMENT

• NO ASSIGNMENTS IN GROSS

™

LICENSING

• NO NAKED LICENSES

• QUALITY CONTROL OVER LICENSEE

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TM’s Fair Use Doctrines

Classic Nominative• descriptive marks

• accurate usage to describe product

• can be some LOC

• comparative advertising

• other referential usage

KP Permanent Make-Up v. Lasting Impression I, 543 U.S. 111 (2004)

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“PEPSI TASTES BETTER THAN COKE”

Non-Trademark Use

Only if the defendant uses the word as a trademark could the unique and strong link between the designation and plaintiff's goods be weakened when the public sees the designation used to identify and distinguish different goods. Thus, a non-trademark use does cannot dilute.

Brands n the Hood

“The drug dealer known as Escalade Man smirked as he leaned against the Coca-Cola sign, smoking a Marlboro and swigging his favorite beverage: Skyy Vodka and Tropicana orange juice.”

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Who’s the best on the block?

Call 900 USA POLLEach call costs 50 cents. Results in Friday’s Life Section.

Any USA Today profits from this phone line will go to charity.

New Kids on the Block are pop’s hottest group. Which of the five is your fave? Or are they a turn-off?

New Kids on the Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir. 1992)

New Kids on the Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir. 1992)

9th Circuit Nominative Fair Use RequirementsBurden of Proof: on Plaintiff (modified LOC)

2. Has the mark been used by the defendant more than isreasonably necessary to identify the plaintiff?

3. Has the defendant done acts that would falsely suggestsponsorship or endorsement by the trademark holder?

1. Is the product or service of the trademark owner onewhich is readily identifiable without use of the trademark?

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Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211 (3rd Cir. 2006)

3rd Circuit Nominative Fair Use Test

DefenseShield

LendingTree will give you access to a network of brokers, including Coldwell Banker, ERA, and Century 21 . . .

(1) Is the product or service of the TM owner one which is readily identifiable without use of the trademark?

9th Circuit Three-Step Test

Burden of Proof on Plaintiff (modified LOC)

(2) Has the mark been used by the defendant more than is reasonably necessary to identify the plaintiff? (3) Has the defendant done acts that would falsely suggest sponsorship or endorsement by the trademark holder?

(1) Plaintiff must prove LOC

(2) Defendant must show thatits use is fair

then burden shifts and

3rd Circuit Two-Step Approach

Parody

Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987)

designer blue jeans for larger women

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Despite the title, the film was not about Ginger Rogers and Fred Astaire; instead, it was a Frederico Fellini film about two Italian cabaret performers who imitated the famous dancing duo and become known in Italy as “Ginger and Fred.”

Ginger Rogers and Fred Astaire

Ginger Rogers “Relatedness” Balancing Test

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)

Because overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment values, we must construe the [Lanham] Act narrowly to avoid such a conflict.

Public Interest in Avoiding Consumer

Confusion

Public interest in Free Expression

In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the [Lanham] Act unless [1] the title has no artistic relevance to the underlying work whatsoever, or, [2] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

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I'm a Barbie girl, in the Barbie world.Life in plastic, it's fantastic.You can brush my hair, undress me everywhere.Imagination, Life is your creation.

Come on Barbie, let's go partyCome on Barbie, let's go party

I'm a blonde, single girl in a fantasy worldDress me up, make it tight, I'm your dolly!You're my doll, Rock 'n RollFeel the glamour in PinkKiss me here, touch me therehanky panky.

You can touch, you can playif you say I'm always yours

Barbie Girl

“If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.”

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002)

Trademark Kong lost

Judge Alex Kozinski

“We agree with the Second Circuit’s analysis and adopt the Rogers standard as our own.”

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Brown v. Electronic Arts, 724 F.3d 1235 (9th Cir. 2013)

Brownv.

))))

TM Infringement

(1) Rogers test governed former player’s false endorsement claim under Lanham Act;(2) use of former player’s likeness was artistically relevant to football video games;(3) use of former player’s likeness, coupled with consumer survey, did not show explicit misleading conduct;Granting of motion to dismiss affirmed

Samuel Michael Keller

Kellerv.

))))

Right ofPublicity

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In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d 1268 (9th Cir. 2013)

Samuel Michael Keller

Under the “transformative use” test developed by the California Supreme Court, EA’s use does not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown.

Hartv.

))))

Right ofPublicity

Ryan Hart

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Hartv.

))))

Right ofPublicity

Ryan Hart

Hart v. Electronic Arts, Inc., 717 F.3d 141 (3rd Cir. 2013) (applying NJ law)

(1) transformative use test was proper analytical framework in this case;

(2) manner in which player’s identity was incorporated and transformed in game provided little support for developer’s argument;

(3) extent to which game players could alter digital avatars did not satisfy transformative use test in favor of developer; and

(4) photograph of player in game’s montage is “but a fleeting component part of the montage” and therefore does not render the entire work nontransformative; thus, this use was shielded by First Amendment.

Jonah Hex: Riders of the Worm and Such features two albino, villainous, nocturnal, half-worm, half-human characters named Johnny and Edgar Autumn engage in sexual depravity, murder, cowardice, and self-proclaimed stupidity.

Winter v. D.C. Comics, 30 Cal.4th 881, 134 Cal.Rptr.2d 634, 69 P.3d 473 (Cal. S.Ct. 2003)

Artistic expression trumps right of publicity.

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Kirby v. Sega of Am., Inc., 144 Cal.App.4th 47 (2006)

The analysis “simply requires the court to examine and compare the allegedly expressive work with the images of the plaintiff to discern if the defendant’s work contributes significantly distinctive and expressive content. If distinctions exist, the First Amendment bars claims based on appropriation of the plaintiff's identity or likeness; if not, the claims are not barred.”

