US law does not apply everywhere, but... [LWN.net]

US law does not apply everywhere, but...

Posted Sep 21, 2006 13:03 UTC (Thu) by zabriska (guest, #29486)
In reply to: A trademark cease-and-desist for Rockbox's Tetrox by amd
Parent article: A trademark cease-and-desist for Rockbox's Tetrox

IANAL, but I think there is more to this subject than the previous two replies have addressed:

1. If you participate in an activity that could infringe a trademark in more than one country, you may be liable for infringement in each country. The trademark holder can sue you in the country in which the infringement occurred; they do not have to come to your country to sue you.

2. If you put a download on a Web or FTP server that is accessible in a country (even if the server is not located there), then you may incur liability in that country.

3. In the United States, a trademark does not have to be registered to be claimed.

a. In this case, the trademark holder must be able to prove in court that there is a pattern and history of use that establishes and maintains the mark.

b. Unregistered or "common-law" trademarks are recognized in state law in the US. I do not know if they are recognized under Federal (US national) law.

4. At least in the United States, a trademark holder must actively defend a trademark to keep it. Agreed that many lawyers overreact on this one, but a holder who does not "call out" possible infringers risks losing the mark.

5. If you are found to be infringing a trademark in another country and there is a trademark treaty between your country and country of infringement, that obviously works to the holder's advantage. However, a court decision in another country may be held to be persuasive in another if the laws (or applicable elements) are similar. Admiralty (sea) law is an example: American, British, and Canadian courts commonly cite each other's decisions. It is in the holder's interest to first litigate in the most favorable country.

May not be worth $0.02, but there it is...

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