Shaming trademark bullies

Wisconsin Law Review

Volumn 2011, Issue 3, 2011, Pages 625-689

  Grinvald, Leah Chan ^a  

^a SAINT LOUIS UNIVERSITY   (United States)

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EID: 80053923865     PISSN: 0043650X     EISSN: None     Source Type: Journal    
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References (414)

1. See Letter from Diane Reed, Attorney, Knobbe Martens Olson & Bear LLP, to Christopher J. Day, Law Office of Christopher Day (Sept. 4, 2009).
2. See Jack Katzanek, Hansen Settles Trademark Dispute with Brewer, The Press-Enterprise, (Oct. 23, 2009, 9:52 AM), http://www.pe.com/business/local/ stories/PE-Biz-S-mons ter23.39559bf.html.
3. See Letter from Diane Reed, supra note 1.
4. See Matt vs. Monster, Green River Pictures, http://www.grpvt.com/ mattvsmonster (last visited Apr. 2, 2011)
5. Save Vermonster, Save Rock Art Brewery, Lost in the Beer Aisle (Oct. 14, 2009), http://www.lostinthebeeraisle.com/ 2009/10/save-vermonster-save-rock- artbrewery.html
6. Vermonters and Craft Beer Drinkers Against Monster, Facebook, http://www.facebook.com/group.php?gid= 171894902802&ref=nf (last visited Mar. 12, 2011).
7. Matt and "The Monster"-Rock Art Brewery vs. Monster Energy Drink, YouTube, http://www.youtube.com/watch?v=kbG-woqXTeg (last visited Apr. 18, 2011) (follow document statistics).
8. SeeAdam Ostrow, Social Media Users Rally Behind Vermont Brewery vs Monster Energy Drink, Mashable (Oct. 16, 2009), http://mashable.com/2009/10/16/ vermonster/.
9. See Press Release, Hansen Beverage Company and Rock Art Brewery Reach Trademark Agreement (Oct. 22, 2009) (on file with author).
10. See generally David Bollier, Brand Name Bullies: The Quest to Own and Control Culture (2005) (documenting various bullying campaigns).
11. See id. at 5.
12. See Stacey Knapp, Balancing the Crucible: The Revolving Conflict Between Fair Use and Corporate Use in the Battle to Control Domain Names, 1 Okla. J.L. & Tech. 10, 17-18 (2004), http://www.okjolt.org/index.php?option=com- content&view+article&id+84:1-jl-a-tech-10-2004-&catid=42: special-features& Itemid+65 (discussing Warner Brothers' tactics in bullying owners of domain names that incorporate any item related to the Harry Potter book-series franchise).
13. See K.J. Greene, Abusive Trademark Litigation and the Incredible Shrinking Confusion Doctrine-Trademark Abuse in the Context of Entertainment Media and Cyberspace, 27 Harv. J.L. & Pub. Pol'y 609, 632 (2004) ("The 'effectiveness of lawsuits to silence corporate critics derives in part from the disparity of resources between the plaintiff corporation and the defendant ⋯ .'" (quoting Sarah Mayhew Schlosser, The High Price of (Criticizing) Coffee: The Chilling Effect of the Federal Trademark Dilution Act on Corporate Parody, 43 Ariz. L. Rev. 931, 948 (2001)).
14. For example, among small-business owners, only 8.3 percent have attained a professional degree. See Chad Moutray, Baccalaureate Education and the Employment Decision: Self-Employment and the Class of 1993, at 30 (Oct. 2008) (Office of Advocacy, U.S. Small Bus. Amin., unnumbered working paper), available at http://archive.sba.gov/advo/research/rs333tot.pdf. While a small percentage of small- business owners have a graduate degree, it is likely that not all of these graduate degrees are law degrees.
15. See, e.g., Letter from National Football League, to Ms. Thom, Fleurty Girl (Jan. 13, 2010).
16. See, e.g., Letter from Diane Reed, supra note 1 ("Hansen created, manufactures and distributes the MONSTER ENERGY® line of drinks and supplements under its famous MONSTER and MONSTER ENERGY® mark." (emphasis added)). Being "famous" in trademark law is a term of art, requiring a high burden of proof.
17. See 15 U.S.C. § 1125(c)(2)(A) (2006) ("[A] mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner.").
18. See, e.g., Letter from Diane Reed, supra note 1.
19. See id. (providing two weeks from date of letter)
20. Letter from National Football League, supra note 14 (providing nine days from date of letter).
21. See Rosemary J. Coombe, The Cultural Life of Intellectual Properties: Authorship, Appropriation, and the Law 66 (1998) ("[Trademark law] becomes the ruse by which corporations protect themselves from competition and from uncompensated circulation of their cultural indicators.").
22. For in-depth discussions of other harms arising from trademark bullying, including violations of the First Amendment and harms to consumers, See generally Bollier, supra note 9, at 188-89, Eric Goldman, Online Word of Mouth and Its Implications for Trademark Law, in Trademark Law and Theory: A Handbook of Contemporary Research 404 (Graeme B. Dinwoodie & Mark D. Janis eds., 2008) [hereinafter Trademark Law and Theory], Greene, supra note 12, and William E. Ridgway, Revitalizing the Doctrine of Trademark Misuse, 21 Berkeley Tech. L.J. 1547 (2006).
23. See Russell L. Parr, The Value of Trademarks, in Trademarks, Copyrights, and Unfair Competition for the General Practitioner 229, 246 (Am. Law Inst.-Am. Bar Assoc. Comm. on Continuing Prof'l Educ., Course of Study Materials No. C913, 1994) ("[L]arge-scale introduction of a new trademark carries enormous costs.")
24. Peter Robison, Time Warner, Broadwing, Change Names After Losses, Igor (Oct. 16, 2003), http://www.igorinternational.com/press/bloomberg- corporate-business-name.php ("Changing a corporate name can take a year and cost tens of millions of dollars.").
25. See, e.g., Letter from National Football League, supra note 14.
26. Starting a business is a resource-intensive undertaking and many small businesses operate at a very small margin of error, as proprietors often underestimate the amount of capital needed to run the business in the first few years. See generally Mary Jane Byrd & Leon C. Megginson, Small Business Management: An Entrepreneur's Guide 13, 25, 181 (6th ed. 2009). Approximately 50 percent of all small businesses fail within the first five years of operation. See Get Ready, U.S. Small Business Administration, http://www.sba.gov/ smallbusinessplanner/plan/ getready/SERV-SBPLANNER-ISENTFORU.html (last visited Nov. 4, 2010) (on file with author; webpage is no longer available). As such, any unexpected expense or cost, such as a loss of inventory and payment of attorney's fees may push the business into bankruptcy.
27. See, e.g., Letter from Diane Reed, supra note 1.
28. Non-monetary costs may include the emotional strain of being involved in litigation. For example, when Ford Motor Corporation sued seven individuals to gain control over domain names that included one of Ford's purported trademarks ("FORD," "JAGUAR," etc), the Electronic Frontier Foundation provided free legal assistance. See EFF Wins a Partial Victory in Ford Case, EFFector, Jan. 10, 2002, http://w2.eff.org/effector/HTML/effect15.01.html#II. Notwithstanding the free legal assistance, two of the defendants decided not to pursue the litigation, citing the emotional strain of the litigation. SeeBOLLIER, supra note 9, at 126.
29. See infra Part II. B.1.
30. See generally Graeme Dinwoodie, Developing Defenses in Trademark Law, 13 Lewis & Clark L. Rev. 99 (2009) (arguing for courts to adopt stronger affirmative trademark defenses)
31. Michael Grynberg, Things Are Worse Than We Think: Trademark Defenses in a "Formalist" Age, 24 Berkeley Tech. L.J. 897 (2009) (arguing for statutory amendments to encapsulate stronger trademark defenses)
32. William McGeveran, Rethinking Trademark Fair Use, 94 Iowa L. Rev. 49 (2008) (arguing for a stronger fair-use defense).
33. While strong defenses may help in the pre-litigation stage (because strong defenses can convince a bully that their trademark-infringement case is not a strong one), where the bullying victim is a small business or individual, trademark bullies may choose to ignore defense arguments because it is common knowledge that such victims will likely not have the resources to make the same arguments in litigation.
34. Although shaming has been widely written about in the criminal context, See Dan M. Kahan, What Do Alternative Sanctions Mean?, 63 U. Chi. L. Rev. 591, 631-53 (1996) (Pubitemid 126408719)
35. Dan M. Kahan & Eric A. Posner, Shaming White-Collar Criminals: A Proposal for Reform of the Federal Sentencing Guidelines, 42 J.L. & Econ. 365 (1999), it has received only sporadic, descriptive coverage in the intellectual property context. SeeMarkF. Schultz, Fear and Norms and Rock & Roll: What Jam bands Can Teach Us About Persuading People to Obey Copyright Law, 21 Berkeley Tech. L.J. 651, 681-88 (2006) (describing shaming as a sanction in the jamband community)
36. Dotan Oliar & Christopher Sprigman, There's No Free Laugh (Anymore): The Emergence of Intellectual Property Norms and the Transformation of Stand-Up Comedy, 94 Va. L. Rev. 1787, 1824-25, 1862 (2008) (describing shaming as a sanction for comedians who infringe on other comedians' material).
37. See infra Part III. C.1.
38. Cf. Trade Marks Act, 1994, c. 26, §21 (Eng. & Wales).
39. See Lionel Bently, From Communication to Thing: Historical Aspects of the Conceptualisation of Trade Marks as Property, in Trademark Law and Theory, supra note 19, at 3
40. Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame L. Rev. 1839, 1840 (2007).
