Cybertelecom Federal Internet Law & Policy An Educational Project

IP: Trademark Reference

Laws

18 U.S.C. 2320 (criminal enforcement)
15 U.S.C. §§ 1051 - 1127.

Caselaw

See ACPA Reference for ACPA caselaw

Appellate Cases

• General Conference Corporation of Seventh Day Adventist, et al, v. Walter McGill, No. 09-5723 (6th Cir. Aug. 10, 2010)
• Sabrinsa Corp. v. Creative Compounds, LLC, No. 08-3255, 2010 U.S. App. LEXIS 14023 at *14 (3d Cir. July 9, 2010)
• Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 513 (6th Cir. 2007) .
• Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 927 (9th Cir. 2005).
• Victor's Little Secret v. Secret Catalogue, Inc., No. 01—1015, 537 U.S. 418 (S.Ct. Mar, 4, 2003 ) Victor's Little Secret was a mom-and-pop shop selling adult lingerie and other goods. The Victoria's Secret Company took offense and sued. The Court had already concluded that there was no consumer confusion between the two. Customers make think about the Victoria's Secret when they hear about the mom and pop store, but they do not think about the mom and pop store when they hear about Victoria's Secret and they would not confuse the two. The record was devoid of any way in which the Victoria's Secret mark itself was harmed.

  At least where the marks at issue are not identical, the mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. As the facts of that case demonstrate, such 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... "Blurring" is not a necessary consequence of mental association. (Nor, for that matter, is "tarnishing.")

• Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 404 (6th Cir. 2002)
• Ty, Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002) (finding that bargainbeanies.com did not infringe upon the trademark "Beanie Babies")
  • A byproduct (or perhaps additional goal) is the creation of a secondary market, like the
    secondary market in works of art, in which prices on scarce Beanie Babies are bid up to a
    market-clearing level. Perryman is a middleman in this secondary market, the market, as
    we said, that came into existence as the result, either intended or foreseen, of a deliberate
    marketing strategy. That market is unlikely to operate efficiently if sellers who specialize
    in serving it cannot use “Beanies” to identify their business. Perryman's principal
    merchandise is Beanie Babies, so that to forbid it to use “Beanies” in its business name
    and advertising (Web or otherwise) is like forbidding a used car dealer who specializes in
    selling Chevrolets to mention the name in his advertising. p. 513.
• Sallen v. Corinthians Licenciamentos LTDA,. 273 F.3d 14 (1st Cir. 2001) (UDRP is non binding)
• Sporty's Farm, L.L.C. v. Sportsman's Market, 202 F.3d 489 (2d Cir. 2000) "Appeal from a judgment of the United States District Court for the District of Connecticut (Alfred V. Covello, Chief Judge) finding that Sporty's Farm violated the Federal Trademark Dilution Act, 15 U.S.C. 1125(c), and enjoining Sporty's Farm from using the Internet domain name "sportys.com." Affirmed."
• Fagnelli Plumbing Co., Inc. v. Gillece Plumbing and Heating, Inc ., Civil Action No. 2:10-CV-00679-AJS (WDPA July 27, 2010)
• Universal Tube & Rollform v. YouTube, Case No. 3:06CV02628, Sec. 1.A. (NDOH June 4, 2007)
• Hamzik v. Zale Corp., No. 3:06-cv-1300 Sec. III.a. (NDNY April 25, 2007)
• Ty Inc. v. Perryman, 306 F.3d 509, 510 (7^th Cir. 2002) (J. Posner: "The fundamental purpose of a trademark is to reduce consumer search costs by providing a concise and unequivocal identifier of a particular source of goods.”).
• Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270 (3d Cir. 2001)
• Chatam International v. Bodum, Inc., 157 F.Supp. 549 (EDPa August 7, 2001): Plaintiff held a federal trademark for "Chambord" in relation to the sale of liqueur and food; defendant held a federal trademark for "Chambord" in relation to the sale of coffee makers. Defendant registered domain name chambord.com. Court concluded that Federal Trademark Infringement claim failed because products where distinguishable and were not competing.
• Interstellar Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1109 (9th Cir.1999).
• Lockheed Martin Corp. v. Network Solutions, 194 F.3d 980 (9^th Cir. 1999) (rejecting claim that domain name registry had a duty to week out potentially infringing domain name registrations).
• Jews for Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J.), aff'd 159 F.3d 1351 (3rd Cir. 1998): Court held that defendant's registration of the domain name "jewsforjesus.com," where defendant posted information antithetical to the Jews for Jesus organization, infringed on the trademark of the organization. In order to satisfy the necessary element of the cause of action that defendant's action be commercial, the court found that defendant's website at "jewsforjesus.com" linked to link to another of defendant's websites where he sold T shirts.
• Bath & Body Works, Inc. v. Luzier Personalized Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir. 1996)
• Berner Int'l Corp. v. Mars Sales Co., 987 F.2d 975, 981 (3d Cir. 1993)
• Little Caesar Enterprises, Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 571 (6th Cir. 1987).
• Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (setting forth "likelihood of confusion" criteria)
• Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 700 (2nd Cir. 1961)
• Carnivale v. Staub Design, LLC, Civ. A. No. 08-764, 2010 U.S. Dist. LEXIS 32668 at *9 (D. Del. Mar. 31, 2010) (citing 2 McCarthy on Trademarks and Unfair Competition § 11.2 (4th ed. 2010)

