Following is a guest post from my former student and recent UWSL LL.M. graduate, Aman Gebru, on the evolving?theory of contributory trademark dilution, a claim he notes recently got traction in a local case.?This?post is adapted from his seminar paper entitled: ?The Claim of Contributory Dilution under the Trademark Dilution Revision Act.? In the fall, Mr. Gebru will continue his legal studies at the?University of Toronto, where he will pursue the equivalent of a Ph.D.
Praise and criticism?for claim of contributory dilution:
?[It is] the most pernicious concept ever to come out of trademark theory.? -Mark A. Lemley, The Modern Lanham Act and The Death of Common Sense.
?[S]ome form of imputed liability for dilution is no more ?pernicious? than dilution itself? -John T. Cross, Claim for Contributory and Vicarious Liability.
??While there is no authority directly on point, there would seem to be no logical reason why the doctrine of contributory infringement should not apply to a claim under the federal anti-dilution law.? -J. Thomas McCarthy, McCarthy on Trademarks.
?It would be inconsistent with the Trademark Dilution Act to prohibit a cause of action for contributory dilution.? -Hon.?Ricardo Martinez, Microsoft v. Shah, No. 10-653 (W.D. Wash. Jan. 12, 2011).
Imagine that Napple, a famous electronics producer, has succeeded in giving consumers a ?high-social-class? impression through its smart-phone and laptop products. Simply put, consumers feel classy when they purchase Napple?s products. Marketers have identified?this method of marketing is what drives the high demand for Napple?s products. MicroGoogle, Napple?s arch-rival, wants to destroy the advantages its competitor has gained through this strategy. MicroGoogle?s CEO consults her lawyers, who say if MicroGoogle uses Napple?s trademark in a confusing way?or?directly dilutes it, they would be liable. Therefore, MicroGoogle?s CEO decides that?MicroGoogle instead should use Napple?s trademarks in a way that reduces its high-class impression. The strategy works, and?a sharp decline is noticeable in Napple?s sales shortly thereafter. Within weeks, MicroGoogle decides to go for the kill shot, and?pays the influential ?Rapper?Snapper,? to use offensive slang in reference to people using Napple?s products in his music. Napple, furious about the issue,?decides to bring a suit against MicroGoogle.???
Does Napple have a valid claim for contributory dilution against MicroGoogle?
The cause of action for dilution is unique in trademark law. Traditionally, protection was limited to guard against the confusing use of?a distinctive mark, in an effort to?protect?consumers. Under?dilution principles, there is no requirement to show confusion. In dilution,?the plaintiff is saying ?I have invested so much in promoting my famous mark, and its?distinctiveness is being ?blurred,? or its wholesomeness is being ?tarnished,? by the defendant.?
Although the?dilution?has become?widely accepted, the claim of contributory dilution has had a different fate. Most?courts faced with the claim failed to give direction?as to?whether a valid claim for contributory dilution exists. While Congress had the chance to clarify the confusion when it enacted the Trademark Dilution Revision Act of 2006,?it actually?added to the confusion when it excluded the contribution to a ?fair use dilution? from liability and kept silent about the contribution to ?non-fair-use? dilution. The confusion has not been clarified for some time.
That is, until the Western District?recognized what some have called???a novel cause of action? and denied a motion to dismiss?the claim in July?2012 in Microsoft v. Shah. While earlier courts struggled with the notion that such a cause of action should be recognized, Judge Ricardo Martinez?held: ?It would be inconsistent with the Trademark Dilution Act to prohibit a cause of action for contributory dilution.???Since most of the decisions regarding the cause of action have been made by trial?courts, however, it is still not clear if?a valid claim for contributory dilution will exist on a broader scale. The issue becomes more interesting when one considers the enormous amount of investment required to create a?famous, wholesome, and highly distinctive mark. The recent debate and lobbying regarding proposed SOPA/PIPA legislation may also put pressure on the issue of contributory liability for dilution online.?
My paper (accessible?here) discusses?case law regarding contributory dilution from various circuits and analyzes the direction courts seem to be heading. I argue that even if the status of the claim is not yet clear, courts should give broader?recognition to the claim and use existing jurisprudence to provide for its elements?? similar to?the accepted cause of action for contributory?trademark infringement.
Thank you, Aman!
N.B.?Readers may remember the Shah decision from STL?s post here.
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