According to Alienware, after accepting the offer, users must purchase a specified amount of goods from various other sites. And this obligation is not clearly communicated, but is “presented to the consumer, if at all, only after he or she expends significant time and effort in responding to inquiries and navigating the multiple prompts.” . . .
Yes, and those young women who instant-message you from Nigeria really are living alone with their mothers and looking for a nice single man and his bank account number solely to wire in some pin money. Evan wisely asks whether this is really trademark infringement at all, and not fair use or some other defense such as the first use doctrine, and notes:
And Alienware may have anticipated this defense, alleging that it’s only “Alienware” serving as the source identifier for the offer, and “[t]here is no other recognizable or identifiable indication of source.” The defendant is an entity called “Online Gift Rewards.” Alienware claims that the designation is “likely to be perceived as a generic description of the offering rather than a source indicator.”
You know, this is not a half-bad argument. And this demonstrates why our law professors always said, “Hard cases make bad law.” These sorts of “trademark infringement” claims that only lightly implicate consumer confusion — they really are offering an Alienware machine — but are really attempts to get at some other black act, or grey act, are making copyright and trademark the all-round would-be enforcers of every sort of conceived and actual business offense. Some judges get it; some don’t.
This particular case — the complaint, courtesy of Evan, is here — raises an interesting issue in terms of how the prominent use of the desired brand name in the overall marketing campaign, along with a very generic description of the seller, could lead to confusion as to source (i.e., of the offer) or sponsorship. That would be fine with LIKELIHOOD OF CONFUSION® if that kind of analysis were reserved for allegedly close cases such as this, and not applied to retail sellers (typically online) of trademark-protected goods that are not “authorized” by the mark owner. (Yes, I am “positionally” biased.)
But in the midst of numerous decisions granting plenipotentiary powers over markets and marketing to anyone with a trademark registration, this could be just that hard case that could firm up an already troubling legal trend — and then some. But, hey, even trademark owners have rights!