Lawsuit: A machine which you go into as a pig and come out of as a sausage. ~Ambrose Bierce, The Devil's Dictionary
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by D. Jennings Meincke
A. Background on Federal Unfair Competition.
Unfair competition, both the common law tort and the federal statute, attempts to enforce a certain level of "honest practices in industrial or commercial matters." 127 The courts continually enlarge the definition of unfair competition, often based on their conceptions of fairness and honesty in business dealings. 128 Obviously, past decisions lend guidance in defining unfair competition situations, but the concepts of fairness are fluid. 129
An injured party brings Federal unfair competition claims under section 43(a) of the Lanham Act. 130 Unlike trademark infringement claims under the Lanham Act, unfair competition claims do not require any federally registered marks. As a result, section 43(a) involve all federal trademark infringement claims and extend further to cover other unfair business practices. 131 Section 43(a) claims break down into two categories: 132 likelihood of confusion and false advertising. 133
B. Likelihood of Confusion.
As in federal trademark infringement analysis, a likelihood of confusion exists when there is confusion as to the source, sponsorship, or association between goods or services. 134 The elements to prove a section 43(a) claim based on likelihood of confusion are:
1. One uses any word, term, name, symbol, device, or combination,
2. in interstate commerce,
3. which is likely to cause confusion as to source, sponsorship, or association. 135
The elements for a section 43(a) claim of likelihood of confusion are comparable to trademark infringement except one does not need a federally registered trademark.
C. False Advertising.
A section 43(a) claim of false advertising requires a showing that a party made misrepresentations in the course of business. The elements an alleged injured party must show to sustain a section 43(a) claim based on false advertising are:
1. a party uses any word, term, name, symbol, device, or combination,
2. in interstate commerce,
3. to misrepresent the nature, characteristics, qualities or geographic origin of its or another's goods or services. 136
Typically, actions that fall under a claim of false advertising are the copying of advertising, misrepresentations in advertising (literal and by omission), and advertised goods differ from delivered goods. 137
E. Reverse Passing Off.
In reverse passing off, another section 43(a) action, a party misrepresents the source of its product by not informing the public who created it. 143 The seller misrepresents the source by removing or obliterating the original trademark. 144 To explain, the distinction between "passing off" and "reverse passing off" is in "passing off" a seller associates another party's mark with a good or service and with "reverse passing off" the seller removes another's mark prior to sale.
Reverse passing off falls into two categories, express reverse passing off and implied reverse passing off. 145 In express reverse passing off, the infringer replaces the original mark with his mark and sells the product. In implied reverse passing off, the infringer only removes the mark prior to selling the product, leaving the product unbranded.
The infringed party suffers damages by implied and express reversed passing off. An infringer thwarts the purpose of a mark by its removal. A trademark serves three purposes: it designates origin, it develops goodwill by allowing customers to associate a level of quality with a product from a specific origin, and it serves as advertising. 146 By removing the mark, the infringer prevents the ultimate customers from knowing the true source of the product, creating a means for deceiving the customer. 147 The deception can occur if the infringer replaces the unbranded products with products of a lower quality. 148 Additionally, the removal of the mark denies the infringed party from further developing any advertising value of the mark. 149 Replacing the mark, express reverse passing off, further aggravates the situation. 150
However, the damage from reverse passing off does not receive universal recognition. The mark served its main purpose, identification of origin, when the "infringing" party purchases the product. 151 The "infringer" compensates the original producer for the goodwill built into the item by its purchase. Additionally, the "infringing" party buys title to the product and should utilize the product as it wishes. 152
Regardless of the reality of the damage, actions need to be analyzed in terms of both implied and express reverse passing off. The courts view of what constitutes appropriate business conduct and what constitutes unfair competition shifts with time. 153 In Learned Hands words: "There is no part of the law which is more plastic than unfair competition, and what was not recognized an actionable wrong twenty-five years ago may have become one today." 154
