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DEDICATION
We dedicate the Fifth Edition of this Casebook to our judicial
mentors:
To the memory of the Hon. Betty Fletcher
To the Hon. John J. Gibbons
And to the Hon. Dolores K. Sloviter
[ii/iii]
[iii/iv]
8
PREFACE TO THE FIFTH EDITION
In the six years since we published the fourth edition of Trademark and
Unfair Competition Law, the Internet has continued to shape the law of
trademarks, forcing courts to reexamine classic trademark doctrines and
concepts. Internet-related trademark disputes have now arisen in every
corner of trademark practice, and show up in nearly every chapter of the
book. In particular, the Casebook explores controversies concerning
trademark “use,” infringement, and secondary liability, all areas which
courts have significantly elaborated since the previous edition. As we did
in the fourth edition, however, we have taken up the special problems
posed by trademarks and domain names in a chapter of their own.
We have retained many of the successful features of earlier editions. The
Casebook begins with a Prelude case that captures many of the issues that
will recur throughout the course. We then provide introductory case law
and secondary material on the concepts and policies underlying trademark
law, and incorporate trademark policy concerns throughout the book. We
have continued to include in-depth coverage of important advanced topics
in the second half of the Casebook. Thus, along with Domain Names,
False Advertising and Remedies receive their own chapters. As trademarks
(or the claims of their owners) have encroached on the subject matter of
patents and copyrights, and have been brought to bear on a variety of
expressive uses of marks, so have defenses to infringement expanded. As a
result, we now devote a full separate chapter to statutory and judge-made
defenses. We have also reorganized the material formerly in a separate
chapter on authors’ and performers’ rights into a revised chapter on false
designations of origin, as well as in the new chapter on defenses.
We wish to express appreciation to Professors Barton Beebe, Robert Bone,
Stacy Dogan, Rochelle Dreyfuss, William Landes, Mark Lemley,
Jacqueline Lipton, Jeremy Sheff, Sara Stadler, Rebecca Tushnet, and
Jonathan Weinberg, and to Judges Alex Kozinski and Richard Posner, and
to William M. Borchard, Esq., and Stephen Gaffigan, Esq., for consenting
to the use of excerpts of their work. Professors Justin Hughes, Tyler Ochoa
and Rebecca Tushnet have called our attention to ambiguities and
typographical and similar errors in the previous edition, which we hope we
have rectified in the current edition. For research assistance, we are
especially grateful to Andrew Guerra, Columbia Law School class of
2013, as well as to Maggie Mettler, University of Michigan Law School
class of 2012; Lakshmi Mohandas and Chris Choi, respectively Columbia
9
Law School classes of 2012 and 2013. For secretarial assistance, we thank
Nersa Miller, Laura Harlow and Colleen Regan.
March 2013
[iv/v]
[v/vi]
10
SUMMARY TABLE OF CONTENTS
Cover
Prefatory Material
LexisNexis Law School Publishing Advisory Board
Title Page
Copyright
DEDICATION
PREFACE TO THE FIFTH EDITION
SUMMARY TABLE OF CONTENTS
PRELUDE
TOP TOBACCO, L.P v. NORTH ATLANTIC OPERATING COMPANY,
INC.
QUESTIONS
Chapter 1 — CONCEPTS OF TRADEMARKS AND UNFAIR COMPETITION
A. COMPETITION
§ 1. GENERAL PRINCIPLES
CHENEY BROS. v. DORIS SILK CORP.
QUESTIONS
SEARS, ROEBUCK & CO. v. STIFFEL CO.