41. See, e.g., 156 Cong. Rec. S349 (daily ed. Jan. 28, 2010) (statement of Sen. Leahy) ("I have become concerned, however, that large corporations are at times abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses.").
42. See Deven R. Desai & Sandra L. Rierson, Confronting the Genericism Conundrum, 28 Cardozo L. Rev. 1789, 1791 (2007).
43. For more in-depth coverage, See generally Robert G. Bone, Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B.U. L. Rev. 547, 548-49 (2006)
44. Glynn S. Lunney, Jr., Trademark Monopolies, 48 Emory L.J. 367, 369 (1999).
45. See Jane C. Ginsburg, Jessica Litman & Mary L. Kevlin, Trademark and Unfair Competition Law 43 (4th ed. 2007).
46. Compare Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 322 (1871) ("The office of a trade-mark is to point out distinctively the origin, or ownership of the article to which it is affixed; or, in other words, to give notice who was the producer."), with Lanham Act, Pub. L. No. 79-489, § 45, 60 Stat. 442, 443 (1946) (codified as amended at 15 U.S.C. § 1127 (2006)) ("The term 'trade-mark' includes any word, name, symbol, or device or any combination thereof and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.").
47. See McKenna, supra note 31, at 1900
48. Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1688 (1999).
49. See Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 Notre Dame L. Rev. 397, 399 (1990) ("[T]he changing legal climate has tended to grant trademark owners greater control over their marks ⋯ ."). An aggressive strategy of trademark enforcement is needed in order to reap the benefits of the legal expansions, and therefore, larger businesses with the resources to undertake such a strategy are oftentimes the beneficiaries of such expansions.
50. See Greene, supra note 12, at 640 ("The fear that not bringing a suit now might foreclose or damage interests in bringing suit later may lead to unnecessary litigation.").
51. Currently, almost anything can function as a trademark, so long as it is source identifying. See Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 162, 163 (1995). By contrast, trademarks consisting of color (as an example) were not protected in the late nineteenth or mid-twentieth centuries. See, e.g., A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166, 171 (1906) ("[A] trade-mark which may be infringed by a streak of any color, however applied, is manifestly too broad.")
52. James Heddon's Sons v. Millsite Steel & Wire Works, Inc., 128 F.2d 6, 9 (6th Cir. 1942) ("Color, except in connection with some definite, arbitrary symbol or in association with some characteristics which serve to distinguish the article as made or sold by a particular person is not subject to trademark monopoly.").
53. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 4:4 (4th ed. 2010).
54. Milton Handler & Charles Pickett, Trade-Marks and Trade Names-An Analysis and Synthesis: I, 30Colum. L. Rev. 168, 169 (1930).
55. See id. at 168.
56. See Frank I. Schechter, The Historical Foundations of the Law Relating to Trade-Marks 161 (1925).
57. See Handler & Pickett, supra note 42, at 169.
58. See, e.g., Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111 (1938).
59. See James Love Hopkins, The Law of Trademarks, Tradenames and Unfair Competition §4, at 14 (4th ed. 1924) (stating the author's opinion that trademark rights were "broader and by far ... more valuable" than trade-name rights).
60. The first mentions of "secondary meaning" appeared in the late nineteenth century and with greater frequency in the early part of the twentieth century. See, e.g., Elgin Nat'l Watch Co. v. Ill. Watch Case Co., 179 U.S. 665, 666 (1900)
61. R. Guastavino Co. v. Comerma, 180 F. 920, 921 (S.D.N.Y. 1910)
62. Pepper v. Labrot, 8 F. 29, 36 (D. Ky. 1881). The "Ten Year Clause" of the 1905 Act, whereby a trade name that had been in use for ten years prior to the passage of the Act was allowed to be federally registered even though it did not otherwise qualify as a technical trademark, was considered a codification of the secondary meaning rule. See Harry D. Nims, The Law of Unfair Competition and Trade-Marks § 43, at 78 (2d ed. 1917).
63. SeeE. Columbia, Inc. v. Waldman, 181 P.2d865 (Cal. 1947).
64. Handler & Pickett, supra note 42, at 200
65. see also Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938).
66. Compare 15 U.S.C. § 1052(f) (2006), with Trade-Mark Act of 1905, Pub. L. No. 58-84, § 5(b), 33 Stat. 724, 725-26.
67. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).
68. Standard Oil Co. v. StandardOil Co., 252F.2d65, 71 (10th Cir. 1958).
69. See Qualitex Co. v. JacobsonProds. Co., 514 U.S. 159, 164 (1995).
70. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 788 (5th Cir. 1983).
71. For example, Fox News Corporation has registered its slogan, "Fair & Balanced" as a trademark, FAIR & BALANCED Registration No. 2,213,427, and brought a lawsuit to stop the use of the slogan by a third party. See Fox News Network LLCv. Penguin Grp. (USA)Inc., 31 Media L. Rep. (BNA) 2254 (S.D.N.Y. 2003).
72. For example, Zatarains, Inc., claiming that their descriptive trademarks "FISH-FRI" and "CHICK-FRI" had acquired secondary meaning, filed a lawsuit against three out of the four users of the term "fish fry." See Zatarains, Inc., 698 F.2dat788.
73. See Lisa P. Ramsey, Descriptive Trademarks and the First Amendment, 70 Tenn. L. Rev. 1095, 1162 (2003). Professor Ramsey's article provides an excellent argument of how trademark protection of descriptive trademarks violates the First Amendment. See id.
74. SeeDreyfuss, supranote 38, at 405.
75. See15 U.S.C. §§ 1114(1)(a), 1125(a)(1) (2006)
76. see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992)
77. Restatement (Third) of Unfair Competition § 20 cmt. d (1993) ("The term 'likelihood of confusion' has long been used to describe the standard of liability for trademark infringement in actions at common law and under federal and state trademark and unfair competition statutes.").
78. See Richard L. Kirkpatrick, Likelihood of Confusion in Trademark Law § 1:1 (1995)
79. see also Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d867, 875 (2d Cir. 1986)
80. Cont'l Motors Corp. v. Cont'l Aviation Corp., 375 F.2d 857, 860 & n.8 (5th Cir. 1967)
81. McCarthy, supranote 41, § 23:3.
82. See, e.g., Thomson v. Winchester, 36 Mass. (16 Pick.) 214, 216 (Mass. 1837).
83. See, e.g., Borden Ice Cream Co. v. Borden's Condensed Milk Co., 201 F. 510, 512-13 (7th Cir. 1912). This is perhaps due, in part, to the fact that most trademark owners only utilized their trademark in one product category. See Sara Stadler Nelson, The Wages of Ubiquity in Trademark Law, 88 Iowa L. Rev. 731, 777 (2003) ("In 1927, the vast majority of trademarks identified only a single good, or, at most, a single class of goods.").
84. See Pamela Walker Laird, Advertising Progress: American Business and the Rise of Consumer Marketing 31 (1998) (discussing the post-war expansion of consumer products).
85. 247 F. 407 (2d Cir. 1917).
86. Id. at 410.
87. SeeMcKenna, supra note 31, at 1901.
88. Trade-Mark Act of 1905, Pub. L. No. 58-84, § 16, 33 Stat. 724, 728, repealed by Lanham Act, Pub. L. No. 79-459, § 46(a), 60 Stat. 427, 444 (1946) (codified as amended in various sections of 15 U.S.C.) (emphasis added).
89. See Lanham Act § 32(1)(a) ("(1) Any person who shall, in commerce, (a) use without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark in connection with the sale, offering for sale, or advertising of any goods or services ⋯ shall be liable to a civil action by the registrant ⋯ .").
90. The amendments in 1962 deleted the requirement that confusion be of "purchasers as to the source of origin of such goods or services." McCarthy, supra note 41, §5:6
91. see also Act of Oct. 9, 1962, Pub. L. No. 87-772, § 2, 76 Stat. 769, 769.
92. Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496, 501 n.6 (5th Cir. 1979).
93. See generally Demand for Jury Trial, IHOP IP, LLC v. Int'l House of Prayer, No. CV10-6622-SHO-SHX, 2010 WL 3775268 (C.D. Cal. Sept. 9, 2010).
94. Congress passed the Federal Trademark Dilution Act in 1996, providing federal protection for famous marks from dilution. Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, § 3, 109 Stat. 985, 985 (1996). Congress amended this act in 2006. Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, § 2, 120 Stat. 1730, 1730.
95. See James Burrough, Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 276(7thCir. 1976).
96. See McCarthy, supra note 41, § 11:83.
97. See Graeme B. Dinwoodie & Mark D. JaNIs, Trademarks and Unfair Competition: Law and Policy 506-09 (2d ed. 2007).
98. Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1117 (6th Cir. 1996)
99. see also McCarthy, supra note 41, §11:73.
100. See, eg., Brook field Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1058-59 (9th Cir. 1999).
101. See Family Circle, Inc. v. Family Circle Assocs., Inc., 332 F.2d 534, 540 (3d Cir. 1964).
102. See Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987)
103. James Burrough, Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 276 (7th Cir. 1976) ("A mark that is strong because of its fame or its uniqueness, is more likely to be remembered and more likely to be associated in the public mind with a greater breadth of products or services, than is a mark that is weak ⋯ .").
104. See Wet Seal Inc. v. FD Mgmt. Inc., 82 U.S.P.Q.2d (BNA) 1629, 1641- 42 (T.T.A.B. 2007).
105. 15 U.S.C. § 1125(c) (2006).
