Week 6: Trademark 3: Limits on Trademarks and Trademark Policy

trademark policy

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy

“Defenses to Trademark Infringement … Nominative Use of Trademark … Trademarks in Cyberspace”
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  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Defenses to Trademark Infringement > Defenses
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Defenses to Trademark Infringement > Functionality and Abandonment
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Defenses to Trademark Infringement > Fair Use
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Defenses to Trademark Infringement > Statutory Fair Uses
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Nominative Use of Trademark > Nominative Use
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > Trademarks & Domain Names
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > Cybersquatting
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > ACPA
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > UDRP
  • Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > Trademarks & Internet Governance

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Defenses to Trademark Infringement > DefensesV

  • Today we’re going to talk about limits on trademarks, and a little bit about trademark policy as part of that.
  • The agenda for this lecture is to start out by talking about defenses to trademark infringement.
  • What are the ways that you can respond if you are accused or a defendant is accused of trademark infringement? What are the defenses that are available to you? As part of that defense- and perhaps one of the most important defenses of trademark infringement- is what’s called nominative use of a trademark, use of a trademark that’s not in the trademark sense.
  • One of the most important ways that trademarks are transforming themselves and the modern economy is because they are so relevant to the way that we interact with brands, with companies, with sources of manufacturing products in the Internet era, electronic commerce.
  • So for that reason, we’re going to talk a little bit about how we deal with trademarks in the cyberspace context.
  • So there are really two categories of defenses that are available to someone against trademark infringement.
  • The first category is that the mark is unprotectable, that in fact the mark that’s being asserted against you as a defendant just isn’t valid as a trademark.
  • These three things are the primary defenses that you would use when you would assert that a mark is unprotectable, and therefore you can’t be liable for trademark infringement.
  • This would mean that even though the mark is protectable and even though you might be technically infringing it, it is nonetheless not liability to be doing what you’re doing because there are limits to what trademark infringement is for.
  • It’s a limit on trademark infringement for particular policy reasons.
  • Trademark fair use is considerably narrower, but what trademark does have that copyright doesn’t is this concept of nominative use that we’re going to talk about as well, which is this idea that you can use a trademark and it’s non-infringement if you’re using a trademark in not a trademark way- which I know is a little complicated, but we will discuss that and you’ll figure it out.
  • It is generic to the class of product, which is sports cars, and it’s not going to be available for anybody to protect in terms of trademark law because it’s not going to identify any particular source.
  • Just like inherently generic marks, they cannot be used as trademarks.
  • What that means, this process of genericide means, is that trademark owners have very strong incentives- and indeed, the responsibility as owners of trademarks- to police the use of the marks.
  • So it’s an interesting facet of trademark law, because it in fact makes trademark owners have to be aggressive about protecting their rights because it’s got a use-it-or-lose-it sort of flavor, that if you don’t protect your mark, if you don’t stop people from using, for example, “shredded wheat” to refer to cereal made of wheat that’s sort of shredded and put together, then over time the consuming public is going to lose its source identification component when it thinks about that mark.
  • People are using the marks more and more and more, and then all of a sudden what happens is it no longer identifies source.
  • So it’s a very good trademark from our hierarchy of marks perspective, but in some ways it might almost be too good.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Defenses to Trademark Infringement > Functionality and Abandonment

  • So another defense to trademark infringement having to do with the unprotected ability of the mark is functionality, and we’ve talked about functionality in this course relatively extensively.
  • What that means is there’s some aspect of the mark that’s being asserted that doesn’t have to do with the goodwill, with the source identification, and instead, has to do with something else.
  • So functionality is a defense to patent infringement, and it’s a defense in the sense that the mark is uncontestable- or sorry, not uncontestable- unprotectable.
  • When a trademark owner- even if the mark is at one point extremely valuable and widely used- if a trademark owner discontinues the use without any intent to resume the use, then the mark is abandoned, and it’s no longer protectable as a trademark.
  • Now, that doesn’t mean that someone else can’t create the mark, themselves and use it for themselves.
  • What it means is I can’t stop using my trademark for some period of time, abandon it, and then later claim that I get to enforce it against somebody who’s using that mark.
  • There’d be memos in the file, for example, where a company would decide against using a particular logo or brand name anymore for a product, and they would abandon it.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Defenses to Trademark Infringement > Fair Use

