Beyond Dilution: Toward a Coherent Theory of the Anti Free Rider Impulse in American Trademark Law


This article argues for a fundamental shift in the way famous trademarks are protected under American trademark law. Currently, famous marks are protected by dilution law, which purports to prevent a particular kind of harm (i.e., the gradual whittling away of the commercial magnetism of a famous mark). The article argues that this is the wrong focus of famous mark protection, because dilution is an illusory concept; it either does not exist, or it is so difficult to prove, that it is an ineffective and misleading doctrinal tool. The article contends that American trademark law should move from the harm-based theory of dilution law to a free rider principle that looks at just deserts -- that is, at who should be benefitting from the investment and labor that go into making a mark famous. Under this principle, famous mark owners would be able to protect their marks against unjustified free riding without having to prove that those marks were losing commercial magnestism or selling power due to the defendant's activities. The article shows, moreover, that the anti free rider principle is more helpful than existing dilution rhetoric in explaining the outcomes of many reported dilution cases. Finally, the article examines the possible countervailing interests of persons who may wish to use trademarks that are similar or identical to famous marks. The article shows that the anti free rider approach advanced here would be more effective than current dilution law at locating proper boundaries on famous mark protection.


Intellectual Property Law

Date of this Version

September 2003