106. See Clarisa Long, Dilution, 106 Colum. L. Rev. 1029, 1030-31 (2006) ("[D]ilution grants trademark holders a remedy for the use of their famous marks by another even when consumers are not confused.").
107. § 1125(c)(1).
108. § 1125(c)(2)(A) ("[A] mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner.").
109. A quick Lexis database search of trademark-infringement cases filed in federal district courts from 1995 to 2010 shows 2,417 cases alleging dilution as a cause of action (out of 7,773 filed trademark-infringement claims) (Lexis search: US District Court Cases, Combined, "trademark w/1 infringement," and Focus: "dilution").
110. See generally Gerard N. Magliocca, From Ashes to Fire: Trademark and Copyright in Transition, 82 N.C. L. Rev. 1009, 1033 (2004) (stating that dilution "is now a powerful alternative to the traditional model of trademark protection"). Some public-interest groups, such as Public Knowledge, attempted to rally small businesses and individuals against the passage of the Trademark Dilution Revision Act in 2006, arguing that small businesses "will be severely limited when choosing how to market their products and refer to themselves." H.R. 683: The Trademark Dilution Revision Act of 2005, Public Knowledge (Feb. 9, 2005). http://www. publicknowledge.org/ issues/tmdilution (last visited Mar. 17, 2011)
111. see also Stop the Trademark Dilution Revision Act, Facebook, http://www.facebook.com/group.php?gid=2210302309 (last visited Mar. 17, 2011).
112. See, e.g., Benny Evangelista, Monster Fiercely Protects Its Name: Cable Products Company Sues Those Who Use M-Word, S.F. Chron., Nov. 8, 2004, http://www.sfgate.com/cgi-bin/article.cgi?f =/c/a/2004/11/08/BUG1J9N3C61.DTL.
113. See § 1127 (defining when a mark is "abandoned").
114. See Julius R. Lunsford, Jr., Trademark Basics, 59 Trademark Rep. 873, 878 (1969) ("Strong marks are widely protected, as contrasted to weak marks.").
115. See E.I. DuPont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F. Supp. 502, 512 (E.D.N.Y. 1975) ("[S]trength is primarily a question of degree, an amorphous concept with little shape or substance when divorced from the mark's commercial context, including an appraisal of the owner's policing efforts to ensure that whatever distinctiveness or exclusivity has been achieved is not lost through neglect, inattention, or consent to infringing use.").
116. McCarthy, supra note 41, § 11:91.
117. See Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 265 (5th Cir. 1980) ("A trademark owner that strongly believed its customers were being deceived would hardly have remained idle for such an extensive period of time.").
118. Evangelista, supra note 88 (quoting Noel Lee, President, Monster Cable).
119. See Greene, supra note 12, at 640 ("[P]ractitioners no doubt feel doctrinal pressure to protect their clients' marks aggressively, based on the fear that inaction against potential infringers now could lead to a finding of acquiescence or laches later.").
120. See, e.g., Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1558 (11th Cir. 1991) (discussing laches and acquiescence, "both ⋯ are capable of estopping a petitioner from asserting dormant rights against a defendant. The difference between acquiescence and laches is that laches denotes passive consent and acquiescence denotes active consent.")
121. see also Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339, 1355-56 (E.D.N.Y. 1994) ("A laches or acquiescence defense does not divest the trademark owner of the right to use the mark but may deprive him or her of any remedy for infringing uses by others.")
122. McCarthy, supra note 41, § 31:41-43.
123. See Mo. Fed'n of the Blind v. Nat'l Fedn of the Blind of Mo., Inc., 505 S.W.2d 1, 10 (Mo. Ct. App. 1973).
124. Greene, supranote 12, at 640.
125. Desai & Rierson, supranote 33, at 1834.
126. See Cheryl L. Hodgson, When Enforcement Becomes Bullying, World Trademark Rev. , June/July 2010, at 73.
127. Webster's Third International Dictionary 295 (unabr. ed. 2002) [hereinafter Webster's].
128. See 156 Cong. Rec. S349 (daily ed. Jan. 28, 2010) (statement of Sen. Leahy) ("When a corporation exaggerates the scope of its rights beyond a reasonable interpretation in an attempt to bully a small business out of the market, that is wrong."). The norm that is violated is a legal norm against an unreasonable interpretation of legal rights. Legal and business ethics inform the reasonable interpretation of rights. While it is not illegal to exaggerate the scope of one's rights, there are ethical penalties for lawyers who assist clients in so doing. See, e.g., Fed. R. Civ. P. 11 (imposing affirmative duty on attorneys to make a reasonable inquiry into the circumstances of a case and authorizing courts to impose sanctions on attorneys or law firms who violate the rule).
129. Although drawing bright-line rules for when a large corporation conducts a "cursory" assessment of a third party's trademark use may be difficult to do with any real certainty, it is useful to keep the dictionary definition for "cursory" in mind: "rapidly often superficially performed with scant attention to detail." Webster's, supra note 101, at 558.
130. See Warner Conjures Up Trouble, New Media, Apr. 12, 2001, at 34.
131. See Elizabeth Weise, 'Potter' Is Still the Muggles' Domain, USA Today, Feb. 6, 2002, http://www.usatoday.com/tech/columnist/2001-04-24-weise.htm.
132. See supra Part I.A.3.
133. See Amy Zipkin, Entrepreneurs Must Choose Their Words with Care, N.Y.TImes, Oct. 7, 2004, http://www.nytimes.com/2004/10/07/ =business/ 07sbiz.html?-r=2&pagewanted=all&position= (quoting Professor Roger Schechter).
134. See Ann Bartow, Likelihood of Confusion, 41 San Diego L. Rev. 721, 738 &n. 49 (2004).
135. See Evangelista, supra note 88.
136. See Zipkin, supra note 108.
137. A likelihood-of-confusion analysis is typically conducted by courts using a multi-factor test. While the specific number of factors vary from circuit to circuit, See Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 Calif. L. Rev. 1581, 1582-84 (2006), all of the various tests include factors that examine defendant's use of the trademark. See Dinwoodie & JaNIs, supra note 76, at 506-08.
138. SeeBartow, supranote 109, at 745.
139. SeeRidgway, supranote 19, at 1549.
140. See EFF Wins a Partial Victory in Ford Case, supra note 24.
141. See Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 644 (E.D. Mich. 2001).
142. SeeKirkpatrick, supranote 61, at 1-5.
143. See Beebe, supra note 112, at 1586.
144. One way to protect against these allegations is to keep records of the trademark-infringement assessment and legal analysis.
145. See, e.g., What-A-Burger of Va., Inc. v. Whataburger, Inc., 357 F.3d 441, 450-51 (4th Cir. 2004).
146. There is a recognized legal norm against utilizing intimidation tactics that have the effect of forcing or coercing weaker parties into agreeing to something that they would not have otherwise agreed. For example, in contract law, doctrines of unconscionability, duress, and undue influence protect weaker parties against various sorts of intimidation tactics. See generally Williams v. Walker-Thomas Furniture Co., 350 F.2d 445, 447-49 (D.C. Cir. 1965) (unconscionability)
147. Totem Marine Tug & Barge, Inc. v. Alyeska Pipeline Serv. Co., 584 P.2d 15 (Alaska 1978) (economic duress)
148. Odorizzi v. Bloomfield Sch. Dist., 54 Cal. Rptr. 533, 539-41 (Dist. Ct. App. 2d 1966) (undue influence).
149. See generally Clare Dalton, An Essay in the Deconstruction of Contract Doctrine, 94 Yale L.J. 997, 1024 (1985)
150. Arthur Allen Leff, Unconscionability and the Code-The Emperor's New Clause, 115 U. Pa. L. Rev. 485, 487 (1967).
151. See, e.g., Totem Marine Tug & Barge, 584 P.2d at 22
152. Odorizzi, 54 Cal. Rptr. at 539.
153. See, e.g., Capps v. Ga. Pac. Corp., 453 P.2d 935 (1969) (holding that where the defendant exploited the plaintiff's desperation, the contract was rescinded with no cause of action for defendant to recover against the plaintiff).
154. While some bullies offer monetary assistance to the small-business owner or individual to cover the costs of changing the trademark, this monetary assistance generally comes only after the small business or individual has capitulated. See Lou Carlozo, McDonald's Ends 'McFight' with Collegiate Charity Concert Promoter, WalletPop (Jul. 12, 2010), http://www.walletpop.com/blog/2010/ 07/12/mcdonalds- ends-mcfight-with-collegiate-charity-concert-promot/ [hereinafter McDonald's Ends 'McFight']. In addition, even where the small-business owner has not agreed to change its trademark, the offer of monetary assistance comes after the bullying has already occurred. See Monster Companies Settle Name Differences, National Public Radio (Jan. 7, 2009).
155. See Letter from Robert W. Payne, Attorney, LaRiviere, Grubman & Payne, to Michael Shkolnik, dated Jun. 7, 2002 (on file with author) ("Monster Cable vigorously protects its exclusive rights and wishes to resolve this matter promptly and in a satisfactory manner. We have otherwise been directed immediately to file suit in federal court to contest your use of 'monster.biz' for trademark dilution and infringement. The complaint is prepared, and we will file it next week if we do not receive an acceptable response from you by [date].").
