Intro to IP

1. Intro to IP Class of November 19 2003 Trademark Dilution, Cybersquatting, False Advertising

2. Dilution: Moseley v. V Secret Catalogue, Inc. (2003) Supp 7 • What is trademark dilution and what’s the rationale for it? • What was the Circuit split that the U.S. Supreme Court had to resolve in this case?

3. FTDA (15 U.S.C. § 1125(c)) • Protects famous/distinctive marks only (see factors at (c)(1)) • From dilution of the distinctive quality of the mark (see s. 1127) • Injunctive relief only unless willful intention to trade on owner’s reputation or to cause dilution of famous mark • Exceptions : fair use in comparative commercial advertising to ID competing goods/services, noncommercial use of a mark, news reporting/news commentary

4. Circuit Split • Was on what P must prove under the FTDA • Objective proof of actual injury to economic value of a famous mark? • Actual loss of sales or profits? • Presumption of harm (likelihood of dilution)?

5. Problem 5-7 CB p. 643 • Does LEXUS for a luxury car dilute the registered trademark LEXIS for a legal/business electronic database?

6. Problem 5-7 CB p. 643 • Does LEXUS for a luxury car dilute the registered trademark LEXIS for a legal/business electronic database? Problem is based on Mead Data Central v. Toyota Motor Sales, 875 F.2d 1026 (2d Cir. 1989) (pre-FTDA case decided on New York state dilution law)

7. Problem 5-8 – CB p. 647 – use of logos outside the corporate context • What hurdles will TM owners have to clear to enforce their rights? Are there any risks in letting the practice continue? Do PMC/customers have a defense not based in TM law?

8. Domain Names and Cybersquattiing • What’s a domain name? • What’s cybersquatting • Compare the ACPA to the UDRP