1. The Exhaustion Doctrine.
Under the Exhaustion Doctrine, a distributor has a right to market a branded item in an unchanged state. 155 Additionally, a distributor may advertise she sells a product associated with a well-known mark. 156 However, distributor must clearly state the extent of it's connection to the public that influences purchasing decisions to avoid confusion of origin. 157
Courts permit a distributor to indicate that a product comprises copyrighted material and who owns the copyright. 160 But, a mark owner can prevent a distributor from branding an unbranded product in some cases. 161 However, courts generally allow the brand use when the product maintains substance and quality and the distributor indicates its identity. 162
2. Implied Reverse Passing Off.
Typically, courts and commentators view implied reverse passing off as when a party removes a mark from a product and sells the product. 163
Further, a court should allow the variation on an implied reverse passing off claim as it is consistent with statutory interpretation of the section 43(a). The courts recognize the implied reverse passing off claim under section 43(a). 164 Under section 43(a), the elements of proof of a violation do not require the involvement of a federally registered mark. 165 Enforcement of the statute prevents confusion as to source or representation of fact. 166 If removing a federally registered indication of source is a section 43(a) violation to prevent confusion, then removing any other indication of source violates section 43(a) also.
One of the first cases dealing with an implied reverse passing off claim found removing a trademark from a good did not violate section 43(a). In PIC Design Corp. v. Sterling Precision Corp., 167 a competitor removed PIC's trademark from a gear, which the competitor then resold. 168 Even though the court condemned the action as a "violation of good business ethics," it found no section 43(a) violation. 169 The court looked towards the pertinent section of the Lanham Act to find that only 'the application of 'a false designation of origin,' not the removal of a true designation" actionable. 170
However, recent changes in section 43(a) broaden what acts violate the Lanham Act. 171 In 1988, Congress passed The Trademark Revision Act of 1988, 172 substantially rewriting section 43(a). 173 With the changes, section 43(a) became the "premier federal vehicle for asserting infringement of unregistered trademarks, service marks, trade names, and trade dress. . ." 174 Additionally, the Congress codified the case law by granting the same remedies to unregistered mark owners that infringed registered mark owners receive. 175
In The Trademark Revision Act of 1988, Congress removes from section 43(a) the language the PIC court uses to deny finding an implied reverse passing off violation. 176 In PIC, the court focused on the "application" language to deny a section 43(a) violation by removal. 177 Again, in 1986, the United States District Court, Southern District New York reaffirmed this interpretation. 178 However, with the removal of "affix, apply, or annex" from section 43(a), courts could decide cases with facts similar to PIC violate section 43(a).
In 1981, the Ninth Circuit recognized implied reverse passing off as a cause of action under section 43(a). 179 In Smith v. Montoro, a case involving an actor not receiving credit for a movie role, the court states in dicta that section 43(a) supports a claim for implied reverse passing off. 180 Since then, a number of other courts recognize a section 43(a) claim for appropriating someone's product without recognition. 181 However, at least one court opines that section 43(a) contains no language requiring express attribution. 182
In Marling et al. v. Ellison, an author of a cookbook did not give credit to the work of another author. 183 Similarly,in Dodd v. Fort Smith Special Sch. Dist. No. 100, the school district did not acknowledge the contributions of a teacher and a journalism class to a history book. 184 Additionally, in R.H. Donnelley Corp., v. Illinois Bell Tel., Illinois Bell Telephone did not report that Donnelley also contributed to producing a business yellow page directory. 185 All of these cases involve a unique product, either of literary or a compilation of advertising. West Does not provide a unique service in that Lexis competes against them. Additionally, the search product, a court opinion, lacks uniqueness and is in the public domain. 186
3. Express Reverse Passing Off.
Express reverse passing off occurs when a party "removes or obliterates the original trademark without permission and rebrands the item. 188 As with implied reverse passing off, courts find express reverse passing off violates section 43(a).
Even though the accepted definition involves removing trademarks, removing an indication of origin falls under section 43(a) as well. The broad language of section 43(a) does not restrict violations to federally registered marks. Instead, section 43(a) refers to confusion caused by "any false designation of origin." 189 The West copyright notice on the cases acts as an indication of origin. 190
Courts find express reverse passing off actionable under a number of circumstances. 191 However, the courts do not apply consistent guidelines on what acts violate section 43(a). 192 Perhaps the subjective nature of the analysis, or differences in evaluation of appropriate business behavior account for inconsistences in decisions. Or perhaps the courts generally categorize a set of actions as express reverse passing off but still look towards the section 43(a) element of confusion to determine infringement. 193 An analysis of the express reverse passing off cases may shed light on the direction of the courts.