  • I should be allowed to criticize a particular brand or product if I want to and not be liable for trademark infringement if I happen to use that brand name.
  • Like all of intellectual property law, trademark law is a balance between the owners of the intellectual property right and the consuming public, or the general public.
  • At the same time, we want to make sure that we fully protect, or at least protect enough, of the trademark owner’s right so that we create the incentives for them to do what we want.
  • Again, in the trademark context what we’re talking about in terms of incentives, is the incentive to invest in quality and reputation so that people can use that as a competitive metric.
  • One of the things about fair use is we might be using fair use to sort of modulate the scope and the strength of trademarks as we go along.
  • Fair use encourages competition, so the fact that I can under the sort of rubric of fair use argue that my competitor, and name them by brand name, is less good or has features that are not as strong as the features of my product.
  • That encourages competition and is something that the law should take into account and does take into account in a fair use context.
  • The classic fair use in trademark law is a much narrower idea and is mainly limited to descriptive uses or non-trademark uses of the mark, rather than the broader, and more policy oriented way that we deal with fair use in copyright.
  • Just to flag that for you, that although we call them the same things and the underlying idea is pretty much the same, the scope of fair use in trademark is actually significantly narrower.
  • That you’re using this in a nominative way, describing something, naming something, rather than using it as a trademark and therefore that is not trademark infringement.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Defenses to Trademark Infringement > Statutory Fair Uses

  • So for the likelihood of confusion analysis, the statute says that the use of an individual’s name, not as a mark, is not trademark infringement.
  • So if there is a trademark on the word Wagner, which there is- Wagner Paints, Equipment for example, has a mark- I would nonetheless have the right to use my name in connection with goods or services that I sell as long as I was doing it to describe that it was me, that it came from me.
  • Even though it may be a protectable mark otherwise, you have the right to use it if it’s your own name and it’s referring to your own goods and services.
  • You’re allowed to use a mark for good faith descriptive purposes and not as a mark, and what this means is if you are identifying the product that you’re trying to sell, if I’m really trying to sell apples, I’m allowed to use the word apple, of course, because I am making a good faith description of what it is I’m selling, rather than using it as a trademark.
  • You’re either using it as your own name and it fits, or you’re using it in good faith descriptive sense, and therefore you get a defense there, otherwise the fair use in the statute doesn’t apply to you.
  • Now, dilution, the dilution remedy, which we talked about in a prior lecture, also has statutory fair use components, and these are a bit broader and more of what you would remember from copyright.
  • So you can use a trademark for comparative advertising and not run afoul of dilution.
  • So if I want to compare my product with a brand name product, for example, I’m allowed to use their brand name in that sense, at least as far as trademark law goes.
  • Now, you might ask yourself, why is the set of limits, the set of fair use limits, much broader in the dilution remedy? And that’s because dilution provides a much broader remedy in the first place.
  • So for that reason, the scope of the trademark protection provided by dilution is much broader and so therefore the fair use concept there is broader as well.
  • It’s also a trademark for a particular kind of Chapstick or lip gloss.
  • The court reasoned there that really one of the only ways that you could describe what the actual process was of applying this permanent makeup was to describe it in terms of microcolor dots, and that even though the term microcolor had been trademarked by competing company, when they were using it, when the competitor was using it, not to describe their product, but instead to describe the process by which the color was applied with their product, that that was a descriptive use and therefore fair use under the statute.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Nominative Use of Trademark > Nominative Use