156. One letter out of over two hundred seventy letters from the ChillingEffects.org database of trademark cease-and-desist letters mentions arbitration as an option. See Letter from Cornell Univ., to Welzie, available at http://www.chillingeffects.org/documenting/notice .cgi? NoticeID=661. Letters from eBay mention actions taken in arbitration at the World Intellectual Property Organization. See Letter from eBay, Inc., to John Salmon (Aug. 27, 2003), available at http://chillingeffects.org/domain/notice.cgi?NoticeID=809
157. Letter from eBay, Inc., to W. Applications (Aug. 26, 2003), available at http://chillingeffects.org/ domain/notice.cgi?NoticeID=812
158. Letter from eBay Legal Dep't, to Automatt Ventures (Jul. 30, 2002), available at http://chillingeffects.org/udrp/notice.cgi? NoticeID=368
159. Letter from eBay, Inc., to Joan Dumas (Jul. 22, 2002), available at http://chillingeffects.org/domain/notice.cgi?NoticeID=394
160. Letter from eBay Legal Dep't, to Valley Trading Post.com (Feb. 19, 2005), available at http: //chillingeffects. org/acpa/notice. cgi?NoticeID = 1686.
161. See Rebecca Callahan, Arbitration v. Litigation: The Right to Appeal and Other Misperceptions Fueling the Preference for a Judicial Forum 7-8 (Bepress, Legal Series, Paper No. 1248, 2006).
162. Matt vs. Monster, supra note 5, at 1:47.
163. A survey of over two hundred seventy cease-and-desist letters in the ChillingEffects.org database reveals that approximately 20 percent of the letters include either a demand for payment of attorney's fees, or claim that attorney's fees will be awarded when the sender wins the litigation. See Chilling Effects, http://chillingeffects.org/index.cgi (last visited Apr. 3, 2011).
164. Although the Lanham Act provides for a recovery of attorney's fees in trademark-infringement cases, such award is only for "exceptional cases." See 15 U.S.C. §1117(a)(2006).
165. Odorizzi v. BloomfieldSch. Dist., 54 Cal. Rptr. 533, 539 (Dist. Ct. App. 2d 1966) (quoting Cal. Civ. Code § 1575 (West 1970)).
166. For example, it appears that only one letter in the ChillingEffects.org database cites to a case and attached a copy. See Letter from eBay Legal Department to Joan Dumas, supra note 127.
167. See, e.g., supra note 127. Approximately 188 letters out of over 270 trademark-related cease-and-desist letters were written by lawyers. See Chilling Effects, supranote 130.
168. See, e.g., Letter from National Football League, supra note 14 (citing to La. State Univ. Bd. of Supervisors v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D. La. 2006), aff'd, 550 F.3d 465 (5th Cir. 2008)
169. Tex. Tech Univ. v. Spiegelberg, 461 F. Supp. 2d 510 (N.D. Tex. 2006))
170. Letter from Church of Scientology, to Tanya Durni, http://www. buffaloscientologyinfo.com (Apr. 1, 2005), available at http://chillingeffects. org/domain/notice.cgi?NoticeID=2060 (citing to eleven cases).
171. For example, Nadeau stated that when he received the cease-and-desist letter from Hansen Beverage Company's lawyer, "I'm just beside myself, you know." See Matt vs. Monster, supra note 5. Lauren Thom of Fleurty Girl described that the letter from the National Football League's lawyer "scared the bejesus out of me." See Melinda Delatte, 'Who Dat' Shirts CAN Be Sold: NFL Clarifies Saints Gear Position, The Huffington Post (Feb. 1, 2010, 8:47 PM), http://www.huffingtonpost.com/ 2010/02/01/who-dat-shirts-can-be- sol-n-445291.html.
172. A significant number of letters demand a response between ten and fifteen days from the date of the letter, with some letters demanding a response in as short as one or two days. See Chilling Effects, supra note 127.
173. See Ridgway, supra note 19, at 1548 ("[R]eady access to a lawyer is a barrier the internet has failed to eliminate.").
174. The Small Business Administration generally defines a small business as any entity with five hundred or fewer employees and annual revenues of under $7 million (although the specific figures may differ based on industry). See Summary of Size Standards by Industry, U.S. Small Business Administration, http://sba.gov/ content/summary-size-standards-industry (last visited Mar. 9, 2011). However, this Article is not proposing a bright-line standard to determine the exact moment when bullying becomes harassment.
175. See Altman Weil, 2010 Chief Legal Officer Survey 18-19 (2010).
176. Some small businesses or individuals may have insurance, which may cover the costs for certain claims, such as advertising. But the decision to purchase insurance is often determined by financial resources.
177. See, e.g., MasterCardInt'lInc. v. Nader 2000Primary Comm. Inc., 70 U.S.P.Q.2d (BNA) 1046 (S.D.N.Y. 2004)
178. Fox News Network LLC v. Penguin Grp. (USA)Inc., 31 Media L. Rep. (BNA) 2254 (S.D.N.Y. 2003).
179. See MasterCard Int'l Inc., 70 U.S.P.Q.2d (BNA) 1046
180. Fox News Network LLC, 31 Media L. Rep. (BNA) 2254.
181. For example, Judge Chin in Fox News Network LLC declared that Fox News was "trying to undermine the First Amendment." Still Frowning, Fox News Drops Franken Suit, Wash. Post, Aug. 26, 2003, at C07
182. see also Fox News Network LLC, 31 Media L. Rep. (BNA) 2254.
183. See, e.g., Richard A. Posner, The Cost of Rights: Implications for Central and Eastern Europe-And for the United States, 32 Tulsa L.J. 1, 2 (1996) ("The enforcement of legal rights consumes real resources, including ⋯ indirect costs to the extent that rights are enforceable against socially productive activities, or impose socially burdensome duties, or protect socially harmful activities.").
184. SeeCOOMBE, supra note 18, at 66 ("Protecting consumers from potential confusion becomes the ruse by which corporations protect themselves from competition ⋯ .").
185. See 1 Herbert Hovenkamp et al., IP and Antitrust: An Analysis of Antitrust Principles Applied to Intellectual Property Law § 1.2 (2d ed. 2010).
186. See Clorox Co. v. Sterling Winthrop, Inc., 117 F.3d 50, 56 (2dCir. 1997).
187. See Hovenkamp et al., supra note 147, § 4.1 ("An important goal of antitrust policy is minimizing the amount of market power in the economy ⋯ .").
188. See id. § 3.5.
189. See Am. Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001)
190. Ramsey, supra note 58, at 1147-48.
191. See McCarthy , supra note 41, § 11:85.
192. See Ronald D. Michman, Edward M. Mazze & Alan J. Greco, Lifestyle Marketing: Reaching the New American Consumer 66-67 (2003) ("Inexperienced consumers will purchase the most familiar brand and therefore brand recognition is desired by manufacturers.")
193. see also James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 276 (7th Cir. 1976).
194. See Letter from National Football League, supra note 14.
195. See Letter from Diane Reed, supra note 1.
196. See Parr, supra note 20, at 248-49
197. Robison, supra note 20. This is especially true where the small business's product is a parody of the trademark bully's product. See, e.g., Louis VuittonMalletierS.A. v. HauteDiggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007).
198. SeeCOOMBE, supranote 18, at 65-66.
199. BOLLIER, supra note 9, at 129
200. see also Desai & Rierson, supra note 33, at 1839. For excellent scholarly treatment of these issues, See generally Ramsey, supra note 58.
201. SeeRidgway, supranote 19, at 1549.
202. See Alex Kozinski, Essay, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 972-73 (1993)
203. Malla Pollack, Your Image Is My Image: When Advertising Dedicates Trademarks to the Public Domain-With an Example from the Trademark Counterfeiting Act of 1984, 14 Cardozo L. Rev. 1391, 1393 (1993). In addition, critical reviews of products provide invaluable purchasing aids to consumers. See Goldman, supranote 19, at 413.
204. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 909 (9th Cir. 2002).
205. See id. at 901.
206. See Dreyfuss, supra note 38, at 397
207. Kozinski, supra note 160, at 961
208. Jessica Litman, Breakfast with Batman: The Public Interest in the Advertising Age, 108 YaleL.J. 1717, 1728 (1999).
209. See Mattel, Inc., 296 F.3d at 900.
210. See Desai & Rierson, supra note 33, at 1839.
211. See 156 Cong. Rec. S349 (daily ed. Jan. 28, 2010) (statement of Sen. Leahy).
212. Trademark Technical and Conforming Amendment Act of 2010, Pub. L. No. 111-146, § 4, 124 Stat. 66, 69-70.
213. See infra Part II.B.1. Some commentators do not restrict their definition of bullying to large corporations. See Hodgson, supra note 100, at 73 ("[B]ully status is not limited to large companies.").
214. See The Social Movements Reader: Cases and Concepts 252 (Jeff Goodwin & James M. Jasper eds., 2d ed. 2009) (describing "repertoires of protest" to include sit-ins, marches, demonstrations, vigils, and petitions)
215. Thomas L. Gais & Jack L. Walker, Jr., Pathways to Influence in American Politics, in Mobilizing Interest Groups in America: Patrons, Professions, and Social Movements 103, 109 (Jack L. Walker, Jr. ed., 1991) [hereinafter Mobilizing Interest Groups] (listing litigation as among eight different tactics to influencing political change).
216. SeeKim Lane Scheppele & Jack L. Walker, Jr., The Litigation Strategies of Interest Groups, in Mobilizing Interest Groups, supra note 170, at 162, 171 ("Organizations need the resources of money, ability to turn control of policy over to lawyers, and a long time-horizon to use the courts. These are crucial resources any organization must have to find the courts attractive as a place to achieve policy goals⋯ . [L]itigation remains one of the least popular forms of advocacy pursued by interest groups.").
