hello and welcome to the last video of this class three in this video as mentioned before we're going to discuss treadmill dilution treatment dilution it's one of the two causes of action as we mentioned for enforcing airfare enforcing treadmill right and um trademark infringement has been analyzed in the previous two videos trademark dilution refers to an action that only the owners of famous mark can decide to use trademarks um framework dilution was first discussed in the early 1900s in a famous article that a scholar practicing attorney called frank schechter uh wrote in the arab law review and chapter defined dilution as the whittling away of tremor distinctiveness we said before we have two causes of action blurring the free riding and so the erosion of the distinctiveness to fear free riding if all you know if there were rolex would be used for sausages for bikes for lamps for laptop eventually they were rolex would mean nothing and tarnish an offense a damage to the reputation and as we have seen when we analyze the relative grounds for trademark for grinding tremor rights if there is a famous mark uh and i want to apply for a sign and the sign is the same as a famous mark i can't get um that registration regardless of the product i'm applying for if there could be a likelihood of dilution these are some examples of dilution by blurring like maca cola free riding on coca-cola and punishment you know enjoy cocaine certainly my advocate some something that coca-cola company doesn't want to be linked to true return and other cases that have been um particularly distributed case has been very relevant in the interpretation of the new uh um trademark revision uh federal trade resolution revision act and another example of tarnishment of learning now dilution was adopted by congress in 1995 and at that time the dilution did not specify whether actual dilution or likelihood likelihood of dilution was necessary to find for a finding of the illusion and in mostly versus victoria's secret the supreme court did state that actual dilution was the case and because of that the trademark community lobbied and in 2006 congress issued the federal trade resolution revision act and the the treadmill dilution revision act not only said that likelihood of delusion was sufficient but explain and impact better the concept of punishment and blurry and also provided some exceptional limitation to dilution before dilution was introduced at the federal level however uh you can see 38 states had dilution laws already applicable at the state level in 1995 the federal anti-dilution act was adopted by congress partially because of the pressure of the tremor community but legally speaking because of the need to implement as we saw in the original the first video of this class the trips agreement article 16. and so you can see here the section 43c was enacted stating that the owner of a famous mark shall be entitled to an injunction against another person commercial using commerce of a mark or trade name if such use begins after the markets become famous and causes dilution of the distinctive quality of the mark and these are the factors i'm not going to read them all that can court use to assess whether or not a mark is famous now in the u.s we don't have a famous market registry some countries do have famous mark registry uh tarnishment has been defined in the 2006 uh the trademark dilution revision act as an association arising from the similarity between a market name and a famous mark that harms the reputation of the famous mark like the example in the slide certainly harmed the reputation of apple in 1995 after the enactment of the federal dilution act as mentioned though the statue didn't say whether plaintiff had to prove by their defendant had to disprove um actual delusional lack of dilution in nabisco in the second circuit the court took the position that actual dilution was not needed um to require actual dilution would subject senior user to incompensable injury on the other side the fourth circuit in this case about the greatest shown earth versus the greatest known earth the first circuit said that yes to resolve to to to have actual illusion was a standard and so the supreme court granted certiorari uh to a case related to victoria's secret and in this case the supreme court in 2003 sided with the fourth circuit and said that actual dilution was needed because of that there was an amendment to the federal treatment thanks to the to the federal treatment dilution act with the trademark dilution revision act in 2006 and the trademark dilution revision act states that lack of dilution is the current standard on the other side the 2006 revision act introduces specific exception and limitation and this is very important we're going to see next class class 4 exception and limitation to trademark enforcement and the fact that these were introduced in the provision on dilution shows the attempt of congress to balance the possibility to enforce a mark beyond any similarity within services and beyond likely of confusion with possible legitimate use by third party that do not need consent any fair use including nominative or descriptive for use or facilitation of such values of a famous mark parent is um [Music] i mean without without this provision you know talk show and funny show not be able to exist um and so you can see um comparative advertisement advertising and promotion that permits consumer to compare with your services um and so on and so and we're going to analyze this more specifically next class and this is very very important to understand on one side congress says lacklaw dilution to prove actual delusion does imply probably an irreparable injury because it's very difficult to prove actual dilution on the other side exceptional limitation should be guaranteed for use of mark without consent in certain context and here you can see the 2006 revision clearly states that the owner of famous mark cannon can actually regardless of the presence or absent or actual or likely confusion or competition for actual economic injury after 2006 act also defined as mentioned what is a famous mark and this is important because this definition was missed in the previous um the original 1995 act and clearly here you have the factors duration extent geographical reach of advertisement amount volume and graphical extent of sales the extent of actual recognition of the mark so it clarifies the the 1995 act and the factor but these additionally add um you know more clarification to the specific factor that course can use and also the court the the congress introduced specific factors to analyze blurring the degree of similarity in the mark the degree of inherently required distinctiveness the extent to which the owner of the famous market is engaging in substantially exclusive use of the mark the degree or recognition whether the use of the mark or trade name intended to create an association with the famous mark any actual association between the mark or trade name and the famous mark and the court defined tarnishment as mentioned before these i strongly encourage you to click on the the video because this was a interesting uh commercial by toyota and there was she's showing off a basketball a ball um with louis vuitton logos and this was a dilution case louboutin blocked that advertisement so in summary frame resolution protects famous smart against the erosion the erosion of their distinctiveness um in the federal trade resolution act state law case law uh the federal trade resolution act as revised in 2006. the type of delusional dilution by blurring which is more difficult to prove illusion by tarnishment or actual dilution is not needed as a proof after the victoria's secret decision and um after the futuristic decision owners had to prove actual dilution but then the federal framework act reversed that um and to a certain extent there's been criticism that this protection clearly protects multinational big trademarks um against competition so again as if you have any questions please let me know reach out come to the office hours you have the schedule on the syllabus otherwise i would like to briefly uh look at the question that you have for your class discussion this week in addition to the activity you know you have to do your activity um you know your ppts or your videos or your multiple choice question but i really want you to also look at problem questions on a weekly basis and then briefly discuss it in in you know in the discussion page so in this case you have starbucks that is of course a very famous mark uh there is a logo that is no longer used though even though it not been discontinued for more than 10 years at this point um but you know you have somebody who uses a very similar sign even though it clearly it's just a vox starbucks for dog services so the question is is this infringement yes or no is the lack of confusion yes or no go through the factors and or it's just dilution yes or no it's a potentially excluded use yes or no it's fairly straightforward i try to give questions that are fairly straightforward not too difficult because i want the discussion to really help you go into cases in a way that is fairly straightforward so then we can build on um you know for next classes and eventually for the final uh take-home exam but i'm going to give you a variety of examples as well uh and also how they were resolved so you can have you know some some example of answer as well so with that thank you and i will see you soon for class four and uh you have a wonderful rest of the day and thank you thank you very much bye-bye