In today’s highly digitized world, copyright infringement actions, among others, are often brought against alleged infringers using information culled from Internet service provider addresses. While fair use defenses may exist against such suits, particularly when one is doing a music mash up, a preliminary question is whether the initial source evidence is accurate.
There exist technologies wherein users can mask themselves behind other users’ Internet service provider addresses. In this way, one can be located in Timbuktu, for example, and use an Internet service provider address of a user in the North Pole. By doing such masking, some users seek to avoid infringement lawsuits by using the address of another user, in essence leaving them with the hot infringement potato.
In prosecuting civil actions for unlawful downloads of Microsoft software, for example, it becomes imperative to understand such masking methods, and their limits. Prima facie evidence of the source of the infringement, while good for the initial stages of litigation, will evaporate upon further investigation. In some cases, a case brought without sufficient evidence of the source can, upon written documentary notice that the user wasn’t responsible for the download, such as via browser history evidence, lead to a motion for sanctions against plaintiff’s counsel for bringing a frivolous case.
Even with such evidence as to source, due attention needs to be paid to the transformative nature of the use. In digital music mash ups, for example, a sample from Mr. Bob Dylan recording can be modified, and blended into a new piece, so that the old version becomes impossible to recognize. In this case, the defendant likely has a bona fide fair use defense even when the attribution of the source is correct. Thus, in prosecuting a copyright infringement action, proper steps need to be made at the outset so that a sustainable case can be made.
Recently, the WSJ reported on the trademark dilution lawsuit filed by Plano, Texas, based Dr. Pepper Snapple Group (“Goliath”) against Dublin, Texas, based Dr. Pepper (“David”) in Dr. Pepper v. Dr. Pepper. David started using its DR. PEPPER mark in 1891, whereas Goliath registered its DR. PEPPER mark in or about 1905. (David started using DUBLIN DR. PEPPER in the 1990s.) Because Goliath registered first, it has priority over David, who is now selling outside of Dublin. But that doesn’t mean that David is is diluting the distinctive character of Goliath’s mark.
Unlike most other countries, the first party (“senior user”) to file a trademark with the United States Patent and Trademark Office has priority rights over another party (“junior user”) that started using the mark first. But the senior user’s rights are not unlimited. The junior user who first started using the mark in, say, Dublin, Texas, is usually entitled to keep using the mark in its original geographic and product market. To the extent that the junior user expands and does business in channels where the senior mark is used, and the senior mark is famous/distinctive like the NIKE and GUCCI marks, then the senior user could sue the junior user for dilution under federal and state law.
While these principles apply to the dispute between David and Goliath, it is highly unlikely that David’s use will dilute the distinctive character of Goliath’s mark. David has sales of only $7 million a year. This pales in comparison to the $5.6 billion in sales by Goliath. Indeed, David accounts for less than 1% of DR. PEPPER branded sales in the United States. Plus, David is the shining star in the economically downtrodden Dublin, and accounts for 80,000 visitors a year to the small town. Nonetheless, Goliath argues that David’s internet and phone sales across state lines are diluting Goliath’s brand. However, ninety-nine percent of the people in the United States, including myself, wouldn’t even had known about David if it weren’t for the WSJ article. It seems that Goliath’s extensive resources would be better spent improving product quality and service, not attempting to squash an inconsequential David that is vital to a struggling local Texas economy.