217. See Gais & Walker, supra note 170, at 109.
218. This Article is not intended to provide legal advice of any sort. In arguing that certain small businesses and individuals should not litigate trademark-infringement lawsuits, this Article is providing a theoretical opinion of the author and is not recommending, encouraging, or suggesting that any entity or individual forego litigation or not defend itself in a lawsuit without first seeking the advice of competent counsel.
219. See Stephen C. Yeazell, Civil Procedure 265 (7th ed. 2008)
220. see also Kenneth L. Port, Trademark Extortion: The End of Trademark Law, 65 Wash. & Lee L. Rev. 585, 589 (2008).
221. 2007 Survey of Business Owners, U.S. Census Bureau (July 13, 2010), http://factfinder.census.gov/ (follow "Data Census" hyperlink; then follow "Economic Census" hyperlink; then follow "2007 Survey of Business Owners" hyperlink; then select data set "SB0700CSPRE01") .
222. SeeMoutray, supra note 13, at 30.
223. Unlike patent attorneys who are admitted to practice before the U.S. Patent & Trademark Office (PTO), trademark attorneys need no special qualification or admittance in order to prosecute or litigate trademark matters. Therefore, it is difficult to estimate the number of trademark attorneys in the United States; however, there are approximately 2,218 U.S.-based attorneys who are members of the International Trademark Association, the largest trademark organization. See Int'l Trademark ASSOC., Membership Directory (2010) (on file with author).
224. See Julie A. Katz, The Long and Winding Road: Successful Trademark Litigation in the United States, Intellectual Asset Management Magazine, at 44, 45 (Brands in the Boardroom 2009: Key Branding Issues for Senior Executives Supp. 2009).
225. 2007 Survey of Business Owners, supra note 175.
226. SeeMcGeveran, supra note 26, at 58
227. Ridgway, supra note 19, at 1549.
228. Delatte, supra note 136.
229. Income for the average American household fell 4.8 percent between 2000 and 2009. See Conor Dougherty & Sara Murray, Lost Decade for Family Income, Wall St. J., Sept. 17, 2010, http://online.wsj.com/article/ SB10001424052748703440604575495670714069694.htm.
230. See David K. Randall, In Pictures: Five Common Financial Mistakes Small Businesses Make, Forbes, slide 2 (Apr. 30, 2009), http://www.forbes.com/ 2009/04/30/moneybuil der-start-business-personal-finance-starting-slide-2.html.
231. Properly funding a new small business is crucial as the small business will need to draw upon the start-up funds in the beginning days of the business, when it is trying to attract customers.
232. See Randall, supranote 183, at slide 5.
233. See id. at slide 6.
234. See Dougherty & Murray, supra note 182.
235. See Nat'l Payroll Wk., 2010 "Getting Paid in America" Survey Results 1 (2010).
236. See Sharon A. DeVaney & Sophia T. Chiremba, Comparing the Retirement Savings of the Baby Boomers and Other Cohorts, Bureau of Labor Statistics, tbl.3 (Mar. 16, 2005), http://www.bls.gov/opub/cwc/tables/ cm20050114ar01t3.htm.
237. As discussed earlier, in order to mount a successful defense, sufficient monetary resources are needed in order to See the case through to the last appeal.
238. See Ridgway, supra note 19, at 1567 ("Because trademark holders possess, on average, better information about the scope and validity of their rights, they can sometimes successfully bluff a defendant, despite having a weak lawsuit.").
239. For example, eBay's letters to domain-name holders similar to eBay contain the following language, "We have filed several successful federal court actions in the United States against companies and individuals employing the famous eBay trademark in their domain names, as well as more than six proceedings before the United Nation's World Intellectual Property Organization's arbitration panel. eBay prevailed in each case and the domain names at issue were all ordered to be transferred to eBay." See, e.g., Letter from eBay Legal Dep't to Valley Trading Post.com, supra note 127.
240. See supra note 173 and accompanying text.
241. There are various nonprofit entities around the United States devoted to providing legal assistance for intellectual property issues, such as the Volunteer Lawyers for the Arts organizations. See, e.g., Volunteer Lawyers and Accountants for the Arts St. Louis, http://www.vlaa.org (last visited Mar. 11, 2011). In addition, some law schools have established intellectual property clinics that are intended to assist nonprofit organizations. See, e.g., Intellectual Property and Nonprofit Organizations Clinic, Washington University Law, http://law.wustl.edu/ ClinicalEd/pages.aspx?id=6835 (last visited Mar. 13, 2011). However, barriers still exist to receiving legal assistance through these organizations, including the capacity of the organization and whether the small business or individual meets the criteria of the organization.
242. For example, in Rock Art Brewery's dispute with Hansen Beverage Corporation, Nadeau was advised by one attorney to change the trademark. See Matt vs. Monster, supra note 5, at 2:38.
243. SeeDinwoodie, supra note 26, at 124.
244. SeeRidgway, supranote 19, at 1548.
245. SeeDinwoodie, supra note 26, at 142.
246. See Resorts of Pinehurst, Inc. v. Pinehurst Nat'l. Corp., 148 F.3d 417, 422 (4th Cir. 1998) ("The likelihood of confusion is a factual issue dependent on the circumstances of each case.")
247. see also Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1060 (7th Cir. 1995) ("Likelihood of confusion in a trademark case is a factual issue ⋯ .").
248. See McCarthy, supra note 41, § 23:67.
249. Cf. Goldman, supra note 19, at 415-16, 424 ("Assessing consumer confusion about product source is an inherently inexact process.").
250. See McCarthy, supra note 41, § 23:67 (citing the Second, Sixth, and Federal Circuits). More specifically, these courts will review the district court's findings of fact for each likelihood-of-confusion factor under the clearly erroneous standard, but then apply the de novo standard to the weighing of the factors. See Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 391 (2d Cir. 1995) ("We review the district court's treatment of each Polaroid factor under a clearly erroneous standard⋯ . Whether the plaintiff proved a likelihood of confusion is a legal question, and we review the court's weighing of those factors and its ultimate conclusion under a de novo standard.").
251. For example, in 2009 the Second and Sixth Circuit courts of appeals issued decisions in a total of nine cases reviewing district court findings related to trademark infringement. See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009)
252. Sly Magazine, LLC v. Weider Publ'ns L.L.C., 346 Fed. App'x 721 (2d Cir. 2009)
253. Hensley Mfg. v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009)
254. Dessert Beauty, Inc. v. Fox, 329 Fed. App'x 333 (2d Cir. 2009)
255. Zino Davidoff SA v. CVS Corp., 571 F.3d 238 (2d Cir. 2009)
256. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2dCir. 2009)
257. Citizens Banking Corp. v. Citizens Fin. Group, Inc., 320 Fed. App'x 341 (6th Cir. 2009)
258. Kerr Corp. v. Freeman Mfg. & Supply Co., No. 08- 3330, 2009 U.S. App. LEXIS 6342 (6th Cir. Mar. 23, 2009)
259. Rush Indus. v. Garnier LLC, 309 Fed. App'x 431 (2d Cir. 2009). Of these nine cases, three reversed the district courts' opinions. See Wolfe's Borough Coffee, Inc., 588 F.3d at 102
260. Rescuecom Corp., 562 F.3d at 124
261. Kerr Corp., 2009 U.S. App. LEXIS 6342, at *1. While this is a small sample size, it does show a reversal rate of 30 percent.
262. Some large corporations may desire a reputation for being a "bully." See Hodgson, supranote 100, at 76.
263. See Matt vs. Monster, supra note 5, at 2:38 (advice given to Nadeau)
264. Bio: Food Chain Barbie and the Fight for Free Speech, Forsythe Artsurdism, http://creativefreedomdefense.org/bio-foodchain.cfm (last visited Mar. 11, 2011) [hereinafter Bio: Food Chain Barbie] ("A long list of attorneys suggested that I just give up, since I hadn't made any money anyway.").
265. SeeCallahan, supra note 128, at 7.
266. See Matt vs. Monster, supra note 5, at 1:41.
267. See id. at 3:00.
268. Alice Joy, Firm Says Stop Using Hollister Name on Jeans, The Gilroy Dispatch, Sept. 14, 2007, http://www.gilroydispatch.com/printer/article.asp?c= 225171 [hereinafter Joy, Hollister Name] (quoting Stacey Crummett).
269. See Grynberg, supra note 26, at 902 ("Trademark defenses ⋯ enjoy an uneasy status in federal law.").
270. See Dinwoodie, supra note 26, at 117-19
271. McGeveran, supra note 26, at 77-109 (identifying and critiquing five doctrines used to evaluate expressive uses).
272. See Dinwoodie, supra note 26, at 110.
273. See McGeveran, supranote 26, at 62.
274. See, e.g., Dinwoodie, supranote 26, at 111, 131
275. McGeveran, supranote 26, at 110.
276. See McGeveran, supranote 26, at 86.
277. See Dinwoodie, supranote 26, at 141-42.
278. See, e.g., Cal. Civ. Proc. Code § 425.16(e) (West 2004 & Supp. 2011).
279. BosleyMed. Inst., Inc. v. Kremer, 403 F.3d 672, 682 (9th Cir. 2005).
280. See, e.g., Mindys Cosmetics, Inc. v. Dakar, 611 F.3d 590, 594 (9th Cir. 2010) (denying motion)
281. Bosley, 403 F.3d at 674 (denying motion).
282. See McGeveran, supra note 26, at 53-54.
283. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004)
284. see Graeme W. Austin, Tolerating Confusion About Confusion: Trademark Policies and Fair Use, 50 Ariz. L. Rev. 157, 182-89 (2008).
