Brandjacking on social networks: Trademark infringement by impersonation of markholders

Buffalo Law Review

Volumn 58, Issue 4, 2010, Pages 851-930

  Ramsey, Lisa P ^a  

^a UNIVERSITY OF SAN DIEGO   (United States)

Author keywords

[No Author keywords available]

Indexed keywords

EID: 78649867091     PISSN: 00239356     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (463)

1. See Verne Kopytoff, Twitter Brainstorming for Plan to Turn Profit, J. GAZETTE, Feb. 16, 2009, available at http://www.journalgazette.net/article/ 20090216/BIZ/302169952/-1/BIZ09;
2. Julian Lee, Squatters Creating Twittering Confusion, AGE, Apr. 30, 2009, at B2, available at 2009 WLNR 8073054;
3. Brian Stelter, Griping Online? Cable Company Hears You and Talks Right Back, N.Y. TIMES, July 25, 2008, at Al. For example, "US retail chain Wal-Mart recently tweeted: 'Walmart.com http://'Walmart.com Spalding NBA 52' Steel Framed Portable Basketball System $398.00." Lee, supra.
4. . Southwest Airlines on Facebook, http://www.facebook.com/Southwest (last visited June 10, 2010);
5. Comcast Cares on Twitter, http://twitter.com/comcastcares (last visited June 10, 2010);
6. Taco Bell Truck on Twitter, http://twitter.com/tacobelltruck (last visited June 10, 2010);
7. Billabong Girls on MySpace, http://www.myspace.com/billabonggirls (last visited June 10, 2010). My law school's Facebook page is at University of San Diego School of Law on Facebook, http://www.facebook.com/usdlaw (last visited June 10, 2010).
8. For more details about how brands use social network sites, see infra Part I.
9. Lee, supra note 1, at B2;
10. see also Charlotte McEleny, Brand Identities at Risk as Fakers Take Their Place on Twitter, NEW MEDIA AGE, Mar. 12, 2009, at B2, available at 2009 WLNR 8073054.
11. Posting of Lillian Edwards to PanGloss, Brandjacking and FaceSquatting, http://blogscript.blogspot.com/2009/06/brandjacking-and-face-squatting.html (June 16, 2009, 2:42);
12. Posting of Nick O'Neill to All Facebook, Facesquatting and the 2009 Facebook Username Landrush Aftermath, http://www.allfacebook.eom/2009/06/ facesquatting-facebook-usernames/# (June 15, 2009, 12:53);
13. see also Brad Stone, Keeping a True Identity Becomes a Battle Online, N.Y. TIMES, June 18, 2009, at B1;
14. Steven Swinford & Chris Gourlay, Facebookers Snap Up Names, AUSTL., June 15, 2009, at 10, available at 2009 WLNR 11400217.
15. McEleny, supra note 4.
16. As explained in a video posted on Facebook, Dusty Sorg and Michael Jedrzejewski created a Facebook fan page for Coca-Cola without first obtaining authorization from Coca-Cola. Videos Posted by Coca-Cola: We Made a Facebook Page, http://www.facebook.com/video/video.php?v=57458127013 (last visited June 10, 2010). Today the page is maintained in partnership with The CocaCola Company. Coca-Cola on Facebook, http://www.facebook.com/cocacola (last visited June 10, 2010).
17. See Posting of Jeremiah Owyang to Web Strategy, How "Janet" Fooled the Twittersphere (and Me) She's the Voice of Exxon Mobil, http://www.web-strategist.com/blog/2008/08/01/how-janet-fooled-the- twittersphere-shes-the-voice-of-exxon-mobil/ (Aug. 1, 2008, 13:15)
18. [hereinafter Owyang, How "Janet" Fooled the Twittersphere];
19. Posting of Jeremiah Owyang to Web Strategy, When Brands Under Fire Step into the Fracas: Exxon Joins Twitter, http://www.web-strategist.com/blog/2008/ 07/29/when-brands-under-fire-step-into-the-fracas-exxon-joins-twitter/ (July 29, 2008, 3: 35).
20. Compare Posting of Jeff Trexler to Uncivilsociety.org http://Uncivilsociety.org,
21. Is the Exxon Mobil Twitterer a Fake?, http://uncivilsociety.org/2008/08/ is-the-exxon-mobil-twitterer-t.html (Aug. 2, 2008, 22:04) (suggesting that Janet may be an employee),
22. and Posting to Grey Review, "I am an Employee of Exxon Mobil," Said Janet, http://www.greyreview.com/2008/08/08/exxon-mobil-janet/ (Aug. 8, 2008, 22:00) (showing screenshot of post by Janet),
23. with Posting of Ted McKenna to The Cycle, Exxon Requests Control of Fake Twitter Account, http://www.prweekus.com/exxon-requests-control-of-fake-twitter- account/article/ 152700/ (Aug. 13, 2008) (noting that the company says Janet is not an employee).
24. Tom Fowler, 'Exxon' on Twitter? Not so, Company Says, HOUSTON CHRON., Aug. 2, 2008, at D1;
25. Posting of Shel Holtz to A Shel of My Former Self, ExxonMobil Situation Shows "Brandjacking" is for Real, http://blog.holtz.com/index.php/ exxonmobil-situation-shows-brandjacking-is-fo r-real/ (Aug. 1, 2008, 13:11);
26. Owyang, How "Janet" Fooled the Twittersphere, supra note 8.
27. Grey Review, supra note 9;
28. Not-EMC on Twitter, http://twitter.com/Not-EMC (last visited June 10, 2010).
29. Complaint at 7-9, ¶¶ 15-18, Nine West Dev. Corp. v. Does 1-10, No. 07-cv7533 (S.D.N.Y. filed Aug. 24, 2007), available at http://www. counterfeitchic.eom/Cases/cic/3/ninewest.pdf [hereinafter Nine West Complaint];
30. Posting of Susan Scafidi to Counterfeit Chic, Couture in Court 3, http://www.counterfeitchic.com/2007/09/couture-in-court-3.php (Sept. 17, 2007, 20:51) (linking to a copy of the Complaint with the comment "Foot fetish: Facebook creeps lure 'models' by pretending to be Nine West");
31. Posting of Rebecca Tushnet to Rebecca Tushnet's 43(B)log, Facebook Fraud, http://tushnet.blogspot.com/2007/12/facebook-fraud.html (Dec. 20, 2007, 13:21) [hereinafter Tushnet, Facebook Fraud].
32. Nine West Complaint, supra note 12, at 9, ¶ 20. After the fake account was removed from Facebook, another fake Nine West-Model Auditions group page appeared on Facebook. This one targeted women as young as 13 years of age, and 226 members joined the group before the site was shut down.
33. Id. at 12-13, 11 32-35.
34. Complaint at 5, ¶¶ 14-17,
35. TFSC, LLC v. Doe, No. 2:09-cv-12017 (E.D. Mich. filed May 27, 2009), available at 2009 WL 3227408 [hereinafter Tanner Friedman Complaint];
36. Tanner Friedman Sues over False Twitter Account, WWJ NEWSRADIO 950, June 2, 2009, http://www.wwj.com/Tanner-Friedman-Sues-Over-False-Twitter-Account/ 4519407 [hereinafter False Twitter Account].
37. Tanner Friedman Wins Back Control of Twitter Account, WWJ NEWSRADIO 950, June 24, 2009, http://www.wwj.com/Tanner-Friedman-Wins-Back-Control-Of-Twitter- Accou/4668160;
38. see also Posting of Andrew Moshirnia to Citizen Media Law Project, Brandjacking on Social Networks: Twitter, Malicious Ghostwriting, and Corporate Sabotage, http://www.citmedialaw.org/blog/2009/brandjacking-social-networks- twittermalicious-ghost-writing-and-corporate-sabotage (July 15, 2009, 13:10).
39. See, e.g., Lee, supra note 1 ("[U]nless an interloper is using the brand name to masquerade as that brand and possibly even sell products that are trading on that name, brand owners are relatively powerless.") (interview of Australian attorney Frances Drummond); Tushnet, Facebook Fraud, supra note 12 ("The obvious problem is whether any of these causes of action can apply if the deceptive Does were operating only for their own perverted gratification, rather than for commercial purposes. I'm willing to accept that pretending to offer services in the ordinary market-here, the market for modeling servicesought to count under these (hopefully unique) facts. But bad conduct makes bad law; using Nine West's name in a noncommercial context should not, as a rule, subject the user to the risk of trademark etc. liability. And that's so even if the noncommercial context is highly objectionable-e.g., the L.L. Bean sex catalog case.").
40. See, e.g., Shaun Waterman, Brand-jacking Rises as Top Online Abuse, WASH. TIMES, Mar. 9, 2009, available at http://www. washingtontimes.com/news/2009/ mar/09/brand-jacking-rises-as-top-onlineabuse/;
41. see also Tim Lynch, The Art of Self Defense Against Brand-jacking, IMEDLA CONNECTION, Nov. 12, 2008, http://www.imediaconnection. com/content/21110.asp.
42. See infra Part II.A.
43. U.S. CONST, amend. I.
44. Federal trademark dilution law only applies if the plaintiffs mark is famous, 15 U.S.C. § 1125(c)(1) (2006), and does not apply to certain fair uses of the mark, news reporting and news commentary, and noncommercial use of a mark. Id. § 1125(c)(3). A markholder may also claim the unauthorized use of its mark on a social network site violates laws prohibiting defamation, deceptive trade practices, false advertising, unfair competition, or intentional interference with contractual or business relations, among other federal or state laws. Whether these are viable claims is beyond the scope of this Article.