  • It had a famous music video that went along with it where they would describe Barbie as plastic and dress her up and things like that.
  • Mattel sues Warner MCA Records arguing that the use of their trademark Barbie, the name of the doll and it’s a trademark, an enforceable trademark held by Mattel, was a trademark infringement.
  • The court ruled that it wasn’t, and it ruled that it wasn’t for several reasons.
  • One of the reasons for this was that it was a parody, that it was clearly intended to engage in commentary and criticism of Barbie rather than the way that Mattel would have presented Barbie.
  • Just the way that they used the term Barbie, that they had it Barbie Girl, they didn’t use the same font.
  • They actually didn’t use images of the Barbie doll itself, that there really was very much no way, the court thought, that there would be confusion among the relevant public as to Mattel’s either sponsorship or creation or sourcing of the album or the song.
  • Again, like the New Kids on the Block case, the court reasoned this is what you have to do if you want to talk about Barbie.
  • You have to use the trademark Barbie and therefore that can’t be, the court reasons, an infringement of trademark or else we would all be stifled in what we want to do in terms of our social commentary and criticism.
  • So this is again, a case, a fairly classic case, of nominative use where what Aqua was doing was referring to yes, a trademarked product, referring to the actual trademark, but they were doing it in a non-trademark sense.
  • The reason that they were doing- the reason they were using the Barbie trademark had to do with what the purpose of their song was, had to do with the fact that they are trying to name Barbie, trying to talk about Barbie, and therefore, that’s nominative use and not an infringement of trademark.
  • The court also thought there was no dilution here and that this is a non commercial use of the Barbie mark.
  • Lots of money was made off of the Barbie Girl idea, but what the court meant by a non commercial use was that the use was for parody purposes, not for trademark reasons.
  • Barbie, or sorry, Aqua what was not trying to use the word Barbie to refer to the source of its activity.
  • What it was using Barbie for was for the name Barbie, for the nominative use, the non commercial use of the name Barbie.
  • So nominative use is a pretty important limit on trademark infringement.
  • So you can’t claim nominative use it if what you’re trying to do is use a trademark is an identification of source.
  • What I can do is I can engage in commentary and criticism of Apple and use the Apple marks.
  • All of the trademarks that Apple have, I can use in a nominative sense because I’m not using them as marks.
  • So although this idea might be a little complex to get, the trademark law has this really important limit that it does allow a lot of use of marks as long as you’re not using it in the ordinary trademark sense.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > Trademarks & Domain Names 

  • As I noted at the outset of this lecture, trademarks are becoming increasingly important as more and more of our commercial activity and our interaction turns to online rather than offline.
  • That’s because one of the only ways that a consumer has to interact now in the electronic commerce world is through brands, is through logos, visuals, brand names, things like that.
  • So one of the most important areas of controversy surrounding trademarks- and a nice way of thinking about trademark expansions in cyberspace is through the domain name system.
  • So just to make sure everybody’s on the same page, let’s do a quick overview of what the domain names are.
  • So domain names are an overlay to the internet network.
  • The domain name system essentially is an overlay to that.
  • So the thing to know about domain names is they’re not actually necessary to the operation of the net.
  • Also having a domain name system means that IP addresses can change relatively seamlessly without interrupting the way people interact or find those websites.
  • So if you use a consistent name then you are going to be more assured that people will be able to find your website.
  • So the way that the domain name system works is that there’s essentially a series of databases that hold these corresponding names and numbers.
  • This name refers to this number, this name refers to this number.
  • That when you type in a domain name, into your web browser, it’s going to query one or more, or maybe even a lot more of these databases, these domain name service databases.
  • Why are there disputes about domain names? Because they’re not particularly necessary.
  • Domain names have been sold for upwards of $100,000 to $200,000.
  • There’s a very, very robust business in domain name sales going on.
  • Even today, lots of companies are involved in the selling of domain names.
  • Over 96 characters are allowed in the domain name system.
  • So that’s a- it seems unlikely that lack of namespace is really the underlying reason for disputes about domain names.
  • It’s- there’s no particular reason that those search engines have to return a domain name result to you.
  • It doesn’t matter then too much what your domain name actually is.
  • They’ll find content based on the actual content of the page, rather than the name that’s attached to the domain name itself.
  • That domain names are valuable because they identify people’s sites with what they intend people to find.
  • Then- but mostly I think it’s what people want is short, easily remember names.
  • You can tell people to go to your website and then when you tell them that, if you have a short relatively easily remembered name then you’re more likely to get them to go there.
  • So it’s almost like what domain names are is sort of- good domain names are sort of the high rent district.
  • That is more valuable, more desirable, then areas they don’t have as good a domain name.
  • I think that’s what’s going on with domain names.
  • They want domain names that are short, relatively easy remembered, that they can use for marketing purposes.
  • If you let people use your mark without complaint, over time it’s going to become generic and you’re going to lose the ability to protect it.
  • As well as the desire for people who already have well known brands to bring them into cyberspace, to bring them into the era of the internet, and control references to them.
  • That makes domain names very valuable and wherever there’s value there’s of course going to be disputes.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > Cybersquatting