285. See generally Grynberg, supra note 26.
286. See generally Port, supra note 174 (discussing the problem of trademark "extortion").
287. See, e.g., Steve Stecklow, The Scariest Monster of All Sues for Trademark Infringement, Wall St. J., Apr. 4, 2009, http://online.wsj.com/article/ SB123869022704882969.html.
288. See Brett Frischmann & Dan Moylan, The Evolving Common Law Doctrine of Copyright Misuse: A Unified Theory and Its Application to Software, 15 Berkeley Tech. L. J. 865 (2000). But cf. Mark A. Lemley, Comment, The Economic Irrationality of the Patent Misuse Doctrine, 78 Calif. L. Rev. 1599 (1990) (arguing that the patent misuse doctrine is economically irrational and should be abolished)
289. Note, Is the Patent Misuse Doctrine Obsolete?, 110 Harv. L. Rev. 1922 (1997) (examining doubts about the continuing vitality of patent misuse doctrine).
290. See Assessment Techs. of WI, LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7th Cir. 2003)
291. Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 972-77 (4th Cir. 1990)
292. Int'l Motor Contest Ass'n v. Staley, 434 F. Supp. 2d 650, 666 (N.D. Iowa 2006).
293. Assessment Techs., 350 F.3d at 647.
294. See Lasercomb, 911 F.2d at 979 & n.22.
295. See Assessment Techs., 350 F.3d at 647.
296. SeeRidgway, supra note 19, at 1554.
297. See U.S. Jaycees v. Cedar Rapids Jaycees, 794 F.2d 379 (8th Cir. 1986).
298. SeeRidgway, supranote 19, at 1557.
299. For example, a search of the Lexis database shows 26 trademark- infringement cases from 2009 through 2010 contained allegations of "abuse of process" (out of 1,960 cases). In none of the cases did the court find in favor of the party alleging abuse of process. Lexis search conducted on April 4, 2011 (date range: Jan. 1, 2009 to Dec. 29, 2010, Search terms "trademark w/1 infringement," Focus: "abuse of process").
300. See, e.g., Ford Motor Co. v. Obsolete Ford Parts, Inc., 318 F. Supp. 2d 516, 521 (E.D. Mich. 2004)
301. Dunn Computer Corp. v. Loudcloud, Inc., 133 F. Supp. 2d823, 830-31 (E.D. Va. 2001).
302. SeeRidgway, supranote 19, at 1549.
303. See id. at 1569 ("[U]nlike in a full-scale lawsuit, the marginal cost of enforcement-in essence, one Google search and a cease-and-desist letter-is nearly negligible.").
304. See supra Part II. A.
305. See Hodgson, supra note 100, at 76 ("A reputation as a bully can actually be seen as a positive for less socially conscious trademark owners - they can not only potentially monopolize the word as a mark, but also gain fame by becoming infamous.").
306. Alexander Zaitchik, The Village Bully One Voice Under God?, N.Y. Press (Apr. 29, 2003), http://www.nypress.com/print-article-7433-print.html (quoting cease-and-desist letter).
307. To reiterate, this is not intended as legal advice.
308. See Brief of the National Jewish Commission on Law and Public Affairs ("COLPA") and the International Association of Jewish Lawyers and Jurists (American Section) ("IAJLJ") as Amici Curiae Supporting Petitioner, Bryan v. Moore, 528 U.S. 1133 (2000) (No. 99-6723), 1999 U.S. S. Ct. Briefs LEXIS 364, at *3-4, *8.
309. See Sandeep Gopalan, Shame Sanctions and Excessive CEO Pay, 32 Del. J. Corp. L. 757, 759 (2007) (overpaid chief executive officers)
310. Kahan & Posner, supra note 28, at 383 (criminals)
311. Bradley C. Karkkainnen, Information as Environmental Regulation: TRI and Performance Benchmarking, Precursor to a New Paradigm?, 89 Geo. L.J. 257, 296-98 (2001) (environmental polluters)
312. Michael S. Kirsch, Alternative Sanctions and the Federal Tax Law: Symbols, Shaming, and Social Norm Management as a Substitute for Effective Tax Policy, 89 Iowa L. Rev. 863, 865-66 (2004) (tax evaders)
313. David A. Skeel, Jr., Shaming in Corporate Law, 149 U. Pa. L. Rev. 1811, 1812 (2001) (low-performing corporations). (Pubitemid 33656797)
314. See Kahan, supranote 28, at 630-49.
315. See, e.g., Kahan & Posner, supra note 28, at 383-87 (arguing for shaming to be included in the Federal Sentencing Guidelines)
316. Skeel, supra note 242, at 1860-62 (providing a descriptive account of shaming undertaken by private entities, but arguing that shaming can be made less costly with governmental assistance). One of the few instances of an advocate for shaming by private activists is Thomas Friedman. See Thomas L. Friedman, The Lexus and the Olive Tree: Understanding Globalization 207 (2000) (arguing for private activism to 'compel' companies to behave better). There are some commentators who argue against shaming by private activists, citing concerns of "vigilantism" and "lynch justice." See e.g., James Q. Whitman, What Is Wrong with Inflicting Shame Sanctions?, 107 Yale L.J. 1055, 1059, 1085 (1998).
317. See Eric Posner, Law & Social Norms 76 (2000).
318. Kahan & Posner, supra note 28, at 368.
319. See generally Nathaniel Hawthorne, The Scarlet Letter and Other Tales of the Puritans (Harry Levin ed., Houghton Mifflin Co. 1961) (1850).
320. See People v. Hackler, 16 Cal. Rptr. 2d 681, 682 (Ct. App. 1993) (appealing an order requiring defendant to wear a t-shirt that stated "My record plus two six-packs equals four years," on the front, and "I am on felony probation for theft" on the back of the t-shirt).
321. See, e.g, United States v. Gementera, 379 F.3d 596, 598 (9th Cir. 2004).
322. See Skeel, supra note 242, at 1820 ("[A] shaming sanction [is] a public statement made or ordered by an enforcer, directed at the offender, and addressed to the relevant community as a whole.").
323. See Paul Ziel, Eighteenth Century Public Humiliation Penalties in Twenty-First Century America: The "Shameful" Return of "Scarlet Letter" Punishments in U.S. v. Gementera, 19 BYU J. PUB. L. 499, 500 (2005).
324. See Ryan P. Toftoy, Now Playing: Corporate Codes of Conduct in the Global Theater. Is Nike Just Doing It?, 15 ARIZ. J. INT'L & COMP. L. 905, 923-24 (1998).
325. See NAOMI KLEIN, NO LOGO 376-78 (2002) (documenting the losses Nike suffered for its human-rights violations).
326. Dan M. Kahan, What's Really Wrong with Shaming Sanctions, 84 TEX. L. REV. 2075 (2006) [hereinafter Kahan, What's Really Wrong], he does not recant shaming per se, but rather argues that shaming does not convey the same level of expressive quality as imprisonment.
327. See Chad Flanders, Shame and the Meanings of Punishment, 54 CLEV. ST. L. REV. 609, 609 n.* (2006)
328. ("Despite what the title of his article could be taken to imply, Kahan does not repudiate shaming sanctions so much as he despairs of their political feasibility.").
329. See U.S. Trademark Application Serial No. 78,910,647 (filed June 17, 2006).
330. Although the local council and Crummett sent protest letters to the U.S. PTO, see Anthony Ha, City Backs Dispute of 'Hollister' Trademark, HOLLISTER FREE LANCE (Oct. 6, 2007), http://hollisterfreelance.com/printer/article.asp?c= 226838, Abercrombie maintains its position with respect to HOLLISTER.
331. See Hugo Martin, Hollister, Calif., Is at Odds with Abercrombie over Name, L.A. TIMES, Apr. 24, 2009, http://articles.latimes.com/2009/apr/24/ business/fi-hollister24.
332. Crummett, the proprietor of Rag City Blues, purchased the brand in 2006, with her attempted shaming taking place in 2See Doug Buchanan, Hollister, California, Takes Issue with Abercrombie's Trademark, COLUMBUS BUS. FIRST, Oct. 12, 2007, at A4 (citing Crummett's purchase of the brand in 2006). Three news stories appeared highlighting the dispute, and Crummett and her local council people sent protest letters to the U.S. PTO in October 2See id.;
333. Alice Joy, Property of Hollister Co., HOLLISTER FREE LANCE, Sept. 13, 2007, http://www.freelancenews. com/printer/article.asp?c=225082.
334. Although there are academic debates about the efficacy of treating corporate entities akin to individuals, the law has generally done so. As such, while there are merits in the academic debate, this Article follows the law's path in this
335. instance and treats both the entity and individual the same. See, e.g., Citizens United v. Fed. Election Comm'n, 130 S. Ct. 876, 899-900 (2010).
336. See generally LAIRD, supra note 64, at 31; JAMES D. NORRIS, ADVERTISING AND THE TRANSFORMATION OF AMERICAN SOCIETY, 1865-1920, at 12-13 (1990).