45. See infra Part II.A. 1-2.
46. See infra Part II.A.3-4.
47. See infra Part II.A.5.a.
48. See infra Part II.A.5.b.
49. See infra Part II.A.5.c.
50. Posting of Elisa Cooper to MarkMonitor Blog, Protecting Online Identities in the World of Web 2.0, http://www.markmonitor.com/mmblog/?p=58 (Feb. 12, 2009, 12:19).
51. See infra Part II.A.5.c.
52. See infra Part I.
53. Holtz, supra note 10.
54. See infra Part I.
55. Per the Supreme Court in Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844 (1982), "if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit."
56. Id. at 854.
57. Lower courts have applied the Inwood test to Internet service providers if they exercise sufficient control over the infringing conduct. See Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999) (holding that the Inwood test for contributory trademark infringement applies to Internet service providers that exercise "[d]irect control and monitoring of the instrumentality used by a third party to infringe the plaintiffs mark");
58. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 591 F. Supp. 2d 1098, 1111-12 (N.D. Cal. 2008) (denying Akanoc's motion for summary judgment on the contributory trademark infringement claim where Akanoc hosted websites that sold counterfeit products and routed Internet traffic to and from those websites);
59. see also Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 104-10 (2d Cir. 2010) (assuming that the Inwood test applies without deciding the issue and finding no contributory trademark infringement in a dispute involving the sale of counterfeit products by third parties on the online auction site eBay);
60. J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 25: 17-25 (4th ed. 2009) (discussing contributory infringement law).
61. See infra Part II.A.6 & II.B. For an analysis of how current U.S. federal trademark law may violate the First Amendment and a discussion of the types of unauthorized uses of marks that are protected by the First Amendment,
62. see Lisa P. Ramsey, Increasing First Amendment Scrutiny of Trademark Law, 61 SMU L. REV. 381, 404-47 (2008) [hereinafter Ramsey, Increasing Scrutiny]. For a discussion of whether international trademark law permits the United States to revise its domestic trademark law to make it more speech-protective,
63. see generally Lisa P. Ramsey, Free Speech and International Obligations to Protect Trademarks, 35 YALE J. INT'L L. 405 (2010).
64. See generally Lisa P. Ramsey, First Amendment Limitations on Trademark Rights, in 3 INTELLECTUAL PROPERTY AND INFORMATION WEALTH: ISSUES AND PRACTICES IN THE DIGITAL AGE 147 (Peter K. Yu ed., 2007)
65. [hereinafter Ramsey, First Amendment Limitations] (explaining how Congress and the courts have protected free speech interests in trademark law, such as by requiring marks to be distinctive for trademark protection, limiting the scope of trademark rights, and allowing certain defenses to trademark claims).
66. See infra Part II.B.
67. Cf. Laura A. Heymann, The Birth of the Authornym: Authorship, Pseudonymity, and Trademark Law, 80 NOTRE DAME L. REV. 1377, 1379, 1398, 1406-09 (2005)
68. [hereinafter Heymann, Birth of the Authornym] (noting marks are used in screen names or usernames in online communications as statements of corporate authorship).
69. Danah M. Boyd & Nicole B. Ellison, Social Network Sites: Definition, History, and Scholarship, J. COMPUTER-MEDIATED COMM., 210, 211 (2008). Early social network sites include Classmates.com http://Classmates.com (founded in 1995), Six Degrees of Separation (1997), and Live Journal (1999). Next came Friendster (2002), LinkedIn (2003), MySpace (2003), Orkut (2004), Facebook (for Harvard students only, 2004), Yahoo! 360 (2005), YouTube (2005), Facebook (for high school networks, 2005), Facebook (for corporate networks, early 2006), Twitter (2006), and Facebook (for everyone, late 2006).
70. Id. at 212-13. For more information about social network sites, see generally id.;
71. James Grimmelmann, Saving Facebook, 94 IOWA L. REV. 1137 (2009) (discussing how Facebook users socialize and misunderstand the privacy risks associated with their disclosure of information on Facebook);
72. William McGeveran, Disclosure, Endorsement, and Identity in Social Marketing, 2009 U. III. L. REV. 1105 (2009) (providing an analysis of the potential concerns with "social marketing" on social network sites and various legal responses to these problems);
73. Lori E. Lesser, Social Networks and Blogs (PLI Patents, Copyrights, Trademarks, & Literary Prop., Course Handbook Series No. 962, 2009), available at WL, 962 PLI/Pat 23.
74. E.g., Facebook, Usernames: General Information, http://www.facebook.com/ help.php?page=897 (last visited June 10, 2010). This file name may contain numbers identifying the file (the method used by Facebook prior to June 2009), or it may contain words or other content consisting of alphanumeric characters (A-Z, 0-9) or symbols, such as the name of a person or company (the method used by Facebook starting in June 2009). Id. The latter type of file name is often called a "username" or "vanity URL."
75. Posting of Blaise DiPersia to The Facebook Blog, Coming Soon: Facebook Usernames, http://blog.facebook.com/blog.php?post=90316352130 (June 9, 2009, 15:11);
76. Posting of Caroline McCarthy to The Social, Facebook Vanity URLs Coming This Week, http://news.cnet.com/8301-13577-3-1026100936.html?tag=mncol (June 9, 2009, 14:20 PDT).
77. E.g., Twitter: Create an Account, https://twitter.com/signup (last visited June 15, 2010) ("Your full name will appear on your public profile").
78. Boyd & Ellison, supra note 36, at 211, 213.
79. Id. at 213.
80. THE-REAL-SHAQ on Twitter, http://twitter.com/THE-REAL-SHAQ (last visited June 10, 2010);
81. U2 on MySpace, http://www.myspace.com/u2 (last visited June 10, 2010);
82. Coca-Cola on Facebook, supra note 7.
83. See Gilbert Cruz, How Facebook Is Affecting School Reunions, TIME, June 15, 2009, http://www.time.com/time/nation/article/0,8599,1904565,00.html.
84. Posting of Eric Goldman to Technology & Marketing Law Blog, Twitter, Email and Brand Engagement, http://blog.ericgoldman.org/archives/2009/06/ (June 17, 2009, 7:03).
85. Recent books that discuss how brands can use social network sites or "social media" include JOEL COMM, TWITTER POWER: HOW TO DOMINATE YOUR MARKET ONE TWEET AT A TIME (2009);
86. ERIK QUALMAN, SOCIALNOMICS: How SOCIAL MEDIA TRANSFORMS THE WAY WE LIVE AND DO BUSINESS (2009).
87. Posting of Stefanie N. to Direct2Dell, @DellOutlet Surpasses $2 Million on Twitter, http://en.community.dell.eom/dell-blogs/b/direct2dell/ archive/2009/ 06/11/delloutlet-surpasses-2-million-on-twitter.aspx (June 11, 2009, 23:01).
88. Twitter, Twitter 101-Case Study: Dell, http://business.twitter.com/ twitter101/case-dell (last visited June 10, 2010).
89. Claire Cain Miller, Mom-and-Pop Operators Turn to Social Media, N.Y. TIMES, July 23, 2009, at B6.
90. Postings of CoTweet to Coca-Cola on Twitter, http://twitter.com/cocacola (Sept. 10, 2009, 6:30; Sept. 10, 2009, 9:30; & Sept. 12, 2009, 7:04) [hereinafter Coca-Cola on Twitter]. The nature of such posts may make it difficult for courts to determine whether this expression should be treated as advertising or information.
91. Cf. Lisa P. Ramsey, Intellectual Property Rights in Advertising, 12 MICH. TELECOMM. & TECH. L. REV. 189, 237-45 (2006) (discussing how recent developments in the advertising industry, such as product placement, "advertainment," "experiential marketing," and viral advertising, make it more difficult for courts to distinguish between advertising and entertainment).
92. Users may also knowingly choose to link to a fake account because they find the posts to be entertaining. For example, after it was disclosed that one popular Twitter feed from 30 Rock star Tina Fey was fake, the number of followers jumped from 50,000 to 200,000. Mike Musgrove, Is It Twitter or Is It Baloney?, GRAND RAPIDS PRESS, Apr. 5, 2009, at A14.
93. Social network site users have impersonated movie stars, politicians, food critics, and athletes, among other individuals. See Kevin Courtney, Con Text: Fakebooking, IR. TIMES, Feb. 24, 2009, at 18;
94. Gregory B. Hladky, Republicans Overtweet, HARTFORD ADVOC., Oct. 22, 2009, at 8, available at http://www.hartfordadvocate.com/featured-news/republicans- overtweet-2.html;
95. Kim Severson, Fight Escalates over Twitter Parody of N. Y. Food Critic, INT'L HERALD TRIB., Apr. 24, 2009, at 18;
96. Ralph Vacchiano & Michael O'Keeffe, Athletes Are All Aflutter over Social Site, but Don't Believe All You Read, DAILY NEWS, June 7, 2009, at 70;
97. Richard Wilson, Rising Profile of Facebook Fakers, SUNDAY TIMES (U.K.), Aug. 24, 2008, at 7, available at 2008 WLNR 16353666.
98. See generally Danah Boyd, None of This Is Real: Identity and Participation in Friendster, in STRUCTURES OF PARTICIPATION IN DIGITAL CULTURE 132 (Joe Karaganis ed., 2008) (discussing the use of fake identities or invented profiles by "Fakesters" on the social network site Friendster).
