This article argues for a fundamental shift in the way famous trademarks are protected under American trademark law. Currently, famous trademarks are protected by dilution law, which purports to prevent a particular kind of harm (i.e., the gradual whittling away of the commercial magnetism of a famous mark). The article argues that this is the wrong focus of famous mark protection, because dilution is an illusory concept; it either does not exist, or it is so difficult to prove, that it is an ineffective and misleading doctrinal tool.
The article contends that American trademark law should move from the harm-based theory of dilution law to a free-rider principle that looks at just deserts - that is, at who should be benefiting from the investment and labor that go into making a mark famous. Under this principle, famous mark owners would be able to protect their marks against unjustified free-riding without having to prove that those marks were losing commercial magnetism or selling power due to the defendant's activities. The article shows, moreover, that the anti-free-rider principle is more helpful than existing dilution rhetoric in explaining the outcomes in many reported dilution decisions.
Finally, the article examines the possible countervailing interests of persons who wish to use trademarks that are identical or similar to famous marks. The article analyzes whether some free-riding on such marks should be allowed, and if so, on what grounds. The article shows that the anti-free-rider approach advanced here would be more effective than current dilution law at locating the proper boundaries on famous mark protection.
David J. Franklyn,
Debunking Dilution Doctrine: Toward a Coherent Theory of the Anti-Free-Rider Principle in American Trademark Law,
56 Hastings L.J. 117
Available at: https://repository.uchastings.edu/hastings_law_journal/vol56/iss1/3