Title: Abusive Trademark Litigation and the Incredible Shrinking Confusion Doctrine - Trademark Abuse in the Context of Entertainment Media and Cyberspace
Abstract: I. THEORETICAL UNDERPINNINGS OF IP PROTECTION 615 A. Underlying Theories of IP Protection 615 1. Labor/Investment Rationales 615 2. Economic Incentive/Efficiency Rationales 616 3. Misappropriation Rationales 617 4. Personality-Based Rationales 618 B. The Theoretical Basis of Trademark Law 619 1. Confusion Doctrine/Likelihood of Confusion 620 2. Unfair Competition/Section 43(a) 621 3. Dilution Theory: Blurring and Tarnishment 622 4. Cybersquatting 624 II. TRADEMARK OWNERS' RIGHTS AND THE PUBLIC INTEREST 625 III. TRADEMARK LAW IN THE CONTEXT OF ENTERTAINMENT MEDIA 628 IV. ABUSIVE TRADEMARK LITIGATION 631 A. Characteristics of Abusive Trademark Litigation 631 B. Trademark Wars: Legitimate Claims and Abusive Claims 633 1. Film Title Cases 633 2. Spa'am Case 635 3. Internet Cases 636 C. Boomerang Effect of Abusive Trademark Litigation Strategies 637 V. SUGGESTED PROPOSALS 638 A. Coordinate Sensible Policy on IP Lawsuits in Entertainment Industry 638 B. Clarify Acquiescence and Laches Standards 639 C. Eliminate Injunctive Relief as the Primary Relief in Dilution Cases 641 VI. CONCLUSION 641 The recent legal challenge to the extension of the copyright term was grounded in the notion that Congress was giving away benefits to intellectual property (IP) owners, typically large corporate entities, without any corresponding public benefit that underlies the constitutional authority for IP grants. (1) The giant conglomerates of the copyright industry--such as Time Warner, Disney, and Viacom-ultimately won that battle before the U.S. Supreme Court. (2) Yet, in another case, the Court limited the rights of big corporations with famous trademarks to attack smaller companies under the theory of trademark dilution by requiring showing of actual economic harm rather than mere likelihood of dilution. (3) Courts have generally taken more conservative view toward the expansion of IP rights and trademark rights in particular, (4) whereas Congress has recently enacted federal trademark dilution protection, (5) federalized the law of trade secrets, (6) outlawed cybersquatting, (7) increased damages for copyright infringement, (8) and extended the term of copyright protection. (9) Such expansion by Congress arguably reflects the political muscle of big businesses, including companies in the high-tech sector and the entertainment industry, and their ability to influence the legislative process. (10) The expansion of trademark rights has been particularly dramatic, prompting one commentator to charge, with ample support, that Congress appears intent on a course of annihilating the common law of trademarks.... [W]ith no real conceptual justification, American trademark law has quickly come to emulate trademark jurisprudence of [some civil law countries], where the trademark itself is considered subject to property ownership. (11) Trademark law blossomed in an environment of robber capitalism and was designed to prevent acts of fraud such as removing competitor's cereal from its boxes, placing the cereal in boxes with one's own mark, and passing it off as one's own. (12) Today, the explosion of computer technology and the rise of the Interact have profoundly impacted every area of IP, including copyright, (13) trade secret, (14) the right of publicity, (15) and trademark law. …
Publication Year: 2004
Publication Date: 2004-03-22
Language: en
Type: article
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Cited By Count: 4
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