In PIC Design Corp. v. Sterling Precision Corp., 194 the defendant removes the plaintiff's mark from a gear and resells it. 195 The defendant, however, ships the gear in a "Sterling" box. 196 The court holds that Sterling's actions do not violate section 43(a). 197 The court states that "[t]o hold otherwise would be to forbid any repackaging, resale, or reshipment of any item not manufactured by the shipper but sold under his name. 198 However, the court states that if Sterling places its own mark on the gear and sold the item, a section 43(a) action might exist. 199
The PIC court does no confusion analysis to reach its decision either. 201 However, the 1964 section 43(a) statute does not include any test of likelihood of confusion. 202 However, the current version of section 43(a) does have a likelihood of confusion test, so the PIC court result could possibly be different.
Additionally, while not a commodity item, a number of companies sold precision gears. 203 If PIC had been the sole producer and Sterling's actions lead people to believe that more than one producer existed for the precision gears, perhaps the Court would have found a section 43(a) violation. In that situation, the court might have seen PIC as more "likely to be damaged" 204 and found the section 43(a) claim.
In another Second Circuit case, Commodore Import Corp. v. Hiraoka & Co., Inc., 205 the court finds no reverse passing off when the defendant purchases replicas of the plaintiff's goods and applies marks to them. 206 The plaintiff orders some radios with it's trademark, but proceeds to cancel the order. 207 The defendant purchases the radios, removes substantially all of the plaintiff's marks, and sells the radios. 208 The court holds if the defendant could "order exact replicas of the plaintiff's radios, then selling radios originally ordered by plaintiff, which plaintiff eventually declined to purchase, under defendant's labels is not unlawful." 209
Commodore points out that courts give deference to handling publicly available goods. Since exact radios could be ordered, then the defendants could change the indication of origin. 210
In Arrow United Indus. v. Hugh Richards, Inc., 211 another Second Circuit case, Arrow purchases dampers from Richards and resells them with slight modifications. 212 Arrow also replaces the Richards mark on the damper with its own mark. 213 The court finds Arrow's reputation as a unique damper-maker would suffer if Richards continues substituting labels and reselling the dampers. 214 Between affixing the marks and modifying the damper, the court found "sufficient serious questions going to the merits" of Arrow's section 43(a) claim to make them a fair ground to litigation. 215
In Rosenfeld v. W.B. Saunders, the court held that the removal of a name from a treatise did not automatically create a section 43(a) claim. 217 In Rosenfeld, the defendants removes the name of the original author from a medical treatise revision. 218 However, the defendants clearly acknowledge the original author in the preface along with the modifications of the treatise. 219 Additionally, the plaintiff tells the defendant to work on the treatise revision. 220 Because of the preface, the plaintiff failed to establish a likelihood of confusion, resulting in no preliminary injunction on a section 43(a) claim. 221
The Rosenfeld court follows the traditional disclaimer rule in finding no likelihood of confusion existed. 222 The court reviews the Second Circuit's holdings and found that it "repeatedly recognize[s] that an effective disclaimer can significantly reduce the potential for consumer confusion caused by an infringing product if it clearly designates the source of the product." 223
In a 1994 case, Waldman Publ. Corp. v. Landoll, Inc., New York District Court found a reverse passing off does not require removal of a mark. 225 The plaintiff publishes classic stories for children, as does the defendant. 226 The court granted a preliminary injunction based on section 43(a) for reverse passing off because Landoll must have copied Waldman's books since the "structure, texts and illustrations of the competing adaptations" are too striking for coincidence. 227 Though some courts require an original product be tampered with for reverse passing off, this court found that a too narrow interpretation of section 43(a). 228
The court found the defendant copied the plaintiff's children's books and it is "inherent" in the defendant's conduct that purchasers will mistakenly believe that the defendant creates the books. 229 Due to the inherent result of the defendant's acts, the court deems an analysis for confusion not necessary. 230
