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U.S. Intellectual Property and New Media Law Update DILUTED DILUTION Enterprise Rent-A-Car Co.y v. Advantage Rent-A-Car, Inc. (Fed. Cir. -May 30, 2003) PREMATURE REJECTION Courtenay Communications Corp. v. Hall et al. (2nd Cir. - June 24, 2003) HOLD THAT TIGER ETW Corporation v. Jireh Publishing, Inc. (4th Cir. - June 20, 2003) INTERNET ADDRESSES AS TRADEMARKS Interactive Products Corporation v. A2Z Mobile Office Solutions Inc. (6th Cir. - April 10, 2003) DILUTED DILUTION Enterprise Rent-A-Car Co.y v. Advantage Rent-A-Car, Inc. (Fed. Cir. -May 30, 2003) Since dilution became a factor in opposition proceedings, the Trademark Trial and Appeal Board has been coming to terms with its requirements. The point of interest, in this case is whether an opposition can be maintained based on dilution when the applicant's mark was used in a limited geographic area before opposer's mark became famous. To answer this question, the Federal Circuit simply turned to the statue itself which states that the owner of a famous mark would be entitled to an injunction "if such use began after the mark has become famous." Thus if the dilution act requires prior fame, the opposition would also require this prior fame. Thus, where Advantage Rent-A-Car produced a television commercial using the phrase "We'll even pick you up" before the opposer's wide spread national advertising campaign, opposer was not in a position to oppose the application on the basis of dilution. The Federal Circuit also noted that the finding of dilution under a state anti-dilution statue is insufficient basis for opposition. The decision can be viewhttp://laws.findlaw.com/fed/021444.html http://laws.findlaw.com/4th/021396p.html PREMATURE REJECTION Courtenay Communications Corp. v. Hall et al. (2nd Cir. - June 24, 2003) Plaintiff's mark was "iMarketing News" with the "i" in red, lowercase letterng and the same size as other letters, which are in small caps and a yellow circle superimposed over the red "i" and part of the"M." Defendant used Plaintiff's mark in its website, linking it to a false endorsement of Defendant's personnel services. The judge at the District Court level dismissed the case indicating that he believed the term "iMarketing News" was generic. Under Rule 12(b)(6) one must take Plaintiff's pleading as true and give it the benefit of every inference. The Court is not permitted to make a fact finding into the determination of such a motion. The determination of genericness was, in fact, a fact finding. The Court distinguishes this from other cases where there was no indication that special typeface or symbols were used in connection with the mark. The decision can be viewed at: http://www.ipcounselors.com/courtenay.pdf HOLD THAT TIGER ETW Corporation v. Jireh Publishing, Inc. (4th Cir. - June 20, 2003) Defendant is the publisher of an art-work created by Rick Rush who refers to himself as "America's sports artist." He did a painting of Tiger Wood at a tournament. The painting was the subject of a limited edition of prints. Plaintiff sued alleging trademark infringement, dilution, unfair competition, and false advertising. The District Court granted the Defendant's motion for Summary Judgment and the Plaintiff appealed. Simply put, the Plaintiff claims that the prints constitute unauthorized use of the registered trademark "Tiger Woods" by including these words in the marketing materials which accompany the prints of Rush's painting. The words "Tiger Woods" do not appear on the face of the prints, nor are they included in the title of the painting. The words "Tiger Woods" does appear on the flap of the envelopes that contain the prints and Woods is mentioned twice in the narrative which accompany the prints. The Court first noted that you are allowed to use a mark which is descriptive, discriptively. Thus, the use of Tiger Woods' name on the back of the envelope and the narrative are purely descriptive and there is nothing to indicate they are used other than in good faith. The Plaintiff also claimed that unauthorized use of the likeness of Tiger Woods was a violation of Section 43(a) of the Lanham Act. The Court found that Plaintiff's claim for protection under the Lanham Act for any and all images of Tiger Woods is untenable. In effect, the Plaintiff was asking that the court define Tiger Woods as a walking talking trademark. Tiger Woods' image does not function as an indicator of source for any goods or services. There was also a claim of false endorsement and a claim of infringement of the right of publicity. Here the Sixth Circuit did an analysis under the first amendment balancing the first amendment against intellectual property rights in cases involving the Lanham Act and state law rights of publicity. The Court found that the Lanham Act should be applied to artistic works only when the public interest in avoiding confusion outweighs the public interest in free expression. It found that the image does have artistic relevance to the work and does not explicitly mislead as to the source of the work. It also found that under the state right of publicity claim, the artistic use should be analogous to fair use under the copyright law. In sum, the Court found that defendant's expression was entitled to full protection of the first amendment and not the more limited protection afforded to commercial speech. There was a rather interesting dissent which is worth reading. The decision can be viewed at: http://laws.findlaw.com/6th/03a0207p.html INTERNET ADDRESSES AS TRADEMARKS Interactive Products Corporation v. A2Z Mobile Office Solutions Inc. (6th Cir. - April 10, 2003) While the fact pattern is complex, for the purposes of analysis only one thing is of interest. The fact that the Defendants used Plaintiff's trademark in its post domain name path of its URL for a competing product. Plaintiff's mark was Lap Traveler for a portable computer stand. Defendant had a similar device which it had sold under the name The Mobile Desk. Defendant had originally sold Plaintiff's product at the web page: http://atozsolutions.com/desk/floor/laptraveler/dkfl/lt.htm After it began selling its own product it used the same web address for a web page that had the following announcement: "Important announcement about the Lap Traveler product. The original Lap Traveler was co-developed by Doug Myer and his ex-partner. They have split. AtoZ carries the redesigned and approved product - The Mobile Desk." The District Court found that Plaintiff had failed to present evidence sufficient to create a genuine issue of fact that consumers are likely to be confused by the presence of Plaintiff's trademark in the post domain name path of AtoZ's portable computer stand web page. First the court found no intention to mislead since it was simply continuing to use a prior address rather than specifically inserting a new one. It lead to a webpage which prominently indicated that it was selling The Mobile Desk. The question became whether consumers were likely to notice Lap Traveler in the post domain path and then think that The Mobile Desk may be produced by the same company. The Court found that while the domain name normally indicates source, the post domain name path URL does not. The decision can be viewed at: http://laws.findlaw.com/6th/03a0111p.html |
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