TRADEMARK DISPUTES IN CYBERSPACE
PATHFINDER
DILUTION: Has Your Trademark Been Blurred or Tarnished?
Introduction // Cases // Articles // Cyberarticles // Web Sites// Books and Treatises
Dilution is a type of trademark injury that is distinguishable from
trademark infringement. Trademark infringement occurs when a business uses
a mark that is the same or confusingly similar to an existing trademark.
When arguing a claim for trademark infringement, proving a reasonable likelihood
of consumer confusion is the key to establishing liability. Liability for
trademark dilution, however, arises regardless of whether consumer confusion
exists or not.
Trademark dilution has been defined as the lessening of the capacity
of a trademark to identify and distinguish its goods or services. This
is a somewhat confusing theory of trademark injury. In order to understand
this concept, trademark dilution must be divided into two separate subcategories
before it can truly be defined. The two types of trademark dilution are
dilution due to the blurring of a famous mark and dilution due to the tarnishment
of a trademark by placing it in an unsavory or unwholesome context.
Dilution by blurring threatens a trademark's distinctive characteristics by chipping away at the ability of the mark to instantly identify its product. For example, when you see the mark "Kodak", you immediately think of film for your camera. However, if a series of unrelated products were to be identified by the same mark, such as Kodak tires, Kodak crayons and Kodak beer, that instant association you once conjured up would be eroded.
Use of a famous mark on dissimilar products would lessen the capacity
of the term "Kodak" to draw an instant association with film. Dilution
by tarnishment occurs when a trademark is linked to products of poor quality
or portrayed in an unwholesome, often pornographic, context. For example,
Pillsbury sued Screw Magazine when it featured the famous doughboy "Poppin'
Fresh" performing a variety of lewd sexual acts on its cover. Pornographic
web sites are infamous for incorporating well known trademarks and trade
names in their domain names.
Until passage of the Federal Trademark Dilution Act in January of 1996,
lawsuits claiming injury arising from trademark dilution were not actionable
under Federal law. The Federal Trademark Dilution Act provides trademark
owners with a strong remedy against dilution of their mark by either blurring
or tarnishment. The novelty of this new federal cause of action has been
embraced as a favored cause of action in equally novel Internet related
trademark lawsuits. The Federal Trademark Dilution Act can be found at
http://www4.law.cornell.edu/uscode/15/1125
Introduction // Cases // Articles // Cyberarticles // Web Sites// Books and Treatises
Dilution is a hot new topic for Internet users and there appears to be quite a few cases involving blurring by using another's trademark as their domain name. I found these cases under both Westlaw and Lexis-Nexis. On Westlaw, I recommend going into information by area of topic, then to Intellectual property and then to case law and using natural language to pull up cases. Keywords are the the various topic headings: dilution and Federal Trademark Act.
Blurring
I placed these two cases together because they involve similar situations. Dennis Toeppen, an individual known as the founding cybersquatter, had registered over 200 domain names that incorporated famous trademarks. Toeppen sat on these sites until companies attempted to put up a web site and then he tried to extort money from them in order to get the domain name. Intermatic and Panavision sued for trademark dilution and won. His attempted exploitation of these famous marks was held to dilute the marks and his attempt to sell the domain names was considered commercial activity for the purposes of the Federal Dilution Act.
The court held that defendant's reservation of the domain name constituted trademark dilution since Actmedia was a strong and distinctive source identifier.
Planned Parenthood for family planning services was diluted by anti-abortion site using same title.
Trademark dilution found due to blurring.
Playboy proved that defendant's use of Playboyxxx.com as a domain name was likely to dilute the famous mark.
Gateway 2000 Inc. v. Gateway.Com Inc.Oppendahl Larson v. Advanced Concepts, 1997 Lexis 2144 (VI. D. N.C. 1997)
Claim for trademark infringement due to blurring denied because plaintiff was unable to prove that the mark was famous when the defendant registered its domain name.
After Avon found out that the domain name Avon.com had been registered by an unrelated third party, it filed a Federal lawsuit under the Federal Trademark Dilution Act and convinced NSI to terminate defendant's domain name account.
Tarnishment
Hasbro, Inc., the originator of the famous Candyland board game for children, successfully obtained a preliminary injunction against defendants for using the domain name candyland.com in connection with a sexually explicit web site. Hasbro obtained the injunction based on a theory of tarnishment of trademark.