Moving to a 1990, Fifth Circuit case, in Roho v. Marquis 231 , the court vacates a section 43(a) injunction for an explicit reverse passing off claim. The injunction prohibits removing the plaintiff's trademark from seat cushions, assembling the cushions to make a mattress, and selling the mattress under another mark. 232 The plaintiff manufactures and sells patented wheelchair seat cushions and also assembles the cushions into a mattresses. 233 The defendant's mattresses, assembled from the plaintiff's cushions, are virtually indistinguishable from the plaintiff's mattresses. 234 However, the court compares the cushions to defendant's mattresses 235 and find the defendant do more than a superficial modification of the cushions in making the mattresses. 236 Since the defendant creates a new product, it can remove the plaintiff's mark from the cushions and place it's own mark on the final product. 237
However, the Roho court not only reviews the section 43(a) claim regarding the seat cushions but a section 43(a) reverse passing off claim based on copying the plaintiff's mattresses as well. 238 The court states the defendant maintains a right to copy Roho's unpatented mattress because it "is in the public domain and may be made and sold by whoever chooses." 239 The court focuses on the fact that Roho made the mattress and not relabel a Roho mattress. The court finds this is not reverse passing off. 240 The court also states that some unfairness occurs because the defendant uses a patented product to parallel an unpatented product, but the competition serves the public interest. 241
The Roho case turns on the holdings that 1) the defendant creates a new product and can remove the component parts' marks and 2) it serves the public interest to promote competition by allowing a defendant to copy a product in the public domain. 242
Moving on to the Seventh Circuit, in Web Printing Controls Co. v. Oxy- Dry Corp., 245 the defendant obliterates, hides or otherwise confuses 246 the plaintiff's mark on the plaintiff's printing machinery. 247 Web and Oxy-Dry enters into an agreement that Oxy-Dry would sell Web's equipment with Web's mark. 248 Oxy-Dry breaches the contract and Web sues. 249 However, the court does not consider the contract breach in determining the unfair competition claim. 250 The court finds a violation of section 43(a) because "(1) Oxy-Dry's material misbranding of WPC's products, (2) Oxy-Dry's introduction of WPC's products into interstate commerce, and (3) the likelihood that consumers will be confused by Oxy-Dry's material misbranding." 251
In a 1994 Seventh Circuit case, Classic Font Corp. v. Fontbank, Inc., 256 the court holds that a marketer of software violates section 43(a) when it excludes identification of the product's originator. 257 In Classic Font, the defendant becomes the sole marketer and distributer of plaintiff's software font package. 258 The defendant uses its trademark and name on the packaging 259 and the software code 260 without indicating the plaintiff creates the program. The court finds these actions likely cause customer confusion as to origin and grants a preliminary injunction. 261
Classic Font illustrates the broadness of section 43(a) violations. Even though the plaintiff categorizes the defendant's actions as reverse passing off, 262 this is not the case. Traditional reverse passing off requires a mark to be removed. 263 The defendant never removes a mark, it only did not acknowledge the source of the software. 264 Instead of analyzing reverse passing off, the court analyzes strictly for the broad unfair competition claim. The court does not consider the contract/copyright issues in the section 43(a) violation analysis, it just looks at the elements of a section 43(a) violation: confusion, false designation of origin, and use in commerce. 265
Numerous litigants file reverse passing off claims in the Ninth Circuit. In Smith v. Montoro, a movie producer leaving off an actors name from the film credits violates section 43(a) for implied reverse passing off. 266 Later, the court in Litchfield v. Spielberg requires at least substantial similarity in products for a section 43(a) reserve passing off violation. 267 Four years after Litchfield, the Ninth Circuit in Lamonthe v. Atlantic Recording Corp. restricts reverse passing off to bodily appropriation, which includes leaving a co- author's name off of a song. 268
In 1990, the Ninth Circuit starts looking towards section 43(a) language for guidance on reverse passing off claims. In Shaw v. Lindheim, a television pilot writer believes a television executive took an idea for a program. 269 The court states even with substantially similarity, a section 43(a) reverse passing off claim does not exist without bodily appropriation. 270 Further, the court does not want to "expand the scope of the Lanham Act to cases in which the Federal Copyright Act provides an adequate remedy. 271 However, the court also states it observes section 43(a)'s purpose of preventing individuals from misleading the public because the likelihood of confusion between the television pilots is minimal. 272 Additionally, the "likelihood of confusion" test is consistent with the current language of section 43(a). 273
