Cyberlaw Concepts - Trademark Infringement

1.       This video found on YouTube is clearly a parody for Walmart, specifically with all the wage disputes in the news regarding Walmart employees. Please discuss Trademark law and what Walmart can do against YouTube. Does Walmart have any recourse? What are the remedies? Is Walmart likely to succeed, why or why not? Be sure to apply the concepts of Trademark law.

Although this scenario is presented to discuss possible trademark infringement actions against YouTube and not the entity responsible for the published work, it should be noted that JibJab, if subjected to trademark infringement proceedings, could argue any of the following defenses: Parody under the First Amendment, Laches, Unclean Hands, or Fraud (and/or misrepresentation by the plaintiff in obtaining trademark registration).

Trademarks, another abstract concept privy to shelter under the umbrella of Intellectual Property, comprise “any word, name, symbol, device, or any combination, used, or intended to be used in commerce to identify and distinguish the goods from one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods” (Craig, 2013). In order to register a trademark, a person or an entity generally seeks the legal stamp of approval from the United States Patent and Trademark Office (USPTO or PTO). If an application for trademark registration is denied by the USPTO, an appeals process is available whereby final arbitration is ultimately determined by the USPTO Trademark Trial and Appeal Board (TTAB).

The primary law governing the protection of trademarks remains the Lanham Act, a.k.a. the Federal Trademark Act or the United States Trademark Act, which safeguards both trade/commercial names and service marks. Under the Lanham Act, any party “may be liable for trademark infringement…if the plaintiff establishes that (1) the plaintiff has a valid mark that is entitled to protection…(2) the defendant used the mark, (3) in commerce (4)…without the plaintiff’s consent” (Craig, 2013). Moreover, the courts have typically weighed six additional factors in examining if a “likelihood-of-confusion” exists between litigious parties.

The retail giant Walmart filed with the USPTO in an attempt to trademark the acronym “EDLP”, or “everyday low prices”, a reference to their intensive cost-based marketing strategy, in 2005. Walmart withdrew its application in 2007 in the face of strengthening opposition. Although unsuccessful in co-opting “ELDP” for their own enterprise, Walmart was able to trademark the phrase “Low Prices You Can Trust. Everyday.” (Justia, 2016). Baring the parody JibJab created in their spoof Big Box Mart, the potential for legal action by Walmart against them persists in part because of one line, “Oh Big Box Mart/My paycheck reminds me/Your everyday low prices have a price/They aren’t free” (JibJab, 2005). As such, Walmart reserves the right to directly seek an injunction as well as petition for monetary damages.

This is not to say that Walmart does not have any recourse regarding perceived infringement by YouTube. Walmart may certainly seek domestic protection, and possible reparation, under either the Lanham Act, the Trademark Dilution Revision Act of 2006, and/or the Anticybersquatting Consumer Protection Act (ACPA), as applicable and appropriate. Internationally, protection can be found under the Paris Convention, the Madrid Protocol, and/or the Trademark Treaty Law (TTL).

Conversely, the non-profit New Media Rights notes that YouTube “doesn't have a legal obligation to do anything…because the law gives the…holder the sole right to enforce” (Karobonik, 2011).  In this scenario, the simplest remedy, outside of the courts, is to attempt to reach a resolution with the account holder in question. However, if resolution cannot be achieved between Walmart and the account holder then Walmart can issue notice of a trademark complaint to YouTube (a process YouTube has well established on their site at either https://support.google.com/youtube/answer/6154218?hl=en or https://support.google.com/youtube/answer/6154228?hl=en).

Assuming that Walmart sought the simplest redress unsuccessfully and that YouTube has failed to removed the subject material after proper notification, Walmart may then, at a minimum, purport a latent contributory trademark infringement case although the potential for plaintiff loss threatens to be high. In order for their plea to be successful before the courts, Walmart must demonstrated trademark usage in commercial endeavors, registration with a resultant listing in the Principle Register (not required but recommended), and appropriate markings as well as demonstrate a willful malicious knowledge by YouTube with regards to the infringement. The courts will ultimately render a decision based upon Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982). If a decision is found in their favor, Walmart can petition the courts for either a restraining order, an injunction, or monetary compensation but, in order to request such, they must demonstrate “an irreparable injury that remedies…are inadequate to compensate…equity is warranted and the public interest would not be disserved by a permanent injunction” (Craig, 2013).

Reference List

Craig, B. (2013). Cyberlaw: The Law of the Internet and Information Technology. Boston: Pearson.

JibJab (2005). Big Box Mart. Retrieved from http://www.jibjab.com/originals/big_box_mart

Justia. (2016). Retrieved from Justia Trademarks: https://trademarks.justia.com/865/57/low-prices-you-can-trust-every-86557402.html

Karobonik, T. (2011). How do I report Copyright Infringement on YouTube? Retrieved from New Media Rights: http://www.newmediarights.org/business_models/artist/how_do_i_report_copyright_infringement_youtube