Noriega v. Activision: California State Law

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“Contemporary events, symbols, and people are regularly used in fictional works. Fiction writers maybe able to more persuasively, or more accurately, express themselves by weaving into the take persons or events familiar to their readers. The choice is theirs. No author should be forced into creating mythological worlds or characters divorced from reality. The right of publicity does not confer a shield to ward off caricature, parody or satire. Rather, prominence invites creative comment. Surely, the range of free expression would be meaningfully reduced if prominent persons in the present and recent past were forbidden topics for the imaginations of authors of fiction.”

Noriega v. Activision, Cal. Sup. Ct. (Oct. 27, 2014) (quoting Guglielmi v. Spelling-Goldberg Productions, 25 Cal. 3d 860, 869 (Cal. S. Ct. 1979)

Noriega v. Activision: California State Law

Noriega v. Activision, Cal. Sup. Ct. (Oct. 27, 2014)

Noriega v. Activision: California State Law

“Noriega’s right of publicity is outweighed by defendants’ First Amendment right to free expression.”

Plaintiff places great reliance [on] Keller v. Elec. Arts Inc., 724 F.3d 268 (9th Cir. 2013). First, that case is not binding on this Court. Further, to the extent that Keller suggests that the entirety of the disputed work should not be considered under the second prong of the anti-SLAPP analysis, such reasoning is in conflict with the controlling California authorities . . .

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Jordan v. Jewel Food Stores, 743 F.3d 509 (7th Cir. 2014)

Ad is commercial speech and hence entitled to a lesser degree of Constitutional immunity. Jordan’s trademark and right of publicity claims may proceed.

Michael Jordanv.

Jewel Food Stores

))))

TM Infringement

Right of Publicity1st A

DefenseShield

Injunctive Relief

§34 Injunctive Relief• Preliminary and Permanent Injunctions

Four-Factor Test eBay v. MercExchange

1. irreparable harm 2. adequacy of 3. balance of equities 4. public interest

Herb Reed Enterprises v. Florida Entertainment Management, 736 F.3d 1239, 1248-51 (9th Cir. 2013); N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1228–29 (11th Cir. 2008); Audi AG v. D’Amato, 469 F.3d 534, 550 (6th Cir. 2006) (permanent injunction)

• Prior to eBay, courts routinely presumed irreparable harm upon a showing of likelihood of success

• Courts have shifted away from the presumption ofirreparable harm

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Injunctive Relief

§34 Injunctive Relief• Preliminary and Permanent Injunctions

Four-Factor Test eBay v. MercExchange

1. irreparable harm 2. adequacy of 3. balance of equities 4. public interest

• No presumption of irreparable harm• Qualified Injunctions – disclaimers, prefixes, suffixes, alteredlogos, geographic limitations

• Corrective Advertising

§36 Destruction of Infringing Articles

§37 Cancellation of Registration

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)

* * * Several considerations * * * convince us that a limited injunction will suffice.

Both parties have used their trademarks for over a decade. * * *

There is little doubt both parties honestly desire to avoid confusion of their products. Nescher adopted the Sleekcraft name in good faith and has subsequently taken steps to avoid confusion. Use of the Nescher logo in all facets of the business would ensure that confusion would not occur. * * *

Thus, in “balancing the conflicting interests both parties have in the unimpaired continuation of their trade-mark use”, and the interest the public and the trade have in avoiding confusion, we conclude that a limited mandatory injunction is warranted. Upon remand the district court should consider the above interests in structuring appropriate relief. At minimum, the logo should appear in all advertisements, signs, and promotional materials prepared either by appellee or by his retail dealers, and on all appellee's business forms except those intended for strictly internal use. A specific disclaimer of any association with AMF or the Slickcraft line seems unnecessary, nor do we think it necessary to enjoin Nescher from expanding his product line. In its discretion the district judge may allow appellee sufficient time to consume supplies at hand and to add the logo to more permanent assets, such as business signs.

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BIG FOOT AT-Dual Groove THE ULTIMATE ALL-TERRAIN

LIGHT TRUCK TIRE

Reverse Confusion

Goodyear Bigfoot

200 Dealers leading national manufacturer and dealer

Spring 1974 Fall 1974

$6 million Advertising Budget

Damages §35

(a) Profits, Money Damages, attorney fees:

• Notice required - either:

®Registered in U.S. Patent and Trademark Office

Reg. U.S. Pat. & T. Off.

(1) §29 Notice:

(2) Actual Notice – e.g., cease and desist letter

(b) Treble Damages for willful use of a counterfeit mark

(c) Election of Statutory Damages (counterfeit marks)

(d) Election of Statutory Damages (domain names)

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Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014)

Damages §35: Attorney Fees§35(a) “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”

• same boats, teaching curriculum, itineraries, and procedures for student feedback

• website uses identical marketing, including FW boat• “student testimonials” from students who took

classes with VISS founder while he worked at FW

Consistent with Octane Fitness, a district court may find a case “exceptional,” and therefore award attorney fees to the prevailing party, if “(a) there is an unusual discrepancy in the merits of the positions taken by the parties or (b) the losing party has litigated the case in an ‘unreasonable manner.’”

• while culpability may play a role in determining whether a case is “exceptional, ” it is not required.

Trademark Counterfeiting Remedies

Criminal Sanctions: 18 U.S.C. §2320 – felony to knowingly use a counterfeit mark in connection with the sale of goods or services • fines • imprisonmentSeizure of Counterfeit Goods and Records of Sale on an Ex Parte Application: §34(b)

Destruction of Infringing Articles §36