99. Posting of Rebecca Tushnet to Rebecca Tushnet's 43(B)log, IPSC: Trademark and the Consumer, http://tushnet.blogspot.com/2009/08/ipsc-trademark-and- consumer.html (Aug. 6, 2009, 13:13) (comment by Rebecca Tushnet on a presentation by Lisa Ramsey).
100. Facebook, Usernames: Intellectual Property Rights Holders, http://www.facebook.com/help/?page=899 (follow "What are the guidelines around creating a username?" hyperlink) (last visited June 10, 2010) ("Your username should be as close as possible to your true name");
101. see also Justin Smith, Exclusive: Discussing the Future of Facebook with CEO Mark Zuckerberg, INSIDE FACEBOOK, June 3, 2009, http://www.insidefacebook. com/2009/06/03/exclusive-discussing-the-future-offacebook-with-ceo-mark- zuckerberg ("Facebook has always focused on establishing real identity and user profiles, and that identity continues to be foundational for all the company's products and monetization plans today.").
102. Twitter, Verified Account, http://twitter.com/help/verified/ (last visited June 10, 2010).
103. E.g., False Twitter Account, supra note 14 ("Most [posts] re-wrote or twisted tweets from our personal pages or portions of blogs from TannerFriedman.com http://TannerFriedman.com so that their meanings were lost or compromised.").
104. E.g., Nine West Complaint, supra note 12, at 7-9, ¶¶ 18-19 (alleging the Nine West Shoes account holder linked to the official company site, used a Gmail account that contained the Nine West mark (ninewest.audition@gmail.com), and copied official photos posted on the Nine West website).
105. See Holtz, supra note 10 (noting the ExxonMobilCorp account "should have raised some red flags immediately" because of graphic images on the account that were inconsistent with statements made by Exxon and responses to questions that would provoke anger and hostility).
106. See Tom N. Jagatic et al., Social Phishing, 50 COMM. ACM 94, 94-100 (2007).
107. Markholders may also consider contractually requiring employees and others with whom they have a relationship to refrain from using the marks in certain ways without authorization on social network sites. Such a rule would give the brand more control over its marks, but this approach could harm the free flow of information and ideas.
108. Holtz, supra note 10.
109. See Apple, http://www.apple.com (last visited June 10, 2010);
110. The Complete Apple Records, http://www.schomakers.com (last visited June 10, 2010).
111. See supra note 7.
112. While "Amazon" is a well-known mark for a popular online store, Amazon.com, http://www.amazon.com; (last visited June 10, 2010), Amazon is also the name of a river in South America, and some companies use this word to describe their cruise services on the Amazon River.
113. See, e.g., Amazon River Cruises, http://www.amazonrivercruises.com (last visited June 10, 2010).
114. See, e.g., Facebook, Statement of Rights and Responsibilities, §§ 4.1, 5 (Apr. 22, 2010), http://www.facebook.com/terms.php (last visited June 14, 2010);
115. MySpace.com http://MySpace.com, Terms of Use Agreement, §§ 8.16, 8.26 (June 25, 2009), http://www.myspace.com/index.cfm?fuseaction=misc. terms (last visited June 14, 2010);
116. Twitter, Terms of Service (Sept. 18, 2009), https://twitter.com/tos (last visited June 10, 2010);
117. Twitter, Twitter Support: Impersonation Policy (Jan. 14, 2009), http://twitter.zendesk.com/forums/26257/entries/18366 (last visited June 14, 2010);
118. Twitter, Twitter Support: The Twitter Rules (Jan. 14, 2009), http://help.twitter.com/forums/26257/entries/18311 (last visited June 10, 2010).
119. See, e.g., Facebook, Facebook Copyright Policy: How to Report Claims of Intellectual Property Infringement, http://www.facebook.com/legal/copyright.php? howto-report (last visited June 14, 2010) (providing links to automated forms to report copyright infringement and other claims of intellectual property infringement by a Facebook user);
120. Twitter, Twitter Support: Trademark Policy (Jan. 14, 2009), http://twitter. zendesk.com/forums/26257/entries/18367 (last visited June 10, 2010) (providing guidelines for filing a complaint when third parties misuse trademarks).
121. Some commentators propose the creation of a private "Uniform Username Dispute Resolution Policy" for resolving trademark disputes involving usernames, similar to the Uniform Domain Name Dispute Resolution Policy adopted by registrars accredited by the Internet Corporation for Assigned Names and Numbers. See, e.g., Posting to ErikJHeels.com, How to Twittersquat the Top 100 Brands, http://erikjheels.com/?p=1298 (Jan. 8, 2009) (recommending that social network sites work together to create a Uniform Username Dispute Resolution Policy);
122. see also Internet Corporation for Assigned Names and Numbers, Domain Name Dispute Resolution Policies, http://www.icann.org/en/udrp/ (last visited June 14, 2010) (providing information about the Uniform Domain Name Dispute Resolution Policy and other policies that apply to domain name disputes). Evaluation of such a proposal is beyond the scope of this Article.
123. See supra note 31.
124. Although there is likely no "state action," and thus no First Amendment violation, if a private social network site provider prohibits the use of another's trademarks on its site, free speech interests will still be harmed by this decision. If a markholder files a trademark lawsuit and asks a court to enjoin or punish the third party's use of its mark, however, this would constitute "state action" and implicate the First Amendment under constitutional law. See Ramsey, Increasing Scrutiny, supra note 32, at 407-09.
125. For example, "Twitter users are allowed to create parody, commentary, or fan accounts . . . [But a]ccounts with the clear intent to confuse or mislead may be permanently suspended." Twitter, Twitter Support: Impersonation Policy (Jan. 14, 2009), http://twitter.zendesk.com/forums/26257/ entries/18366 (last visited June 14, 2010);
126. see also Twitter, Twitter Support: Parody, Commentary, and Fan Accounts Policy (Feb. 1, 2009), http://help.twitter.com/forums/26810/entries/106373 (last visited June 14, 2010).
127. See, e.g., New York City Triathlon, LLC v. NYC Triathlon Club, Inc.,- F. Supp. 2d-, 2010 WL 808885 (S.D.N.Y. Mar. 9, 2010) (granting a preliminary injunction to the owner of the marks 'The New York City Triathlon," "The NYC Triathlon" and "The NYC Tri" after finding infringement by the seller of triathlon equipment that registered and used the username "nyctriclub" and ordering the defendant to refrain from using the marks on Facebook, Twitter, LinkedIn, and other websites);
128. Complaint, Oneok, Inc. v. Twitter, Inc., No. 09-CV-00597 (N.D. Okla. Sept. 15, 2009), available at 2009 WL 3146140;
129. Tanner Friedman Complaint, supra note 14;
130. Nine West Complaint, supra note 12;
131. Complaint, LaRussa v. Twitter, Inc., No. CGC-09-488101 (Cal. Super. May 6, 2009), available at 2009 WL 1569936.
132. Past court decisions and commentary regarding the unauthorized use of marks in domain names, blog names, and parts of a URL other than the secondlevel domain may provide some guidance to courts and social network sites in resolving these disputes. See, e.g., Interactive Prod. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 696-98 (6th Cir. 2003) (holding that unauthorized use of the Lap Traveler mark for portable computer stands in the URL a2zsolutions.com/desks/floor/laptraveler/dkflt-lt.htm is not likely to confuse consumers because the post-domain path of a URL does not typically indicate source);
133. Patmont Motor Werks, Inc. v. Gateway Marine, Inc., No. C 96-2703 TEH, 1997 WL 811770, at *4 n.6 (N.D. Cal. Dec. 18, 1997) ("Nothing in the postdomain path of a URL indicates a website's source of origin, and Patmont has cited no case in which the use of a trademark within a URL's path formed the basis of a trademark violation.");
134. Margreth Barrett, Domain Names, Trademarks and the First Amendment: Searching for Meaningful Boundaries, 39 CONN. L. REV. 973 (2007) [hereinafter Barrett, Domain Names] (discussing trademark disputes involving domain names and arguing that many court decisions do not adequately protect free speech interests);
135. Jacqueline D. Lipton, Commerce Versus Commentary: Gripe Sites, Parody, and the First Amendment in Cyberspace, 84 WASH. U. L. REV. 1327 (2006) (same);
136. Posting of Eric Goldman to CircleID, Google Sued for Trademark Infringement Based on Third-Level Subdomain, http://www.circleid.com/posts/ google-sued-for-trademark-infringement-on-third-level-subdomain/ (Dec. 30, 2005, 10:19 PDT) (noting use of another's mark in a blog name can give rise to trademark infringement, but noting there may be a difference in the trademark analysis when the mark is used in a third-level subdomain rather than a second-level domain name);
137. Posting of Marty Schwimmer to The Trademark Blog, Can Similar Blogs Names Co-exist? Should Blogs Obtain Trademark Protection?, http://www.schwimmerlegal. com/archives/2005/07/can-similar-blo.html (July 11, 2005, 18:44) (concluding that blog titles can be protected as trademarks);
138. see also Anupam Chander, The New, New Property, 81 TEX. L. REV. 715 (2003) (discussing various methods for allocating property rights in domain names).
139. 15 U.S.C. § 1125(d) (2006).
140. 15 U.S.C. § 1127 (2006).
141. See id.;
142. H.R. REP. NO. 106-412, at 15 (1999);
143. 145 CONG. REC. S14715 (daily ed. Nov. 17, 1999), discussed in 4 MCCARTHY, supra note 31, § 25:78 n.66.
144. 4 MCCARTHY, supra note 31, § 25: 77 (citing cases).
