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Merchandising; Cybersquatting; Indirect Infringement and False Advertising. Intro to IP – Prof Merges 3.22.2012. Merchandising: “Extension by Contract”. Merchandising and basic trademark theory What consumer associations are protected by a “merchandising right”?
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Intro to IP – Prof Merges
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith. – P. 874
(1)(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark …. Lanham Act § 43(d), 15 USC § 1125(d)
(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties
Doughney (I) had no intellectual property right in peta.org; (II) peta.org is not Doughney’s name or a name otherwise used to identify Doughney; (III) Doughney had no prior use of peta.org in connection with the bona fide offering of any goods or services; (IV) Doughney used the PETA Mark in a commercial manner;
(V) Doughney ‘‘clearly intended to confuse, mislead and divert internet users into accessing his web site which contained information antithetical and therefore harmful to the goodwill represented by the PETA Mark’’;
(VI) Doughney made statements on his web site and in the press recommending that PETA attempt to ‘‘settle’’ with him and ‘‘make him an offer’’; (VII) Doughney made false statements when registering the domain name; and (VIII) Doughney registered other domain names that are identical or similar to the marks or names of other famous people and organizations.
"Owe no one anything except to love one another, for he who loves another has fulfilled the law." (Romans 13:8)
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‘‘The paradigmatic harm that the ACPA was enacted to eradicate’’ is ‘‘the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark.’’ Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004).
[W]e need not resolve that question or determine whether Sections 32 and 43(a) apply exclusively to commercial speech because Reverend Falwell’s claims of trademark infringement and false designation fail for a more obvious reason. The hallmark of such claims is a likelihood of confusion—and there is no likelihood of confusion here.
John Zuccarini (born c. 1947) is an American businessman who served time in federal prison for violating the Truth in Domain Names Act. Zuccarini operated a domain name speculation business. He is reported as owning 5500 domains before his arrest.
John Zuccarini was charged under "truth in domains" legislation
Domain name speculation
Zuccarini registered thousands of domains that were close misspellings or "typos" of popular sites such as Cartoon Network and Homestar Runner or even acquired domains identical to well known brands such as Hot Wheels. Speculators normally place a pay-per-click web page in place of the legitimate website visitors expect to find. A PPC page looks similar to a search engine page but the design additionally blankets the home page with a copious amount of links that are often related to the subject of the domain name. Under the normal model of business, the speculator profits from the money obtained from visitors clicking on these links. However, Zuccarini deviated from this business convention by redirecting his audience of largely children to pornographic websites.
Only 2.5 million names were deleted that same month.
In April of 2006, 35 million names registered.
Of those names 32.7 million were used again and again but never registered permanently!How Bad is the Problem?
“Specifically, legislation is needed to clarify the rights of trademark owners with respect to bad faith, abusive conduct, and to provide adequate remedies for trademark owners…”
‘‘[I]f a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit.’’
For contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary. [No liability here.]
(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which…(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action…. § 43(a)(1)(B)
TUMS is ‘‘aluminum free,’’ and that ‘‘only TUMS helps wipe out heartburn and gives you calcium you need every day.’’ After the woman is depicted pondering the virtues of a calcium-based antacid, the commercial ends with a visual and verbal statement of the advertisement’s slogan: ‘‘Calcium rich, aluminum free TUMS.’’
Tests did not prove that faster lubricating time at engine startup reduced engine wear
Warner-Lambert Co. v. Breathasure, Inc. 204 F.3d 87 (3d Cir. 2000)
Enjoining continued use of “Breathasure” trademark along with advertising that implied bad breath could be (better) treated “at the source” (in the stomach) vs. in the mouth