LEGAL BRIEFS

The most common area of litigation on the Internet these days is in the legal field of trademark. Two primary claims exist under trademark law, to wit, infringement and dilution.LEGAL BRIEFS

The most common area of litigation on the Internet these days is in the legal field of trademark. Two primary claims exist under trademark law, to wit, infringement and dilution. “Infringement” is the most common claim and arises when a defendant’s use of a mark is likely to cause confusion among consumers as a result of its similarity with another mark. “Dilution” is a lesser-known claim and occurs when a defendant webmaster has lessened a specific product by damaging the ability of the consumer to identify that product by its mark.

The controlling law for trademark actions is the Lanham Act. Under this Act, courts determine on a case-by-case basis whether the conduct of the defendant webmaster creates a “likelihood of confusion” with the registered trademark. To specifically prove this, a plaintiff must show two elements: 1) that the plaintiff has a right to the trademark, and 2) that the defendant’s unauthorized use of the trademark will likely cause consumers to be deceived, confused or mistaken about the product being offered. In a typical civil case, a plaintiff must show that actual damage has occurred because of the offending act. Under the Lanham Act, this is not the case; rather, a plaintiff must only show that damage is likely to occur.

In litigation, this legal development significantly lightens the plaintiff’s burden of winning the case. Dilution of a trademark is an easier claim for a plaintiff to make in court. The Federal Trademark Dilution Act is the governing law in this field and provides that the owner of a “famous” mark can bring a trademark action where the “famous” nature of the mark is being diluted by the defendant. Many courts and lawyers frown upon the use of terms such as “famous” because of the inherent difficulty in defining who or what is famous. Regardless, dilution is defined in the act as “the lessening of the capacity of a famous mark to identify and distinguish goods and services.” To prove this, a plaintiff must show that the mark is “famous”, that the famous mark is used for commercial purposes, and that the defendant is using the offending mark for commercial gain in a way that is diluting the value of the famous mark.

So, what does dilution really mean? The courts break the term into two categories: tarnishment and blurring. Tarnshiment claims are applicable to the adult Internet field in that it is asserted that the famous trademark’s value is diminished due to being inappropriately portrayed. For instance, creating an adult site with a name closely paralleling a well-known movie star can lead to this claim. The claim of “blurring” can also apply to the Internet field. The specific claim is that the value of the mark has been diminished by the defendant’s use of it in realms of the Internet where it is not normally associated.

Interestingly, there are three significant defenses to dilution cases. The first is where there is fair use by a competitor to identify a competing good or service. The second is for the noncommercial use of the mark, but webmasters should note that free sites with pay-click-programs would not qualify for this defense in the opinion of the author. Third, the use of a mark in news reporting or commentary is absolutely not a basis for a dilution claim. Depending on the steps taken by the plaintiff, a successful claim against a defendant can lead to multiple damage remedies. Initially, the plaintiff always seeks an injunction forcing the termination of the use of the mark or a court order causing the transfer of any offending domain name to the plaintiff.

Secondly, the plaintiff will often make multiple claims in the lawsuit which may lead to significant monetary awards against the defendant.

Infringement of trademarks on the ‘net has historically occurred with nominal repercussions. Although admittedly slow, the various arms of the government have clearly defined the “rules of the game” to be applied in this area. The playing field has been leveled and companies are now moving to protect their intellectual property. In considering the name of your site or the use of other’s marks to draw traffic, the webmaster should give serious thought to the repercussions that may occur.

The above discussion is intended to be a general commentary on trademark issues. Each situation is different and this article is not intended as legal advice for your specific situation. Further, nothing in this article is intended to create an attorney-client relationship. If you have additional questions, please contact Richard A. Chapo at www.AdultInternetLaw.com .

LEGAL BRIEFS

(more…)