QUESTIONS
BONITO BOATS v. THUNDER CRAFT BOATS
QUESTIONS
QUESTIONS
QUESTIONS
B. TRADEMARKS
TRADE-MARK CASES
QUESTIONS
William M. Borchard,A Trademark is Not a Copyright or a Patent (2012)
(excerpts)
HANOVER STAR MILLING CO. v. METCALF
STORK RESTAURANT, INC. v. SAHATI
QUESTIONS
11
Robert G. Bone,Hunting Goodwill:A History of the Concept of Goodwill
in Trademark Law,
QUESTIONS
CHAMPION SPARK PLUG CO. v. SANDERS
QUESTIONS
Ralph S. Brown, Jr.,Advertising and the Public Interest: Legal Protection
of Trade Symbols,
William M. Landes & Richard A. Posner,Trademark Law:An Economic
Perspective,
Jeremy N. Sheff,Biasing Brands,
QUESTIONS
Jessica Litman,Breakfast With Batman:The Public Interest in the
Advertising Age,
QUESTIONS
Chapter 2 — WHAT IS A TRADEMARK?
A. SUBJECT MATTER OF TRADEMARK PROTECTION
§ 9. DEFINITIONS OF TRADEMARK AND SERVICE MARK
KELLOGG CO. v. NATIONAL BISCUIT CO.
QUESTIONS
1. Word Marks
COCA-COLA CO. v. KOKE CO. OF AMERICA
QUESTIONS
a. Slogans
b. Personal Names
PEACEABLE PLANET, INC. v. TY, INC.
QUESTIONS
2. Symbols
MISHAWAKA RUBBER & WOOLEN MANUFACTURING CO. v.
S.S. KRESGE CO.
QUESTIONS
3. Trade Dress
QUALITEX CO. v. JACOBSON PRODUCTS CO., INC.
QUESTIONS
TRAFFIX DEVICES, INC v. MARKETING DISPLAYS, INC.
QUESTIONS
4. Other Identifying Indicia
NOTE: SERVICE MARKS
NOTE: TRADEMARK ACTIONS BEFORE THE TRADEMARK
TRIBUNALS AND BEFORE THE FEDERAL JUDICIAL
12
COURTS
B. DISTINCTIVENESS
1. Arbitrary, Fanciful, Suggestive and Descriptive Terms
ABERCROMBIE & FITCH CO. v. HUNTING WORLD, INC.
IN THE MATTER OF THE APPLICATION OF QUIK-PRINT COPY
SHOPS, INC.
ZOBMONDO ENTERTAINMENT, LLC. v. FALLS MEDIA, LLC
QUESTION
QUESTIONS
WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.
QUESTIONS
2. Secondary Meaning
AMERICAN WALTHAM WATCH CO. v. UNITED STATES
WATCH CO.
§ 13. DISTINCTIVENESS; SECONDARY MEANING
BOARD OF SUPERVISORS FOR LOUISIANA STATE
UNIVERSITY AGRICULTURAL AND MECHANICAL
COLLEGE v. SMACK APPAREL CO.
QUESTIONS
CHRYSLER GROUP LLC v. MODA GROUP LLC
QUESTIONS
C. COLLECTIVE AND CERTIFICATION MARKS AND OTHER GROUP
DESIGNATIONS
15 U.S.C. § 1054 [Lanham Act § 4]
15 U.S.C. § 1127 [Lanham Act § 45]
15 U.S.C. § 1064 [Lanham Act § 14]
1. Collective and Certification Marks
QUESTIONS
2. Geographic Indications
Chapter 3 — USE AND OWNERSHIP
A. TRADEMARK USE
THOROUGHBRED LEGENDS, LLC v. WALT DISNEY CO.
QUESTIONS
QUESTION
B. OWNERSHIP
BELL v. STREETWISE RECORDS, LTD.
QUESTIONS
C. “USE IN COMMERCE”
15 U.S.C. § 1127 [Lanham Act § 45]
13
NOTE: TOKEN USE
QUESTIONS
QUESTIONS
NOTE: FOREIGN COMMERCE
ITC LTD. v. PUNCHGINI
QUESTIONS
D. ANALOGOUS USE
AKTIESELSKABET AF 21. NOVEMBER 2001 v. FAME JEANS, INC.
QUESTIONS
E. PRIORITY
BLUE BELL, INC. v. FARAH MANUFACTURING CO.
QUESTIONS
F. CONCURRENT USE
UNITED DRUG CO. v. THEODORE RECTANUS CO.
QUESTIONS
THRIFTY RENT-A-CAR SYSTEM v. THRIFT CARS, INC.
