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452 TRADEMARKLAWPassing Off
Passing off occurs when a defendant attempts to “pass
off” its product as if it were the mark owner’s product. For
example, affixing a Dell nameplate to computers actually
made in someone’s basement would constitute passing off.Contributory Passing Off
Contributory passing off occurs when a defendant induces
a retailer to pass off a product. For example, bribing a
computer store to sell computers with a fake Dell name-
plate would be contributory passing off.Reverse Passing Off
Reverse passing off takes place when someone tries to
market someone else’s product as their own. If a computer
store purchased Dell computers, replaced the nameplate
with its own store brand nameplate, and attempted to sell
the computers, it would have engaged in reverse passing
off.Misappropriation
Misappropriation, a privacy-related tort, is traditionally
defined as using the name or likeness of someone for an
unauthorized purpose, such as claiming a commercial en-
dorsement by publishing someone’s image (or even that
of a look-alike impersonator) in an advertisement. In the
trademark context, using a mark without authorization
can violate federal and state law prohibitions on certain
unfair trade practices, including the unauthorized use of
marks in inappropriate ways.Parody and Fair Use
Aside from challenging the validity of a trademark claim
or attacking the elements of the infringement claim, de-
fendants in trademark infringement or dilution cases can
also claim two affirmative defenses: parody and fair use.Parody
Certain uses of a trademark for purposes of humor, satire,
or social commentary may be permissible if they are not
closely tied to commercial use. The theory underlying
the protection of parody is that artistic and social com-
mentary are valuable contributions to the society, there-
fore some deference to the First Amendment’s protection
of these types of speech is in order, even when balance
against the detriment to a trademark owner. The protec-
tions vary, however. For example, in the highly amusing
case ofHormel Foods Corp. v. Jim Henson Productions
(1996), the use of a piglike character named “Spa’am” in a
Muppet movie was found not to violate Hormel’s rights in
the trademark “SPAM.” InCoca-Cola Co. v. Gemini Rising,
Inc.(1972), however, the printing of posters with a styl-
ized slogan and logo reading “Enjoy Cocaine” were found
to violate the rights of Coca-Cola in the stylized slogan
and logo “Enjoy Coca-Cola.”Fair Use
Fair use occurs when the public benefit of allowing the
use is perceived to override any perceived harm to the
trademark owner. For example, in the caseZatarains, Inc.
v. Oak Grove Smokehouse, Inc.(1983), the defendant’s use
of “fish fry” to describe a batter coating for fish was not aninfringement of the plaintiff’s mark “Fish-Fri.” The court
held that fair use prevents a trademark owner from mo-
nopolizing a descriptive word or phrase to the exclusion
of other parties that seek merely to describe their goods
accurately. The defense of fair use is only available, how-
ever, when the mark at issue is descriptive, and then only
where the descriptive term is used descriptively. Federal
trademark statute also contains a right to fair use limited
to usage in comparative advertising.POLICING TRADEMARK ON
THE INTERNET
Along with the tremendous growth in the usage of the In-
ternet for both commercial and personal use, there has
been a similar expansion in the number of trademark-
related disputes involving the Internet. In a later section,
I discuss the complex legal issues arising from trade-
mark disputes over Internet domain names. First, how-
ever, there are a number of trademark issues that arise
just from the very nature of the Internet as a facilitator of
ubiquitous information sharing and access.
Perhaps the most important reason behind the growing
amount of trademark-related litigation is that uncovering
instances of trademark violations can be as simple as typ-
ing your trademark into an Internet search engine. Just
a decade ago, a trademark owner in Maine might have
no idea that his trademark might be in use by someone
in Oregon. With the ability to search the Internet, trade-
mark owners are quickly able to perform searches that
might have been impossible—or just impossibly costly—
a few years ago.
The ability to discover trademark infringement so eas-
ily, both intentional and unintentional, has catapulted
trademark law into one of the most active areas of liti-
gation in the Internet arena. The nature of trademark law
itself has also added to the litigation explosion. As noted
earlier, failure to police a mark properly can result in it
becoming generic, and thus unprotected. Therefore, the
same ease with which a trademark owner might uncover
infringement may require that a trademark owner keep
policing the Internet routinely and bring enforcement ac-
tions: If an infringement is known—or could be discov-
ered through basic due diligence—and goes unchallenged,
the trademark owner could lose control of its mark.
The requirement of constant policing of trademarks
has, however, caused the unfortunate side effect of a grow-
ing number of heavy-handed actions against inexperi-
enced Web users, and still more enforcement actions that
are brought in cases in which a finding of infringement
or dilution is highly unlikely. In many of these cases, well-
intentioned individuals have been bullied by corporations
over trademarks appearing on personal Web pages. In
some cases that have received significant media atten-
tion, sites created by fans of rock groups, automobiles,
and movie stars have been threatened by the very entities
that the sites were set up by their creators to honor.Meta Tags
In recent years, several disputes have arisen over the use
of trademarks inmeta tagson Internet Web pages. Web