Intellectual Property Law

Chapter 23 Discussion Answers

1. Actress Jennifer Lawrence’s picture has appeared (without her consent) in the
following materials. Indicate whether the use is permissible or likely actionable.

a. An advertisement for lipstick
This violates Ms. Lawrence’s right of publicity. It implies she
has endorsed the lipstick when she has not.

b. A news article about Academy Award winners
This is not actionable because it is protected news commentary
under the First Amendment.

c. An article in US Weekly about an upcoming movie starring Ms. Lawrence
This is not actionable. It is protected news commentary under
the First Amendment.

d. A pictorial in People showing Ms. Lawrence shopping at Target, with the
tagline, “Stars: They’re Just Like Us!”
This is not actionable. It is protected news commentary or
reporting.

e. An ad by Target using the photo from People that states, “Look Who
Loves Target!”
This violates Ms. Lawrence’s right to publicity. It implies she
has endorsed Target when she has not.

2. Macy’s has begun advertising its new perfume with the tagline, “Queen B would
love this.” Is this statement actionable? Discuss.
If an appreciable number of consumers would understand that the
reference to “Queen B” was a reference to Beyonce Knowles, then
Beyonce’s right of publicity has been violated. If most consumers do
not understand that Beyonce has been identified in the ad, then her
right of publicity has not been violated. In sum, so long as an
individual can be identified from the defendant’s unauthorized use,
infringement of the right to publicity has likely occurred.

3. Indicate whether the following statements might constitute false advertising
(assuming there is no reasonable basis to support any of the following claims):

a. “Our cameras are manufactured in the United States.”
This would be false advertising. It is a material statement, it is
literally false, and it would likely influence consumer buying
decisions. It is a false statement about geographic origin,
prohibited by Lanham Act § 43.

b. “Come dine with us and eat the world’s best pizza!”
This is not actionable; it is mere puffing or boasting.

c. “Our motor oil is better than anyone else’s.”
This is not actionable; it is mere subjective and vague puffing
or boasting.

d. “Our motor oil lasts longer than anyone else’s.”
This would be actionable as false advertising. It purports to
make a specific claim (that the motor oil lasts longer than that
of others) and it is literally false. There must be studies to
support such a claim.

e. “The EPA has approved our recycling bins.”
This would be actionable. It is literally false and is a material
misstatement of fact.

f. “We are doctors’ number one choice for pain reliever.”
This claim is actionable as false advertising because it is
literally false. Without test studies or expert opinion to support
such a claim, it is false.

4. ABC has begun marketing its ice cream under the name “Frusen Gladge,” which
is Swedish for “Frozen Delight.” ABC’s packaging is remarkably similar to that
used by Haagen Dazs. Discuss whether ABC is infringing any rights of Haagen
Dazs.
ABC may be infringing the trade dress (the packaging or overall
appearance) of Haagen Dazs’s product. Once it is determined that the
trade dress is protectable (it is inherently distinctive or has acquired
secondary meaning), and it is not functional, then the question is
whether consumers are likely to be confused. If it can be shown that
consumers have been confused or are likely to be confused by the two
ice cream packages, then Haagen Dazs would prevail in an action for
trade dress infringement.

5. XYZ is selling its candles under the mark APPLE. Apple Inc. has complained
about this, but XYZ has responded that there is no likelihood of confusion
between its candles and Apple’s tech-related products. Discuss what theory Apple
might use to compel XYZ to cease using the mark APPLE in connection with its
candles.
Apple Inc. should allege dilution by blurring. The use of APPLE for
candles is likely to dilute or weaken the strength of Apple Inc.’s
famous and registered mark(s). It is not necessary for Apple Inc. to
show actual or likely confusion. The question in dilution by blurring
cases is whether the use by XYZ is likely to whittle away or weaken
the strong association consumers make between the APPLE mark(s)
and Apple’s tech products and services.

6. Jackson Enterprises would like to obtain a registration for its trade dress, which is
a type of packaging for pens. The packaging is much stronger than other types of
packaging and promotes the shelf life of the ink in the pens. Discuss whether
Jackson is likely to obtain a registration for trade dress.
The packaging in this case is functional. It improves the efficiency of
the items stored in the packaging and provides a utilitarian advantage
to the packaging. To allow a functional product or service to be
protected as trade dress would allow a monopoly on a useful feature
or product in perpetuity.

7. Safeway grocery stores have begun labeling their own in-house brand of coffee
with the name DUNKIN’ DONUTS. What type of action might the owner of the
registered trademark DUNKIN’ DONUTS bring?
Safeway is engaging in passing off. Dunkin’ Donuts, the owner of the
registered trademark, can bring an action for trademark
infringement and passing off. Moreover, the action may be criminal
conduct because a counterfeit mark has been used on the coffee.