ASTM v. PublicResource.org: Trademark

American Society for Testing and Materials v.
Public.Resource.Org, Inc., No. 17-7035 (D.C. Cir. Jul. 17, 2018)
Trademark: This was where the district court went very, very
wrong—I consider the copyright issues difficult though I have a preferred
outcome; the trademark issues should not have been.
ASTM has registrations for ASTM word marks and stylized ASTM
logos, which they place on the cover pages of their technical standards. The
first page of a standard introduces the name of the work by depicting the “ASTM
International” logo and placing it next to the text.  Each subsequent page of the work includes a
header that again displays the ASTM logo and places it next to text indicating
a short title.

PRO copied these, which ASTM alleged constituted trademark infringement.  The district court found that PRO’s
disclaimers didn’t work because they “do not mention [PRO’s] creation of the
reproductions, [the SDOs’] lack of association or authorization, or that they
are even reproductions or transcriptions.”  Thus, consumers would be confused about
whether these were authentic copies of ASTM’s works, even though PRO “did not
undertake the same quality control procedures,” which, in turn, would harm
ASTM’s brand identity and goodwill.
Although Dastar was
itself about the creation of an unauthorized derivative work, the court of
appeals said that Dastar might well
preclude a claim based on reproduction of identical copies of the standards,
but that allegations of creation of unfaithful copies “through scanning and
re-typing, with resultant errors and differences,” didn’t fall within Dastar. 
The reason was that consumers who downloaded copies from PRO’s website
might attribute the digital files, and their errors, to ASTM, risking confusion
about “the tangible product sold in the marketplace.” Thus, the court of
appeals reasoned, “post-Dastar cases
where courts have found trademark claims foreclosed involved instances of
virtually identical copies,” which is descriptively untrue as well as failing
to account for the facts of Dastar.  [The court’s flawed distinction does highlight
the difficulty Dastar poses when the copying is of material that (allegedly) has secondary meaning—it’s notable that what’s missing in the identical copy situation,
in the court’s reasoning, is not the confusion,
which could well be unabated; it’s just the harm
to ASTM’s goodwill from the confusion. 
And in an alternate scenario where the defendant was selling copies, there could well be substitutionary harm, as
there could well have been in Dastar itself,
since some consumers will not be like my son and will buy only one series about
WWII campaigns in Europe.  If we let
plaintiffs plead around Dastar by
alleging confusion over the source of the copies, then Dastar becomes a dead letter.  The better solution would be to say that when the alleged confusion stems from the content itself, error-filled or otherwise, Dastar is triggered.]
The question then was the relevant likelihood of confusion
test, which is usually the multifactor test. However, nominative fair use accommodates
situations where it would be “virtually impossible to refer to a particular
product for purposes of comparison, criticism, point of reference or any other
such purpose without using the mark.” The district court declined to consider
nominative fair use because it had already found that consumer confusion was
likely; this was error.
There is a robust split about how to evaluate nominative
fair use—as a substitute for the usual confusion test, an affirmative defense,
or [ugh] as add-on factors—but the panel didn’t make a decision today for the
DC Circuit. “Where, as here, there is a claim of nominative fair use, the
likelihood of confusion analysis remains incomplete without at least some
discussion of these factors.”  Given that
PRO can reproduce some of the standards under copyright fair use, “it is hard
to see how PRO could fulfill that goal without identifying the standard by its
name—the very name also used in the incorporating law.”  And as for whether only so much was used as
reasonably necessary, “it may well be that PRO overstepped when it reproduced
both ASTM’s logo and its word marks but, as it told the district court, it is
not wedded to using the logo.”  So this
might point to a narrower remedy. 
And as to whether the user suggested sponsorship or
endorsement, PRO’s disclaimers “may well fail to adequately eliminate the possibility
a consumer would assume sponsorship or endorsement by ASTM, but that hardly
means that no disclaimer could cure that risk.” 
[Of course, case after case in the 9th Circuit (and some
elsewhere) has held that disclaimers aren’t required; the question under
nominative fair use is whether the defendant has done anything else affirmatively, other than use the mark, to suggest sponsorship.  I also have some words I could say about the
DC Circuit’s attitude towards disclaimers generally, but I shall resist.]  PRO had already modified the disclaimers to
disclose that it’s the one doing the scanning, that errors are its own, and
that it wasn’t affiliated with any organizations. “[E]ven if the district court
ultimately concludes that the record supports an infringement finding, it
should consider whether its previous grant of an injunction barring all
unauthorized use is still warranted or whether it ‘may order defendants to
modify their use of the mark so that all three factors are satisfied’ and a narrower
remedy would suffice.”

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