145. See, e.g., Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. Mar. 19, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (finding infringement where a pro-life activist used the Planned Parenthood mark in the domain name plannedparenthood.com and the related website home page that said "Welcome to the PLANNED PARENTHOOD HOME PAGE!").
146. 15 U.S.C. § 1114(1)(a) (2006).
147. 15 U.S.C. § 1125(a)(1)(A) (2006).
148. For examples of the elements of a claim for federal trademark infringement, see McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1358 (Fed. Cir. 2007);
149. Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005);
150. and 4-5 MCCARTHY, supra note 31, §§ 23: 11.50, 27: 13. National trademark laws are generally territorial. Markholders must have trademark rights within a nation's borders to sue under that nation's trademark laws and the allegedly unlawful use of the mark should generally take place within that nation's borders. This Article assumes that the markholder has valid and protectable rights under U.S. trademark law and that the mark is being used without authorization within the U.S. sufficiently to trigger the applicability of our national trademark laws.
151. See, e.g., Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005);
152. United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92-93 (2d Cir. 1997);
153. 4 MCCARTHY, supra note 31, § 25: 57;
154. see also U.S. CONST, art. I, § 8, cl. 3, 8; 15 U.S.C § 1127 (2006) (defining "commerce" as "all commerce which may lawfully be regulated by Congress") .
155. See, e.g., Utah Lighthouse Ministry v. Found, for Apologetic Info. & Research, 527 F.3d 1045, 1054 (10th Cir. 2008);
156. Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1239-40 (N.D. 111. 1996).
157. See, e.g., 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 406-08, 412 (2d Cir. 2005);
158. DaimlerChrysler AG v. Bloom, 315 F.3d 932, 936, 939 (8th Cir. 2003);
159. Wells Fargo & Co. v. WhenU.com http://WhenU.com, Inc., 293 F. Supp. 2d 734, 757-61 (E.D. Mich. 2003);
160. U-Haul Int'l, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723, 727-28 (E.D. Va. 2003);
161. WHS Entm't Ventures v. United Paperworkers Int'l Union, 997 F. Supp. 946, 949 (M.D. Tenn. 1998);
162. Barrett, Domain Names, supra note 70, at 983-84;
163. Margreth Barrett, Internet Trademark Suits and the Demise of "Trademark Use," 39 U.C. DAVIS L. REV. 371, 382-86 (2006) [hereinafter Barrett, Internet Trademark Suits].
164. 15 U.S.C. § 1127 (2006).
165. Id.
166. 1-800 Contacts, 414 F.3d at 407-12.
167. See, e.g., Playboy Enters, v. Netscape Commc'ns Corp., 354 F.3d 1020, 1024 n.11 (9th Cir. 2004);
168. 4 MCCARTHY, supra note 31, §§ 23: 11.50, 25: 57;
169. Graeme B. Dinwoodie & Mark D. Janis, Confusion Over Use: Contextualism in Trademark Law, 92 IOWA L. REV. 1597, 1609-12 (2007)
170. [hereinafter Dinwoodie & Janis, Confusion Over Use]. For a recent discussion of the meaning of the "use[s] in commerce" language in §§ 1114(1)(a) and 1125(a)(1)(A),
171. see the Second Circuit's Appendix in Rescuecom Corp. v. Google Inc., 562 F.3d 123, 131-41 (2d Cir. 2009).
172. See Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005).
173. United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92-93 (2d Cir. 1997);
174. see also Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430, 1434 (S.D.N.Y. Mar. 19, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998).
175. 15 U.S.C. §§ 1114(1)(a), 1125(a)(1)(A) (2006).
176. See Utah Lighthouse Ministry v. Found, for Apologetic Info. & Research, 527 F.3d 1045, 1054 (10th Cir. 2008).
177. Cf. Lamparello v. Falwell, 420 F.3d 309, 318 (4th Cir. 2005) folding that courts must look at the underlying content of the website linked to an allegedly infringing domain name);
178. MCCARTHY, supra note 31, § 25: 76 ("In the author's view, neither merely reserving a domain name nor use of a domain name solely to indicate a site on the Internet, in and of itself, constitutes 'goods or services' in the Lanham Act sense. Rather, one must consider the content of the site identified by the domain name.").
179. U.S. Trademark Reg. No. 0,227,904 (filed Jan. 27, 1927) (issued May 17, 1927);
180. U.S. Trademark Reg. No. 2,120,865 (filed Feb. 9, 1996) (issued Dec. 16, 1997).
181. See Heymann, Birth of the Authornym, supra note 35, at 1440-41;
182. see also id. at 1379, 1398, 1406-09 (noting that corporate entities that create expression-sometimes through the works of several individuals-often use their trademarked name to identify the source of their expression).
183. 1 MCCARTHY, supra note 31, § 9: 5.
184. See, e.g., Planned Parenthood Fed'n of Am., Inc. v. Problem Pregnancy of Worcester, Inc., 498 N.E.2d 1044, 1048 n.8 (Mass. 1986) ("We also point out that it makes no difference whether either PPLM or PP, Inc. is a charitable corporation for purposes of maintaining a common law service mark infringement action [under state law].").
185. E.g., United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 89 (2d Cir. 1997);
186. see also Lamparello, 420 F.3d at 314 (noting courts have been reluctant to define the terms "goods" and "services" narrowly to exclude information);
187. 4 MCCARTHY, supra note 31, § 25: 76;
188. cf. People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 365-66 (4th Cir. 2001) ('To use PETA's mark 'in connection with' goods or services, Doughney need not have actually sold or advertised goods or services on the www.peta.org website. Rather, Doughney need only have prevented users from obtaining or using PETA's goods or services, or need only have connected the website to other's goods or services.").
189. United We Stand, 128 F.3d at 89-92.
190. SMJ Group, Inc. v. 417 Lafayette Rest. LLC, 439 F. Supp. 2d 281, 287 (S.D.N.Y. 2006).
191. Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430, 1434 (S.D.N.Y. Mar. 19, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998).
192. Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931, 934 (D.D.C. 1985) (holding that a public interest group's use of the phrase "star wars" in television messages to criticize the Reagan Administration's strategic defense initiative did not infringe a filmmaker's "Star Wars" mark). Moreover, the court said "[e]ven if promoting of ideas was considered to be conducting an educational 'service,' television messages that are only used to express those ideas do not sell or advertise them."
193. Id.
194. ;see also Eric Goldman, Online Word of Mouth and its Implications for Trademark Law, in TRADEMARK LAW AND THEORY: A HANDBOOK OF CONTEMPORARY RESEARCH 404, 420 (Graeme B. Dinwoodie & Mark D. Janis, eds., 2008) [hereinafter Goldman, Online Word of Mouth] (arguing that cybergripers who complain about markholders on the Internet "are espousing their opinions, not offering goods or services"). According to the Second Circuit in United We Stand, the Lucasfilm "court reached the right result but did not correctly describe the reason. If the court were right that communicating ideas and purveying points of view is not a service subject to the controls established by trademark law, then one who established a learning center would be free to call it Harvard or Yale University. We do not think the Lucasfilm court intended such a rule. In our view, the justification for denial of relief in [Lucasfilm] lay in the fact that the defendants were using plaintiffs mark not in a manner that would create confusion as to source, but rather as part of a message whose meaning depended on reference to plaintiffs product." United We Stand, 128 F.3d at 91.
195. See Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir. 2005) ("Any harm to Bosley arises not from a competitor's sale of a similar product under Bosley's mark, but from Kremer's criticism of their services. Bosley cannot use the Lanham Act either as a shield from Kremer's criticism, or as a sword to shut Kremer up.");
196. Lucasfilm, 622 F. Supp. at 934-35 ('These laws do not reach into the realm of public discourse to regulate the use of terms used outside the context of trade.").
197. See 3 McCARTHY, supra note 31, § 19:89.
198. U.S. PAT. & TRADEMARK OFFICE, TRADEMARK MANUAL OF EXAMINING PROCEDURE §§1215.01-1215.10, 1202.07(b) (6th ed. 2009) [hereinafter TMEP], quoted in 1 McCARTHY, supra note 31, § 7: 17.50. A search of the terms "information" and "services" in the PTO's Trademark ID Manual on June 10, 2010, resulted in a list of 171 entries, most of which are for different classes of services related to the provision of information services. U.S. PAT. & TRADEMARK OFFICE, U.S. ACCEPTABLE IDENTIFICATION OF GOODS & SERVICES MANUAL, available at http://tess2.uspto.gov/netacgi/nph- brs?sect2=THESOFF§3=PLURON&pg1=ALL&s1=information+services& 1=MAX§1=IDMLICON&se ct4=HITOFF&op1=AND&d=TIDM&p=1&u= %2Fnetahtml%2Ftidm.html&r=0& f=S (last visited June 10, 2010).
199. In re Walters, No. 77120372, 2009 WL 1719379, at *2-3 (T.T.A.B. May 28, 2009);
200. In re Ralph Mantia Inc., 54 U.S.P.Q.2d (BNA) 1284, 1286 (T.T.A.B. 2000);
201. TMEP, supra note 102, § 1301.04.
202. 1 McCARTHY, supra note 31, § 7:17.50 & n.13 (quoting TMEP, supra note 102, § 1215.02(b) (1996 statement of policy)).