QUESTION
QUESTIONS
Chapter 4 — REGISTRATION OF TRADEMARKS
A. THE BASES AND PROCESS
1. Bases of Registration
NOTE: USE-BASED APPLICATIONS
15 U.S.C. § 1051(a) [Lanham Act § 1(a)]
INTENT TO USE
15 U.S.C. § 1051(b) [Lanham Act § 1(b)]
THE POLICIES UNDERLYING “INTENT TO USE”
QUESTIONS
NOTE: U.S. REGISTRATION UNDER SECTION 44
NOTE: MADRID PROTOCOL EXTENSIONS TO THE U.S.
2. The Process
William M. Borchard, How to Get and Keep a Trademark, in
Trademarks and The Arts (2d Ed. 2000) (Excerpt)
NOTE: ADVANTAGES OF TRADEMARK REGISTRATION ON
THE PRINCIPAL REGISTER
NOTE: THE SUPPLEMENTAL REGISTER
NOTE: THE NOTICE OF REGISTRATION
NOTE: MAINTENANCE AND RENEWAL OF REGISTRATION:
SECTIONS 8 AND 9 OF THE LANHAM ACT
14
B. PRIORITY OF ITUs AND APPLICATIONS CLAIMING PARIS
CONVENTION PRIORITY
NOTE: CONSTRUCTIVE USE AS OF FILING DATE
LARAMI CORP. v. TALK TO ME PROGRAMS, INC.
QUESTION
PROBLEMS
COMPAGNIE GERVAIS DANONE v. PRECISION FORMULATIONS,
LLC
QUESTION
PROBLEMS
C. BARS TO REGISTRATION
1. Section 2(a) of the Lanham Act: Immoral, Scandalous, Disparaging or
Deceptive Matter and False Suggestion of a Connection
a. Immoral, Scandalous or Disparaging Marks
IN RE FOX
BOSTON RED SOX BASEBALL CLUB LIMITED
PARTNERSHIP v. SHERMAN
QUESTIONS
IN RE LEBANESE ARAK CORP.
QUESTIONS
b. Deceptive Terms
BAYER AKTIENGESELLSCHAFT v. STAMATIOS
MOURATIDIS
QUESTION
NOTE: THE DIFFERENCE BETWEEN DECEPTIVE TERMS
AND “DECEPTIVELY MISDESCRIPTIVE” TERMS
QUESTIONS
c. False Suggestion of a Connection
HORNBY v. TJX COMPANIES, INC.
QUESTIONS
2. Sections 2(b) and 2(c) of The Lanham Act
15 U.S.C. § 1052(b) and (c) [Lanhan Act § 2(b) and (c)]:
NOTE: REFUSALS UNDER 2(b)
QUESTIONS
3. Section 2(d) of The Lanham Act: Likely Confusion
COACH SERVICES, INC. v. TRIUMPH LEARNING LLC
NOTE: DIFFERENCES IN LIKELY CONFUSION ANALYSIS FOR
REGISTRATION AND FOR INFRINGEMENT PURPOSES
QUESTIONS
NUTRASWEET CO. v. K&S FOODS, INC.
QUESTIONS
15
QUESTIONS
4. Section 2(e)(2) and (3) of the Lanham Act: Geographic Terms
IN RE JOINT-STOCK COMPANY “BAIK”
QUESTION
IN RE MIRACLE TUESDAY, LLC
QUESTIONS
QUESTIONS
NOTE: SPECIAL PROTECTION FOR WINES AND SPIRITS
QUESTIONS
NOTE: “GEOGRAPHICALLY SUGGESTIVE” MARKS
5. Section 2(e)(4) of the Lanham Act: Surnames and Other Issues
15 U.S.C. § 1502 [Lanham Act § 2(e)(4)]
Trademark Manual of Examining Procedure § 1211 Refusal on Basis
of Surname
IN RE QUADRILLION PUBLISHING LTD.
QUESTIONS
NOTE: NUMERALS, LETTERS AND INITIALS
6. Section 2(e)(5) of the Lanham Act: Functionality
15 U.S.C. § 1052(e)(5) [Lanham Act § 2(e)(5)]
IN RE BECTON, DICKINSON AND CO.