337. See Anat Toder-Alon, Frederic F. Brunel & Wendy L. Schneier Siegal, Ritual Behavior and Community Change: Exploring the Social-Psychological Roles of Net Rituals in the Developmental Processes of Online Consumption Communities, in ONLINE CONSUMER PSYCHOLOGY: UNDERSTANDING AND INFLUENCING CONSUMER BEHAVIOR IN THE VIRTUAL WORLD 7, 8 (Curtis P. Haugtvedt, Karen A. Machleit & Richard F. Yalch eds., 2005).
338. (describing Babbit's promotional program as the first use of "premiums" and detailing the various types of premiums, such as sweepstakes and contests)
339. See STEPHAN A. BUTSCHER, CUSTOMER LOYALTY PROGRAMMES AND CLUBS 20-21 (2002) (describing frequent flyer programs and other loyalty programs which began to gain traction in the 1990s).
340. See Toder-Alon, Brunel & Siegal, supra note 277, at 7-8. See generally LON SAFKO, THE SOCIAL MEDIA BIBLE: TACTICS, TOOLS, AND STRATEGIES FOR BUSINESS SUCCESS (2d ed. 2010).
341. See, e.g., Michael Barbaro & Julie Creswell, With a Trademark in Its Pocket, Levi's Turns to Suing Its Rivals, N.Y. TIMES, Jan. 29, 2007, at A1 (describing Levi's trademark-infringement lawsuits as a strategy to regain its competitive edge in the blue jeans market).
342. See, e.g., John Quran, Monster-Maker to Vt. Brewer: No 'Vermonster' Beer, ABC NEWS, Oct. 12, 2009, http://abcnews.go.com/print?id=8810200 (describing Hansen's plans to enter the alcoholic beverage market).
343. See HANSEN BEVERAGE COMPANY, PRODUCTS, http://www.hansens.com/products/ (last visited Mar. 21, 2011).
344. Hansen had filed an application to register a mark for alcohol. See U.S. Trademark Application Serial No. 78,534,122 (filed Dec. 16, 2004) (application for "MONSTER MALT LIQUOR" abandoned July 20, 2009).
345. See Edward Lee, Is Facebook a Friend or Bully?, THE HUFFINGTON POST (Aug. 27, 2010), http://www.huffingtonpost.com/edward-lee/is-facebook-a-friend-or-b- b-696110.html ("[I]f there's one lesson that is true both in trademark and in life: no one likes a bully.").
346. See HOW TO HANDLE BULLIES, Oprah Radio (Jan. 1, 2008), available at http://www.oprah.com/relationships/How-to-Handle-Bullies;
347. The Oprah Show: Bullied to Death: Two Devastated Moms Speak Out (Harpo television broadcast May 6, 2009), available at http://www.oprah.com/showinfo/ Bullied-to-Death-Two-Devastated-Moms-Speak-Out-1.
348. See Rebecca Ford, America's Next Top Model: Turning Bullying into Beauty, REALITY TV MAGAZINE (Sept. 15, 2010, 8:59 AM), http://realitytvmagazine. sheknows.com/2010/09/15/americas-next-top-model-turning-bullying-into-beauty/.
349. See Jennifer Stagg, Major Corporation Threatens Local Cookie Company with Lawsuit, KSL.COM (Aug. 2, 2010, 5:00 PM), http://www.ksl.com/index.php?sid= 11825672.
350. See Steve Karnowski, Pillsbury Batters Dough Girl into Name Change, MSNBC.COM (Aug. 10, 2010, 4:53 PM), http://www.msnbc.msn.com/id/38646774/ns/ business-us-business/.
351. See My Dough Girl vs. Pillsbury Corporation, FACEBOOK, http://www.facebook.com/my. dough. girl.vs.pillsburycorporation.
352. See Jesse Fruhwirth, My Dough Girl in Trademark Trouble with Pillsbury, SALT LAKE CITY WEEKLY.NET (July 6, 2010), http://www.cityweekly.net/utah/print- article-11641-print.html (quoting Tami Cromar, owner of My Dough Girl: "It's impossible for consumers to confuse [my] brand with the Pillsbury brand.");
353. Sergej Karssen, Comment to My Dough Girl vs. Pillsbury Corporation, FACEBOOK (Aug. 20, 2010, 12:35 PM), http://www.facebook.com/my.dough.girl.vs. pillsburycorporation?v=app-2373072738&ref=search#!/my.dough.girl.vs. pillsburycorporation?v=wall&ref=search ("What a load of nonsense. Absolutely nothing makes me think of the PB brand when I see the logo or brand name.");
354. Brett N Kelly Johnson, Comment to Vermonsters and Craft Beer Drinkers Against Monster: Response from Mark Hall, President of Monster Beverage, FACEBOOK (Oct. 17, 2009, 2:03 PM), http://www.facebook.com/topic.php?uid= 171894902802&topic=15684 ("The basis of the lawyers' action was that Vermonster was too close to Monster and could confuse consumers. That's pretty shaky ground to me, but of course I'm not a lawyer either.").
355. Linda de Azevedo, Comment to My Dough Girl vs. Pillsbury Corporation, FACEBOOK (July 13, 2010, 6:29 PM), http://ko-kr.connect.facebook.com/posted.php? id=127153330644835&start=70&hash=07314382cfd3087ed1859b53cf448def.
356. See CHARLES J. FOMBRUN & CEES B.M. VAN RIEL, FAME & FORTUNE: HOW SUCCESSFUL COMPANIES BUILD WINNING REPUTATIONS 2-3 (2004) (explaining that reputations are used by people to decide what to purchase and which businesses to invest in).
357. See DAVID AAKER, MANAGING BRAND EQUITY 52-53 (1991).
358. A Monster Win forRock Art, WCAX.COM (Oct. 21, 2009), http://www.wcax.com/ global/story.asp?s=11362590.
359. See Jason, Comment to Vermonsters and Craft Beer Drinkers Against Monster: Response from Mark Hall, President of Monster Beverage, FACEBOOK (Oct. 17, 2009, 12:42 PM), http://www.facebook.com/topic.php?uid= 171894902802&topic=15684 ("I feel strongly that what you have done so far is wrong and that if something were to happen to Matt and his brewery that I would be very upset with your company. With the talk about this being a way to get into the malt beverage market and the fact that the two are not really similar, I am skeptical to believe your intentions in this are legitimate and ethical.").
360. See Lou Carlozo, Teen's Charity Name Draws the Mclre of McDonald's, WALLETPOP (Jan. 17, 2010, 12:00 PM), http://www.walletpop.com/blog/2010/01/17/ teens-charity-name-draws-the-mcire-of-mcdonalds/[hereinafter Charity Name Draw Mclre].
361. SeeArt: Food Chain Barbie, Supergloss, Edition of 20, TOM FORSYTHE ARTSURDISM, http://creativefreedomdefense.org/Results.cfm?category=12 (last visited Mar. 11, 2011).
362. Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 807 (9th Cir. 2003). In addition, the district court awarded attorney's fees to Forsythe.
363. See Mattel Inc. v. Walking Mountain Prods., No. CV99-8543RSW-RZX, 2004 WL 1454100, at *2 (C.D. Cal. June 21, 2004).
364. See Matt Nadeau, Comment to Vermonsters and Craft Beer Drinkers Against Monster: Matt's Response to Jason and Mark, FACEBOOK, (Oct. 17, 2009, 10:02 PM), http://www.facebook.com/topic.phpMd=171894902802&topic=15684#!/topic.php? uid=171894902802&topic=15694.
365. See DollarDays International, Survey Suggests Small Business Retailers Sell Products That Meet Their Moral Code, BABY SHOP MAGAZINE, http://www.babyshopmagazine.com/fall03/moralcode.htm (last visited Apr. 3, 2011).
366. SeeFleurty Girl Info, FLEURTY GIRL, http://fleurtygirl.net/info.html (last visited Apr. 3, 2011).
367. See Mike Pesca, The Saints or the NFL: Who Owns the Phrase 'Who Dat'?, National Public Radio (Feb. 1, 2010), available at http://www.npr.org/templates/ story/story.php?storyId=123229110.
368. See WALTER ISAACSON, BENJAMIN FRANKLIN: AN AMERICAN LIFE 103, 227, 266 (2003).
369. See generally William Quigley, Catholic Social Thought and the Amorality of Large Corporations: Time to Abolish Corporate Personhood, 5 LOY. J. PUB. INT. L. 109 (2004).
370. Monster Companies Settle Name Differences, National Public Radio (Jan. 7, 2009), available at http://www.npr.org/templates/transcript/transcript.php? storyId=99080053.
371. Many free legal-services organizations use the Federal Poverty Guidelines to determine those individuals who qualify for free or low-cost legal assistance. See, e.g., LEGAL AID SOCIETY OF SAN DIEGO, INC., http://www.lassd.org/(last visited Mar. 22, 2011).
372. See, e.g., What We Do, LEGAL SERVICES OF EASTERN MISSOURI, http://www.lsem.org/WhatWeDo-2.aspx (last visited Feb. 14, 2011).
373. Alan Sayre, Super (Bowl) Fight Heats Up over Who Owns 'Who Dat,' USA TODAY (Jan. 29, 2010, 10:19 PM), http://www.usatoday.com/money/industries/ retail/2010-01-29-who-dat-trademark-N.htm.
374. See COLUMBIA TELECOMMS. CORP., THE IMPACT OF BROADBAND SPEED AND PRICE ON SMALL BUSINESS 32 (2010); U.S. DEPARTMENT OF COMMERCE, EXPLORING THE DIGITAL NATION: HOME BROADBAND INTERNET ADOPTION IN THE UNITED STATES 5 (2010).