203. See id. §§7:17.50, 19:89;
204. see, e.g., In re Dr Pepper Co., 836 F.2d 508 (Fed. Cir. 1987) folding that conducting a contest to promote the sale of goods does not qualify as rendering a separate "service" to others under the Lanham Act because the contest was part of selling the applicant's primary goods);
205. In re Moore Bus. Forms Inc., 24 U.S.P.Q.2d (BNA) 1638 (T.T.A.B. 1992) (holding that a paper manufacturer does not render a separate "service" to others when it rates the recycled content and recyclability of its own paper products because it is simply providing information about its products to potential purchasers).
206. See 1, 3-4 McCARTHY, supra note 31, §§ 7:17.50, 19:89, 25:76 & n.12.
207. U.S. Trademark Reg. No. 2,162,548 (filed Apr. 12, 1996) (issued June 2, 1998).
208. U.S. Trademark Reg. No. 3,690,609 (filed Nov. 14, 2006) (issued Sept. 29, 2009). At the time of this writing, Pfizer had also applied to register the word mark "Viva Viagra" as a trademark and service mark for "[p]rinted materials, namely, booklets, pamphlets, paper displays and posters on the topic of men's sexual health" and "on-line information services, namely, providing information relating to men's sexual health via a global computer network." U.S. Trademark Ser. Application No. 77,043,506 (filed Nov. 14, 2006). Recently, Pfizer successfully enforced the "Viva Viagra" mark in a suit against JetAngel.com-a firm that sells outdoor mobile advertising on decommissioned military equipment such as fighter jets and missiles-and its owner Arye Sachs. Pfizer Inc. v. Sachs, No. 08 Civ. 8065(WHP), 2008 WL 4525418 (S.D.N.Y. Oct. 8, 2008). When Sachs used the stylized "Viva Viagra" mark without authorization alongside a large yellow JetAngel.com banner on a decommissioned U.S. Air Force missile to promote his advertising services, the court found infringement because "consumers are likely to be confused as to the relationship between Plaintiff and Defendants' advertising."
209. Id. at *1, *4. The court rejected a First Amendment defense after finding the mark was used in a way "to suggest that Pfizer is the source of Defendants' activities" and concluded this use of the mark was "likely to cause significant consumer confusion in the marketplace."
210. Id. at *5.
211. Coca-Cola on Twitter, supra note 47.
212. See supra note 105 and accompanying text.
213. This may not matter for those courts and commentators who believe that the use requirements for obtaining trademark rights, such as the "use in commerce" requirement defined in § 1127, are different than the use requirements that are sufficient to violate another's trademark rights.
214. See supra Part II.A.1.
215. See, e.g. Utah Lighthouse Ministry v. Found, for Apologetic Info. & Research, 527 F.3d 1045, 1051-52 (10th Cir. 2008);
216. Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 674, 676-77 (9th Cir. 2005);
217. Taubman Co. v. Webfeats, 319 F.3d 770, 774-75 (6th Cir. 2003).
218. Taubman, 319 F.3d at 774;
219. see also Bosley, 403 F.3d at 677 ("As a matter of First Amendment law, commercial speech may be regulated in ways that would be impermissible if the same regulation were applied to noncommercial expressions.'")
220. (citing Florida Bar v. Went For It, Inc., 515 U.S. 618, 623 (1995)). When the commercial and noncommercial aspects of speech are "inextricably intertwined," the Supreme Court has held that courts should evaluate the constitutionality of restrictions of that speech using the "test for fully protected expression."
221. Riley v. Nat'l Fed'n of the Blind, 487 U.S. 781, 796 (1988).
222. See 15 U.S.C. §§ 1114(1)(a), 1125(a)(1)(A) (2006).
223. 4 McCARTHY, supra note 31, § 25:76.
224. See, e.g., Utah Lighthouse, 527 F.3d at 1052-54 (finding no commercial use of the "Utah Lighthouse" mark in a domain name and parody website);
225. Bosley, 403 F.3d at 677-80 (finding no commercial use of the "Bosley Medical" mark in a domain name linked to a cybergripe website).
226. See, e.g., United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 89-93 (2d Cir. 1997);
227. Browne v. McCain, 612 F. Supp. 2d 1125, 1131 (CD. Cal. 2009);
228. Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430, 1434 (S.D.N.Y. Mar. 19, 1997),
229. affd, 152 F.3d 920 (2d Cir. 1998).
230. 5 McCARTHY, supra note 31, §§ 27:71, 27:95 (quoting 134 CONG. REC. 31,852 (1988) (remarks of Rep. Kastenmeier)).
231. Bucci, 42 U.S.P.Q.2d at 1434; see 15 U.S.C. §§ 1114(1)(a), 1125(a)(1)(A).
232. 15 U.S.C. § 1125(c)(3)(C) (2006);
233. see also Lamparello v. Falwell, 420 F.3d 309, 313-14 (4th Cir. 2005) (noting the difference between the infringement and dilution statutes, but declining to resolve "the difficult question" of what constitutes commercial speech or determine whether the infringement provisions apply exclusively to commercial speech because this use of the mark did not cause a likelihood of confusion).
234. E.g., United We Stand, 128 F.3d at 86, 90-93 (stating that courts have applied the law "to defendants furnishing a wide variety of non-commercial public and civic benefits" and applying the Lanham Act to a political organization that used the "United We Stand America" mark for its political activities and services);
235. Gen. Conference Corp. of Seventh-Day Adventists v. Perez, 97 F. Supp. 2d 1154, 1164 (S.D. Fla. 2000) (holding that enforcement of a religious organization's "Seventh-Day Adventist" and "SDA" marks for religious goods and services against an unaffiliated church will not violate any constitutional rights);
236. MGM-Pathe Commc'ns Co. v. Pink Panther Patrol, 774 F. Supp. 869, 874-77 (S.D.N.Y. 1991) (applying the Lanham Act to use of the "Pink Panther" mark and paw print design by a gay rights activist group as part of their logo and rejecting a First Amendment argument);
237. cf. Browne, 612 F. Supp. 2d at 1127, 1131 (holding that Browne could state a claim for false endorsement based on a presidential candidate's use of his Running on Empty song in the background of a political advertisement because the Lanham Act applies to noncommercial speech).
238. For example, an entity established by a religious organization registered the mark "Seventh-Day Adventist" for religious books and services, among other things. Seventh-Day Adventists, 97 F. Supp. 2d at 1156, 1158;
239. U.S. Trademark Reg. No. 1,177,185 (filed May 7, 1980) (issued Nov. 10, 1981). In addition, the political organization United We Stand America, Inc. obtained a federal registration for "United We Stand America" as a mark for various services, including "conducting voter registration drives" and "dissemination of information in the field of public policy." U.S. Trademark Reg. No. 1,844,852 (filed Dec. 7, 1992) (issued July 12, 1994);
240. see also United We Stand, 128 F.3d at 88 (discussing the registration).
241. Browne, 612 F. Supp. 2d at 1131.
242. E.g., Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1396 (9th Cir. 1997) (book);
243. Anheuser-Busch, Inc. v. Balducci Publ'ns, 28 F.3d 769, 771-72 (8th Cir. 1994) (magazine);
244. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 202 (2d Cir. 1979) (film);
245. Am. Dairy Queen Corp. v. New Line Prods., Inc., 35 F. Supp. 2d 727, 728-29 (D. Minn. 1998) (film).
246. United States v. United Foods, Inc., 533 U.S. 405, 409 (2001);
247. Bd. of Trs. of State Univ. of N.Y. v. Fox, 492 U.S. 469, 473-74, 482 (1989);
248. Va. State Bd. of Pharm, v. Va. Citizens Consumer Council, 425 U.S. 748, 761-62 (1976)
249. (quoting Pittsburgh Press Co. v. Human Relations Comm'n, 413 U.S. 376, 385 (1973)).
250. See, e.g., Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900-02 (9th Cir. 2002)
251. (applying the test in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)). The Rogers balancing test is discussed in detail below.
252. See infra Part II.A.5.b.
253. Id. According to the Second Circuit, "[m]ovies, plays, books, and songs are all indisputably works of artistic expression and deserve protection. Nonetheless, they are also sold in the commercial marketplace like other more utilitarian products, making the danger of consumer deception a legitimate concern that warrants some government regulation . . . Poetic license is not without limits. The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product." Rogers, 875 F.2d at 997.
254. Cf. People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001) holding that Doughney used the People for the Ethical Treatment of Animals' mark PETA in connection with the sale of goods or services by providing links to 30 commercial websites offering goods or services). For criticism of this case,
255. see Goldman, Online Word of Mouth, supra note 99, at 416, 419-20.
256. Cf. Tushnet, Facebook Fraud, supra note 12 ("I'm willing to accept that pretending to offer services in the ordinary market-here, the market for modeling services-ought to count under these hopefully unique) facts.").
257. Ramsey, First Amendment Limitations, supra note 33, at 154-55;
258. Ramsey, Increasing Scrutiny, supra note 32, at 454-56.
259. Ramsey, Increasing Scrutiny, supra note 32, at 457.
260. Id. at 444.
261. See supra note 81.
262. 15 U.S.C. § 1127(2006).
263. Professor Goldman advocates such an approach. See Goldman, Online Word of Mouth, supra note 99, at 418-19 (arguing that "a use in commerce should occur only when the defendant uses the plaintiffs trademark to designate the source of the defendant's goods or services" and noting the definition of a trademark supports this "source-designation requirement"). This "designation of source" language can be found in the federal dilution statute, which exempts certain "fair" uses of marks from its application if the mark is used "other than as a designation of source for the person's own goods or services." 15 U.S.C. § 1125(c)(3)(A) (2006).