QUESTION
IN RE VERTEX GROUP LLC
QUESTION
Chapter 5 — LOSS OF TRADEMARK RIGHTS
A. GENERICISM
1. Development of the Standard
BAYER CO. v. UNITED DRUG CO.
QUESTION
NOTE: PROTECTING TRADEMARKS AGAINST GENERICISM
2. Implementing the Standard: Survey Evidence
QUESTIONS
E.I. DUPONT DE NEMOURS & CO. v. YOSHIDA
INTERNATIONAL, INC.
QUESTIONS
NOTE: LEGISLATIVE “CLARIFICATION” OF STANDARDS TO
ASSESS GENERICISM
3. Genericism and Confusion
NOTE: “DE FACTO SECONDARY MEANING”
AMERICA ONLINE, INC. v. AT&T CORP.
16
QUESTIONS
QUESTION
QUESTIONS
B. ABANDONMENT
15 U.S.C. § 1127 [Lanham Act § 45]
1. Non Use
SILVERMAN v. CBS, INC.
QUESTIONS
STANDARD FOR PROVING ABANDONMENT
NOTE: “THE SONG IS ENDED (BUT THE MELODY LINGERS
ON)”
QUESTIONS
2. Assignment in Gross
CLARK & FREEMAN CORP. v. HEARTLAND CO. LTD.
QUESTIONS
3. Naked Licensing
EVA’S BRIDAL LTD. v. HALANICK ENTERPRISES, INC.
QUESTIONS
QUESTION
QUESTION
QUESTIONS
TRADEMARK LICENSING PROVISIONS
Chapter 6 — INFRINGEMENT
15 U.S.C. § 1114 [Lanham Act § 32(1)]
A. DEFENDANT’S USE IN COMMERCE
NAKED COWBOY v. CBS
QUESTIONS
QUESTIONS
NOTE: USE IN COMMERCE AND THE DEBATE OVER
“TRADEMARK USE”
QUESTIONS
STEELE v. BULOVA WATCH CO.
McBEE v. DELICA
QUESTIONS
B. LIKELIHOOD OF CONFUSION
§ 20 STANDARD OF INFRINGEMENT
1. Factors for Assessing Likelihood of Confusion
§ 21 PROOF OF LIKELIHOOD OF CONFUSION: MARKET
17
FACTORS
QUESTION
2. Likelihood of Confusion in the Courts
E. & J. GALLO WINERY v. CONSORZIO DEL GALLO NERO
BANFI PRODUCTS CORP. v. KENDALL-JACKSON WINERY
LTD.
QUESTIONS
QUESTIONS
NOTE: IS LIKELIHOOD OF CONFUSION A QUESTION OF FACT
OR A QUESTION OF LAW?
MAKER’S MARK DISTILLERY, INC. v. DIAGEO NORTH
AMERICA, INC.
QUESTIONS
Robert G. Bone,Taking the Confusion Out of Likelihood of
Confusion:Towards A More Sensible Approach to Trademark
Infringement,
QUESTIONS
2. Different Varieties of Confusion
a. Initial Interest Confusion
MOBIL OIL CORP. v. PEGASUS PETROLEUM CORP.
QUESTIONS
NETWORK AUTOMATION, INC. v. ADVANCED SYSTEMS
CONCEPTS, INC.
QUESTIONS
b. Post-Sale Confusion
MASTERCRAFTERS CLOCK & RADIO CO. v. VACHERON &
CONSTANTIN-LE COULTRE WATCHES, INC.
QUESTIONS
Jeremy N. Sheff,Veblen Brands,
MUNSINGWEAR, INC. v. JOCKEY INTERNATIONAL
QUESTIONS
c. Reverse Confusion
QUESTIONS
d. Approval Confusion
ANHEUSER-BUSCH, INC. v. BALDUCCI PUBLICATIONS
QUESTIONS
C. SECONDARY LIABILITY FOR TRADEMARK INFRINGEMENT
INWOOD LABS., INC. v. IVES LABS., INC.
