Intellectual Property Boston College Law School April 6, 2009 Trademark – Defenses – Functionality

Defenses Genericness Functionality Abandonment Nontrademark Use Parody

TrafFix v. MDI 121 S. Ct (2001)

Functionality When is something “functional”? –Essential to the use or purpose of the article –Affects the cost or quality of the product Overall inquiry –Exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage Relevant Factors –Existence of a utility patent disclosing utilitarian advantages –Advertising materials touting utilitarian advantages –Unavailability of alternative designs –Simpler or cheaper method of manufacturing Burden of proof on trademark holder

Hypos

Patent, Copyright, Trademark PatentCopyright Trademark Functionality Doctrine Useful Article Doctrine Product Design Fictional Characters Computer Software

Defenses Genericness Functionality Abandonment Nontrademark Use Parody

Dodgers

Abandonment 15 U.S.C –“A mark shall be deemed ‘abandoned’ when either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances. Nonuse for three consecutive years shall be prima facie abandonment. ‘Use’ of a mark means the bona fide use of such mark made in the ordinary course of trade, and not merely to reserve a right in a mark. (2) When any course of conduct of the owner … causes the mark to … lose its significance as a mark...

Defenses Genericness Functionality Abandonment Nontrademark Use Parody

Mattel v. MCA I’m a Barbie Girl, in a Barbie world; life is plastic; it’s fantastic You can brush my hair, undress me everywhere … Imagination; Life is your Creation … I’m a blond bimbo girl, in a fantasy world...

Dilution Amendments (3) The following shall not be actionable as dilution … : –(A) Any fair use, including a nominative or descriptive fair use … other than as a designation of source for the person's own goods or services, including use in connection with-- (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. –(B) All forms of news reporting and news commentary. –(C) Any noncommercial use of a mark.

Louis Vuitton v. Haute Diggety

New Kids v. News America Nominative use –Product not readily identifiable without use of trademark –Only so much of mark used as reasonably necessary to identify –Nothing to suggest endorsement or sponsorship

Parody Different approaches –Likelihood of confusion –Modified likelihood of confusion –Weigh confusion against speech interests –Speech interests trump –Non-trademark use –“Fair use”

Cliffs Notes v. Bantam

Likelihood of Confusion Typical Factors (e.g. Polaroid, Sleekcraft, etc.) –Strength of mark –Proximity of goods –Similarity of marks –Actual confusion –Marketing channels –Types of goods and consumer care –Defendant’s intent –Likelihood of expansion in product lines

Hypo

Examples Gucci Jordache Energizer Bunny Enjoy Coke Spam Don’t Leave Home Without It L.L. Bean Back to School Catalog Dom Perignon Godzilla Michelob GucchiGoo (diaper bag) Lardache (large jeans) Leslie Nielsen (Coors) Enjoy Cocaine (t-shirt) Spa’am (muppet) Don’t Leave Home Without It (condoms) L.L. Beam Back to School Sex Catalog (adult magazine) Dom Popignon (popcorn) Bagzilla (big garbage bags) Michelob Oily (spoof ad)

Administrative Next Assignment –VII.A – Misappropriation –VII.B – Contract –Start VII.C – Through Nadel