Trade Mark Infringement by FedEx - Coursework Example

Order 196785 Topic: international business Questions SpudEx, Inc. has been sued by FedEx for trade mark infringement under the Lanham Act. Shady McDodgy is convinced that he can defend against the lawsuit by claiming that the trademark he copied is not “famous”, and that since the senior user of any trademark must be “famous” to be protected, SprudEx is a “top-notch, high-class outfit” it doesn’t dilute or tarnish any other trademarks. Please write a two-part memo that addresses: A) the prospects for using McDodgy’s suggestion regarding famousness, dilution and/or tarnishment of a trademark as a defense; and B) the best defense(s) for Shady McDodgy in this lawsuit. MEMORANDUM OF QUESTION 1 (ONE) INTRODUCTION A trademark is infringed when, without the owners’ consent, another party uses a substantially similar mark in connection with the advertisement or sale of goods or service, and this is likely to cause confusion, mistake, or deception regarding their origin. A trademark owner who wins an infringement suit can obtain an injunction against uses of the mark that are likely to cause confusion. In certain circumstance, the owner can also obtain money damage for provable injury resulting from the infringement and for profits realized by the defendant from the sale of infringing product or service. BACKGROUND FACTS The shop, SpeedEX, was doing a brisk business packing and shipping items for its customers. McDodgy remembered thinking to himself: “I want a piece of that action!” to that end, on his first day as an Agelino, McDodgy rented commercial space on Redondo Beach, and set up shop copying the SpeedEX logo exactly, except for one slight difference: the two “e” ‘s in SpeedEX were changed to one “u”. He promptly incorporated the business and registered its mark, using it on his letterhead, email, business cards, and of course, a sign for the shop. McDodgy’s new business, SpudEx, Inc. claimed to provide delicious, hot French fries in 3 minutes or less, or else they were free, and used the slogan: “SpudEx: FastFreies, or FreeFries”/ McDodgy figured that since SpudEx was an entirely different business than SpeedEx, its copying of the logo was not infringing on any trademarks. He also felt secure that since he was operation all the way across town form SpeedEx in Redondo Beach, he would be sage form a law suit. STANDARD OF REVIEW From the fact, we got the following matters related to the suit. From the defendant side those issues are very important to defend the McDodgy and his new company SpudEx. (a) SpeedEX was doing a brisk business packing and shipping items for its customers; (b) Whether the concept of the business originated from the SpeedEX business or another business; (c) Whether McDodgy’s SpudEx’s operating business is similar or not; (d) McDodgy’s new business, SpudEx, Inc. was hot French fries; (e) SpudEx was an entirely different business than SpeedEx, (f) Then, its copying of the logo from the SpeedEX with some modification; (g) Whether the Logo and Name of the McDodgy’s new business, SpudEx, Inc was harmful for the SpeedEX’s reputation or not. There are above 7 issues are related to provision of the Lanham Act and the Dilution of Trade Marks. The Lanham Act, which establishes federal protection for certain marks, defines as any word, name, symbol, device, or any combination of these. In certain limited situation however, federal trade mark protection has been extended to cover colors, pictures, label and package, design, slogan, sound, arrangement of numbers and/or letters, and shapes of goods or their containers. The Lanham Act distinguishes four kinds of marks. Trademarks are used to identify distinguish goods. LEGAL ARGUMENT ON DILUTION, TURNISHMENT AND FAMOUSNESS Dilution is a type of infringement of a famous trademark in which the defendants use, while not causing a likelihood of confusion, tarnishes the image or blurs the distinctiveness of the plaintiffs mark (Chilling Effects). In this case, SpeedEx could also claim that SpudEx is diluting its trademark. Then the following the elements must be considered: Whether is SpeedEx’s mark famous or not? SpeedEX, was doing a brisk business packing and shipping items for its customers. However, packing and shipping items’s business achieved large recognition among the common consumers, so famousness is possible. Further, we know that the mark is well-known enough that SpudEx thinks it’s worth referencing in its nationwide advertising. Whether is SpeedEx’s mark Distinctive or not? Yes, either because the mark is fanciful/suggestive or because it has achieved the requisite secondary meaning. Likelihood of dilution? There is any blurring (“impairs distinctiveness”) because SpudEx’s use refers to SpeedEX, no new definition is being created. Also, I doubt there is any tarnishment (“harms