QUESTIONS
QUESTION
TIFFANY AND COMPANY v. EBAY, INC.
18
QUESTION
Chapter 7 — SECTION 43(A)(1)(A) OF THE LANHAM ACT
15 U.S.C. § 1125(a)(1)(A) [Lanham Act § 43(a)(1)(A)]
A. UNREGISTERED MARKS
NOTE: THE EXPANDING SCOPE OF SECTION 43(a)
1. Application to Traditional Trademark and Trade Dress Cases
DC COMICS v. POWERS
QUESTIONS
TWO PESOS, INC. v. TACO CABANA, INC.
QUESTIONS
LOUIS VUITTON MALLETIER v. DOONEY & BOURKE, INC.
QUESTIONS
CONOPCO, INC. v. MAY DEPT. STORES CO.
QUESTIONS
2. Marketing Concepts and Techniques
JEFFREY MILSTEIN, INC. v. GREGER, LAWLOR, ROTH, INC.
QUESTIONS
BEST CELLARS INC. v. GRAPE FINDS AT DUPONT, INC.
QUESTIONS
QUESTIONS
B. FALSE ENDORSEMENT
NOTE: RIGHTS OF PUBLICITY AND SECTION 43(a)
ALLEN v. NATIONAL VIDEO, INC.
QUESTIONS
TOM WAITS v. FRITO-LAY, INC.
QUESTIONS
WHITE v. SAMSUNG ELECTRONICS AMERICA, INC.
QUESTIONS
C. FALSE DESIGNATION OF ORIGIN
AMERICA ONLINE v. LCGM, INC.
QUESTIONS
NOTE: AUTHORS’ AND PERFORMERS’ MORAL RIGHTS
DASTAR CORPORATION v. TWENTIETH CENTURY FOX FILM
CORP.
QUESTIONS
BRETFORD MFG., INC. v. SMITH SYSTEM MFG. CORP.
QUESTIONS
19
Chapter 8 — DEFENSES TO INFRINGEMENT
A. STATUTORY DEFENSES/INCONTESTABILITY
15 U.S.C. § 1065 [Lanham Act § 15]
NOTE: SECTION 33 OF THE LANHAM ACT
1. Incontestability
PARK ‘N FLY, INC. v. DOLLAR PARK AND FLY, INC.
QUESTIONS
NOTE: INCONTESTABLE REGISTRATION AND STRENGTH OF
THE MARK
QUESTION
2. Particular Section 33(b) Defenses
a. Fraud on the Trademark Office
IN RE BOSE CORP.
QUESTIONS
QUESTION
b. Fair Use: § 33(b)(4)
UNITED STATES SHOE CORP. v. BROWN GROUP INC.
CAR-FRESHNER CORP. v. S.C. JOHNSON & SON INC.
QUESTIONS
KP PERMANENT MAKE-UP, INC. v. LASTING IMPRESSION
I, INC.
c. Functionality § 33(b)(8)
JAY FRANCO & SONS, INC. v. FRANEK
QUESTION
CHRISTIAN LOUBOUTIN, S.A. v. YVES St. LAURENT
AMERICA HOLDING, INC.
QUESTIONS
d. Laches § 33(b)(9)
PRO FOOTBALL, INC. v. HARJO
QUESTIONS
B. JUDGE-MADE DEFENSES
1. Nominative Fair Use
NEW KIDS ON THE BLOCK v. NEWS AMERICA PUBLISHING
QUESTION
QUESTIONS
WCVB-TV v. BOSTON ATHLETIC ASSOCIATION
QUESTION
QUESTION
NOTE: FAILED NOMINATIVE FAIR USE DEFENSES
2. Comparative Advertising
20
SMITH v. CHANEL, INC.
