Excerpted from 6/94 paper by D. Jennings Meincke
The remedies for successful claims of federal trademark infringement and
unfair competition range from injunctions 304 to triple damages with
costs and fees. 305 Additionally, both trademark infringement and unfair
competition have the same remedies. 306 However, courts do not make
punitive damage awards as the Lanham Act is remedial only. 307 Also,
courts will not award damages for Lanham Act violations when the
plaintiff receives awards from other theories of recovery. 308
Section 1116(d) specifies only violations that consist of counterfeit
marks can be seized. 309 The statute excludes situations when the
manufacturer of the item can use the mark. 310 Further, remedies exist
to recover damages caused by wrongful seizures. 311
Courts typically award injunctions in unfair competition cases. 312
However, "the law requires that courts closely tailor injunctions to the
harm that they address. 313 To accomplish this, the court can enjoin and
require affirmative actions. 314
West can also ask for pecuniary awards. However, while courts grant
injunctive relief based on likelihood of confusion, need to show actual
confusion to receive damages. 316 Additionally, if the court finds
willfully infringes rights, then the court has the discretion to award
profits. 317 Willful infringement occurs when the an infringer acts
"wantonly and maliciously and in reckless disregard of [plaintiff's
rights." 318 acts without willful intent to infringe, can only receive
damages, which they need to prove. 319
Plaintiff can get attorney's fees only if it proves the defendant
intentionally infringes its Lanham Act rights. 320 Defendant can only
get attorney's fees if the plaintiff's suit totally lacks merit or is
As for court costs, courts routinely awards them to the prevailing
POTENTIAL OF LANHAM ACT TO PROTECT ELECTRONIC INFORMATION.
The Lanham Act potentially protects electronic property not covered by
copyright laws. Copyright laws protect original works of authorship
fixed in any tangible medium of expression. 322 Certainly many of the
items on the national information infrastructure fall into this
category. However, some items do not receive full copyright protection,
such as blank forms, standard charts, routine displays of data,
financial reports, facts, and simple explanations. 323 Since the Lanham
Act requires no originality, people's electronic goods of this type can
attain protection through the Lanham Act.
For federal protection, a recognizable indication of origin needs to be
attached to the item. Federally registered marks receive protection
along with non- registered marks under the Lanham Act. However, removal
of the mark, either registered or not registered, results in reverse
passing off unfair competition claim.
While the use of reverse passing off claims amount to few cases, the
potential for protecting the rights of the source of the electronic
items lies here. Marks not only function as to identify goods, signify
one source controls goods to a certain quality level, and aid in
advertising the goods, but they also represent the good will the
merchant built up. 324
In electronic medium, marks serve those purposes as seen in Playboy,
Sega v. Maphia, and Classic Font. However, only one of those cases
revolves removing the mark from an electronic item. Playboy holds that
replacing one trademark with another constitutes unfair competition
because people would be confused as to the origin and association of the
computer file. Using section 43(a) in this manner is the key to
protecting electronic items.
For an unfair competition claim someone needs to use any word, term,
name, symbol, device, or combination in interstate commerce which is
likely to cause confusion as to source, sponsorship, or association.
Assuming the interstate commerce element is met, the question becomes
how to prove the likelihood of confusion element when a person removes
the mark off of someone else's electronic product?
A likelihood of confusion should be found as a matter of law when
someone removes a mark from an electronic item. In National Ass'n of
Blue Shield Plans v. United Bankers Life Ins. Co., 325 the court holds
that when intent is proved, the court will follow the alleged
infringer's judgement and find a likelihood of confusion. 326 So, courts
should assume that someone intends to confuse by removing the mark and
in that case find as a matter of law that a likelihood of confusion
exists. So, once the item goes back into interstate commerce, two of the
elements of confusion is met.
The last element of unfair competition violation, the use of any word,
term, name, symbol, device, or combination, can easily be met as well.
If express reverse passing off occurs, the new mark on the item
comprises the last element of the 43(a) claim. If implied reverse
passing off takes place, the problem is not as straight forward. If the
potential section 43(a) violator sends the item though the national
information infrastructure, often an address or phone number of the
sender is attached and that can fulfill the last element. If a situation
occurs when the violator leaves no trace, then the argument would be by
removing the mark, the "use" part of the element is met.