  • The idea is that people would obtain domain names; for a long time on the internet domain names were given away for free if you asked, but of course now you have to pay for them.
  • Often the reason it’s valuable is because that domain name uses the trademark of somebody who, in the real world, has a well known mark and would want it in cyberspace.
  • So cybersquatting was a term that was developed, was coined, to refer to this activity of purchasing domain names that referred or used particularly well known marks and then trying to get money out of it in some way.
  • The first in the first wave of domain name disputes came as more or less traditional trademark lawsuits under federal law in the US. Typically a dilution claim, because very often people wouldn’t be competing, so because you weren’t competing there wasn’t much likelihood of confusion.
  • The federal trademark approach has important downsides, both from the legal perspective and from the trademark owner’s perspective.
  • Federal trademark law, federal litigation, is quite expensive.
  • So in order to win or at least get some sort of a remedy out of the federal trademark claims, the law needed to be stretched a lot and it just didn’t work very well.
  • So registering a domain name in bad faith is now an act of trademark infringement.
  • There are still some important downsides for the trademark holder.
  • Federal litigation can be quite expensive and time consuming, especially if the defendant chooses to fight significantly, it can be quite expensive.
  • Then federal courts are pretty sensitive to First Amendment issues, which means even if you’re in the right and you’re not trying to, sort of, squash dissent or something like that, the courts are going to go through the questions of whether or not this should be fair use, should be non-fair use.
  • Therefore that makes it a bit awkward or somewhat of a downside for the trademark owner.
  • So the third approach emerged, and this is really what has become the most typical way, and indeed pretty much the only way that we’re dealing with cybersquatting type disputes these days.
  • You can’t get a domain name without agreeing to the UDRP and therefore you can’t claim that there’s no jurisdiction to resolve a dispute against you in the UDRP because you’ve already agreed as part of the purchase price to be bound by the decision of the UDRP.
  • Just doing UDRP issues, so there’s not other issues that have to wait and so forth.
  • Now whether you think effectiveness means that big trademark owners are simply able to win all these cases, that might color your view about the UDRP.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > ACPA

  • PETA, of course, is the famous trademark, the well-known trademark, for People for the Ethical Treatment of Animals, the interest group that’s interested in animal rights.
  • On his site the tagline that he used was that it was a resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research, and more.
  • So the question is when PETA sues, and under the ACPA, and argues that Doughney should be found liable for infringement, whether that’s in fact the case.
  • The reasons are that even though he clearly was making fun of PETA, and that you might think that was a parody and probably OK, on the other hand, there were aspects of what he did that caused the court to rule that he was acting in bad faith.
  • For one thing, he falsified some of the registration information which made it difficult for PETA to find him.
  • So the combination of these reasons, in particular, this implied offer to sell, the court ruled meant that he was registering it in bad faith and therefore, because he was indeed using the PETA mark as PETA.org that he registered, he met both of the components of the ACPA- bad faith intent to profit- and a use of an identical or confusingly similar mark.
  • He was criticizing the Reverend Falwell for a number of his activities, for some of his teachings, for his financial transactions.
  • It was generally a site intended, the court said, to raise questions, concerns, and commentary about Jerry Falwell, a public figure, rather than one that was intended to create profits of any sort for the domain name registrant.
  • In general, the trend is that, at least under the ACPA, these gripe sites, these sites that are designed to raise issues, to be critical of companies, of brands, are generally not found to be violating the ACPA as long as the use appears to be good faith for criticism and commentary, and not a thinly-veiled intent to sell it or do something else with the trademarked domain name.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > UDRP