264. See, e.g., Barrett, Domain Names, supra note 70, at 983-85;
265. Barrett, Internet Trademark Suits, supra note 81, at 379, 382-86;
266. Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law Through Trademark Use, 92 IOWA L. REV. 1669, 1674, 1690-98 (2007) [hereinafter Dogan & Lemley, Grounding Trademark Law];
267. Eric Goldman, Deregulating Relevancy in Internet Trademark Law, 54 EMORY L.J. 507, 593-94 (2005) [hereinafter Goldman, Deregulating Relevancy];
268. see generally Margreth Barrett, Finding Trademark Use: The Historical Foundation for Limiting Infringement Liability to Uses "In the Manner of a Mark," 43 WAKE FOREST L. REV. 893 (2008) (arguing common law and legislative history establish that there is a trademark use limitation in the infringement provisions of the Lanham Act).
269. Mark P. McKenna, Trademark Use and the Problem of Source, 2009 U. III. L. REV. 773, 775-76.
270. See, e.g., Vulcan Golf, LLC v. Google, Inc. 552 F. Supp. 2d 752, 766 & n.7 (N.D. III. 2008);
271. Google, Inc. v. Amn. Blind & Wallpaper Factory, No. C 0305340 JF, 2005 WL 832398, at *5 (N.D. Cal. Mar. 30, 2005).
272. 15 U.S.C. § 1115(b)(4) (2006).
273. Dinwoodie & Janis, Confusion Over Use, supra note 85, at 1617;
274. Ramsey, First Amendment Limitations, supra note 33, at 168 n.66.
275. But see Margreth Barrett, Reconciling Fair Use and Trademark Use, 28 CARDOZO ARTS & ENT. L.J. 1, 4-5 (2010) ("[C]onclud[ing] that the trademark use requirement and the fair use defense are consistent and work together to strike the balance of competing interests that Congress sought to establish in the Lanham Act.");
276. Dogan & Lemley, Grounding Trademark Law, supra note 136, at 1683-85 (arguing the trademark use requirement does not make the statutory fair use provision superfluous).
277. 4 McCARTHY, supra note 31, § 23.11.50, quoted in Vulcan, 552 F. Supp. 2d at 766 n.7.
278. For the argument that there is no statutory or policy basis for a trademark use requirement,
279. see generally Dinwoodie & Janis, Confusion Over Use, supra note 85;
280. Graeme B. Dinwoodie & Mark D. Janis, Lessons from the Trademark Use Debate, 92 IOWA L. REV. 1703 (2007).
281. Cf. Barrett, Internet Trademark Suits, supra note 81, at 386 (citing cases where courts declined to find infringement in such circumstances).
282. See 15 U.S.C. §§ 1114(1)(a), 1125(a)(1)(A) (2006).
283. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979);
284. see also 4 McCARTHY, supra note 31, § 24:39 (discussing the Ninth Circuit's likelihood of confusion test, which was first articulated in Sleekcraft).
285. For such a summary, see 4 McCARTHY, supra note 31, §§ 24: 30-43 (discussing the likelihood of confusion tests in the various circuits).
286. See Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 CAL. L. REV. 1581, 1636-37 (2006).
287. Cf. Interstellar Starship Servs., Ltd. v. EPIX, Inc., 304 F.3d 936, 943-45 (9th Cir. 2002).
288. Lyons P'ship v. Giannoulas, 179 F.3d 384, 389 (5th Cir. 1999)
289. See 4 McCARTHY, supra note 31, §§ 24: 22-50.
290. Id. § 24:22.
291. Cf. Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (CD. Cal. 1998) (finding no confusion regarding source when the "Bally" mark was used in the subdomain compupix.com/ballysucks because it is improbable that the markholder would use the term "ballysucks"); see also Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (finding no confusion about the source of information on websites where domain names contained the word "sucks").
292. Brad Stone, A Mystery Solved: Fake Steve' is an Editor, N.Y. TIMES, Aug. 6, 2007, at C1. Someone has also created a Facebook profile using the name "Fake Steve Jobs." Posting of Owen Thomas to Gawker, A Fake Steve Jobs Pops up on Facebook, http://www.facebook.com/pages/Fake-Steve-Jobs/6291744229 (last visited June 10, 2010).
293. 4 McCARTHY, supra note 31, § 23:12.
294. Id. §§ 23: 13-17. However, Professor Beebe's empirical research suggests that "survey evidence, thought by many to be highly influential, is in practice of little importance." Beebe, supra note 147, at 1622.
295. See 4 McCARTHY, supra note 31, § 23:18.
296. Some courts hold that a Lanham Act plaintiff must prove actual confusion resulting in actual injury to obtain damages.
297. See, e.g., Web Printing Controls Co. v. Oxy-Dry Corp., 906 F.2d 1202, 1205-06 (7th Cir. 1990).
298. Cf. McIntrye v. Ohio Elections Comm'n, 514 U.S. 334, 348 n.11 (1995) (discussing the value of knowing "the identity of the source" for the purpose of judging the truthfulness of ideas contained in a writing).
299. See Mark A. Lemley & Mark McKenna, Irrelevant Confusion, 62 STAN. L. REV. 413, 415 (2010) (arguing that trademark infringement law-which includes a presumption of materiality-should only apply in cases involving actual source confusion or confusion about whether the markholder is responsible for the quality of the third party's goods or services). Professors Lemley and McKenna contend that trademark law should "refocus on confusion that is actually relevant to purchasing decisions,"
300. id. at 414, but they do not explicitly address whether use of a mark to cause actual confusion about the source of expression should be covered by infringement law where the third party is not advertising or selling expression that can be purchased by the public.
301. Some courts call this type of confusion "initial interest confusion," as discussed later in the Article.
302. See infra Part II.A.5.c (discussing the initial interest confusion doctrine).
303. The Yes Men, http://www.theyesmen.org/ (last visited June 10, 2010).
304. First Amended Complaint at 7-11, ¶¶ 16, 19-24, Chamber of Commerce of United States v. Servin, No. 1:09-cv-02014 (D.D.C filed Nov. 6, 2009), available at http://www.eff.org/files/filenode/yesmen/YESMEN- amendedcomplaint.pdf [hereinafter Chamber of Commerce Complaint];
305. Anne C. Mulkern, U.S. Chamber Sues Activists over Climate Stunt, N.Y. TIMES, Oct. 27, 2009, http://www.nytimes.com/gwire/2009/10/27/27greenwire-us- chamber-sues-activists-over-climate-stunt-50982.htm.
306. Chamber of Commerce Complaint, supra note 162, at 10-11, ¶¶ 23-25.
307. See, e.g., SMJ Group, Inc. v. 417 Lafayette Rest. LLC, 439 F. Supp. 2d 281, 293-95 (S.D.N.Y. 2006) (finding infringement because consumers were initially confused by defendants' use of the plaintiffs' logo on the front of a leaflet, but refusing to grant plaintiffs' request for a preliminary injunction after noting there was no risk of actual or lingering confusion once the contents of the leaflet were examined).
308. Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 293 (3d Cir. 1991).
309. See, e.g., Int'l Ass'n of Machinists & Aerospace Workers v. Winship Green Nursing Ctr., 103 F.3d 196, 201, 204-07 (1st Cir. 1996).
310. See infra Part II.B.
311. Lamparello v. Falwell, 420 F.3d 309, 316 (4th Cir. 2005)
312. (quoting Anheuser-Busch, Inc. v. L&L Wings, Inc., 962 F.2d 316, 319 (4th Cir. 1992)) (emphasis added in Lamparello).
313. According to Professor Beebe, "the intent factor, thought by some to be irrelevant, is of decisive importance." Beebe, supra note 147, at 1622.
314. Id. at 1628.
315. Rogers v. Grimaldi, 875 F.2d 994, 998-99 (2d Cir. 1989);
316. see also Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900, 901, 905-07 (9th Cir. 2002) (adopting the Rogers balancing test and finding no infringement of the Barbie mark when used in the title and content of the band Aqua's Barbie Girl song). The Rogers balancing test protects free speech interests in trademark disputes, but it is more limited than actual First Amendment scrutiny of trademark laws applied to noncommercial artistic and literary expression. See Ramsey, Increasing Scrutiny, supra note 32, at 445.
317. Rogers, 875 F.2d at 999.
318. See, e.g., E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099-1101 (9th Cir. 2008) (finding no infringement of the "Play Pen" mark for a strip club where the third party used "Pig Pen" for the name of a virtual strip club in a video game). As noted by Professor McCarthy, "courts have expanded the Rogers balancing approach to encompass all 'works of artistic expression."' 2 McCARTHY, supra note 31, § 10:22
319. (quoting Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Group, 886 F.2d 490, 495 (2d Cir. 1989) (applying the test in a case involving the use of a protected trade dress for the cover of a parody book)).
320. Rogers, 875 F.2d at 999. For scholarship that discusses this test and proposes revisions to it,
321. see, e.g., Pratheepan Gulasekaram, Policing the Border Between Trademarks and Free Speech: Protecting Unauthorized Trademark Use in Expressive Works, 80 WASH. L. REV. 887 (2005);
322. Elizabeth L. Rosenblatt, Rethinking the Parameters of Trademark Use in Entertainment, 61 FLA. L. REV. 1011 (2009).
323. See Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 & n.12 (2d Cir. 2000) (analogizing a domain name to the title of an expressive work, such as book or movie titles, may be appropriate in some cases); see also Barrett, Domain Names, supra note 70, at 1009-10 ("In the case of forum websites, the domain name that identifies the website is analogous to a book, magazine, or movie title . . . Under the Rogers line of cases, if book, movie and song titles are fully protected speech, then domain names identifying websites that serve as forums and do not sell goods or services surely must be too.").
324. Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430, 1440-41 (S.D.N.Y. Mar. 19, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) ("[E]ven treating defendant's domain name and home page address as titles, rather than as source identifiers, I find that the title 'plannedparenthood.com' has no artistic implications, and that the title is being used to attract some consumers by misleading them as to the web site's source or content.").
325. See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1017-18 (3d Cir. 2008) (declining to apply the Rogers balancing test in a false endorsement case because the expression-a television production called 'The Making of Madden NFL" that promoted a video game-was deemed to be commercial speech).
326. E.S.S. Entm't, 547 F.3d at 1100.
327. Rogers, 875 F.2d at 999.
328. Cf. Bucci, 42 U.S.P.Q.2d at 1440-41.
329. 4 McCARTHY, supra note 31, § 23:6.
330. Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 382 (7th Cir. 1996);
331. see also Elvis Presley Enters, v. Capece, 141 F.3d 188, 204 (5th Cir. 1998).
332. Brookfield Commc'ns. Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1062 (9th Cir. 1999).
333. Id.
334. (quoting Dr. Seuss Enters, v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997)) (internal quotations omitted).
335. See, e.g., Playboy Enters, v. Netscape Commc'ns Corp., 354 F.3d 1020 (9th Cir. 2004);
336. Brookfield, 174 F.3d at 1062-66; see also Goldman, Online Word of Mouth, supra note 99, at 425 (referring to this type of confusion as "content source confusion").
337. See, e.g., Lamparello v. Falwell, 420 F.3d 309, 316 (4th Cir. 2005).
338. Id. at 317
339. (citing PACCAR Inc. v. Telescan Techs., LLC, 319 F.3d 243, 253 (6th Cir. 2003);
340. Promatek Indus, v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002);
341. Brookfield, 174 F.3d at 1055-56).
342. Lamparello, 420 F.3d at 317;
343. see also Hannibal Travis, The Battle for Mindshare: The Emerging Consensus that the First Amendment Protects Corporate Criticism and Parody on the Internet, 10 VA. J.L. & TECH. ¶¶ 3, 85 (2005).
344. Checkpoint Sys. Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 296-97 (3d Cir. 2001).
345. See, e.g., Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41 HOUS. L. REV. 777, 813-31 (2004);
346. Goldman, Deregulating Relevancy, supra note 136, at 575-95;
347. Michael Grynberg, The Road Not Taken: Initial Interest Confusion, Consumer Search Costs, and the Challenge of the Internet, 28 SEATTLE U. L. REV. 97 (2004);
348. Jennifer E. Rothman, Initial Interest Confusion: Standing at the Crossroads of Trademark Law, 27 CARDOZO L. REV. 105 (2005).
349. For a discussion of cases involving use by third parties of another's mark that may cause trade identity confusion,
350. see 4 LOUIS ALTMAN & MALLA POLLACK, CALLMAN ON UNFAIR COMPETITION, TRADEMARKS AND MONOPOLIES §§ 22:2, 22:3 (4th ed. 2010).
351. Planned Parenthood Fed'n of Am., Inc. v. Problem Pregnancy of Worcester, Inc., 498 N.E.2d 1044, 1045 (Mass. 1986). The '"PP' [was] followed by smaller letters, 'Inc. of Worc.' and then the words: 'Free pregnancy testing and counseling, walk-in'. . . Approximately one foot from the bottom of the door was the full title 'Problem Pregnancy of Worcester, Inc.,' in letters measuring about one-half inch." Id. "According to the affidavits of three women, on separate occasions, each entered 340 Main Street on her way to have either a pregnancy test or an abortion at PPLM and by mistake entered the offices of PP, Inc. There the women conversed with staff members and filled out medical history forms before realizing they were at the wrong place. They were distressed over this confusion and complained to PPLM. Their claims triggered the present action."
352. Id. at 1045-46.
353. Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430, 1432 (S.D.N.Y. Mar. 19, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998). The website also included a scanned image of the cover of the book The Cost of Abortion which linked to passages from the book.
354. Id.
355. Id. at 1433 ("Defendant's counsel also admitted that Bucci was trying to reach Internet users who thought, in accessing his web site, that they would be getting information from plaintiff.. . [D]efendant's motive in choosing plaintiffs mark as his domain name was, at least in part, to attract to his home page Internet users who sought plaintiff's home page.") (emphasis in original);
356. Problem Pregnancy, 498 N.E.2d at 1049, 1053 (affirming injunction because defendant's intent was to confuse women in order to further its goals). 195. 993 F. Supp. 282, 290, 301-05 (D.N.J. 1998), aff'd 159 F.3d 1351 (3d Cir. 1998).
357. Id.
358. Bucci, 42 U.S.P.Q.2d at 1433;
359. Jews for Jesus, 993 F. Supp. at 308 ("[Defendant] has created, in his words, a 'bogus "Jews for Jesus'" site intended to intercept, through the use of deceit and trickery, the audience sought by the Plaintiff Organization.").
360. 439 F. Supp. 2d 281, 285 (S.D.N.Y. 2006).
361. Id.
362. Id. at 288.
363. Id. at 287.
364. Id. at 289
365. (quoting Lamparello v. Falwell, 420 F.3d 309, 317 (4th Cir. 2005)).
366. Id. at 288-91. The court held that plaintiffs were likely to prevail on their infringement claim, and rejected a First Amendment defense because defendants used the "marks as a source identifier." Id.
367. Id.
368. See, e.g., Lamparello, 420 F.3d at 318 n.6 ("[B]oth [the Bucci and Jews for Jesus] cases were wrongly decided to the extent that in determining whether the domain names were confusing, the courts did not consider whether the websites' content would dispel any confusion. In expanding the initial interest confusion theory of liability, these cases cut if off from its moorings to the detriment of the First Amendment.")
369. Jon H. Oram, Note, The Costs of Confusion in Cyberspace, 107 YALE L.J. 869 (1997) (discussing Bucci);
370. Posting of Eric Goldman to Technology & Marketing Law Blog, Trademark Travesty of the Month-SMJ Group v. 417 Lafayette Restaurant, http://blog.ericgoldman.org/archives/2006/07/trademark-trave.htm (July 13, 2006, 12:05);
371. supra note 190 listing scholarship critical of the initial interest confusion doctrine).
372. . Lamparello, 420 F.3d at 316 n.4, 318 (citing Parks v. LaFace Records, 329 F.3d 437, 452-54 (6th Cir. 2003)
373. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900-02 (9th Cir. 2002)
374. Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 667-68 (5th Cir. 2000)
375. Rogers v. Grimaldi, 875 F.2d 994, 1000-01 (2d Cir. 1989)).
376. Id. at 311.
377. Id. at 314-18.
378. Id.
379. 103 F.3d 196, 198-99, 207 (1st Cir. 1996).
380. Id.
381. Id. at 201-02, 205-07.
382. 15 U.S.C. §1115(b)(4) (2006)
383. MCCARTHY, supra note 31, §§11:45-49.
384. Cosmetically Sealed Indus, v. Chesebrough-Pond's USA Co., 125 F.3d 28 (2d Cir. 1997).
385. Cf. TCPIP Holding Co. v. Haar Commc'ns, Inc., 244 F.3d 88, 103-04 (2d Cir. 2001) (holding that the "The Children's Place" mark for clothing was used "as a mark" in the domain name thechildrensplace.com for a website and thus the statutory fair use defense did not apply).
386. 4 MCCARTHY, supra note 31, §23:11.
387. New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 304 (9th Cir. 1992).
388. Id. at 308
389. see also Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 810-12 (9th Cir. 2003) folding use of the trademarked Barbie doll in parody photographs was nominative fair use)
390. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150-55 (9th Cir. 2002) folding use of the trademarked name and likeness of Princess Diana in memorabilia and ads was nominative fair use). A variation of this common law doctrine has been developed and applied in the Third Circuit.
391. See Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211, 217-21 (3d Cir. 2005).
392. See generally Ramsey, Increasing Scrutiny, supra note 32, at 389, 421-47 (discussing the Supreme Court's First Amendment doctrine and explaining how it should be used to evaluate the constitutionality of federal trademark laws).
393. Cf. id. at 444 ("[T]rademark infringement laws banning the misleading use in noncommercial speech of the distinctive marks of political, religious, or other noncommercial groups could satisfy strict scrutiny analysis if the marks were used by the defendant as marks to falsely designate the source of its activities. Protecting the ability of consumers to identify and distinguish among the activities of noncommercial entities is a compelling government interest. If these laws are narrowly tailored to protect expression and the least restrictive means to further this interest, they should be found constitutional.").
394. For an argument that parody blogs are protected by the First Amendment, see Hannibal Travis, Of Blogs, eBooks, and Broadband: Access to Digital Media as a First Amendment Right, 35 HOFSTRA L. REV. 1519, 1530-43 (2007).
395. For a discussion of the law relating to anonymous and pseudonymous speech, see generally David G. Post, Pooling Intellectual Capital: Thoughts on Anonymity, Pseudonymity, and Limited Liability in Cyberspace, 1996 U. CHI. LEGAL F. 139 (proposing reforms to the law in the context of cyberspace)
396. Ken D. Kumayama, Note, A Right to Pseudonymity, 51 ARIZ. L. REV. 427 (2009) (same). There is a First Amendment right to speak anonymously.
