Trademark Outline

Trademarks Outline (F2009)
I.                        Misappropriation and Unfair Competition
International News Service v. Associated Press (1918)
·         Supreme court recognized quasi property right in the news.
·         AP negotiated contracts with European countries; were the only journalists allowed in war zones. AP reports were the only way that INS could get news.
·         Supreme court allowed injunction against INS for a few hours to prevent them from using the news until AP had disseminated the reports to all member newspapers.
·         AP sowed the crop, INS is harvesting; almost like a tort rather than invasion of property right.
·         Is this case still good law? For a long time the case was a historical curiosity.
·         Allheadlinenews.com; hired someone to read AP dispatches then put them up in their new words. Taking stuff that can’t be protected by copyright, commercializing it in a way that is good for competition but is putting newspapers out of business. AP sued allheadlinenews; should they be able to recover on the rationale of INS?
Cheney Bros v Doris Silk Corp (2d Cir. 1929)
·         Fashion Designs take a lot of work to create. Letting someone else use them will destroy the incentive to create.
·         But if we protected these things, it would upend copyright and patent. Yes, it’s not fair, but unfairness is not enough to upend the policy to permit copying for things that are unprotected.
·         Court holds that INS should only apply to a particular kind of unfairness – limits it to its facts.
Sears Roebuck Co v Stiffel (1964)
·         Stiffel patented a pole lamp, Sears made an identical one for cheaper. Trial court found the patent invalid, but because the Sears lamp looked exactly the same, there could be consumer confusion.
·         Supreme court disagreed; even public confusion isn’t a good enough reason to enjoin copying under state law for something not protected by patent.
·         State law cannot conflict with patent law. States can still pass some laws to prevent consumer confusion.
Compco Corp v Day-Brite (1964)
·         A broad reading of Sears Compco would say that federal copyright law confers rights on the public to copy that states cannot interfere with.
·         If a product is not entitled to a patent or other federal statutory protection, then it may be copied at will.
Bonito Boats v Thunder Craft Boats (1989)
·         Court found Florida law prohibiting copying of boat hull molding process conflicted with federal patent law
·         Under Sears, states may still pass laws that place limited regulation on use of unpatented designs to prevent confusion.
·         Case actually cites INS as something that is probably OK but doesn’t say why.
·         This case is the Supreme Court’s most recent word on the vitality of Sears.
NBA v Motorola (2nd cir 1997)
·         NBA sued to prevent Motorola from broadcasting scores of ongoing games (Motorola used its own network of score gatherers)
·         Five elements of “hot news” misappropriation claim
Plaintiff gathers the info at a cost
Time-sensitive info
Defendant is free-riding
Defendant is in direct competition w/ plaintiff
Ability of others to free-ride would reduce plaintiff’s incentive to produce
·         Motorola is the dominant test to determine if a misappropriation claim survives Bonito Boats preemption of the claim.
·         Court says that NBA cannot show that free-riding would reduce plaintiff’s incentives to produce.
·         Going by NBA; what about AP v Allheadlinenews.com. Seems like it would pass muster; does copy, does threaten AP`s incentives, etc.
·         O’Connor in Bonito says that perhaps we should ask Congress to address the issue of misappropriation thereby sidestepping the preemption issue.
·         Nothing prevents Lanham act from preventing copying.
Hanover Star Milling Co v Metcalf (1916)
·         Court says trademark is property only so far as to prevent others from selling a good as someone else`s.
·         The trademark is treated as a protection of the goodwill of the producer, and is not the subject of property except in connection with an existing business.
Stork Restaurant Inc v Sahati (1948)
·         A New York restaurant (P) trying to stop a SF bar from using the same name. No way could they possibly compete against each other.
·         The NY restaurant promotes itself to tourists and is well known nationwide; licensed its name to a hugely successful motion picture about the restaurant. After the film, a bar in SF opens a bar with the same name.
·         If P can prove that there is a likelihood that people will believe that a product is sponsored or licensed, then P can get an injunction for an unlicensed use.
Champion Spark Plug Co v Sanders (1947)
·         P makes spark plugs, D remanufactures and sells them in boxes with the champion mark with ID as ¨renewed¨ but did not say that sanders was the one doing the repairing.
·         Consumers were def confused, thought the reconditioned plugs were repaired by champion.
·         Trial court said that plugs could only be sold if champion mark was removed from the plugs themselves and the boxes.
·         App court says champion mark doesn’t need to be removed from the plugs.
·         Sup court agrees with app court; although D are free loading on the goodwill of champion, this is OK as long as there is no customer confusion.
Academic Articles
·         What about using trademarks that the customer cannot see?
·         Advertisers sell trademarks as a keyword; when you tube in hertz on Google, a bunch of websites show up that may not be related to hertz.
·         Trademarks are a combination of a source designator and some other stuff. Trademarks now have a sort of intrinsic atmospheric quality.
·         Ralph Brown: From a social perspective, advertisers and consumers have different needs at stake. So long as ads promote quality and differentiation, they have social value. But, so long as these ads basically serve to get consumers to spend more money, they lose social value.
·         Landes and Poser say that all markets are essentially made up, so there is no cost to enforce these marks because there is essentially an infinite amount of these marks.
·         Neither Landes and Brown