Plaintiff successfully enjoined defendant's further use of ADULTRUS.COM domain name due to likely dilution of the plaintiff's famous mark.
Introduction // Cases // Articles // Cyberarticles // Web Sites// Books and Treatises
There are a few articles dealing directly with the issue of trademark dilution on the Internet. Trademark dilution is a concept that has often been used by trademark owners to prevent the use of domain names as is illustrated in the preceding cases. The most helpful search vehicles for articles were Westlaw, Lexis-Nexis and Legaltrac. Legaltrac is an online version of the index to legal periodicals. Searches can be done by typing in an author or a subject matter topic. Legaltrac provided many articles on Cyberlaw generally. Westlaw and Lexis-Nexis: legal online databases provided full text searches. In Westlaw, I used Topics by area of practice, hit the Intellectual Property icon and used natural language to locate law reviews and trade journals concerning these novel issues of trademark infringement on the Internet. Key terms were "dilution" "cyberlaw" and "internet". The best source for information on Westlaw was the The Practicing Law Institute for Patent, Copyright, Trademarks, & Literary Property. It provided all kinds of current and relevant information pertaining to Internet related trademark disputes. Many of the articles it provides are used in Computer Law and Intellectual Property Seminars, Symposiums and ad sections in Handbooks.
This article
is an excellent resource to begin one's research of dilution because it
contains a short primer on the Federal Trademark Dilution Act and how this
form of legal injury differs from tademark infringement. It also
provides good definitions of the two types of dilution: blurring and tarnishment.
This article
provides a history of Internet-related dilution and lists and describes
ten reported cases involving dilution claims against Internet based uses.
This provides
a brief historical background of trademark law and the tension between
trademark protection and competition. It also comments on the legislative
expansion of protection for trademarks in the Federal Trademark Dilution
Act of 1996.
This is
a handy resource because unlike many of the other articles, it focuses
solely on trademark issues on the Internet. It also is a good reference
for those interested in domain name disputes.
Using the search term "Cyberlaw", I found many good general
sources and book reviews addressing legal implications of Internet commerce.
Cyberlaw: legal malpractice in the age of online lawyers. Natacha
D.Steimer.
Subjects:Computers - Laws, regulations, etc./ Attorneys - Malpractice
Introduction // Cases // Articles // Cyberarticles // Web Sites// Books and Treatises
There are many new current online articles about these newest forms of cyberspace infringement. The best search engines are Infoseek, Alta Vista, and Nestcape. I recommend simply typing in Federal Trademark Dilution. There are a few online articles dealing with this issue. For dilution issues, the New York Law Journal, BitLaw and the National Law Journal have the most prolific and current articles. Good searching! I have included the search engines where I found the cyberarticles.
Covers marks that are protected under the Act; proving dilution
of a mark;
Remedies under the Act; and the Relationship of federal Act to state
dilution acts.
Advice
from the law firm of Jones and Askew. Adresses issues of Trademark
Dilution.
Applications
On Unrelated, Non-Competing Products May Now Be Grounds For Injunction.
By Jeffrey R. McFadden and Donna Ray Berkelhammer Published in Carolina
Business, June, 1996. Used by permission.
Written:
May 12, 1998: The 9th Circuit Court of Appeals has sent a strong message
to "cyber-pirates" who steal the trademarks of others for use on the Internet,
Panavision International, L.P. v. Dennis Toeppen, Docket No. 97-55467,
D.C. No. CV-96-03284-DDP-JRx. This is the first decision by a Court of
Appeals to apply the rules of personal jurisdiction and
trademark
rights to conduct that occurred in cyberspace; the decision will have far
reaching implications.
Courts have ruled that owners of famous marks are entitled to those
marks in domain names. By Andrew Baum and Mark Epstein. SPECIAL TO THE
NATIONAL LAW JOURNAL. The National Law Journal (p. C03)
Monday, January 27, 1997.
The New
York Law Journal: April 3, 1997. BY DOMINIC BENCIVENGA
By: Robert
C. Scheinfeld and Parker H. Bagley. New York Law Journal, March 25, 1998.
[Ed.: The following is an excerpt from the article published in the New
York Law Journal] This provides good insight into the two years following
enactment of the Federal Trademark Dilution Act.