In 1993, the Ninth Circuit retains the requirement of bodily appropriation for a reverse passing off claim under section 43(a). 274 In Summit Mach. Tool Mfg. v. Victor CNC Systems, the defendant orders lathes from the manufacturer of the plaintiff's lathes, applies it's label to the lathes, and sells them. 275 Since the defendant does not remove and replace any marks from the lathes, no bodily appropriation occurs. 276 The court opines that without bodily appropriation, the section 43(a) claim must fail. 277
However, in Sega v. Maphia, a United States district court in the Ninth Circuit does not require a bodily appropriation for a section 43(a) claim. 278 In the case, the defendant stores on the bulletin board Sega software game files with Sega's trademarks on its file sections and file descriptors, and on programs. 279 The court finds that when users download software, confusion inevitably results. 280 The court states the defendant's actions constitute trademark infringement. 281 The court also determines that the programs are substantially similar to Sega's games, not a bodily appropriation. 282 Even without a finding of bodily appropriation, the court finds a section 43(a) violation because the public is likely to be deceived by the similarity of the marks. 283
By not requiring a bodily appropriation for section 43(a) infringement claim, the Sega v. Maphia court is more in line with the language of the statute than the traditional Ninth Circuit appropriation requirement. For a reverse passing off claim under the section 43(a), the Ninth required bodily appropriation take place at least for cases heard up to 1993. 284 Even though the Sega v. Maphia opinion does not mention reverse passing off, 285 this opinion should be viewed as a departure from the interpretation that bodily appropriation is required for a section 43(a) claim. The language of section 43(a) does not require bodily appropriation, only actions or indications used in commerce that are likely to confuse people as to origin of a product. 286
An Eleventh Circuit federal district court in Playboy Enterprises, Inc. v. Frena, 287 finds a bulletin board operator with images from Playboy violates trademark law and section 43(a). 288 Frena, a computer bulletin board owner, distributes unauthorized computer images of copyrighted Playboy photographs. 289 Frena uses the terms "PLAYBOY" and "PLAYMATE" for the file descriptors for the images. 290 The court finds Frena's use of those terms would likely cause customers of Frena to believe that Playboy either sponsored, endorsed or approved of the use of the photographs. 291 The court states that falsely suggesting affiliation constitutes a section 43(a) violation. 292 Further, Frena replaces Playboys' trademark on the images with his own trademark, constituting express reverse passing off, a section 43(a) violation. 293 The court states Frena would have a defense to the express reverse passing off if he converts the images into something different. 294 But, Frena only replacing the trademark does not change the image into a new product. 295
4. Altering the File: Converting into a New Product.
A number of courts state a section 43(a) reverse passing off violation
does not exist when the defendant converts the plaintiff's product into
a something new. In Playboy, the court states no reverse passing off
exists "when a defendant modifies a product to such an extent that the
defendant converts it into something different." 297 The defendants in
Playboy only "stripped" Playboy's product of its original identity and
did not convert the image into something new. 298 In Roho, the court
finds the issue as whether the defendant's efforts "created a new
product to which he could apply his own label." 299 The Roho court
compares the product before and after the defendant's efforts to
determine if the efforts creates a new product. 300 The Ninth Circuit
determines a reverse passing off claim occurs when "substantial
similarity" exists between the defendant's product and the plaintiff's
127 McCarthy, supra note 9, 1.03.
128 Id. at 1.04.
129 Some examples of unfair competition:
"infringement of trademarks and service marks; dilution of good will in trademarks; use of confusingly similar corporate, business and professional names; use of confusingly similar titles of literary works on other literary property, and on commercial goods; the appropriation of distinctive literary and entertainer characterizations; simulation of container or product configuration and of trade dress and packaging; infringement of the right of publicity; misappropriation of valuable business values; "bait and switch" selling tactics; false representations and false advertising; "palming off" goods by unauthorized substitution of one brand for the brand ordered; theft of trade secrets; filing a groundless lawsuit or administrative challenge as an aggressive competitive weapon; sending cease and desist letters charging patent infringement before a patent has been granted; an unreasonable rejection of goods shipped under contract; [and] physically obstructing entrance to a competitor;s place of business and harassing its customers." -- Id. at 1.05.
