July 06, 2010
Puzzling 9th Circuit Dilution Opinion Over eVisa.com--Visa v. JSL
By Eric Goldman
VISA International Service Ass'n v. JSL Corp., No. 08-15206 (9th Cir. June 28, 2010)
A number of us in the trademark community are scratching our heads at last week's Ninth Circuit trademark dilution opinion, authored by Judge Kozinski. The case involves evisa.com, run by Joseph Orr. The domain name's origin is explained:
Orr traces the name eVisa back to an English language tutoring service called “Eikaiwa Visa” that he ran while living in Japan. “Eikaiwa” is Japanese for English conversation, and the “e” in eVisa is short for Eikaiwa. The use of the word “visa” in both eVisa and Eikaiwa Visa is meant to suggest “the ability to travel, both linguistically and physically, through the English-speaking world.”
We might be skeptical of this explanation, but the case poses two doctrinal problems for dilution. First, eVisa.com is not the same trademark as "Visa." As the opinion says, the "marks here are effectively identical." Well, yes and no. We have a line of cases ignoring the top level domains in trademarks, and many cases ignore an "e" or "i" prefix in Internet-related trademarks. But they are not literally identical, and given dilution's power to preempt all uses of a trademark irrespective of confusion, we have to tread carefully when extending protection beyond truly identical uses. The opinion treats this issue too breezily.
Second, and perhaps more importantly, the word "Visa" already has several dictionary definitions. This poses a problem for the blurring analysis. Visa the trademark can't co-opt the existing dictionary meanings. So does dilution-by-blurring mean that Visa the trademark can preempt every non-dictionary commercial use of the word? That seems to be a logical implication of this opinion. The court says "despite widespread use of the word visa for its common English meaning, the introduction of the eVisa mark to the marketplace means that there are now two products, and not just one, competing for association with that word."
Even so, the defendant argued it was using eVisa to invoke the dictionary meaning of the term Visa, i.e., Visa as a passport for Japanese who are going to travel to an English-speaking country. If the dictionary meaning isn't covered by the trademark, it seems logical that everyone should be free to suggest the dictionary meaning in their own trademarks. On that basis, if we believe the defendant's explanation for how it ended up using eVisa.com, the defendant should be in the clear.
Yet, instead, Visa the trademark wins the blurring case. The opinion treats the defendant's suggestion of the dictionary meaning as a "multiplication" of the word's meaning: "these allusions to the dictionary definition of the word visa do not change the fact that JSL has created a novel meaning for the word: to identify a 'multilingual education and information business.'" Apparently, any use of a dictionary word for anything other than a literal invocation of its dictionary meaning could now support a dilution claim.
This case has been floating around since 2002, so perhaps it's not surprising that the entire dispute seems a little old-school. The ruling reminded me a lot of the 1990s pre-ACPA domain name disputes where courts were so frustrated with cybersquatters that they stretched dilution law well beyond its intended scope because dilution was the only tool to effectively nail cybersquatters. Many of those dilution-stretching cases dropped away after the ACPA provided a better anti-cybersquatting tool for judges, and in some ways, the 2006 TDRA has made it even harder to use dilution in a domain name enforcement action. That makes this case that much more anomalous. Putting aside the law, it's logical to say that Visa the trademark should be the owner of eVisa.com. Yet, because infringement and the ACPA weren't getting the job done, the panel expands (bastardizes?) dilution law to make it happen. The outcome may make sense, but the intellectual shortcuts along the way are still a little cringe-inducing.
One final sour note in the opinion. The opinion says that plaintiffs can rely solely on intuition-based arguments to support their likelihood of dilution cases. The court says "a plaintiff seeking to establish a likelihood of dilution is not required to go to the expense of producing expert testimony or market surveys; it may rely entirely on the characteristics of the marks at issue." This is deeply troubling ruling for 9th Circuit law (now reversible only through an en banc opinion). We have never been clear what evidence was required to support a plaintiff's "likelihood of dilution" showing, but I had always assumed the plaintiff had to show some evidence, i.e., greater than zero. So now, what exactly must a plaintiff show to establish its prima facie dilution case? Under the 9th Circuit's standard, apparently anything that can convince a judge.
This case's tortured application of dilution law is a good excuse for me to remind you: if you haven't been there before (or recently), check out the materials from the High Tech Law Institute's 2007 academic symposium on trademark dilution, where we attempted to come up with good rationales for the dilution doctrine and largely struck out.
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