There are
similarities and significant differences between the Federal Act and the
Model Act of 1964. Most states still use a
version of
the Model Act of 1964, so that law retains its vitality and importance.
This article highlights of some of the
important
features of state and Federal Anti-Dilution laws:.
Introduction // Cases // Articles // Cyberarticles // Web Sites// Books and Treatises
The Internet is obviously an important resource tool for up-to-the minute information regarding legal disputes on this innovative medium. There are a plethora of good web sites for all areas of Internet related legal issues. I have included the most helpful resources for my topic. Many organizations also have their own sites such as the Patent and Trademark Office. These organizations and live numbers are under the "Organizations" link located on the home page of this site. If you have questions concerning these type of issues, I suggest typing "Cyberlaw" and keywords from your specific issue on search engines such as Infoseek, Netscape and Alta Vista. Also many of the sites listed below have pages of links recommending certain sites on any particular topic.
This is excellent web site to begin to search
Intellectual Property issues on the Internet. It has its own search engine
so you can type in the legal issue that you are interested in and it pulls
up not only its own information but a list of links related to the requested
search
item. This is how I began my search. I got lucky because it eliminated
a lot of search time by directing me to handy links on metatag, hyperlink
and framing issues.
I found this to be the most useful and current
web site for my pathfinder: Here's the introduction to the Website:
Welcome! Most visitors to Search Engine Watch
fall into one of two groups. There are webmasters, web marketers and others
involved with creating and promoting web sites. Then there are search engine
users, everyone from researchers, librarians and general web surfers who
want to know how to find things better using search engines.
Danny Sulllivan is the expert in this field.
He is a master at current Internet related IP litigation. He also
breaks down current cases and describes not only the issues but the legal
significance of these decisions and/or settlements. In his feature entitled
"Lawsuit Over Metatag Keywords", Sullivan made
a chart of all the metatag lawsuits, their outcomes and their legal significance
in an easy to read and understand manner. (article address listed above).
I can't say enough about this web site. Sadly, I read that Danny Sullivan
is going to be an expert in a recent case involving Playboy and will not
be able to comment any longer on certain issues.
This institute has made a name for itself in the Intellectual Property arena. If you are interested in attending summer school to learn about IP issues, this site provides online applications for attending its summer institute classes.
This site provides interesting industry watch
information as well as a more global perspective. It does seem to
be under a little bit of construction for the time being.
A continually-updated website designed to
be the most comprehensive resource available on the Internet for information
related to technology law, especially including intellectual property law
(patent,copyright, and trademark law) for software, electronic, and telecommunication
products and services.
An excellent Resource Guide providing links
to all types of organizational, university and other web sites
devoted to Cyberlaw
Including:
1. Chicago-Kent
2. Cyberlaw.com
This individual is a wonderful source of information.
He has written several articles online including "Trademark Law for Webmasters".
Walton offers legal insight to the current Internet related trademark debates
in a comprehensive and well written manner. He can also be reached at :
info.netatty.com.
This government site provides information
about its services, trial and appeal board and how to search the United
States trademark database. I was unable to find any statement about recent
Internet related trademark issues.
Introduction // Cases // Articles // Cyberarticles // Web Sites// Books and Treatises
It is important to remember that since trademark disputes in cyberspace are such current topics, more information is available online than in paper format. Many of the cases and events described in this pathfinder have occurred in the last three years. I did find some books addressing cyberlaw generally on barnesandnoble.com and Amazon.com. These books are often practical guides for users interested in setting up shop on the internet. I also found several books at the Franklin Pierce Library (phone number and information is included on the main page). As for Sabio, I went into the multi-search databank that pulls up books and articles at the same time. The Keywords I entered were "Trademark Dilution" and "Internet."
McCarthy, J. Thomas. 3 McCarthy on Trademarks and Unfair Competition, (4th Ed.), Clark Boardman Callaghan, a division of Thomson Information Services, Inc., 1997.
McCarthy adresses trademark infringement in Cyberspace in his latest edition. This treatise is a useful resource to read before ingesting many of the web articles and sites dealing with these issues. MCCarthy has a way of explaining the current disputes and jargon in a clear and understandable language. I highly recommend this treatise.