130 False designations of Origin and False Descriptions Forbidden
(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which --
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin or his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. -- 15 U.S.C. 1125.
131 No. 93-489-CIV-J-20, 1993 WL 522892 at *11.
132 Common law unfair competition also has a category of misappropriation. The International News Service v. Associated Press, 248 U.S. 215 (1918), decision initiated the concept of misappropriation. In I.N.S., Associated Press took current news stories from International News about the World War I in Europe, rewrote the stories and published the stories as Associated Press stories. Id. The Court found that International News had a quasi-property right against competitors in terms of current news stories and A.P. misappropriated that property right. Id. at 243.
However, Justice Brandeis, in his dissent, objected to the policy of granting exclusive rights to an idea lacking congressionally granted rights. Id. at 258.
133 Charles E. McKenney, Federal Unfair Competition: Lanham Act 43(a), 2.04 (1993).
134 Id. at 2.04.
135 15 U.S.C. 1125(a).
136 15 U.S.C. 1125(a).
137 McKenney, supra note 133, 6.
138 No. 93-489-CIV-J-20, 1993 WL 522892 at *11.
139 McCarthy, supra note 9, 23.01.
140 William M. Borchard, Reverse Passing Off-Commercial Robbery or Permissible Competition?, 67 Trademark Reporter 1, 1 (1977).
145 Id. at 2.
146 Id. at 16. See, L.H. Rittenberg III, Roho, Inc. v. Marquis: A Conservative Interpretation of Reverse Palming Off, 65 Tul. L. Rev. 1755, 1763 (1991).
147 648 F.2d at 607.
Trademarks lower consumer search costs and foster quality control rather than create social waste and consumer deception. William M. Landes and Richard A. Posner, Trademark Law: An Economic Perspective, 30 J.L. & Econ 265, 269 (1987).
148 Borchard, supra note 140, 16. 149 Id. 150 Id. at 17-18. 151 Callmann, supra note 4, 21.18. 152 Id.
153 Ely-Norris Safe Co. v. Mosler Safe Co., 7 F.2d 603 (2d Cir. 1925), rev'd on other grounds, 273 U.S. 132 (1927).
154 Id. at 604.
155 Original Appalachian Earthwork v. Grenada Elec. Inc., 816 F.2d 68, 76 (2d Cir. 1987).
156 750 F.2d at 910.
157 Electronic Data & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 716 (Fed Cir. 1992).
158 Copyright, contract law, and state and common laws concerning trade.
159 750 F.2d at 911.
160 However, the distributor needs to state that is it not associated with the copyright owner (if that is the case) to avoid an unfair competition claim. C.M. Paula Co. v. Logan, 355 F.Supp. 189, 192-93 (N.D.Tex. 1973).
161 733 F.Supp. 40 (if a real question as to alteration and change in quality exists, a distributor cannot indicate origin of the product).
162 Henry v. Chloride, Inc., 809 F.2d 1334 (8th Cir. 1987) (permissible to indicate name of manufacturer on unbranded batteries when distributor is clearly indicated on batteries also).
163 Callmann, supra note 4, 21.18.
164 Summit Mach. Tool Mfg. v. Victor CNC Systems, 7 F.3d 1434, 1443 (9th Cir. 1993) (Ferguson, J., concurring; quoting LaMonthe v. Altantic Recording Corp., 847 F.2d 1403, 1406 (9th Cir. 1988)); Smith v. Monotoro, 648 F.2d 602, 604 (9th Cir. 1981).
165 "Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact..." -- 15 U.S.C. 1125(a).
166 15 U.S.C. 1125(a).
167 231 F.Supp. 106 (S.D.N.Y 1964).
168 Id. at 114-15.
169 Id. at 115.
170 Id. at 115.
False Designations of Origin and False Descriptions Forbidden
(a) Any person who shall affix, apply, or annex or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or description or representation cause or procure the same to be transported or used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation. -- 15 U.S.C. 1125(a)(1963).