reputation”) if SpudEx’s President & CEO Mr. McDodgy tells the truth. So SpeedEX may have a tough time establishing this element. Even if SpeedEX establishes a prima facie case of dilution, SpudEx can claim a defense, including: Different Commercial use: McDodgy’s new business, SpudEx, Inc. claimed to provide delicious, hot French fries in 3 minutes or less, or else they were free, and used the slogan: “SpudEx: FastFreies, or FreeFries”/ McDodgy figured that since SpudEx was an entirely different business than SpeedEx, its copying of the logo was not infringing on any trademarks. I find that, while the business is clearly distinguishable, there are sufficiently strong dissimilarities to create the possibilities that some consumers might not believe that the two company’ business emanated from same source. Fair use: Fair use, including comparative packing and shipping business. SpudEx isn’t really comparing itself with SpeedEx, but arguably the comparative reference in hot French fries business could qualify for the defense. Degree of similarity: Degree of similarity between the two marks: Here, the key inquiry is not similarity per se, but rather whether a similarity exists which is likely to cause confusion. It must be determined whether the impression the infringing mark makes upon the consumer is such that he is likely to believe that the product is from the same source as the one he knows under the trademark. Turning to the two marks, various similarities and differences are apparent. The patent similarity between the marks is that they both employ the phrase “SpeedEx”. Further, both employ the letter “u” in place of the words “ee”. The most glaring difference between the marks is that in one the phrase “SpudEx” is preceded by the word “SpeedEx”. Defendant, Shady McDodgy, in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody (Chilling Effects). MEMORANDUM OF QUESTION 2 (TWO) 2. Shady McDogy has been sued by Sue Casa in the California Superior Court. Casa alleges that McDodgy has violated the Foreign Corrupt Practices Act to gain an unfair advantage. McDodgy says that since Casa is not an American, the Alien Tort Claims Act prevents her from suing him. Please write a two-part memo that addresses: A) the prospects for using McDodgy’s suggestion regarding the Alien Tort Claims Act as a defense; and B) the best defenses for SpudEx in this lawsuit. INTRODUCTION Plaintiffs’ claims against Shady McDogy, President and CEO, SpudEx, Inc., for gaining an unfair advantage occurring by the refusal of contract that was not in written by the defendant. Plaintiff, Sue Casa, alleges that McDodgy has violated the Foreign Corrupt Practises Act to gain an unfair advantage. It is subject matter of the applications of the Alien Tort Claims Act (ATCA), 28 U.S.C. §1350 (1993), and the Foreign Corrupt Practises Act. More fundamentally, Defendants’ Motion to Dismiss should be denied that Plaintiff, Sue Casa, is not American, so he did not benefited by the applications of the Alien Tort Claims Act. BACKGROUND FACTS Shady McDodgy is an aspiring entrepreneur who is always looking for the best business opportunities. Using his contacts with Mexico between his company SpudEx Inc., the President and CEO, SpudEx Inc., McDodgy devised a plan to slash his costs even further. After entering into a contract with SpudEx, Casa was set to import corn from Mexico to Los Angeles through her company, house of Maize S.A., for use at SpudEx. Mayor Valldex allowed House of Maize access to the cheapest corn in Mexico, for sale to SpudEx (at a considerable discount, of course). McDodgy wanted to be sure there was no “paper trail” for this questionable enterprise, so he made sure there was never anything in writing between SpudEx and House of Maize regarding the deal. McDodgy did however, send an email to Casa which read: “this is the order for 10,000 kilos of corn, at a price of 10,000 as agreed. “The email was signed: “Shady McDodgy, President and CEO, SpudEx, Inc.” Before the first shipment of corn was ready to be sent, McDodgy changed his mind and left Casa a voicemail explaining that he would not pay and that they did not even have a contract anyway, because the UCC Statute of Frauds requires all contracts to be in writing, or else they are invalid. Casa sent an email in reply, which a handshake and on our honor. Besides, I just debited your PayPal account for the first shipment anyway, so you are out 10,000, buddy.” STANDARD OF REVIEW The central purpose of the Alien Tort Claims Act was to access for justice the federal courts to aliens for adjudication of rights only recognized by international law (Filartiga v. Pena-Irala). McDodgy argued that since Sua Casa is not an American, the Alien Tort Claims Act prevents her from suing him. McDodgy’s argument established on supported by the Circuit court that the central purpose of the ATS was to open the federal courts to aliens only cognizable claims (Filartiga v. Pena-Irala). This is undoubtedly true, but it does not advance plaintiffs’ theory. Section 9 of the Judiciary Act of 1789 granted federal courts concurrent jurisdiction over suits by aliens alleging tort violations of U.S. treaty or international law (Judiciary Act). However, the Second Circuit’s common sense statement about the purpose of the ATS does forbid its use, however clear the words may appear on ‘superficial examination.’ The ATS are raising concerns because overseas investment is an essential business strategy in a global economy that the businesses are vulnerable to these decisions because the courts applied standards which are: 1) vague and in a constant state of flux and 2) do not apply to foreign competitors that do not have a presence in the United State. Additionally, these suits are very difficult and costly to defend because all of the witnesses (and physical evidence) are in foreign countries, they undermine the ability of US companies to engage in constructive engagement, and have an unjustified negative impact on corporate reputations. (Rosen, 2003:6) Defendants argued that the moving parties, Defendants bear the burden of proof, which they have failed to meet. Plaintiffs’ allegations of fact must be taken as true, and construed in the light most favorable to them. Despite the absence of an explicit reference to concurrent jurisdiction in the statute today, it is widely accepted that states retain concurrent jurisdiction over all matters within the scope of the ATS, and aliens are free to pursue claims in state court for torts allegedly committed in violation of international law (Alomang case). LEGAL ARGUMENT Before the first shipment of corn was ready to be sent, McDodgy, Defendant, changed his mind and left Casa, Plaintiff, a voicemail explaining that he would not pay and that they did not even have a contract anyway, because the UCC Statute of Frauds requires all contracts to be in writing, or else they are invalid. The Plaintiff’s allegation is based on the violation of the Foreign Corrupt Practises Act to refuse the e-mail contract for gaining an unfair advantage. Plaintiffs have brought a civil action under the Foreign Corrupt Practises Act. Defendant, McDodgy, have moved to dismiss on the grounds that Sue Casa have no jurisdiction to file a in the California Superior Court under the ATCA. In Flores v. S. Peru Copper Corp case1, the court provided an alternative holding that subject-matter jurisdiction did not exist. The Defendant’s defense is established in many other cases, i. e., Durkin v. Intevac, Inc. Case,2 and Ramakrishna v. Besser Co. Case3. The ATCA does not create a cause of action, and that the unfair practices and refusal of contract toward Alien business do not constitute actionable violations of international law under the ATCA. The Alien Tort Claims Act gives for federal jurisdiction in “any civil action by an alien for a tort only, committed in violation of the law of nations or a treaty of the United States”4 In this ground, the Sua Casa, Mexican, is not authorized to file a suit as a foreign citizen for violation of contract held by the SpudEx CEO McDodgy. Because this case is not regarded as a suit for tort. By this provision of the Alien Tort Claims Act is enough defense of the SpudEx’s President and CEO Mr. McDodgy. It is well-settled that the ATCA provides both subject matter jurisdiction and a private right of action for violations of the law of nations. The plaintiffs were not U.S. nationals, and their claims were dismissed on the grounds of forum non conveniens (Wilson, 2004:660). Bibliography Alomang v. Freeport-McMoran, Inc., 718 So. 2d 971 (La. Ct. App. 1998) (reversing trial court’s dismissal on subject matter jurisdiction and \\Server03\productn\N\NYI\33-4\NYI402.txt unknown Seq: 31 13-DEC-01 13:56 2001] IS THE ALIEN TORT STATUTE SACROSANCT? 1031 Chilling Effects. http://www.chillingeffects.org/udrp/notice.cgi?NoticeID=4515 Durkin v. Intevac, Inc., 782 A.2d 103, 107 (Conn. 2001). Filartiga v. Pena-Irala, 630 F.2d 876, 890 (2d Cir. 1980). Filartiga v. Pena-Irala, 630 F.2d 876, 890 (2d Cir. 1980). Judiciary Act of 1789, ch. 20, § 9, 1 Stat. 73, 76-77 (1789) (codified as amended at 28 U.S.C. § 1350 (1999)). Judiciary Act of 1789, ch. 20, § 9, 1 Stat. 73, 76-77 (1789) (codified as amended at 28 U.S.C. § 1350 (1999)). Ramakrishna v. Besser Co., 172 F. Supp. 2d 926, 928–29 (E.D. Mich. 2001). Rosen, E. Mark. “The Alien Tort Statute: An Emerging Threat to National Security”, Aug. 2003. http://www.nftc.org/default/usa%20engage/ATS%20-%20An%20Emerging%20Threat%20to%20National%20Security.pdf Wilson, R. John. (2004). “Coming to America to File Suit: Foreign Plaintiffs and the Forum Non Conveniens Barrier in Transnational Litigation”, Ohio State Law Journal, Vol. 65:659, 2004. Read More