The Continuing Debacle of U.S. Antidilution Law: Evidence from the First Year of Trademark Dilution Revision Act Case Law

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Abstract

This article evaluates the results of a quantitative study of all reported federal court opinions that analyzed an issue in antidilution law during a one year period after passage of the Trademark Dilution Revision Act of 2006 (TDRA). The article shows the remarkable extent to which courts continue to treat the dilution cause of action as superfluous to the infringement cause of action. As a result, antidilution law continues to have no appreciable effect on the outcomes of federal trademark cases or the remedies issuing from those outcomes

I. INTRODUCTION

At this writing, one year has passed since the October 6, 2006 adoption and effective date of the Trademark Dilution Revision Act of 2006 (TDRA). (1) This brief article reports the results of a quantitative study of all reported federal court opinions that analyzed an issue in antidilution law during this one-year period. While it is still early days for the TDRA, the case law reported in the year following its adoption nevertheless presents strong and disturbing evidence of the continuing debacle of U.S. antidilution law and of the failure of the TDRA so far to effect any substantial change in course. Most significantly, the case law shows the remarkable extent to which courts continue to treat the dilution cause of action as redundant of--and, thus, made superfluous by--the infringement cause of action. For all of the legislative and academic attention paid to it, antidilution law continues to have no appreciable effect on the outcomes of federal trademark cases or the remedies issuing from those outcomes.

Part II provides an overview of the eighty-five opinions studied and shows the degree to which the now-defunct Federal Trademark Dilution Act of 1995 (FTDA) (2) and the doctrinal regime built around it continue to exert influence over our antidilution law. Part III details the degree to which, in practice, the outcome of the dilution cause of action is redundant of the outcome of the infringement cause of action. Consider, for example, that of the twenty-six opinions that found no infringement, none found dilution. Of the fifteen opinions that found infringement, fourteen also found dilution, yet none of these fourteen findings of dilution resulted in remedies not already triggered by the court's finding of infringement. Part IV shows that courts have largely failed so far to embrace certain important reforms contained in the TDRA, such as its revised definitions of dilution by "blurring" (3) and "tarnishment" (4) and its heightened standard for trademark fame. (5) Part V concludes by considering what can be done to accomplish the still-unrealized goals of the TDRA.

II. OVERVIEW OF THE TDRA CASE LAW TO DATE

Of all federal court opinions reported in either the Westlaw or Lexis databases and filed from October 6, 2006 through October 6, 2007, eighty-five opinions analyzed an issue in antidilution law. (6) In this Part, I briefly report the venue, posture, and outcomes of these opinions. I then show the extent to which, at least in this early set of TDRA-era opinions, the dead hand of the FTDA still guides federal antidilution case law.

A. Venue, Posture, and Outcome

As Table 1 shows, seventy-six of the eighty-five opinions studied were district court opinions and nine were circuit court opinions. None of the circuit court opinions reviewed previous district court opinions in the data set and none included concurrences or dissents. Given the results of past empirical analyses of federal trademark case law, (7) it should not be surprising that the Second Circuit produced the most circuit court opinions among the circuits, with three, and that the Southern District of New York produced the most district court opinions among the districts, with seven. At the district court level, other usual suspects, such as the Northern and Central Districts of California and the Northern District of Illinois, also made substantial contributions to the district court case law. …