171 McCarthy, supra note 9, 5.05.
172 The Trademark Revision Act of 1988, Pub L. 100-667, 102 Stat. 3935 (1988).
173 McCarthy, supra note 9, 5.05.
176 231 F.Supp. at 115.
178 CCS Communication Control v. Law Enforcement, 628 F.Supp. 1457, 1460 (S.D.N.Y. 1986) ("Indeed, the courts of this district have held that the receipt of an item, manufactured by another producer, the removal of its identifying letters and its resale is not a violation of the Lanham Trademark Act because the it 'makes actionable the application of "a false designation of origin" not the removal of a true designation.'" quoting PIC at 115.").
179 In Smith v. Montoro, the court stated that a "section 43(a) claim may be based on economic practices or conduct 'economically equivalent' to palming off. Such practices would include 'reverse passing off,' which occurs when a person removes or obliterates the original trademark, without authorization, before reselling goods produced by someone else. Reverse passing off is accomplished "expressly" when the wrongdoer removes the name or trademark on another party's product and sells that product under a name chosen by the wrongdoer. 'Implied' reverse passing off occurs when the wrongdoer simply removes or otherwise obliterates the name of the manufacturer or source and sells the product in an unbranded state." Smith v. Montoro, 648 F.2d 602, 605 (9th Cir. 1981) (cites omitted).
180 648 F.2d at 605.
181 Marling et al. v. Ellison, 218 U.S.P.Q.2d (BNA) 702, 714 (S.D.Fla. 1982) (nonrecognition of copyrighted material in a cookbook); R.H. Donnelley Corp., v. Illinois Bell Tel., 595 F.Supp. 1202, 1206 (N.D. Ill. 1984) (nonrecognition of joint publishing of business telephone directory); Dodd v. Fort Smith Special Sch. Dist. No. 100, 666 F.Supp. 1278, 1284-85 (W.D.Ark. 1987) (nonrecognition of authors of non- copyrighted work).
182 Morita v. Omni Publications Intern., Ltd., 741 F.Supp. 1107, 1114 (S.D.N.Y. 1990) (if one creator of the work receives credit, then all must receive credit).
183 218 U.S.P.Q.2d (BNA) at 714.
184 666 F.Supp. at 1284-85.
185 595 F.Supp. at 1206.
186 Subject Matter of Copyright: United States Government Works. Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise. 17 U.S.C. 105 (1993).
187 231 F.Supp. at 115.
188 McCarthy, supra note 9, 25.01[b].
189 15 U.S.C. 1125(a)(1).
190 355 F.Supp. at 192-93.
191 Callmann, supra note 4, 21.18.
192 Shaw v. Lindheim, 919 F.2d 1353 (9th Cir. 1990) (need substantial similarity for express reverse passing off); 7 F.3d 1434 (bodily appropriation required for section 43(a) claim); Waldman Publ. Corp. v. Landoll, Inc., No. 94 Civ. 2022 (CSH), 1994 U.S. Dist. LEXIS 4493 (D.C.S.D.N.Y. 1994) (narrow construction limiting section 43(a) reverse passing off claims to bodily appropriation is inconsistent with Lanham Act's broad remedial purpose).
193 15 U.S.C. 1125(a).
194 231 F.Supp. 106 (S.D.N.Y. 1964).
195 Id. at 115.
202 See note 44.
203 31 F.Supp. at 108.
204 15 U.S.C. 1125(a) (1963).
205 422 F.Supp. 628 (S.D.N.Y. 1976).
206 Id. at 632.
207 Id. at 629-30.
209 Id. at 631.
210 Id. at 631.
211 678 F.2d 410 (2d Cir. 1982).
212 Id. at 412.
214 Id. at 414-15.
215 Id. at 415 (appeals from the entry of a preliminary injunction).
216 "The district court found that the Arrow-Foil damper, on the market since 1964, was well known throughout the industry, and that no other United States company made a damper like it." Id. at 414-15.
217 728 F.Supp. 236 (S.D.N.Y. 1990).
