UNFAIR COMPETITION

DEFINITIONS

"false representations concerning the source of goods and services'

"a convenient name for the doctrine that no one should be allowed to sell his goods as those of another, so as to benefit from an association with the second party's reputation"

 

THREE OBJECTIVES OF THE LAW

1. to protect the honest trader

2. to punish the dishonest trader, who is taking his competitor's business away by unfair means

3. to protect the public from deception

 

THREE CAUSES OF ACTION

1. (common law) passing off or palming off

*defendant's activities are likely to cause confusion with plaintiff's activities, goods, services. . . .

*plaintiff's goods, services. . . have acquired "secondary meaning"--(has come to be a trademark within that trade to that branch of the purchasing public)

2. (common law) misappropriation

*plaintiff has made a substantial investment of time, effort, money into creating the thing misappropriated

*defendant has reaped without sowing (misappropriated at little cost)

*plaintiff has been injured

Chaplin v. Amador

University of Georgia Atheletic Association v. Laite

3. (federal trademark law) Lanham Act

§32--registered trademarks

§43(a)--unregistered trademarks

*defendant's "false representation" or "false designation of origin" creates a likelihood of public confusion

1. strength of the mark

generic

descriptive

suggestive

fanciful/arbitrary

2. similarity of marks

3. similarity of products/services

4. sophistication of consumers

5. bridging the gap

6. actual competition

7. quality of junior user's product/service

8. defendant's intent (bad faith)

9. actual confusion

*defendant's false representation is "material"

*plaintiff has standing to sue (is engaged in interstate commerce, but not necessarily a competitor)

*the false representation is of goods in interstate commerce

 

CASES:

Hormel Foods Corp. v. Jim Henson Productions, Inc. (2d Cir. 1996)

--likelihood of confusion

--trademark dilution:

"dilution by blurring occurs when customers or prospective customers see plaintiff's mark used on a plethora of different goods and services. . . .the mark loses its ability to serve as a unique identifier of the plaintiff's product."

"dilution by tarnishment"--the mark is linked to:

products of inferior quality

unwholesome/unsavory themes

Dallas Cowboys Cheerleaders v. Pussycat Cinema, Ltd.

Other parody cases:

Lyons Partnership v.Giannoulas

Mattel Inc.v. MCA Records

Board of Trustees of the University of Arkansas v. Professional Therapy Services

Warner Bros., Inc. v. Gay Toys, Inc. (2d Cir. 1983)

Warner Bros. produced "The Dukes of Hazzard," which featured the "General Lee" car. WB licensed the manufacture of a toy car based on the one in the series. Gay Toys, without getting a license, modified one of its existing cars, giving it a similarity to the "official" G.L. car.

Issues:

*functionality defense: Sec. 43(a) does not protect functional symbols [symbols "that are essential to a product's use" but not to the identification of the product.]

*consumer motivation and secondary meaning

Note: WCVB-TV v. Boston Athletic Ass'n (1st Cir. 1991)

Romm Art Creations v. Simcha International, Inc. (E.D.N.Y. 1992)

Pl. publishes and distributes limited editions of reproductions of paintings and fine art posters based on the work of Tarkay, an Israeli artist. Def. manufactures and sells posters, silk screens, and limited reproductions of paintings by Particia Govensky. Pl. is claiming that def.'s work is a "slavish imitation."

*Lanham Act analysis