Trademark and Unfair Comp.

Boston College Law School

March 25, 2009

3rd-Party Liability, Statutory Defenses

Third Party Liability

• Third Party Liability– Contributory Liability

• (i) assist in infringing activity

• (ii) knew or had reason to know of infr. activity

– Vicarious Liability• (i) authority or ability to control other’s behavior

• (ii) direct financial benefit from infringement

Inwood v. Ives

Hard Rock Café v. CSI

Polo v. Chinatown

e-Bay Example

Third-Party Liability

• Reasons to extend– Facilitate enforcement, lower costs– Third-parties morally culpable– Deter third-parties

• Reasons to limit– Imposes costs on third-parties to monitor– Not always fair to impose burden– Not always most efficient to impose burden

Incontestability

• Lanham Act §15:– Except on a ground for which application to cancel may be filed

… under paragraphs (3) and (5) of section 14 …

– and except to the extent … to which the use of a mark … infringes a valid right acquired … by use of a mark … continuing from a date prior to the date of registration …,

– the right of a registrant to use such registered mark in commerce for the goods … on … which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration … shall be incontestable …

– no incontestable right shall be acquired in a mark which is the generic name for the goods or services

Incontestability

• Lanham Act §14:– A petition to cancel a registration of a mark …

may … be filed …• (1) Within five years from the date of registration ...

• (3) At any time if the registered mark becomes the generic name for the goods … or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of … subsection (a), (b), or (c) of section 2 … or if the registered mark is being used … so as to misrepresent the source of the goods …

• (5) At any time in the case of a certification mark ...

Bars to Registration

• Lanham Act §2: – (a) Immoral, scandalous, deceptive; disparages – (b) Flag, coat of arms, insignia of U.S., state, etc.– (c) Name, portrait, signature of living individual– (d) Likely to cause confusion with other mark– (e) Consists of mark that is:

• (1) merely descriptive or deceptively misdescriptive• (2) primarily geographically descriptive• (3) primarily geographically deceptively misdescriptive• (4) primarily a surname• (5) functional

Incontestability• Lanham Act §33:

– (a) Any registration … shall be prima facie evidence of the validity of the registered mark ...

– (b) To the extent that the right to use the registered mark has become incontestable under section 15, the registration shall be conclusive evidence of the validity of the registered mark …. Such conclusive evidence … shall be subject to the following defenses:

• (1) [Obtained by fraud]• (2) [Abandoned]• (3) [Used to misrepresent source]• (4) [Fair use defense]• (5) [Prior use defense]• (6) [Prior registration defense]• (7) [Used to violate antitrust laws]• (8) [Other equitable principles]

Car Freshner v. S.C. Johnson

New Kids v. News America

• Nominative use– Product not readily

identifiable without use of trademark

– Only so much of mark used as reasonably necessary to identify

– Nothing to suggest endorsement or sponsorship

Administrative Details

• Next Assignment– VII.A – False Designation of Origin– VII.B – Comparative and False Advertising