Rosenoer, Jonathon. Cyberlaw: the Law of the Internet, Springer-Verlag New York, Inc., Jan. 1997.
Rosenoer is an expert in the field. His book provides a comprehensive guide to trademark issues on the Internet, discusses relevant case law and implications for further legal developments. However, chronology of significant legal events stops in early 1996, before some of the more recent trademark issues had evolved.
Brinson, J. Dianne & Radcliffe, Mark F. Multimedia Law and Business Handbook, Ladera Press, 1997.
This book is written for nonlawyers and offers a practical guide for protecting one's Internet and multi-media product. The book states that for less than an hour of an attorney's time, this book will save you thousands of dollars in legal fees and help you to avoid potential legal disputes. The book also includes twenty-one sample contracts in both print and electronic form for Internet agreements as well as other types of contracts.
Godoftas, Lisa and Elias, Stephen. Patent, Copyright and Trademark Law: a Desk Reference to Intellectual Property Law, Nolo Press, 1997.
A handy guide that explains key terms and concepts in intellectual property. It has a section on trademark law. Since this second edition was recently revised in 1997, it contains information on web issues and useful sites for further questions.
Citations
I found for other relevant books located at the Franklin Pierce Library:
Citations
I found for other relevant books located at the Franklin Pierce Library:
2. Source: ABI/Inform (Business) Title: Famous marks have
legal protection against poachers
Author: Retsky, Maxine Lans.From: ISSN: 0025-3790
Marketing News Nov 9, 1998 v32n23
Abstract: McDonald's, Coca-Cola and Nike swoosh all are trademarks
that are instantly recognizable by most people.
These marks are famous marks. Beyond the satisfaction of
world recognition and impressive sales figures, the owners
of famous marks have the advantage of an alternative avenue of protection
beyond traditional trademark law: the Federal
Trademark Dilution Act (FTDA), which protects the comm rcial value
and distinctiveness of famous marks. Adopted in 1996,
the FTDA protects trademarks and service marks from being diluted or
tarnished by improper commercial use. The FTDA
has been used successfully to squash "cybersquatters" speculators
who register famous marks as Internet names
and then try to sell them to trademark owners - by providing the argument
that the use blurs the quality of the mark.
3. Source: ABI/Inform (Business) Title: The limitations of trademark
law in addressing domain
names disputes Author: Swartz, Danielle Weinberg. From: ISSN:
0041-5650 UCLA Law Review Jun 1998 v45n5
Abstract: The enormous popularity of the Internet has led
to competition between trademark holders and domain name
registrants for the right to use trademark domain names.
Traditional trademark law and dilution law fail to resolve
adequately the limitations of current trademark and dilution
law and recommends the creation of a new federal cause of
action.
4. Source: ABI/Inform (Business)
Title: Trademark protection for Internet domain names
Author: Posch, Robert J Jr.
From: ISSN: 0012-3188
Direct Marketing Jul 1998 v61n3
Abstract: More and more commonplace today, domain name strategy
is being integrated with a company's trademark strategy.
On the Internet, they can be one and the same. The domain
identifies a host name as comprised of the company's "name,"
followed by a period and then a "top-level domain name."
Each domain name is assigned in a hierarchy that starts
at the right end of the name. You should do a search on
the domain, as you would normally do prior to trademark
testing. It is essential to protect the company's rights
under the Federal Trademark Dilution Act whereby a defendant's
ownership of a registered mark on the principal register
is an absolute defense. Recent remedies in Internet domain
name trademark litigation are also presented.
5. Source: ABI/Inform (Business)
Title: One year after dilution's entry into federal trademark
law
Author: Serad, Susan L.
From: ISSN: 0043-003X
Wake Forest Law Review Spring 1997 v32n1
Abstract: On January 16, 1996, the doctrine of trademark
dilution was introduced into federal law when President
Clinton signed the Federal Trademark Dilution Act of 1995.
The Act provides an owner of a famous trademark with a
federal remedy for dilution. Dilution occurs when the brand
recognition that accompanies a famous trademark is diminished
by another party's use of the mark. During the past year,
courts have struggled to incorporate the doctrine of dilution,
originally a creature of state law, into federal trademark
law.
6. Source: ABI/Inform (Business)
Title: Name game poses legal risks
Author: Roberts, Charley.
