Comment by Grabbeh | Hacker News Reader

Comment by Grabbeh | Hacker News Reader

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You are right that making it clear the lack of affiliation is a positive step towards reducing confusion.

However there are some weaknesses in the solution (and reasons therefore why a brand owner would continue to pursue). When it comes down to it, the trade mark itself is still problematic, and there will still be cases where the trade mark is used in the absence of the disclaimer. Also, as a brand owner I don't want to have to continue to monitor the third party user just to make sure they continue to use the disclaimer.

Also, in addition to the confusion argument, there is also the argument that absent confusion, the third party is essentially looking to free-ride on the goodwill of the brand owner. That cause of action doesn't require confusion to be proved.

It's really down to Instagram and how they want to play it. Having a settlement agreement obliging Littergram to include the disclaimer in various places at all times may be sufficient. But the fact is, Instagram hold quite a strong hand and don't need to settle for just disclaimer, nor for the above reasons would that be advisable.

> There is also the argument that absent confusion, the third party is essentially looking to free-ride on the goodwill of the brand owner.

But can one consider that infringement? I would assume something like that to fall under a fair use doctrine in most jurisdictions.

Let’s say I invent a set of amazing tires for Audi cars (they only fit on an Audi car), and I sell them for half the price of a set of official Audi tires. I brand these tires as “AmazingTires for Audi”, with a disclaimer that I am not Audi, but a third party.

In this scenario, you’re riding on the goodwill of the brand, and the brand owner might oppose. However logically I would assume something like this not to constitute infringement, as you are not actually damaging the brand (if the product is good) and there is no other way to describe your product without using the Audi brand name.

There's a difference between fair use and taking unfair advantage of a brand owner'S trade mark. Your example would be likely to fall within the nominative use bracket as you're using the term to describe an attribute of the product. On the other hand, using a third party's trade mark with a clear intention of free-riding on their goodwill will be considered to take unfair advantage of that goodwill and be an infringement of trade mark law. Rolex Tractors would be an unlikely example.

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