Using the above method to protect electronic items works easily when the
violator only removes the marks. What if the alleged violator changes
the electronic item so that it is not substantially the same item? Roho
holds that people should be able to change the item and not acknowledge
the raw material originator. Also, marketplace competition demands
competitors have the ability to legally copy another's product so long
as no restrictions apply. Should a distinction be made between someone
who copies electronic information using a system command and someone who
copies by viewing the electronic item and manually enters in a new
computer file? This distinction probably could not be enforced. However,
the law could easily place the burden of proof of manual copying on the
alleged violator. Proof of manual copying could be work records and
In conclusion, the Lanham Act could protect electronic items by 1)
placing indications of origin on the items, 2) finding as a matter of
law that mark removal demonstrates intent to confuse, meeting the
likelihood of confusion element of unfair competition, and 3) electronic
items relying on only trademark protection can be copied but the copying
must be manual and the burden of proof that the copying was manual is on
the alleged violator. A problem occurs when a person changes the item
into something new. The new item needs not carry the old mark but
defining what constitutes something "new" creates problems. It will
probably need to be found as a matter of fact in each case.
302 1993 WL 522892 at *11.
303 728 F. Supp. at 243.
304 Injunctive relief
(a) Jurisdiction; service. The several courts vested with jurisdiction
of civil actions arising under this Act [15 U.S.C. Sects. 1051 et seq.]
shall have power to grant injunctions, according to the principles of
equity and upon such terms as the court may deem reasonable, to prevent
the violation of any right of the registrant of a mark registered in the
Patent and Trademark Office or to prevent a violation under section
43(a) [ö 1125(a)].
15 U.S.C. ö1116.
305 Recovery for Violation of Rights
(a) Profits; Damages and Costs; Attorney Fees
When a violation of any right of the registrant of a mark registered in
the Patent and Trademark Office, or a violation under section 43(a) [ö
1125(a)], shall have been established in any civil action arising under
this Act [ö 1051 et seq.], the plaintiff shall be entitled, subject to
the provisions of sections 29 and 32 [ö 1111, 1114], and subject to the
principles of equity, to recover (1) defendant's profits, (2) any
damages sustained by the plaintiff, and (3) the costs of the action. The
court shall assess such profits and damages or cause the same to be
assessed under its direction. In assessing profits the plaintiff shall
be required to prove defendant's sales only; defendant must prove all
elements of cost or deduction claimed. In assessing damages the court
may enter judgment, according to the circumstances of the case, for any
sum above the amount found as actual damages, not exceeding three times
such amount. If the court shall find that the amount of the recovery
based on profits is either inadequate or excessive the court may in its
discretion enter judgment for such sum as the court shall find to be
just, according to the circumstances of the case. Such sum in either of
the above circumstances shall constitute compensation and not a penalty.
The court in exceptional cases may award reasonable attorney fees to the
15 U.S.C. ö1117(a).
306 ö 1117(a).
307 Getty Petroleum Corp. v. Bartco Petroleum Corp., 858 F.2d 103, 113
(2d Cir. 1988).
308 Manufacturers Tech. Inc. v. Cams Inc., 728 F. Supp 75, 85 (D.
Conn.1989) (no double recovery).
309 15 U.S.C. ö 1116(d) (1993).
310 McCarthy, supra note 9, ö 30.16[c].
311 Id. at ö 30.16[i].
312 National Football League v. Wichita Falls Sportswear, 532 F. Supp.
651, 664 (W.D. Wash. 1982).
313 ALPO Pet foods, Inc. v. Ralston Purina Co., 913 F.2d 958, 972
314 McCarthy, supra note 9, ö 30.04.
315 Id. at ö 30.04.
316 PPX Enter., Inc. v. Audiofidelity Enter., 818 F.2d 266, 271 (2d.
317 The George Basch Co. v. Blue Coral Inc., 968 F.2d 1532, 1537 (2d
319 McCarthy, supra note 9, ö 30.27.
320 Id. at ö 30.30[b].
321 Id. at ö 30.31.
322 17 U.S.C. ö 102.
323 L.J. Kutten, Computer Software Protection/Liability/Law/Forms, 2-19
324 McCarthy, supra note 9, ö 3.01.
325 263 F.2d 374 (5th Cir. 1966).
326 263 F.2d at 377.
Meincke is/was a student at Villanova Law School
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