From: ISSN: 0013-094X
Editor & Publisher Dec 14, 1996 v129n50
Abstract: Media lawyers and law professors say that newspaper
publishers, editors and general counsel should be increasingly
mindful of trademarks, not only to guard against being sued
but also to protect their own distinctive names, logos and
features. According to Ina Risman, head of intellectual
property practice at Pillsbury, Madison & Sutro, there
is a vast increase in people recognizing the value of their
marks, and there will be an increase in litigation in every
field, including publishing. In addition to being sued
for infringement by a competitor, there is also potential
for litigation arising form what is referred to as trademark
dilution. This involves using a famous trademark, such
as Rolex, as the name of a car. There is no competition
between watches and automobiles, and little likelihood of
confusion, but using this famous mark as the name of a car
may dilute its value to the watch manufacturer.
Subject: Newspapers.Trademarks.Infringement.Litigation.(9190)
United States;.(8690) Publishing industry;.(4330) Litigation;.
WORD
COUNT: 01885
COPYRIGHT: Copyright Editor & Publisher Inc 1996
NAMED COMPANY 1: Wall Street Journal
NAMED COMPANY 2: California Journal
Language: English
ISSN: 0013-094X
Database No.: 99-95733
7. Source: ABI/Inform (Business)
Title: Famous marks now federally protected against dilution
Author: Samuels, Linda B;Samuels Jeffery M.
From: ISSN: 0743-9156
Journal of Public Policy & Marketing Fall 1996 v15n2
Abstract: The Federal Trademark Dilution Act of 1995 provides
the owners of famous marks with a new, valuable weapon against
uses that dilute their distinctive quality. Companies with
famous marks now will be able to stop other firms from using
their mark on unrelated products even when there is no confusion
as to source. The new federal dilution statute represents
a major deviation from the historical roots of trademark
law. Although trademark protection heretofore has been
justified by the need to prevent consumers from being confused
and deceived, dilution considers trademarks as a property
right that can be owned, thereby viewing trademark infringement
as a form of trespass.
8. Source: ABI/Inform (Business)
Title: Avon traps Internet infringer in pioneering case
Author: Anonymous.
From: ISSN: 0960-5002
Managing Intellectual Property May 1996 n59
Abstract: In one of the first cases to be decided by the
Internet regulator, Avon Products has managed to stop a
New York woman, Carnetta Wong, from using the Internet domain
name "avon.com." However, a court decision over
the damages that Avon is demanding from Wong for trademark
dilution and infringement is still pending.
10. Source: University of Arizona Library Catalog
Title: Trademark dilution / Tony Martino.
Authors etc.: Martino, Tony.
Publication: Oxford : Clarendon Press ; New York : Oxford
University Press, 1996.
Contents: 1. Introduction -- 2. An Alien is Born -- 3. Life
During Schechter -- 4. Desperately Seeking a Rationale --
5. Schechter's Radical Exegesis -- 6. From Theory to Revelation
-- 7. The First Generation on Trial -- 8. Inauspicious Dawning
-- 9. Dilution as Genericide and Tarnishment: Another Fine
Mess -- 10. An Emerging Consensus -- 11. A 'Merely Reasonable'
Justification of Dilution -- 12. Mirror Mirror on the Wall,
What's the Meaning of It All? -- 13. The Last Word Goes
to Schechter.
Subject Headings: Trademarks -- Great Britain. Trademarks
-- European Union countries.
ISBN: 0198260717 (acid-free paper)
Holdings: Main
Call No: KD1439 .M37 1996
Public Note: IN LIBRARY
13. Source: Arizona State University Library Catalog
Title: Federal Trademark Dilution Act of 1995 : report (to
accompany H.R. 1295).
Publication: [Washington, D.C.? : U.S. G.P.O., 1995]
Physical Description: 10 p. ; 24 cm.
Subject Headings: Trademarks -- United States. Commercial
products -- United States.
Other Notes: Caption title. Distributed to some depository
libraries in microfiche. Shipping list no.: 96-0094-P. "November
30, 1995." Includes bibliographical references.
Introduction // History
// Statutes // Metatags
// Linking and Framing
Dilution // Definitions
// Organizations and Contacts
General
Guidance for Domain Name Disputes