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Here's a PDF of the paper I wrote which was included in the CLE materials for a panel on which I was a participant at the American Intellectual Property Law Association's annual meeting on October 24, 2013. The Panel was entitled "Trademarks, Goodwill and Free Speech: Does the First Amendment Give You the Right to Create a Trademark and Associated Goodwill, and Where Does That Right End?" My paper is called "The Misuse of Trademarks to Control Free Expression." In other words, regular readers of this blog will find little new there, except for the footnotes. The panel was moderated by Paul Alan Levy of Public Citizen, and the other participants were Christine Haight Farley from American University's Washington College of Law, who gave an incisive overview of the theoretical and doctrinal issues, and Tony Zeuli of Merchant and Gould, PC, in Minneapolis, who spoke broadly as well but particularly about his successful defense against the lawsuit brought by Michael Jordan against the Chicago-area Jewel / Osco food store chain based on various theories arising from "false endorsement."
Citation preview
First Principles
• The First Amendment– “Congress shall make no law…”
• Axiom: Trademark rights are a limitation on “speech” (expression)
• “Commercial speech” is also SPEECH
© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
First Principles
[W]e cannot indulge the facile assumption that one can forbid particular words
without also running a substantial risk of suppressing ideas in the process.
Cohen v. California, 403 U.S. 15, 26 (1971)
© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
THE ANCIENT TEST FOR TRADEMARK INFRINGEMENT vel non
LIKELIHOOD OF
CONFUSION© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
PROCEED CAUTIOUSLY
Courts are not to stake out new territory in the
trademark domain at the expense of curtailing the
ability of a speaker to communicate his message.
Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)
© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
WEIGH EFFECT ON SPEECH
In determining the outer limits of trademark protection the weight of the risks of confusion and suppression of expression may tip the scales against trademark
protection.
Silverman v. CBS, Inc., 870 F.2d 40, 49 (2d Cir. 1989)
© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
TRADEMARK LAW HAS NO LEGITIMATE ROLE AS A RESPONSE TO CRITICISM
A trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion, and is forbidden.– United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d
86, 92, n.3 (2d Cir. 1997), cert. denied, 118 S. Ct. 1521 (1998)
© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
INITIAL INTEREST CONFUSION NOT APPLICABLE TO NON-COMPETITORS
PissedConsumer.com does not divert Internet users away from deVere’s website because deVere does not have a website that competes for business with PissedConsumer.com; Opinion Corp. provides a forum for customer criticism of businesses, while deVere provides financial services….Initial interest confusion does not arise in circumstances where the products in question are used for substantially different purposes and therefore the merchants are not in close competitive proximity. Accordingly, deVere’s allegations do not create any plausible inference of intentional deception; there is no risk that a customer seeking deVere financial services would mistakenly visit and divert their business to PissedConsumer.com.
– deVere Group GmbH v. Opinion Corp., 2012 WL 2884986 (E.D.N.Y. July 13, 2012)
© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
NO LIKELIHOOD
OF CONFUSIONStop the Olympic
Prison v. United States Olympic
Committee, 489 F. Supp. 1112 (S.D.N.Y
1980)
NO LIKELIHOOD
OF CONFUSIONGirl Scouts v.
Personality Posters, 304 F. Supp. 1228
(SDNY 1969)
ENJOINED
under the
LANHAM ACT
Jews for Jesus v. Brodsky,
993 F.Supp. 282 (D.N.J. 1998), aff'd, 159 F.3d 1351 (3d
Cir. 1998)
http://www.peta.org
ENJOINED
under the
LANHAM ACT
People for the Ethical Treatment of
Animals v. Doughney,
263 F.3d 359 (4th Cir.2001)
Master Card Int'l Inc. v. Nader 2000
Campaign Committee, 2004 U.S. Dist. LEXIS
3644, *42, 70 U.S.P.Q.2D (BNA)
1046, Copy. L. Rep. (CCH) P28,781 (S.D.N.Y. 2004)
NO LIKELIHOOD
OF CONFUSION
NO LIKELIHOOD
OF CONFUSIONAscentive, LLC v.
Opinion Corp., 842 F. Supp. 2d 450
(E.D.N.Y. 2011)
Louis Vuitton Malletier, S.A. v.
Hyundai Motor America, 2012 WL 1022247 (S.D.N.Y.)
ENJOINED
under the
LANHAM ACT
Thanks