Run DMC has filed suit against a number of parties including Amazon.com, Walmart, and Jet.com on multiple claims, among them trademark infringement and dilution under the FTDA (Federal Trademark Dilution Act).
While many states have anti-dilution laws, relief is typically limited to an injunction. The FTDA provides additional statutory damages, among them the defendant’s profits, attorney’s fees, and destruction of the infringing property if the infringement was willful. Dilution comes in two forms, blurring and tarnishment. The plaintiff in this case has a solid argument for dilution by tarnishment.
Dilution by tarnishment can occur when there is unauthorized use of a famous mark. While trading on the goodwill that the famous mark has established, the unauthorized product or service that is wrongly associated with the mark, puts forth a quality that impairs the brand.
If a plaintiff can show that their trademark is famous, then they need only show that there is a likelihood that the unauthorized use could cause dilution. Actual dilution, which can be difficult and costly to prove, does not need to be shown. It is this factor in particular, that provides Run-DMC with such a strong case. That is because when it comes to proving that the Run-DMC mark is famous, there is no reasonable argument to be made that the mark is not famous.
Trademark law uses several factors to determine if a mark is famous, including:
if the mark “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner”. Additional factors include the duration, extent, and geographic reach of advertising and publicity of the mark, as well as volume of sales under the mark.
Based on my reading of the lawsuit and its accompanying exhibits, Run-DMC has a strong case. Which defendants they will ultimately prevail against remains to be seen, as does whether the case is settled.
Run-DMC’s case for being a famous mark is at the peak when you consider its association with putting hip-hop music on the map. After the Sugar Hill Gang paved the way, Run-DMC themselves, paved the way for the Beastie Boys who burst out of Long Island, NY and onto the national scene only a short time after and a short drive from where Run-DMC started in Hollis, Queens.
The trademark law allows for a plaintiff to use as proof of being a famous mark, not only their use of the mark, but also advertising and publicity by third parties. Their case is made even stronger when you factor in use of the mark by Adidas, Aerosmith, MTV, and hundreds of promoters. It is incalculable how much publicity and revenue has been generated from the Run-DMC trademark.
As for the likelihood of there being tarnishment, again there is no reasonably valid argument against the fact that Run-DMC, as a brand, puts forth a product that is subjected to a high level of quality control and has been since the mark was first used in commerce in 1983.
Famous Mark ✓. Likelihood of tarnishment ✓.
Settlement in 3...2...1…?
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