Vincent Doré is a JD/MBA Candidate at Osgoode Hall Law School and Schulich School of Business

Facebook, whose 500 million users make it the world’s largest social network, is engaged in several intellectual property disputes. While the company has, at times, adopted more defensive stances (see, eg, here and here), it has now started to play some offense. Seeking to protect both the “face” and “book” portions of its name, it is pursuing trade-mark actions against a number of small start-ups.

Teachbook has stated its intention to challenge Facebook’s trade-mark infringement suit. Yet Placebook has cited a lack of resources as its rationale for avoiding a legal confrontation. It elected to change its name to “TripTrace,” despite believing it might have had a better shot at winning a suit than Teachbook.

Read the rest of this entry »

Posted in Domain Names, Internet, Trademarks
Comments: 0

Vincent Doré is a JD/MBA Candidate at Osgoode Hall Law School and Schulich School of Business.

Any billion-dollar lawsuit is bound to be a highly-charged event, especially when one of the parties makes an American icon, the Barbie doll. But Barbie is not the protagonist here. Instead, we turn our focus to the fashion doll industry’s latest darling, MGA Entertainment’s “Bratz” dolls (Mattel, Inc. v. MGA Entertainment, Inc.). MGA appealed to the Ninth Circuit Court of Appeals following a decision by the District Court of Central California to impose an injunction on MGA. The injunction would prevent any further use of the “Bratz” trademark by MGA–which the Court found belonged to Mattel since the idea arose in the mind of a Mattel designer while he was still under contract there. On appeal, the language of the designer’s contract of employment was found to preclude such a District Court finding without the question first being put to a jury.

Read the rest of this entry »

Posted in Commercialization, Copyright, Infringement, Originality
Comments: 0

Vincent Doré is a JD/MBA candidate at Osgoode Hall Law School and Schulich School of Business.

In a recent trademark dilution case, Ninth Circuit Chief Judge Alex Kozinski wrote an eloquent opinion that clearly and explicitly delineates where ordinary use ends and dilution begins. The question in this recent Ninth Circuit case (Visa Int’l Serv. Assoc v. JSL Corp.) is whether the mark eVisa, created by JSL Corp., dilutes the “Visa” mark of the international credit card conglomerate by blurring the latter’s association with the word. In the Chief Judge’s own words, the case considers “the application of anti-dilution law to trademarks that are also common English words.”

Read the rest of this entry »

Posted in Famous Marks, IP, Trademarks
Comments: 0

Vincent Doré is a JD/MBA Candidate at Osgoode Hall Law School and Schulich School of Business.

Professors Mark A. Lemley and Mark P. McKenna have identified an area of American trademark law that has, in their opinion, received insufficient attention: the “free-rider” argument. This argument contends that trademark owners should be protected from parties that use the mark to make money in unrelated markets, effectively precluding the owner from capturing those markets. In their paper, “Owning Mark(et)s,” Lemley and McKenna examine the “free-rider” argument in the context of U.S. trademark jurisprudence, and find that several cases have been decided on the basis of this argument alone (or under market preemption arguments), and remedies have been awarded even when there is no harm done to either the consumer or the trademark owner. 

Read the rest of this entry »

Posted in Trademarks
Comments: 0