Volume 5 | Number 2
Volume 5 | Number 2 (Spring 2005)
MISAPPROPRIATION OF GOODWILL
5 Wake Forest Intell. Prop. L.J. 89
Is goodwill worthy of its own intellectual property protection? A trademark is no longer merely a symbol of a particular product or its goodwill. Manufacturers have embraced the “brand leveraging” phenomenon, increasingly using advertising and promotional techniques to effectively develop an association between a trademarked brand and a particular desirable status or image. This highly valuable and marketable association has enabled “brand goodwill” to achieve independent property status.
In order to protect this property right in “brand goodwill,” a cause of action for misappropriation of goodwill is, as this Article advocates, both necessary and feasible. Misappropriation of goodwill occurs when an unauthorized manufacturer uses a product feature so as to benefit from the status or social image associations that a brand owner has developed at little or no cost and without confusing consumers as to the source of the goods involved. The special nature of “misappropriating” goods places such goods outside the traditional realm of intellectual property law. By denying legal protection for goodwill against unauthorized appropriations, we are stopping short of an all-encompassing scheme of trademark protection.
INTERNET TRADEMARK INFRINGEMENT:
A TALE OF TWO INITIAL INTEREST CONFUSION DOCTRINES
5 Wake Forest Intell. Prop. L.J. 121
The Internet has been the subject of trademark infringement litigation for over five years. Courts have ruled on cases involving various types of Internet advertising, including metatags, pop-up ads, banner ads, and keyword advertising. Still, no clear rule, or even a set of factors, has emerged to consistently define trademark infringement on the Internet. The courts’ primary difficulty in applying the Lanham Act to Internet advertising is the initial interest confusion doctrine. Originally designed in non-Internet context, the doctrine is not applied consistently to the Internet. In fact, application of the doctrine to the Internet results in an ambiguity, forcing courts to choose between two interpretations. This conflict continues to the present day, as evidenced by two recent decisions, each adopting a different rule. This paper traces the origin of the ambiguity to the first case that applied initial interest confusion to Internet advertising. The paper also surveys court decisions that have adopted either one of the two conflicting views. The paper concludes with an analysis of each rule under trademark and economic policies to determine which is more appropriate.
DRESSING DOWN TRADE DRESS:
A RETURN TO BASICS FOR THE DISTINCTIVENESS REQUIREMENT
Derek Fincham and Kenneth Menzel
5 Wake Forest Intell. Prop. L.J. 147
This article examines how courts have analyzed protection of a product’s “look and feel” in recent years. To insure competitive fairness, trade dress protection should value a product’s distinctive features. The current framework, however, has proven confusing and unpredictable. Recent trends are the equivalent of a poorly struck drive landing in six inches of rough far off the fairway. We should safely chip back onto the fairway and turn to a clear standard for trade dress, predictable for business owners, which asks: whether consumers identify this product based on features claimed as trade dress. For example, will prospective purchasers of a shiny new titanium driver assume a gray metallic finish and black “V” on top indicate the club came from CALLAWAY? For any savvy golfer it would, and the distinctiveness inquiry must firmly rest upon this kind of likely response. This simpler approach would protect consumers and insure predictability.