Proving Dilution. William Fisher

Transcription

1 2012, William Fisher. This work is licensed under the Creative Commons Attribution-NonCommercial-ShareAlike 2.5 License. November 8, 2012 Proving Dilution William Fisher

2 Federal Trademark Anti-Dilution Statute before 2006 (1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.

3 Federal Trademark Anti-Dilution Statute before 2006 (1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.

4 Circuit Split Concerning Causes Dilution Pro defendant Pro plaintiff

5 Circuit Split Concerning Causes Dilution Proof of economic harm is necessary CA4; CA5 Pro defendant Pro plaintiff

6 Circuit Split Concerning Causes Dilution Proof of economic harm is necessary CA4; CA5 Likelihood of dilution is sufficient CA2, CA6, CA7 Pro defendant Pro plaintiff

7 Moseley v. Victoria s Secret

8 Circuit Split Concerning Causes Dilution Proof of economic harm is necessary CA4; CA5 Likelihood of dilution is sufficient CA2, CA6, CA7 Pro defendant Pro plaintiff

9 Circuit Split Concerning Causes Dilution Proof of economic harm is necessary CA4; CA5 Supreme Court: Plaintiff must prove actual dilution Likelihood of dilution is sufficient CA2, CA6, CA7 Pro defendant Pro plaintiff

10 Meaning of actual dilution Identical marks Identity may be sufficient circumstantial evidence by itself Savin (CA2 2004); Everest Capital (CA8 2005) (dictum); Corbond (WD Wis. 2005) (dictum) But see Ty, Inc. (CA7 2003) (dictum); Lee Middleton (ED Wis. 2004); Nike (ND Ill. 2004) (dictum); Avlon (ND Ill. 2005) Nonidentical marks Loss of revenues resulting from dilution would surely be sufficient That consumers are less likely to associate the plaintiff s mark with the plaintiff is probably sufficient for blurring That consumers think less well of or differently about -- plaintiff s mark is probably sufficient for tarnishing That consumers associate defendant s mark with plaintiff s mark is insufficient

11 Proving actual dilution Consumer Surveys SG s proposal: Compare (a) consumers aware of both marks with (b) consumers aware only of plaintiff s mark in terms of their impressions of plaintiff s mark Before and after surveys e.g., Toucan Sam Testimony by Marketing Experts Likely sufficient if court is determined to reach freeriding defendant (Hansen)

12 2009, William Fisher. This work is licensed under the Creative Commons Attribution-NonCommercial-ShareAlike 2.5 License. November 8, 2012 Trademark Dilution Revision Act (2006) Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

13 2009, William Fisher. This work is licensed under the Creative Commons Attribution-NonCommercial-ShareAlike 2.5 License. November 8, 2012 Trademark Dilution Revision Act (2006) Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

14 Circuit Split Concerning Causes Dilution Proof of economic harm is necessary CA4; CA5 Supreme Court: Plaintiff must prove actual dilution Likelihood of dilution is sufficient CA2, CA6, CA7 Pro defendant Pro plaintiff

15 Circuit Split Concerning Causes Dilution Proof of economic harm is necessary CA4; CA5 Supreme Court: Plaintiff must prove actual dilution Likelihood of dilution is sufficient CA2, CA6, CA7 Pro defendant Pro plaintiff

16 2009, William Fisher. This work is licensed under the Creative Commons Attribution-NonCommercial-ShareAlike 2.5 License. November 8, 2012 Victoria Secret -- reprise CA6 (2/1) (2010) If there is a clear semantic relationship between the two marks, and if the defendant s mark is used to sell sex-related products, there is a rebuttable presumption of likelihood of tarnishment Burden shifts to defendant to provide evidence that there is no likelihood or probability of tarnishment Expert testimony, surveys, polls, customer testimony