218 Id. at 240 (the plaintiff is the estate of the deceased author).
219 Id. at 243-44.
220 Id. at 241-42.
221 Id. at 243.
222 Id. at 243.
223 Id. at 243.
224 Id. at 244.
225 No. 94 Civ. 2022 (CSH), 1994 U.S. Dist. LEXIS 4493 (S.D.N.Y. 1994).
226 Id. at *2.
227 Id. at *10.
228 "But reverse passing off would not be established, in counsel's view, if Landoll took the Waldman text and illustrations and had them reprinted, even without any changes, since" reverse passing off is when you physically take the other guy's product and put it in your package." That narrow construction is inconsistent with the Lanham Act's broad remedial purpose, and contrary to the weight of authority, in this Court and elsewhere, defining and condemning reverse passing off as a form of false designation of origin. The Landoll books falsely fail to designate the Waldman books as the origin of the adaptations Landoll is selling in its own name. Such conduct is actionable under section 43(a). Id. at *16 (footnote deleted).
229 Id. at *19.
230 Id. at *18.
231 902 F.2d 356 (5th Cir. 1990).
232 Id. at 357.
233 Id. (the seat cushions provide prevention and treatment for bed sores).
234 Id. at 357 (however, the defendant's mattress does include a unique feature - it permits increased manual adjustment along the longitudinal axis).
235 The trial court, Roho, Inc. v. Marquis, 717 F.Supp. 1172 (E.D. La. 1989), compared the mattresses, not the cushion to the mattresses. The appellate court found this misdirected and the proper comparison is between the product purchased (the cushion) and the product the defendant sells (the mattress). 902 F.2d at 360.
236 Id. at 360 (court found that different consumer groups purchase the cushions compared to the mattresses, making the products commercially distinct as well)
237 Id. at 361.
238 Id. at 361.
239 Id. at 360-61 (quoting Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 231 (1964)).
240 Id. at 361.
241 Id. at 361.
242 Id. at 360-61.
243 Id. at 360.
244 Id. at 361.
245 906 F.2d 1202 (7th Cir. 1990).
246 Id. at 1203.
247 Id. at 1206.
248 Id. at 1203.
249 Id. at 1203.
250 Id. at 1204.
251 Id. at 1204.
252 678 F.2d at 414-15.
253 902 F.2d at 360.
254 728 F. Supp. at 243.
255 Id. at 1203.
256 No. 97 C 607, 1994 U.S. Dist. Lexis 4647 (N.D. Ill. 1994).
257 Id. at *4.
258 Id. at *1.
259 Id. at *1.
260 Id. at *3.
261 Id. at *7.
262 Id. at *3.
263 McCarthy, supra note 9, 25.01[b], [d].
264 No. 97 C607, 1994 U.S. Dist. Lexis 4647 at *1.
265 Id. at *3-4.
266 648 F.2d 602.
267 736 F.2d 1352, 1358 (9th Cir 1984).
268 847 F.2d 1403, 1406 (9th Cir. 1988); see 919 F.2d at 1364.
269 919 F.2d 1353.
270 Id. at 1364.
271 Id. at 1364-65.
272 Id. at 1364.
273 15 U.S.C. 1125(a) (1993). Note: the court used the pre-Trademark Law Revision Act of 1998 43(a) in it's opinion. 919 F.2d at 1364.
274 7 F.2d 1434.
275 Id. at 1436.
276 Id. at 1438.
277 Id. at 1438.
278 No. C 93-4262 CW, 1994 WL 132215.
279 Id. at *8.
280 Id. at *8.
281 Id. at *8.
282 Id. at *3.
283 Id. at *8.
284 7 F.3d at 1438.
285 The facts do not imply that Maphia strips indications of origin from files and places it's own on the software.
286 15 U.S.C. 1125(a).
287 No. 93-489-CIV-J-20, 1993 WL 522892.
288 Id. at *11.
289 Id. at *1.
290 Id. at *7.
291 Id. at *9.
292 Id. at *10 (and a trademark infringement as well).
293 Id. at *10-11.
294 Id. at *11.
295 Id. at *11.
296 728 F.Supp. at 243.
297 1993 WL 522892 at *11.
298 Id. at *11.
299 902 F.2d at 361.
300 Id. (the court found that attaching seat cushions together to make a mattress creates a new product).
301 919 F.2d at 1364.
excerpted from a 6/94 paper by D. Jennings Meincke. Mr Meincke is/was a student at Villanova Law School -- dmeincke@lawlab_2.law.vill.edu
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