Debunking Dilution Doctrine: Toward a Coherent Theory of the Anti-Free-Rider Principle in American Trademark Law

Abstract

This Article argues that American dilution law purports to be about preventing dilutive harm, but the real purpose is to stop free-riding on famous marks. On its face, dilution law remains a harm-based doctrine that focuses on whether the unauthorized use of a famous trademark causes the famous mark to lose its commercial appeal or selling power. However, the hidden interest behind dilution law is a desire to punish free-riding. For instance, plaintiffs frequently win on their dilution claims despite the fact that proof of dilutive harm is remote and tentative at best, but free-riding seems obvious. These claims may involve trademarks, domain names, the internet, and the right of property.

Since the stated purpose of dilution and the hidden interest are mismatched American dilution law focuses too much on harm and not enough on the anti-free-riding impulse and its limits. Consequently, impairs judges from identifying the real competing interests at stake resulting in too little or too much protection to famous mark owners. It also does not allow judges to turn the anti-free-riding impulse into carefully circumscribed set of principles with identifiable limits and regulations.

Therefore, this Article argues that it would be better to abandon dilution altogether and swap it with an independent cause of action that explicitly prevents free-riding in appropriate circumstances.

Keywords: trademark, dilution doctrine, anti-free-rider principle, free-riding, famous marks, domain names