Red Wings vs Right Wings: Copyright Tarnishment and Other Lessons

by Revision Legal
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Revision Legal

We wrote recently about our outrage at white nationalists modifying and using the Detroit Red Wing’s famous “winged wheel” logo. Our outrage continues and we take a closer look at the potential lawsuit that might be in order. This is also a timely way to consider some other lessons such as no-assets defendants and so-called phantom infringers.

Who are the Defendants and are They Judgment-Proof?

One of the most frustrating aspects of protecting your trademarks (and other intellectual property) is locating the defendants. Here, the infringers are a small group of men who call themselves the “Right Wings.” But, as far as we can tell, there is no organization, corporation, or association to sue. So, who are the named defendants in the lawsuit?

The “who” also matters for pre-lawsuit efforts to defend intellectual property (IP). To whom (and to what addresses) are we sending cease and desist letters?

In this case, we might be able to track down the names of the individuals who were photographed carrying “their” false and fraudulent logo. Facial- and image-recognition software is now commonplace. Given the prevalence of uploading selfies to social-media, it is more probable than not that these men can be identified, each and every one.

This, then, leads to another issue and lesson – possible judgment-proof defendants. It is unlikely that these men, even collectively, have sufficient monetary and other assets to properly recompense the Detroit Red Wings for the damage to their trademark. But — and this is very importantly to the Red Wings — litigation can obtain injunctive relief very quickly.

Outside of this particular context, “phantom infringers” and judgment-proof infringers raise large and important practical issues when trying to defend your trademark (and other IP). For example, how does a business identify an infringer that might be located in one or more foreign countries manufacturing knock-offs and copycat merchandise selling primarily on the internet? This type of infringer often uses a business model premised on the idea of hiding manufacturing location(s) and using shifting and layered domain and trade names. Assets are also purposely funneled away from the manufacturing entities to prevent attachment by creditors. These types of businesses are designed to avoid trademark laws, being tough to locate pre-litigation, tough to serve as defendants, and tough to collect against after the lawsuit is successfully completed.

Trademark Infringement vs. Dilution Claims

As we hinted in our earlier call for the Red Wings to litigate this case to judgment, this might be a better case of trademark dilution rather than trademark infringement.

To make out a claim for trademark infringement, a plaintiff such as the Red Wings must show that the defendant’s use of the plaintiff’s mark (or a confusingly similar mark) causes a likelihood of consumer confusion. As we discussed, the courts use several factors to evaluate the “likelihood of confusion.” Among the factors:

  • Similarity between the marks
  • Similar trade uses (e.g., apparel, food/beverages, etc.)
  • Strength of the senior mark (length of use, recognizability, etc.)
  • Similar geographic use
  • Actual confusion among customers
  • Customer sophistication
  • Intent/bad faith of alleged infringer

Many of these factors weigh in favor of a quick legal victory for our beloved Red Wings. The competing mark is nearly the same, the senior mark is strong and famous and, likely, there is evidence of intent/bad faith. However, the other factors are more problematic. First, it is unclear if the infringing logo is being “used in commerce.” For example, there is no indication of use of the infringing mark on t-shirts or ballcaps or other merchandise. Second, the trade and geographic uses are different. Third, and probably most importantly, while the offending mark clearly creates customer outrage, it probably does not create customer confusion.

The case for trademark dilution is much stronger. To sue for trademark dilution, a plaintiff must show that the plaintiff’s trademark is famous and that the defendant’s use of the same mark (or a confusingly similar mark) causes a likelihood of dilution by blurring or tarnishing the senior mark. Blurring weakens the distinctiveness of the senior mark raising the possibility, as the courts have said, that the mark will lose its ability to serve as a unique identifier of the trademark holder’s product or service.

Tarnishment harms the reputation of a trademark by linking, in the minds of the consumers, the famous mark with something unpleasant. In tarnishment cases, these are the elements of the claim:

  • The plaintiff owns a famous mark that is distinctive;
  • The defendant is using a mark in commerce that is the same or similar to the famous mark;
  • That the similarity between the famous and the diluting mark gives rise to an association that is likely to harm the reputation of the famous mark.

See Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). Courts have found tarnishment when a mark is placed in the context of sexual activity, obscenity, or illegal activity. Tarnishment most often arises where a trademark is linked to products of shoddy quality.

A cause of action for trademark dilution can be brought “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 U.S.C. § 1125(c)(1).

Normally, an injunction against further use of the infringing mark is the only remedy. However, if this was a publicity stunt, that might be evidence of willful misuse. In cases willful trademark dilution, available damages are the same as for infringement cases including monetary damages, possible statutory damages, and possible attorneys’ fees.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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