IP Notes

Speaking at a hearing before the House Judiciary Committee's Subcommittee on Courts, the Internet and Intellectual Property, representatives of the International Trademark Association and the American Intellectual Property Law Association expressed support for the Trademark Dilution Revision Act of 2005 (H.R. 683), which was recently introduced by Rep. Lamar S. Smith (R-Texas), the chairman of the subcommittee.

The Supreme Court held that the FTDA required a showing of actual dilution in Moseley v. V Secret Catalogue Inc., 537 U.S. 418 (2003). H.R. 683 would specify that only a demonstration of likelihood of dilution was necessary. The bill also defines "famous" marks, explicitly makes actionable both dilution by blurring and dilution by tarnishment, and states that acquired, as well as inherent, distinctiveness would make a mark protectable under the statute.

However, William G. Barber, a lawyer with Fulbright & Jaworski, Austin, Texas, who testified on behalf of the AIPLA, objected strongly to language in the bill that would impose liability for trademark dilution only when a defendant has used the mark "in commerce as a designation of source of the person's goods or services."

This limitation, Barber said, would prevent trademark owners from taking action against several kinds of offenses that would not necessarily constitute designation of the source of goods.

Zero Tolerance for 'Enjoy Cocaine.'
For example, he said, Coca-Cola Co. would not be able to bar the display of a sign saying "Enjoy Cocaine" that mimicked the Coke slogan "Enjoy Coke," because the person putting up such a sign would probably not actually be using the message to promote his sales of cocaine. Regardless, according to Barber, such a use would tarnish Coca-Cola's mark.

Another example offered by Barber was the display of an obscene image of the Pillsbury Doughboy. Additionally, he said that this restriction would prevent action against many instances of domain name cybersquatting. Finally, Barber said that this restriction would hinder trademark owners from taking action against uses that might make a trademarked term into a generic, unprotectable, term. Any concerns about protecting fair use rights under the First Amendment should be addressed separately as defenses to a claim of dilution, he said.

Barber's objection to the "designation of source" restriction was not supported by Anne Gundelfinger of the International Trademark Association. While there might be some cases that would not be covered by the statutory revision, Gundelfinger said, the most common and most egregious violations that owners of famous marks are interested in curtailing would be covered. She termed H.R. 683 a reasonable compromise between the interests of trademark holders and those interested in preventing restrictions on speech.

Furthermore, Mark A. Lemley, a law professor at Stanford University, contradicted Barber's assertion that a "designation of source" restriction was wholly new to dilution law. To Barber's claim that this restriction would protect cybersquatting, Lemley replied that the Anticybersquatting Consumer Protection Act and private arbitration under the Uniform Domain Name Dispute-Resolution Policy and similar forums already offer a means to counter such occurrences.




ACLU Sees Risk of Dilution of Free Speech
On the other side of the debate, Marvin J. Johnson of the American Civil Liberties Union testified that Congress should go further to protect uses, such as parodying a mark for the purpose of criticism. In essence, Johnson said, individuals should be allowed to engage in some kinds of tarnishment of a mark in order to pursue political and societal goals.

As an example, Johnson offered Joe Chemo, Adbusters magazine's parody of Joe Camel. Should someone come up with such a parody to promote an anti-smoking campaign and then create a Web site, such as the one at <http://www.joechemo.org>, and then sell T-shirts or other merchandise in order to fund the Web site, that person might be at risk of liability under H.R. 683.

Subcommittee member Rep. Darrell E. Issa (R-Calif.) said he was perfectly comfortable with restricting speech in this manner, since there were other ways available to criticize cigarette manufacturers. Rep. Howard L. Berman (D-Calif.), the ranking minority member of the subcommittee, took the opposite position, and asked why the Supreme Court's decision in Moseley should not be allowed to remain good law. Berman said he would work to ensure that any resulting legislation protected "the right to criticize, comment, and parody."

By Anandashankar Mazumdar

# posted by John @ 9:19 PM