Lowering the Threshold of Trademark Infringement? (United Airlines, Inc. v. Cooperstock)

Janice Perri, B.A. (Summa Cum Laude)Business Law, Business Litigation, Civil Litigation, Information Technology, Internet | Technology, Technology and Internet, Trademark Infringement, Website Copying0 Comments

Since December 17, 1998, United Airlines has been using the website www.united.com, it’s brand name and logo has been used since August 2010, and the design and artwork of the website has stayed relatively the same since 2006 (para 4). United Airlines has a variety of trademarks associated with these services. Cooperstock operated www.untied.com and in 2011 he redesigned the graphics, in a manner similar to the design of the United Website, which was adjusted in 2012 to match changes made by United on their website in 2012 (though with a sad-face added on the United logo for example) (para 10). In United Airlines, Inc. v. Cooperstock, the Court found that Cooperstock infringed United’s trademarks.

Trademark infringement occurs when “a trademark or a confusingly similar mark [is used], without the consent of the trademark rights holder, in association with wares or services” (para 29). This case provides an interesting decision regarding the specific element of infringement under s. 20(1)(a) of the Trade-Marks Act that requires: sale, distribution, or advertisement of any goods or services in association with that confusing trademark. While it was accepted that the following services were provided through www.untied.com: information delivery, advice on legal rights, and publication of complaints, in dispute was whether these constituted “services” pursuant to the Trade-Marks Act because there was no commerce involved (para 32).

However, the Court stated that “services” within the meaning of s. 20(1)(a) of the Trade-Marks Act does not require a monetary element, because this has never been explicitly stated and services should not be given a narrow interpretation, as the key element to “services” is a benefit to the public (para 33).

Author’s Thoughts:

Though not explicitly stated in the decision, United Airlines, Inc. v. Cooperstock seems to represent the Court reiterating its commitment to the protection of intellectual property. The exclusivity that trademarks are aimed to provide to protect the goodwill a brand has in the marketplace was reinforced as both economically and socially valuable. Perhaps an appropriate interpretation of this case is to view it as an illustration of the fact that even if another party’s dominant intention is social awareness, social and economic implications are often inextricably intertwined, and as such, they cannot be realistically viewed in isolation.

In this way, corporate entities in particular may now be able to draw out such a link to establish trademark infringement occurred, when previously the two seemed to be viewed as relatively separate. This may lead to a distinct strategic approach for future plaintiffs claiming that their trademark has been infringed, by opening up the door to broader arguments that shift the focus to public benefits when monetary losses may be difficult to establish.

At least in this case, the company’s trademark rights are given greater weight and trump the defendant’s specific mode of expression. This is likely due to the great multitude of alternative avenues available to the defendant that do not involve the use of a company’s trademark to express his views.

To me, this case leads to the following unresolved questions: 1. Is the threshold for trademark infringement being lowered? 2. If the threshold for trademark infringement is lowered, what will the impact be? and 3. Is this a desirable outcome?

Please see Gilbertson Davis LLP’s related practice areas webpages on online disputes, technology and Internetbrand protection, and intellectual property disputes.

If you require legal advice regarding these practice areas, please contact Gilbertson Davis LLP for an initial consultation.


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Janice Perri, B.A. (Summa Cum Laude)

Janice is a summer student at Gilbertson Davis LLP. Janice graduated at the top of her undergraduate program where she cultivated strong problem-solving and critical thinking skills. Bio | Contact

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