WEBNODE3,
lawnewsnetwork.com
A most excellent find... This is by far the best link anyone has found yet that may exonerate the defendants in this case. There are at least six important sections in there to consider:
Dilution was designed to protect famous marks from uses that either (1)blur the distinctiveness of the mark, or (2) tarnish the mark through association with unwholesome activities.
I don't think anyone has a problem with the distinctiveness of the mark, so that brings us to number two which was tarnishing through association with unwholesome activities. The Webnode page has no sex or sex links, no drugs or gambling or alcohol use references, no mention of any religions or anti-religious remarks, in fact, nothing offensive to the reasonably prudent reader. So, in my opinion, dilution fails both tests.
Dilution also has been used when the Web site's content itself misuses a famous mark. For example, in Mattel Inc. v. Jcom Inc., 97-CV-7191 (SS) (S.D.N.Y. Sept. 11, 1998), Mattel challenged a sexually explicit web site titled BARBIE'S PLAYHOUSE. Not only did the court enjoin the site, but it also awarded damages -- a rarity in dilution cases -- given the defendant's willful attempt to trade on the established goodwill of the famous BARBIE mark.
To the best of my knowledge, Webnode is not incorporated, and has not in any way traded or profited from any other entity's trademark.
It is not surprising that dilution claims prevailed -- either by court order or settlement -- in each of the cases discussed above. The uses at issue were likely to either blur or tarnish the distinctiveness of the marks, and the defendants had no credible justification for their use other than to trade on the goodwill of the plaintiffs' famous marks.
Again, no trading on the plaintiffs' famous marks...
The notion that some uses of a mark, even if otherwise diluting, must nevertheless be tolerated under the First Amendment has been well accepted for at least a decade. The leading case to establish this proposition with respect to dilution was L.L. Bean Inc. v. Drake Publishers Inc., 811 F.2d 26 (1st Cir. 1987), which involved a sexually explicit parody of the L.L. BEAN mark (the parody was titled the "L.L. Beam's Back-to-School Sex Catalogue") published in High Society magazine. Reversing the district court's finding that the parody diluted the Bean marks under Maine's dilution statute, the U.S. Court of Appeals for the First Circuit held that it "offends the Constitution" to invoke dilution as a basis for enjoining noncommercial use of a trademark by a party engaged in a protected form of expression. The court thus made clear that ownership of a trademark does not give the trademark owner license to try to curtail the unauthorized use of a mark by another party who is expressing a point of view or communicating ideas. Id. at 32-33.
In my opinion, what I have bolded is acutely apropos to the legal action here. In my opinion, it totally destroys any potential claims of dilution.
Congress resolved any doubt about the importance of these First Amendment principles by including in the act an express defense for "noncommercial" uses of a mark. 15 U.S.C. sec. 1125(c). This statutory defense already has been cited by courts.
Well, this gives us all the opportunity to research this Congressional act thoroughly.
As more disputes involving the use of trademarks on the Internet work their way through the courts, clearer guidelines will begin to develop on what does and does not constitute dilution. In the meantime, owners of famous trademarks should be careful to protect their marks from genuine tarnishing conduct while also learning to tolerate some uses that, even if annoying or offensive, may nevertheless be protectible under the First Amendment.
This paragraph sort of sums it up nicely.
Jeff, Janice and Bill - If you're reading this stuff, you all owe WEBNODE3 a big hug and a kiss for his/her excellent research...
KJC |