QUESTIONS
3. First Sale
QUESTION
4. Sovereign Immunity
COLLEGE SAVINGS BANK v. FLORIDA PREPAID
POSTSECONDARY EDUCATION EXPENSE BOARD
NOTE
C. OTHER LIMITATIONS ON TRADEMARK PROTECTION:
EXPRESSIVE USE OF TRADEMARKS
1. Re-Weighing Likelihood of Confusion
ROGERS v. GRIMALDI
LOUIS VUITTON MALLETIER S.A. v. WARNER BROTHERS
ENTERTAINMENT INC.
QUESTIONS
E.S.S. ENTERTAINMENT 2000, INC. v. ROCK STAR VIDEOS,
INC.
QUESTIONS
2. Parody
CLIFFS NOTES, INC. v. BANTAM DOUBLEDAY DELL
PUBLISHING GROUP, INC.
DR. SEUSS ENTERPRISES, L.P. v. PENGUIN BOOKS USA, INC.
QUESTIONS
3. Trademarks as Speech
Rochelle Dreyfuss, Reconciling Trademark Rights and Expressive
Values: How to Stop Worrying and Learn to Love Ambiguity,
QUESTION
QUESTIONS
Chapter 9 — DILUTION
A. THE CONCEPT OF DILUTION
Barton Beebe, The Suppressed Misappropriation Origins of Trademark
Antidilution Law: The Landgericht Elberfeld’s Odol Decision and
Frank Schechter’s The Rational Basis of Trademark Protection,
Sara K. Stadler,The Wages of Ubiquity in Trademark Law,
QUESTIONS
TY INC. v. PERRYMAN
QUESTIONS
Rebecca Tushnet,Gone in 60 Milliseconds:Trademark Law and Cognitive
Science,
21
QUESTIONS
Barton Beebe,Intellectual Property Law and The Sumptuary Code,
QUESTIONS
B. FEDERAL DILUTION
1. Federal Statute
NOTE: HISTORY OF FEDERAL DILUTION STATUTE
15 U.S.C. § 1125(c) [Lanham Act § 43(c)]
QUESTIONS
PROBLEM
2. Word Marks
a. Blurring
NATIONAL PORK BOARD v. SUPREME LOBSTER AND
SEAFOOD COMPANY
NOTE: SURVEYING DILUTION BY “BLURRING”
QUESTIONS
VISA INTERNATIONAL SERVICE ASSOCIATION v. JSL
CORP.
QUESTIONS
ROLEX WATCH U.S.A., INC. v. AFP IMAGING
CORPORATION
QUESTION
b. Tarnishment
QUESTIONS
LOUIS VUITTON MALLETIER S.A. v. HAUTE DIGGITY
DOG, LLC
QUESTIONS
STARBUCKS CORP. v. WOLFE’S BOROUGH COFFEE, INC.
QUESTION
Stacey L. Dogan & Mark A. Lemley,Parody as Brand, (November
2, 2012).
QUESTION
3. Trade Dress
THE HERSHEY COMPANY v. ART VAN FURNITURE, INC.
QUESTIONS
4. Use of a Famous Mark Other than as a Mark for Defendant’s Goods or
Services
MASTERCARD INTERNATIONAL INC. v. NADER 2000
PRIMARY COMMITTEE, INC.
QUESTIONS
C. DILUTION UNDER STATE LAW
22
QUESTIONS
Chapter 10 — FALSE ADVERTISING
Rebecca Tushnet, Running the Gamut from A to B: Federal Trademark and
False Advertising Law,
15 U.S.C. § 1125(a)(1)(B) [Lanham Act § 43(a)(1)(B)]
QUESTIONS
A. COMMERCIAL ADVERTISING OR PROMOTION
FASHION BOUTIQUE OF SHORT HILLS, INC. v. FENDI USA, INC.
QUESTIONS
B. LITERAL FALSEHOOD
COCA-COLA CO. v. TROPICANA PRODS., INC.
QUESTION
QUESTION
CLOROX CO., PUERTO RICO v. PROCTOR & GAMBLE
COMMERCIAL CO.
QUESTIONS
CHURCH & DWIGHT CO. v. THE CLOROX COMPANY
QUESTIONS
C. MISLEADING REPRESENTATIONS
INNOVATION VENTURES, LLC v. N.V.E., INC.
