Trademark Law Developments
Professor David Welkowitz (Whittier Law School) discussed 5 different issues involving trademark law (dilution, adwords, contributory liability, aesthetic functionality, and rights of publicity).
Dilution
Victoria's Secret v. Moseley was decided by the Supreme Court several years ago, but it's still around. On remand, the only claim left is the tarnishment claim. The 6th Circuit says there's an inference or presumption of tarnishment when the mark is being used in a sexual manner. Professor Welkowitz questions whether this presumption can realistically be rebutted? He also wonders if the same presumption will be raised in contexts involving drugs.
Visa v. JSL is a blurring claim. "Visa" is a real word and has a real connotation and the defendant argued it was using the ordinary word in its ordinary context. The 9th Circuit said this was not the case because it was being used as a trademark and not for providing the goods or services in which the word would be used for (e.g. providing travel documentation).
The Trademark Trial and Appeal Board (TTAB) hadn't really decided very many trademark dilution cases, but last year the TTAB has shown more interest in dilution cases (5 during the last year). One case is National Pork Board v. Supreme Lobster & Seafood Co. in which the TTAB determined that there was a likelihood of dilution involving "Pork – the other white meat." Another is Coach v. Triumph Learning, which found that the mark COACH was not famous because dilution is concerned with the general public, not just consumers (e.g. handbag consumers).
AdWords
Rosetta Stone v. Google. Google sells words (many times trademarked words) to advertisers. Trademark owners object to Google selling these words. The district court held that AdWords are essential to the operation of Google's search engine. Professor Welkowitz thinks this is an odd application of the functionality test. This case is currently on appeal to the 4th Circuit and Professor Welkowitz thinks the 4th Circuit will come to a different conclusion on the functionality issue.
Contributory Liability
Tiffany v. eBay involved contributory liability for counterfeits sold on eBay. eBay was not a direct infringer – it wasn't selling the counterfeit goods, but eBay certainly knew that there were some counterfeit goods being sold on its site. The question was how particularized must that knowledge be to be liable. The Second Circuit, similar to the YouTube decision, held that the knowledge needs to be particularized.
Aesthetic Functionality
Fleischer Studios v. AVELA (9th Cir. 2011) – consumers aren't buying Betty Boop merchandise not because they think it's official or produced by a certain source, but instead they're buying the products because they want Betty Boop merchandise. Because of this, the image of Betty Boop was found to be functional.
Rights of Publicity
Keller v. Elec. Arts – a videogame case using real college football players. A college football play brought suit alleging a violation of his right of publicity under California law. The question was whether this was a transformative use. The court said the videogame producer was just using the image of the player and not transforming it at all.