In a case of copyright infringement, a defendant can argue that the owner of a trademark cannot exclude others from using that trademark if it has been abandoned.
Sample Elements: the owner, assignor, or licensor of a trademark discontinued its good faith and exclusive use of the trademark in the ordinary course of trade; the owner, assignor, or licensor intended not to resume using the trademark; the owner, assignor, or licensor acts, or fails to act, so that the trademark’s primary significance to prospective consumers has become the product or service itself and not the producer of the product or provider of the service; and the owner, assignor, or licensor fails to exercise adequate quality control over the goods or services sold under the trademark by a licensee.
Hypothetical Scenario:
A photographer, John, takes a series of photographs during a trip and posts some of them on his personal website in 2010. However, he does not take any further action to protect or enforce his copyright over the years. In 2023, another person, Sarah, discovers John’s images on an old website that he had abandoned several years ago. Without seeking permission or licensing the photos, Sarah uses them on her own website for commercial purposes.
Lawsuit:
John discovers the unauthorized use of his photographs and files a copyright infringement lawsuit against Sarah.
Affirmative Defense – Abandonment:
As a defense, Sarah claims that John had effectively abandoned his copyright in the photographs. She argues that by leaving the images on an inactive and publicly accessible website for an extended period without taking any action to enforce his rights or protect the copyright, John implicitly abandoned his ownership rights.
Successful Defense Outcome:
If the court agrees with Sarah’s defense, it might find that John had indeed abandoned his copyright in the photographs. In such a case, John would lose his rights to enforce the copyright against Sarah’s use of the images, and the defense of abandonment would be successful in protecting Sarah from liability for copyright infringement.re