QUESTIONS
COORS BREWING CO. v. ANHEUSER-BUSCH CO.
McNEIL-PPC, INC. v. PFIZER INC.
QUESTIONS
D. STANDING TO ASSERT A § 43(A) CLAIM
QUESTIONS
Chapter 11 — INTERNET DOMAIN NAMES
A. THE DOMAIN NAME SYSTEM
Jonathan Weinberg, ICANN and the Problem of Legitimacy,
Internet Corporation for Assigned Names and Numbers (ICANN), Basic
TLD Information, http://www.icann.org/en/resources/registries
Jessica Litman, The DNS Wars,
B. ANTICYBERSQUATTING CONSUMER PROTECTION ACT
15 U.S.C. § 1125(d)(1) [Lanham Act § 43(d)(1)]
1. Bad Faith
FAGNELLI PLUMBING COMPANY v. GILLECE PLUMBING
AND HEATING, INC.
23
QUESTIONS
QUESTION
QUESTIONS
GOPETS LTD. v. HISE
QUESTIONS
2. Gripe Sites
LUCAS NURSERY AND LANDSCAPING, INC. v. GROSSE
NOTE: SECTION 43(d) AND “GRIPE” SITES
QUESTION
PEOPLE FOR THE ETHICAL TREATMENT OF ANIMALS v.
DOUGHNEY
QUESTION
LAMPARELLO v. FALWELL
QUESTION
Jacqueline D. Lipton, Bad Faith in Cyberspace: Grounding Domain
Name Theory in Trademark, Property and Restitution,
3. Secondary Liability
SOLID HOST, NL v. NAMECHEAP, INC.,
NOTE: LIABILITY OF DOMAIN NAME BROKERS AND
DOMAIN NAME AUCTIONEERS
QUESTIONS
4. § 43(d)(2) and in rem Jurisdiction
QUESTIONS
CABLE NEWS NETWORK L.P. v. CNNEWS.COM
NOTE: IN REM ACTIONS REGARDING U.S. REGISTRATIONS
OF FOREIGN-HELD DOMAIN NAMES CORRESPONDING TO
FOREIGN TRADEMARKS
QUESTIONS
C. ICANN AND THE UNIFORM TRADEMARK DOMAIN NAME
DISPUTE RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY
QUESTIONS
1. Bad Faith
DIAL-A-MATTRESS OPERATING CORP. v. CHRISTOPHER E.
MOAKELY
QUESTION
2. Nominative Use
THE ORANGE BOWL COMMITTEE, INC. v. FRONT AND
CENTER TICKETS, INC/ FRONT AND CENTER
ENTERTAINMENT
QUESTIONS
24
3. Gripe Sites
QUESTIONS
QUESTIONS
NOTE: NEW TOP LEVEL DOMAINS AND NEW RIGHTS
PROTECTIONS MECHANISMS
QUESTION
D. THE UDRP IN THE U.S. COURTS
BARCELONA.COM, INC. v. EXCELENTISIMO AYUNTAMIENTO
DE BARCELONA
QUESTION
Chapter 12 — REMEDIES
A. INJUNCTIVE RELIEF
1. Injunctions
NOVA WINES, INC. v. ADLER FELS WINERY LLC
QUESTIONS
NOTE: PRESUMPTION OF IRREPARABLE HARM
QUESTIONS
NOTE: CENTRALITY OF INJUNCTIVE RELIEF AND USE OF
ALTERNATE DISPUTE RESOLUTION
2. Disclaimers
HOME BOX OFFICE v. SHOWTIME
QUESTIONS
3. Recalls and Destruction
PERFECT FIT INDUS. v. ACME QUILTING CO.
GUCCI AMERICA, INC. v. DAFFY’S, INC.
QUESTIONS
B. MONETARY RELIEF
1. Assessing Profits and/or Damages
TACO CABANA INT’L, INC. v. TWO PESOS, INC.
BANJO BUDDIES, INC. v. RENOSKY
QUESTIONS
2. Corrective Advertising
BIG O TIRE DEALERS, INC. v. GOODYEAR TIRE & RUBBER
CO.
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