To: WEBNODE3 who wrote (910 ) 5/1/1999 3:58:00 AM From: EL KABONG!!! Read Replies (1) | Respond to
WEBNODE3,lawnewsnetwork.com 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. 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 .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. 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. 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. 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.