District Court

• Ford Motor Co. v. 2600 Enterprises, 177 F. Supp. 2d 661 - Dist. Court, ED Michigan 2001
• Strick Corp. v. Strickland, 162 F. Supp.2d 372 (E.D. Pa. 2001)
• Parisi v. Netlearning, 139 F. Supp.2d 745 (E.D. Va. 2001) (review of UDRP decision is de novo)
• Ford Motor Co. v. Lapertosa, 126 F. Supp.2d 463 (ED Mich 2000).
• Zippo Manufacturing Company v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997)  "This is an Internet domain name dispute. At this stage of the controversy, we must decide the Constitutionally permissible reach of Pennsylvania's Long Arm Statute, 42 Pa.C.S.A. §5322, through cyberspace. Plaintiff Zippo Manufacturing Corporation ("Manufacturing") has filed a five count complaint against Zippo Dot Com, Inc. ("Dot Com") alleging trademark dilution, infringement, and false designation under the Federal Trademark Act, 15 U.S.C. §§1051- 1127. In addition, the Complaint alleges causes of action based on state law trademark dilution under 54 Pa.C.S.A. §1124, and seeks equitable accounting and imposition of a constructive trust. Dot Com has moved to dismiss for lack of personal jurisdiction and improper venue pursuant to Fed.R.Civ.P. 12(b)(2) and (3) or, in the alternative, to transfer the case pursuant to 28 U.S.C. §1406(a). For the reasons set forth below, Defendant's motion is denied."
• Planned Parenthood Federation of America, Inc. v. Bucci, No. 97 Civ. 0629 (SDNY March 24, 1997). Court held that defendant's registration of "plannedparenthood.com," with which he created an anti-abortion website, constituted trademark infringement. The court concluded that defendant's action was commercial in that defendant promoted a book on the website, the website was a part of a greater fundraising effort, and, significantly, defendant's actions were designed to harm plaintiff commercially (in other words, it is not simply the affirmative commercial action of defendant - a cause of action could be based simply on detracting from the commercial action of plaintiff).
• Hasbro, Inc. v. Clue Computing, Inc., 1999 WL 711429 (Sept. 2, 1999)
• eBay v. JoeBay.org Stanford Cyberlaw

ACPA Caselaw

Search Engine Keyword Cases

Pop Up Ad Cases

UDRP

• FCC Fomento de Construcciones y Contratas, SA v. "FCC.COM" , Case No. D2007-0770 (WIPO October 7, 2007) Spanish companies challenge to use of domain name fcc.com by Acme Media, which used the domain for a website about the US FCC, fails; use of domain name in association with website displaying news about the FCC was clearly bona fide and therefore respondents cross-complaint for reverse domain name hijacking is sustained
• Dluhos v. Strasberg, 321 F.3d 365 (3d Cir. 2003) ("UDRP is not arbitration for purposes of Federal Arbitration Act (FAA), therefore not entitled to lenient standard of appellate review").
• Geist, Michael, Fair.Com?: An Examination Of The Allegations Of Systemic Unfairness In The ICANN UDRP, 27 Brook. J. Int'l L. 903 (2002)