  • So the UDRP is effective against all domain names regardless of jurisdiction.
  • One of the interesting things about the UDRP is it doesn’t matter where you buy the domain name, where you live, you’re going to be subject to the same set of rules as everyone else anywhere in the world who buys a domain name, who owns a domain name.
  • The reason for that is that the way that the UDRP works is through a network of contracts.
  • In order to become a domain name registrar, in order to be able to sell domain names or give domain names out, you have to agree to the root registrar which actually turns out to be in the United States.
  • One of the agreement you have to make in order to be a registrar is that you will pass through the UDRP provisions so that all of your customers and you as the domain name registrar will have to sign the UDRP.
  • So that process that everyone who registers domain names, everyone who sells domain names, agrees to make everyone who registers a domain name sign the UDRP means that everybody who has a domain name is subject to the requirements of the UDRP.
  • So the process is a little bit similar to traditional trademark litigation in that if a trademark owner feels that there’s been a violation, somebody using their trademark as a domain name, a trademark owner files a complaint with a approved dispute resolution provider alleging bad faith registration.
  • There’s concerns if you put your email address into a domain name registry you’ll get a lot of spam.
  • The trademark owner files a paper arguing why the use of the trademark or the use of the domain name violates their rights under the UDRP.
  • If the trademark owner wins, then the domain name gets transferred within a very short period of time, usually within a week or two, from the person who currently has it to the trademark owner.
  • An identical or confusingly similar use of a mark, you don’t have legitimate rights in the domain names.
  • You don’t have a company name that for example.
  • If you’re trying to do it simply to prevent the mark holder from having the name that’s bad faith.
  • If you’re trying to essentially scam or click bait internet users by using a domain name with a well known trademark to sort of attract them into your site for commercial gain, say sell a bunch of ads on your site or something like that, that’s all bad faith.
  • You can say that you’re using your domain name because you actually have a business using that name, that that’s a real business that you’ve got with that name.
  • You can say you’ve been known by the name that is in fact your name or the name of your company.
  • One is it there’s far more domain names available now then there were even just three to five years ago.
  • The registrar’s associations for domain names have really expanded who sells domain names, expanded what are known as the top level domains.
  • Beyond sort of the dot com and dot edu dot org, there are tons now of these top level domains, each of which allow people to use a particular name.
  • A lot of different ways that you can use even similar names.
  • The market for domain names has become very efficient.
  • You can very easily buy and sell a domain name very quickly.
  • That if you’re a business now and you want a particular domain name, it’s relatively easy to find it if somebody isn’t using it for their own significant website.
  • The extent that it does occur, the UDRP has become the venue of choice for trademark owners to resolve these in a fairly quick and efficient way.

Week 6: Trademark 3: Limits on Trademarks and Trademark Policy > Trademarks in Cyberspace > Trademarks & Internet Governance

  • So, one of the most interesting things about the domain names and trademarks dispute is how it implicates net governance, it implicates the way that intellectual property law changes in the modern economy.
  • The dispute over trademarks and domain names in some ways really implicates the way that we govern the internet, and it does so in sort of an interesting way which is, intellectual property here, trademarks, expands into this new area.
  • It’s a new area for potential commercial activity that people didn’t know existed before, or if they knew it existed they didn’t realize it had commercial potential.
  • One of the questions is, how do you bring rules to this area? And one of the ways that we do it is by using the old rules that we have, intellectual property law, here, trademark, to expand into this new area.
  • So you can see this trend in the trademark and domain names issue, which is- I started out by saying at first, it didn’t seem like it fit particularly well.
  • You can see this expansion, this trajectory of intellectual property rights here, trademarks, becoming more and more important to the way that we organize ourselves online.
  • How are you going to implement, execute, enforce a particular set the rules in this area of the internet, which doesn’t really have a lot of rules? And the way that you do that is, of course, the UDRP network of contracts, regime, that we talked about earlier.

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