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not tay ber own

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Disclaimers

We're sure that everyone has noticed the hard-to-read disclaimers at the bottom of television automobile commercials. They say such silly things as, "Professional Driver on Closed Course" and "Do not attempt", etc. Some driver is careening through what appears to be New York City at a high rate of speed and the automobile manufacturer feels compelled to warn the viewer, "Do Not Attempt"? Prescription medicine commercials bore the viewer with lengthy warnings about side effects. A washer-dryer commercial for LG has a woman destroying her washer-dryer by pushing it off a high place with the warning, "Do not attempt".

However, a corporate lawyer representing the owner of a trademark will tell you that a disclaimer is not effective and will not prevent the likelihood of confusion. So, you ask, what are we missing? Not a thing. We have not found a single court case where the court flatly stated that disclaimers should never be used.

There are a number of federal court cases that address disclaimers and not one of them actual has ruled that disclaimers are ineffective. So, you ask, why do corporate lawyers representing trademark owners claim that they are not effective? Because they can. There's no law prohibiting them from lying to you. Or to the court for that matter. And that's what they do. A lie is a statement told in such a way as to deceive. It can be a true statement told in such a way as to create a false impression. Corporate lawyers love to lie.

Disclaimers allow the defendant to continue to use the infringing mark, but require the defendant to disclaim any association or connection to the plaintiff. Some courts have ordered defendants to employ a disclaimer of association as a form of limited injunctive relief:

  • Oracle Corp. v. Light Reading, Inc., 233 F. Supp. 2d 1228 (N.D. Cal. 2002)
    (ordering a disclaimer as part of a preliminary injunction where a complete ban on defendant's use of the mark may put defendant out of business and result in substantial layoffs).
  • Home Box Office, Inc. v. Showtime/The Movie Channel, Inc., 832 F.2d 1311 (2d Cir. 1987)
    (holding that district court's use of disclaimer in preliminary injunction was not adequate to substantially reduce confusion and noting studies suggesting ineffectiveness of disclaimers; also holding that infringers must demonstrate the effectiveness of proposed disclaimers before they will be granted).
  • Rosenfeld v. WB Saunders, 728 F. Supp. 236 - US: Dist. Court, SD New York 1990
    The role of disclaimers in trademark infringement cases under section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1) (1988), provides an appropriate analogy that mitigates against a finding of a likelihood of confusion in the instant action. The Second Circuit has repeatedly recognized that an effective disclaimer can significantly reduce the potential for consumer confusion caused by an infringing product if it clearly designates the source of the product. See, e.g., Home Box Office, 832 F.2d at 1315; Charles of the Ritz Group, 832 F.2d at 1324; Soltex Polymer Corp. v. Fortex Indus., Inc., 832 F.2d 1325, 1330 (2d Cir. 1987). To successfully employ the use of a disclaimer, the infringing party has an affirmative duty to "come forward with evidence sufficient to demonstrate that any proposed materials would significantly reduce the likelihood of consumer confusion." Home Box Office, 832 F.2d at 1316. Where the likelihood of confusion is substantial, the disclaimer must be prominent and disclose the competitive relationship between the two companies in a nonambiguous manner. Charles of the Ritz Group, 832 F.2d at 1324. Alternatively, where the likelihood of confusion is minimal to moderate, the court has broader discretion to uphold the adequacy of the disclaimer. See Soltex Polymer Corp., 832 F.2d at 1330. Thus, courts must examine the effectiveness of disclaimers on a case by case basis "by considering the circumstances of the relevant business and its consumers." Home Box Office, 832 F.2d at 1315.

In our Analysis of Charles Of The Ritz Group, we point out what corporate lawyers do to pervert the actual ruling. The passage:

A growing body of academic literature has concluded that disclaimers which employ brief negator words such as "no" or "not," are generally ineffective.

It's often presented in this manner, out of context. What the court was doing was discussing the facts for both sides, not making a determination. The Court referenced arguments, pro and con, concerning disclaimers. The same court these bottom-feeders mis-quote actually required better disclaimers than those being used. In its Oppsition To Motion For Summary Judgment, Major League Baseball stated:

"Predictably, Tabberone points to its textual disclaimers to excuse its prominent unauthorized trademark use of MLB Clubs' trademarks. (See Tabberone Sum J. Mem. ¶ 28, 31). Disclaimers are notoriously ineffective to dispel confusion. Charles of the Ritz Group, Ltd. v. Quality King. Distrib., Inc., 832 F.2d 1317, 1324 (2d Cir. 1997) (referring to a "growing body of academic literature that disclaimers…are generally ineffective")."

In Precious Moments v La Infantil, Precious Moments sued to stop La Infantil from making and selling bedding from copyrighted, licensed Precious Moments fabric. Court ruled bedding items manufactured with lawfully acquired, authentic fabric with copyrighted design were not infringing derivative works. The Court did require La Infantil to attach a notice with a disclaimer to the bedding.

In Home Box Office v Showtime, 832 F.2d 1311 (2d. Cir. 1987):

Although we agree with the district court's application of the likelihood of confusion standard to Showtime's promotional materials, our view of the proper role of disclaimers in trademark infringement cases is somewhat different. Although we have found disclaimers to be adequate in certain cases, each case must be judged by considering the circumstances of the relevant business and its consumers. We have found the use of disclaimers to be an adequate remedy when they are sufficient to avoid substantially the risk of consumer confusion. See, e.g., Springs Mills, Inc. v. Ultracashmere House, Ltd., 724 F.2d 352, 355 (2d Cir.1983); Berlitz Schools of Languages v. Everest House, 619 F.2d 211, 215 (2d Cir.1980). In many circumstances a disclaimer can avoid the problem of objectionable infringement by significantly reducing or eliminating consumer confusion by making clear the source of a product. See Soltex Polymer Corporation v. Fortex Industries, Inc., 832 F.2d 1325 (2d Cir. 1987) (minimal to moderate amount of consumer confusion found by district court could be cured effectively through the use of a disclaimer).
From Graham Webb Intl v Emporium Drug Mart, 916 F.Supp. 909 (E.D. Ark 1995)
The Court likewise rejects Graham Webb's argument that the warnings Drug Emporium has posted disclaiming any affiliation with or authorization by Graham Webb are ineffective and not a question properly resolved by summary judgment. While it is true that the effectiveness of a disclaimer in a Lanham Act case may generally be a question of fact, see Home Box Office, Inc. v. Showtime/Movie Channel, Inc., 832 F.2d 1311, 1315 (2nd Cir.1987), a disclaimer expressly declaring that the seller is "not affiliated" with the owner of the trademark or is "not an authorized distributor" of the trademark owner's products has been held to be an effective means of preventing confusion in the minds of consumers as to affiliation with the owner of the trademark. Matrix Essentials, 756 F.Supp. at 282. As in Matrix Essentials, the only reasonable conclusion in this case is that Drug Emporium's warnings to consumers disclaiming any affiliation with or authorization by Graham Webb effectively prevents likelihood of confusion in the minds of consumers as to sponsorship or affiliation.

Some court cases discussing disclaimers:

Some disclaimer articles:

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