March 23, 2016

“The Impact of Lenz and Fair Use on Online Trademark Enforcement,” Bloomberg BNA Electronic Commerce & Law Report, March 23, 2016

Reproduced with  permission from Electronic Commerce & Law Report, 21 ECLR 430, 3/23/16. Copyright © 2016 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com

Josh Partington is an associate in the Reston, Va. office of Harness, Dickey & Pierce. His practice includes trademark, copyright and unfair competition law. He works with clients of all sizes and at all stages of the IP life cycle. This ranges from advising start-ups and small business owners on their first trademark, to helping some of the largest private companies in the U.S. protect their famous brands. Josh can be reached at jpartington@hdp.com.

The Ninth Circuit recently held in Lenz v. Universal Music Corp.1 that the Digital Millennium Copyright Act (“DMCA”) requires copyright holders to evaluate fair use before sending a takedown notice. While there is no trademark equivalent to the DMCA, trademark owners still send many takedown notices to e-commerce platforms and social media sites. Each site has their own unique trademark policy, but they all have an interest in protecting their users from overreach by intellectual property rights holders. The push back from web companies, courts, and third party advocates signals that trademark owners should learn from Lenz and at least consider fair use.

Trademark registration is prima facie evidence of validity, ownership, and the exclusive right to use the mark in connection with the goods and services listed in the registration. 2 While these rights are significant, like most rights they have their limitations. One such limitation is the concept of fair use.

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