Other Trademark Cases

Books

• Milton Muller, Who Owns the Root (MIT Press 2002): Providing an account of the development of the DNS wars and how we got to where we are with the DNS.

Links

• U.S. Patent & Trademark Office .
• Nolo Trademarks and Copyrights FAQs
• International Trademark Association
  • Internet Law

Papers

• John Bagby, Turmoil in dns Governance and its Merger into Trademark Law, TPRC 10/2/2004
• Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, TPRC 2004
• Thomas Lee, Dan Hunter, Dan Orr , Cohesion and Coherence in the UDRP, TPRC 9/13/03
• Findlaw Article on DNS and Trademarks
• Kristen M. Beystehner, See Ya Later, Gator: Assessing whether Placing Pop-Up Advertisements on Another Company’s Website Violates Trademark Law, 11 J. Intell. Prop. L. 87 (2003)
• Trademark Protection in Internet Domain Names by Bill Hinnant and Jeff Meek
• Milton Mueller, Success by Default: A new profile of domain name trademark disputes under ICANN’s UDRP,” Syracuse: The Convergence Center, 2002.
• The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687 (1999)
• Milton Mueller, Trademarks and Domain Names: Property Rights and Institutional Evolution in Cyberspace (1998).
• Mikki Barry, Is the InterNIC's Dispute Policy Unconstitutional (Aug 1997).
• David J. Loundy, A Primer on Trademark Law and Internet Addresses, 15 John Marshall J. of Computer and Info. Law 465  (1997)
• David W. Maher. Trademark Law on the Internet--Will It Scale?  The Challenge to Develop International Trademark Law, 16 J. Marshall J. Computer & Info. L. 3 (1997)

News

• Puzzling 9th Circuit Dilution Opinion Over eVisa.com--Visa v. JSL, Tech Marketing Law 7/7/2010
• Who Dat Holds The Trademark To Who Dat? NFL Threatens While WhoDat Inc. Asks Why?, Techdirt 2/1/2010
• Ninth Circuit Groaner About Metatags--Art Attacks v. MGA, Tech Marketing Law 9/17/2009
• Dreadful Ruling: Web Hosts Hit With $32 Million Judgment For Content On Customers' Websites, Techdirt 9/1/2009
• Jones Day v. BlockShopper: Court Chooses Legal Formality Over Common Sense, Citizen's Media 11/20/2008
• Judge Allows Bogus Jones Day Trademark Claims to Go Forward, EFF 11/18/2008
• "Trademark Use in Commerce" Revisited, Tech & Marketing Law 4/15/2008
• North American Medical Corp. v. Axiom Worldwide, Inc., No. 07-11574 (11th Cir April 7th 2008) (placing trademark terms in website's metatags constitutes "use in commerce" and therefore plaintiff has stated a claim for trademark infringement, 11th Cir 5/8/2008
• Court Says Keyword Metatags Don't Matter--Standard Process v. Banks, Tech & Marketing Law 4/29/2008
• District Court Rules Domain Name "E-fringement" of Famous Mark Constitutes Dilution Under Pre-Moseley Federal Trademark Dilution Act, Tech Law Update 1/10/2008
• Ninth Circuit rejects "disparagement of trademark" claim, Internet Cases 11/13/2007
• Court Realizes That Criticizing A Trademark Is Not Trademark Infringement, Techdirt 9/27/2007
• Don't Buy the Keyword - Buy the Domain, Ecommerce Times 5/8/2007
• Referencing TM in Online Ad Copy May Be TM Use in Commerce--Hamzik v. Zale, Tech & Marketing Law 4/27/2007