cyckV4

256 FALSE ADVERTISING, DILUTION & ‘CYBERPIRACY’
while a showing of consumer confusion is relevant in determining dilution by blurring,
the absence of confusion “has no probative value” in the dilution analysis).
Accordingly, in light of the foregoing, we remand to the District Court for
consideration of Starbucks’ claim of trademark dilution by blurring under 15 U.S.C.
§ 1125(c)(2)(B).
PROBLEM 9-1
DILUTION OF (BY) ALCOHOL?
[The facts of this, real, situation have been modified for the purposes of the Problem.
The words attributed to the Duke spokesperson are changed from the original for the
purposes of the discussion.]
John Wayne, the legendary actor, was also known
by the nickname The Duke. (His original name was
Marion Robert Morrison.) Apparently “Duke” was
his childhood dog’s name, and local firefighters
used it as a nickname for the boy. John Wayne
Enterprises—owned by his heirs—has sought to
register “Duke” for a variety of goods and services
over the years: including restaurants, celebrity
licensing services and gaming machines. Now they
want to register it for alcoholic beverages, and in
particular, bourbon. Duke University—the venerable
educational institution—strongly objects to
the registration of “Duke” for alcohol, alleging that
it will dilute their famous “Duke” mark:
“Consistent with Duke’s policies, we do not permit
use of confusingly similar marks associated with
unapproved goods or services, of uncertain quality
and/or unregulated by Duke University. We also
seek to prevent our mark from being “tarnished” or
Image from the producers of Duke
bourbon at http://www.dukespirits.com/
“blurred” by its association with goods and services at odds with our educational
mission. As a university, we are deeply aware of the dangers of alcohol, particularly
in the context of a college environment. Consequently we will firmly oppose
registration of this mark. In addition, if Wayne Enterprises persists in attempting to
put the Duke name on alcoholic beverages—of exactly the kind that might appeal to
college students—we will bring a Federal anti-dilution action.”
What sections of the Lanham Act will Duke rely on in attempting to block
registration? Will they succeed? If Wayne Enterprises attempts to market the
bourbon, will Duke succeed in an anti-dilution action? Is the mark famous? Is
there a likelihood of dilution? By blurring or by tarnishment?
3.) “Cybersquatting” and “Cyberpiracy”
1125(d) Cyberpiracy prevention
(1)(A) A person shall be liable in a civil action by the owner of a
mark, including a personal name which is protected as a mark