397. See Watchtower Bible & Tract Soc'y of N.Y., Inc. v. Vill. of Stratton, 536 U.S. 150, 165-67 (2002)
398. Buckley v. Am. Constitutional Law Found., Inc., 525 U.S. 182, 199-200 (1999)
399. McIntyre v. Ohio Elections Comm'n, 514 U.S. 334, 341-43 (1995)
400. Talley v. California, 362 U.S. 60, 64-65 (1960). This right, however, is not absolute and may be limited by defamation law and other laws.
401. See Beauharnais v. Illinois, 343 U.S. 250, 266 (1952)
402. Chaplinsky v. New Hampshire, 315 U.S. 568, 572 (1942).
403. Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 52 (1988)
404. see also Gertz v. Robert Welch, Inc., 418 U.S. 323, 338, 340 (1974) ("[T]here is no constitutional value in false statements of fact")
405. N.Y. Times Co. v. Sullivan, 376 U.S. 254, 270 (1964) (stating that falsehoods do not materially advance society's interest in "uninhibited, robust, and wide-open" debate on public issues)
406. Chaplinsky, 315 U.S. at 572 ("[S]uch utterances are no essential part of any exposition of ideas, and are of such slight social value as a step to truth that any benefit that may be derived from them is clearly outweighed by the social interest in order and morality.").
407. Gertz, 418 U.S. at 342
408. see also N.Y. Times, 376 U.S. at 279-80 ("[Plaintiff must] prove[] that the statement was made with 'actual malice'-that is, with knowledge that it was false or with reckless disregard of whether it was false or not."). The test is whether there is "sufficient evidence to permit the conclusion that the defendant in fact entertained serious doubts as to the truth of his publication."
409. St. Amant v. Thompson, 390 U.S. 727, 731 (1968).
410. 501 U.S. 496, 499-508 (1991).
411. Id. at 510-14, 519.
412. In the Hustler v. Falwell libel dispute, there was a similar focus on whether the defendant's false statements about the plaintiff were "reasonably believable."
413. See Hustler, 485 U.S. at 57 (accepting the jury's finding that the Hustler ad parody about Falwell was not "reasonably believable" and could not "reasonably be understood as describing actual facts about [Falwell] or actual events in which [he] participated"). In Masson, the Court explained that "[a] fabricated quotation may injure reputation in at least two senses, either giving rise to a conceivable claim of defamation. First, the quotation might injure because it attributes an untrue factual assertion to the speaker. An example would be a fabricated quotation of a public official admitting he had been convicted of a serious crime when in fact he had not. [¶] Second, regardless of the truth or falsity of the factual matters asserted within the quoted statement, the attribution may result in injury to reputation because the manner of expression or even the fact that the statement was made indicates a negative personal trait or an attitude the speaker does not hold."
414. Masson, 501 U.S. at 511.
415. 439 F. Supp. 2d 281, 285-86, 291 (S.D.N.Y. 2006).
416. Id. at 291.
417. Id. at 293-95.
418. 382 F.3d 774, 779 (8th Cir. 2004) (internal quotations omitted).
419. Id. at 787-88.
420. Cf. Masson, 501 U.S. at 512-13, 519
421. Hustler, 485 U.S. at 57.
422. Ramsey, Increasing Scrutiny, supra note 32, at 389, 421-47.
423. Coca-Cola on Twitter, http://twitter.com/cocacolaco (Mar. 23, 2009, 08:18) (posting "Rum and pepsi just isn't right" and including a link to an article about the fact that Atlanta airline Delta is considering serving Pepsi products in addition to Coke on its flights);
424. Coca-Cola on Twitter, http://twitter.com/cocacolaco (Mar. 12, 2009, 12:29) (posting "Drink of Choice for Obama Administration? COKE-not pepsi!" and including a link to a news article reporting that several senior level officials in the Administration are "committed cola drinkers")
425. Coca-Cola on Twitter, http://twitter.com/cocacolaco (Mar. 9, 2009, 16:46) (posting "Coke Geyser-Diet Coke+Mentos=ERUPTION!" and including a link to a related Wikipedia article). Note that these posts were to an old Coca-Cola Twitter account located at http://twitter.com/cocacolaco, which was closed on July 31, 2009 and moved to a new account located at http://twitter.com/cocacola.
426. See Coca-Cola on Twitter, http://twitter.com/cocacolaco (July 25, 2009, 17:51) ("We will be closing this account on July 31-please follow us over at our new location").
427. The standard economic arguments for protecting trademarks include the benefit of reduced consumer search costs and the creation of incentives for markholders to maintain and improve product quality.
428. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64 (1995)
429. Ty Inc. v. Perryman, 306 F.3d 509, 510 (7th Cir. 2002)
430. WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 168, 173 (2003)
431. Robert G. Bone, Enforcement Costs and Trademark Puzzles, 90 VA. L. REV. 2099, 2101, 2105-08 (2004).
432. Cf. Rogers v. Grimaldi, 875 F.2d 994, 997-98 (2d Cir. 1989) ("The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product.")
433. Hey mann, Birth of the Authornym, supra note 35, at 1382-83 ("[T]he values that trademark law promotes . . . are equally valid goals when the 'customer' shops in the marketplace of ideas.").
434. Professor Heymann suggests an infringement-like action should be available to an author when a third party brands a piece of writing with the name of a wellknown author who is not in fact its source.
435. Heymann, Birth of the Authornym, supra note 35, at 1433.
436. See Lee, supra note 1, at B2 ("Put Nike in the search Twitter box and it returns 175 results, with none of them clearly the global sporting brand's official account.").
437. Cf. Masson v. New Yorker Magazine, Inc., 501 U.S. 496, 512-13, 519 (1991) (finding a reasonable reader would believe the false statement of attribution)
438. Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 57 (1988) (accepting the jury's finding that the ad parody was not reasonably believable)
439. Lamparello v. Falwell, 420 F. 3d 309, 318 (4th Cir. 2005) (holding that courts must look at the underlying content of the website linked to an allegedly infringing domain name)
440. Int'l Ass'n of Machinists & Aerospace Workers v. Winship Green Nursing Ctr., 103 F.3d 196, 201-02, 205-07 (1st Cir. 1996) (finding no infringement because employees would know the employer, not the union, was the author of the expression after reviewing the content of the fake documents bearing the union's marks),
441. discussed in United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 93 n.3 (2d Cir. 1997) (noting the fact that the content dispelled confusion regarding source in the International case is critical to the decision).
442. Focusing on whether a reasonable person would be confused by the content of a fake account may currently be the approach used by some social network sites in deciding whether to remove the allegedly infringing content.
443. See, e.g., Marie Price, Is Your Trademark in Jeopardy?, J. REC., June 16, 2009, at B1 ('Twitter . . . allows users to establish 'parody' impersonation accounts. They use a standard of, if an ordinary person would look at that and know the account is a joke account, Twitter will allow it[.]'") (quoting McAfee & Taft attorney Ryan Lobato). Although it may be difficult to determine the characteristics of the "reasonable person" in trademark law, courts already make this determination when they conduct the likelihood of confusion analysis.
444. See, e.g., Laura A. Heymann, The Reasonable Person in Trademark Law, 52 ST. Louis U. L.J. 781 (2008).
445. Some courts have found infringement where the main type of confusion was about whether the markholder consented to this use of its mark in the expression.
446. See, e.g., Anheuser-Busch, Inc. v. Balducci Publ'ns, 28 F.3d 769, 772-73 (8th Cir. 1994)
447. Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398 (8th Cir. 1987)
448. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 202-03 (2d Cir. 1979).
449. Professor McKenna suggests that courts should treat the similarity of the goods as a threshold issue in infringement actions.
450. Mark P. McKenna, Testing Modern Trademark Law's Theory of Harm, 95 IOWA L. REV. 63, 115-16 (2009).
451. Ramsey, First Amendment Limitations, supra note 33, at 155-56
452. Ramsey, Increasing Scrutiny, supra note 32, at 455-56.
453. Cf. Gulasekaram, supra note 174, at 940-41 (discussing the potential arguments of markholders in cases involving artistic and literary works).
454. Ramsey, Increasing Scrutiny, supra note 32, at 447-53.
455. See supra Part II.A.5.b.
456. 539 U.S. 23, 31-32 (2003).
457. The court concluded the phrase "origin of goods" in 15 U.S.C. §1125(a)(1)(A) refers to "the producer of the tangible product sold in the marketplace, in this case the physical. .. videotape sold by Dastar" and not "the person or entity that originated the ideas or communications that 'goods' embody or contain."
458. Id. at 31-32.
459. For an excellent discussion and criticism of the case, see Heymann, Birth of the Authornym, supra note 35
460. Laura A. Heymann, The Trademark/Copyright Divide, 60 SMU L. REV. 55, 62 (2007) ("[P]ropos[ing]: a recognition of the attribution interest in communicative goods during both the term of copyright and in the public domain, coupled with greater scrutiny of trademark-based claims masquerading as copyright-based ones."). Some commentators note the Court's interpretation of the meaning of the statute may be limited to the phrase "origin of goods."
461. See, e.g., Rick Mortensen, D.I.Y. After Dastar: Protecting Creators' Moral Rights Through Creative Lawyering, Individual Contracts and Collectively Bargained Agreements, 8 VAND. J. ENT. & TECH. L. 335, 342 (2006).
462. Andy Greenberg, The Streisand Effect, FORBES.COM May 11, 2007, http://www.forbes.com/2007/05/10/streisand-digg-web-tech-cx-ag-0511streisand. html.
463. Id.