Trademark Law Memo Assignments (Fall 2008)

Memorandum Assignment #3

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To:  Senior Trademark Lawyer
From: Senior Law Firm Partner
Date: November 25, 2008
Re: Apple Complaint

As you know, Apple, Inc. is a major client of our law firm.  Steve Jobs called me today to complain about something that he saw recently that strikes both of us as clearly problematic from an intuitive standpoint.  I need you to think about whether whether there is a way to deal with it under trademark law.

The problem is this:  A company called The Urban Farmer has just launched a new line of denim overalls for men and women that features a modest fabric-based, flexible liquid crystal display (LCD) screen embedded in the chest panel of the outfit.  (The idea behind “Urban Farmer” apparently is that the overalls can be worn by hipsters who need pockets for their iPhones and other electronic gadgets, rather than for farm tools.)  These LCDs are about 5 inches tall by 7 inches wide and come with tiny embedded power supplies, a tolerable amount of memory, and wireless network adapters, so that they can display any one of some undetermined number of stored images downloaded from the Internet.  Imagine a wearable version of  picture frames that house a digital display, with the wearer able to select the image by sending a signal from his or her smart phone.

The product itself sounds modestly interesting.  The problem, as Steve Jobs pointed out to me, is that people are wearing these overalls around the Silicon Valley and New York and using the displays to show off the Apple, Inc. logo (and the Google logo, Starbucks, Facebook, and so on and so on — it’s a parade of digital do-it-yourself branded denim wear).  It is difficult to imagine that the Urban Farmer people weren’t aware that this sort of thing would go on, though at this point of course we don’t know exactly what its business plan called for, or precisely how it is marketing the overalls.  Steve has heard that the Urban Farmer people are telling retailers that the overalls can be sold as as branded clothing where the consumer borrows the brand from the Internet, rather than paying extra for a Nike swoosh sown on.  But neither he nor I know whether that’s really true.

Obviously, Apple hasn’t authorized use of its Apple logo on these overalls, and it would really like to put a stop to the practice.  Denim isn’t Apple’s style.  The client is worried that the clothing isn’t consistent with its carefully constructed hipster image.

As I see it, if we’re going to pursue this, we face a pretty steep challenge under prevailing law.  Assume that Apple has all of the trademark registrations that it needs for its entertainment and electronics businesses.  I’m not aware of any authorized uses of the Apple mark in connection with casual clothing such as bluejeans, but I could be wrong.  It is difficult to see, however, that there is actionable likelihood of confusion here.  It is more likely, it seems to me, that this case falls under dilution doctrine.  However, if anyone is liable for trademark dilution with respect to the Apple mark, it is the wearers of the overalls, and we have no interest in suing them.  We might sue The Urban Farmer, but our only recourse would be something like “contributory dilution.”

The question for you, therefore, is whether “contributory dilution” is something that Apple can and should pursue in this case.  The specific questions to consider are these:  Is “contributory dilution” something that the law does or should recognize?  If we file a complaint based on such a theory, what are the elements of a possible claim for relief for contributory dilution?  (In other words, what would we have to plead, and prove?)  What responses and defenses should  we anticipate?  What facts and kinds of evidence should we develop to support our case, and what facts and evidence would tip the case against us?  Perhaps there are things we should investigate before filing; think about what we can learn now that would help us decide whether to proceed.  I don’t want to go down this road on Apple’s behalf if the whole thing is likely to blow up on us.

I need your memo not later than Monday, December 22, at 12 noon.

Rules and Guidelines for Assignment Three are the same as those for Assignments One and Two, except, of course, for the due date.

Memorandum Assignment #2

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Memorandum Assignment #1

The following are the two highest-scoring student memos from the first assignment.  Neither one is a perfect or model memo. 

Printable versions of this Assignment:

Rules and Guidelines for Assignment One

To the extent that these rules may appear to conflict with general advice regarding memos that appears in course-related webpages, these rules take precedence. 

This is an “open” problem, meaning that there are no limits on the resources that you may bring to bear on your work.  Among other things, you may consult with your classmates and other human beings.  If you discuss the merits of the assignment with anyone, however, you must disclose that person’s identity on or in your memo.

Format  Memos must be typed or printed using a computer.  Each memo, including any attachments, must be not longer than four [4] typewritten or printed pages, double-spaced, with 1″ minimum margins on all sides.  (“To,” “From,” “Re,” and “Date” headings may be single spaced.)  You do not need to include a comprehensive statement of the facts; instead, you may refer to the factual background in my memo to you.  No footnotes are permitted.  The following font must be used:  Twelve [12] point Times New Roman. 

Grading  Memoranda will be graded based on form, format, and writing quality as well as on content.  The problems are designed so as not to have any single correct or even best solution.  Each problem will present a range of issues that the memorandum should identify, analyze, and solve in a creative way.

Due date  One hard copy of the work product prepared for this assignment must be turned in not later than Monday, October 13, 2007, at 4:30 p.m.  Memos may be turned in either to the Registrar’s Window or to my secretary, Ms. Melissa Shimko, in Room 314.  Electronic (e-mailed) copies are not acceptable.  Memos slipped under anyone’s door are not acceptable.  There were be no extensions or exceptions to this deadline.  Memoranda that do not conform to the format instructions above, or that are turned in late, are subject to grade reductions.