375. see also JOEL COMM, TWITTER POWER 2.0: HOW TO DOMINATE YOUR MARKET ONE TWEET AT A TIME, at xv (2010); MARILYN ROSS & SUE COLLIER, THE COMPLETE GUIDE TO SELF-PUBLISHING: EVERYTHING YOU NEED TO KNOW TO WRITE, PUBLISH, PROMOTE, AND SELL YOUR OWN BOOK 398-99 (Scott Francis ed., 5th ed. 2010).
376. The Twitter Glossary, TWITTER, http://support.twitter.com/groups/31- twitter-basics/topics/104-welcome-to-twitter-support/articles/ 166337-the-twitter-glossary#t (last visited Mar. 12, 2011) ("Tweet (verb) Tweet, Tweeting, Tweeted. The act of posting a message, often called a 'Tweet', on Twitter.").
377. See, e.g., Christopher Boudy, Sr., NFL Says 'NoDat' to New Orleans Shop Owner, NEW ORLEANS TECH (Jan. 22, 2010), http://neworleanstech.net/2010/01/nfl- says-nodat-to-new-orleans-shop-owner/.
378. Help Center, FACEBOOK, http://www.facebook.com/#!/help/?page=773 (last visited Mar. 12, 2011) ("'Like' is a way to give positive feedback or connect with things you care about on Facebook.").
379. See SAFKO, supra note 280, at 269 (noting how Twitter is changing the reporting of news events; tweeter from the US Airways Flight 1549 crash conducted an interview on MSNBC).
380. For example, Thom's tweets about her business's battle with the NFL on January 22, 2010 led to local radio interviews on January 23 and January 24, along with articles in local and national newspapers, such as the Times-Picayune and the Wall Street Journal. See Fleurty Girl, TWITTER, http://twitter.com/ FleurtyGirl/(tweets on file with author);
381. Jennifer Levitz, Who Dat Owns 'Who Dat'?Dat's Us, Sez da NFL, WALL ST. J., Jan. 29, 2010, http://online.wsj.com/article/ SB10001424052748703389004575033504283711006.htm;
382. Jaquetta White, NFL Says It Has Exclusive Rights to 'Who Dat,' TIMES-PICAYUNE (Jan. 29, 2010, 12:39 PM), http://www.nola.com/saints/index.ssf/ 2010/01/post-140.html.
383. See supra discussion in Part III.B.4. In addition, shaming may lack the "expressive overdetermination" that Professor Kahan argues is needed in order for a sanction to be successful. Kahan, What's Really Wrong, supra note 262, at 2085-86. Shaming in general may "connote objectionable forms of social stratification and potentially suffocating impositions of communal norms." Id. at 2087.
384. Although the local council and Crummett sent protest letters to the U.S. PTO, see Ha, supranote 272, they are not publicly available.
385. Joy, Property of Hollister Co., supra note The other mention of the dispute appeared in October 2007, when a local newspaper in Columbus, Ohio ran a brief report of the story. See Buchanan, supra note Although the dispute with Abercrombie & Fitch appeared in a short Los Angeles Times article in April 2009, there was no specific mention of Rag City Blues.
386. There may be large corporations that undertake trademark enforcement in a more ethical manner, such as reasonably interpreting its trademark rights and attempting enforcement in a sensitive manner. For example, providing longer time frames for a reply from the target of a cease-and-desist letter. See, e.g., Letter from Jason Love, to Aperio Technologies, (Dec. 2, 2004), available at http://chillingeffects.org/trademark/notice.cgi?NoticeID=1524 (providing sixty days for reply to cease-and-desist letter).
387. Many news stories reporting about trademark disputes between large and small businesses categorize the stories as bullying without necessarily investigating the underlying merits of the case or the manner in which the infringement was alleged. See, e.g., Karnowski, supra note 294 (reporting that General Mills claimed My Dough Girl's trademark diminished the value of the Pillsbury brand with no discussion of the underlying claim); David Ward, David v Goliath Battle as Welsh Jeans Company Tells Levi's to Butt Out, GUARDIAN.CO.UK (May 2, 2003, 2:19 AM), http://www.guardian.co.uk/uk/2003/may/02/wales ("A mighty jeans giant which has covered the world's bottoms in denim is considering kicking the rear end of a tiny clothing firm in west Wales.").
388. For example, The South Butt's website showed a banner: "We're Being Sued!" See Plaintiff's Pre-Hearing Memorandum of Law in Support of Its Motion for a Preliminary Injunction at 2, North Face Apparel Corp. v. Williams Pharmacy, Inc., No. 09-2029-RWS, 2009 WL 5251523, (E.D. Mo. Dec. 30, 2009) [hereinafter Plaintiff's Pre-Hearing Memorandum].
389. See Letter from Donald E. Morris, Attorney, Dozier Internet Law, P.C., to Justin Leonard (Sept. 21, 2007), available at http://pubcit.typepad.com/ clpblog/2007/10/dont-publish-th.html.
390. See Letter from Lavely & Singer, P.C. (Dec. 3 , 2005), available at http://www.thesmokinggun.com/documents/crime/aniston-warns-over-topless- photos#lightbox-popup-1.
391. 17 U.S.C. § 504(c) (2006). However, republication of cease-and-desist letters may qualify as "fair use." See § 107.
392. See Greg Beck, Don't Post This Cease-and-Desist Letter, Or Else, PUBLIC CITIZEN CONSUMER LAW & POLICY BLOG (Oct. 5, 2007, 2:07 PM), http://pubcit.typepad.com/clpblog/2007/10/dont-publish-th.html ("Copyright claims like the one in this letter are becoming a common method to counter that problem by scaring recipients into keeping quiet.
393. It has so far been a successful strategy-DirectBuy's lawyer claims that none of his similar demand letters, until now, have ever been posted online.")
394. See, e.g., Converters Equip. Corp. v. Condes Corp., 80 Wis. 2d 257, 262-63, 258 N.W.2d 712, 715 (1977).
395. See, e.g., Dan Frosch, Venting Online, Consumers Can Land in Court, N.Y. TIMES, June 1, 2010, at A1.
396. U.S. CONST. amend. I.
397. See Lisa P. Ramsey, First Amendment Limitations on Trademark Rights, in 3 INTELLECTUAL PROPERTY AND INFORMATION WEALTH: ISSUES AND PRACTICES IN THE DIGITAL AGE 147, 148 (Peter Yu ed., 2007).
398. See Rebecca Tushnet, Truth and Advertising: The Lanham Act and Commercial Speech Doctrine, in TRADEMARK LAW AND THEORY, supra note 19, at 294 ("Distinguishing between commercial and noncommercial speech creates definitional problems.").
399. See, e.g., N. Y. Times Co. v. Sullivan, 376 U.S. 254 (1964).
400. See Eric Goldman, Keeping C&D Letters Confidential, ERIC GOLDMAN TECHNOLOGY & MARKETING LAW BLOG (Dec. 7, 2005), http://blog.ericgoldman.org/ archives/2005/12/keeping-cd-lett.htm.
401. Professor Goldman doubts that such reform could be done through statutory reform and, as such, proposes that courts create some type of de facto exclusion. Seeid.
402. See Robert A. Sedler, The First Amendment in Litigation: The 'Law of the First Amendment, '48 WASH. & LEE L. REV. 457, 484 (1991).
403. Trade Marks Act, c. 257, § 55 (2000) (Belize); Trade Marks Act, c. 26, § 21 (1994) (Eng. & Wales); Trade Marks Act, No. 47 of 1999, § 135, INDIA CODE (1999), vol. 86; Trademarks Act, ch. 416, § 20 (2001) (Malta); Trade Marks Act, ch. 332, § 35 (1999) (Sing.); cf Ridgway, supra note 19, at 1585-88.
404. L'Oreal (UK) Ltd. v. Johnson & Johnson Ltd., [2000] ETMR 691
405. Cf Kahan, What's Really Wrong, supra note 262, at 2076.
406. In such a situation, the shamer should obtain legal advice regarding such litigation. Shamers should keep in mind that all lawsuits need to be defended until a final decision is issued or a settlement is reached, otherwise courts may enter "default judgments" against the shamers.
407. Press Release, Law Soc'y, Businesses Caught Out by Trademark Law
408. See, e.g., Jean Hughes, Trade Marks: Unjustified Threats, 22 EUR. INTELL. PROP. REV. N-116, N-116-17 (2000).
409. See, e.g., Best Buy Co. Inc. v. Worldwide Sales Corp. Espana S.L., [2010] EWHC 1666, 11 40-43 (Ch).
410. [1998] F.S.R. 21, 25 (Ch).
411. For example, The South Butt's website showed a banner: "We're Being Sued!" Seeid. at 2.
412. See North Face Apparel Corp. v. Williams Pharmacy, Inc., 2010 WL 546921, at *2 (E.D. Mo. Feb. 9, 2010).
413. See Brian Baxter, Tempers Flare in North Face vs. South Butt, AM. LAWYER, Mar. 25 , 2010, http://www.law.com/jsp/article.jsp?id=1202446785206. Although The South Butt's attorney was quoted as describing the lawsuit as a "monumental clusterfuck," this was likely in reference to the unorthodox manner in which the depositions of The South Butt witnesses were taking place and not a reference to The North Face. Id.
414. See My Dough Girl vs. Pillsbury Corporation, Comment to My Dough Girl vs. Pillsbury Corporation, FACEBOOK, (July 8, 2010 12:52 PM), http://www.facebook. com/my.dough.girl.vs.pillsburycorporation?v=wall.