even posting "Pepsi Blue" would make us liable.

February 3, 2006 10:08 PM

"Drove my Chevy to the levee..."? That's a lawsuit. "Pass the Courvoisier"? Yup. Lawsuit too. Artwork using Barbie Dolls? Lawsuit again... It's all part of the Trademark Dilution Revision Act, which would eliminate the non-commercial "fair use" protections of trademarks in art, literature, and speech-- To amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment. It goes to the Senate Judiciary Committee on the 16th, and there's a large roster of groups fighting it, including the American Library Association, EFF, and more, saying that consumers as well as artists would be preventing from exercising their free speech rights unless it's amended.
posted by amberglow (34 comments total)

as I understand it, this would also render all literary allusion illegal. And while it may not make past works illegal, wouldn't it make the sale and/or display of pre-ammendment work illegal? I hope a lawyer can clarify that for me.

But yeah, obviously there's no problem with special interest groups wielding unfair influence over our politicians. I'm glad to see that all that talk about campaign reform was unnecessary.
posted by shmegegge at 10:15 PM on February 3, 2006

This won't pass.
posted by Ethereal Bligh at 10:25 PM on February 3, 2006

The bill modifies Section 43 of the Lanham Act, codified at 15 U.S.C. § 1125. The bill completely removes subsection (c), which includes both remedies for dilution of famous marks and exceptions to those remedies. Subsection (c)(4) currently reads:

(4) The following shall not be actionable under this section:

(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary.

The comparable subsection of the new bill provides:

(3) EXCLUSIONS. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
(B) Fair use of a famous mark by another person, other than as a designation of source for the person's goods or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
(C) All forms of news reporting and news commentary.

While the new version still allows noncommercial use of the mark, it arguably defines such use more narrowly, limiting noncommercial fair use of the mark to commentary on the mark itself, rather than use of the mark in commentary on another subject. I say arguably, because (3)(B) reads "[f]air use of a famous mark by another person ... including for purposes of...." This is language of inclusion, not limitation, and I would argue, if I were sued under the provisions of the new bill, that this language preserves the full range of fair use rights. There is also no indication, at least from the language of the new section, that Congress intended to abrogate the nominative use defense. In other words, "Drove my Chevy to the levee..." would be still be a legal nominative use of the mark.
posted by monju_bosatsu at 10:34 PM on February 3, 2006

monju, how would that be defined tho? Art using Barbies is often speaking of women and their identities, etc--not about the doll itself--it uses the doll as readily-identifiable code. And Courvoisier is code for bling and living large--a lifestyle--not specifically about that particular drink.

Using a brandname as a metaphor or code or as shorthand would or wouldn't be legal? "Pepsi Blue" is not actually about a Pepsi product.
posted by amberglow at 10:42 PM on February 3, 2006

yeah, I could really use some plain language examples to clarify this. Reading monju's comment makes me think this isn't a big deal.
posted by shmegegge at 10:48 PM on February 3, 2006

me too--there are multiple meanings to all brands that are well-known, and very deep pockets for lawsuits which, even if thrown out, would have a very chilling effect.
posted by amberglow at 10:57 PM on February 3, 2006

They could always throw it on as a rider to the Patriot Act to ensure it's passage.
posted by sourwookie at 11:03 PM on February 3, 2006

amberglow, fair use is defined by a pretty extensive body of case law, and it doesn't appear to me that this change in the text makes any radical modifications to that body of law. However, this section does shift the inquiry from whether a use is noncommercial to whether a use is fair. I'm not a trademark lawyer, so I don't have a very good idea of how much difference that might make in practice.

The purpose of the Act, at least as far as the available legislative history indicates, is to change the burden of proof regarding harm. A review of House Report 109-023 reveals that the purpose of the amendment is to legislatively overrule the Supreme Court's interpretation of the current version of the law, announced in Mosely v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). In a dilution action between the lingerie company Victoria's Secret and a small retail company called Victor's Little Secret that sold, among other items, adult "novelties," the Court determined that the FTDA ". . . unambiguously requires a showing of actual dilution, rather than a likelihood of dilution." The House Report states that "[t]he Mosely standard creates an undue burden for trademark holders who contest diluting uses and should be revised." The amendment changes the standard by which trademark holders must demonstrate harm in order to receive injunctive relief.

Don't get me wrong, I don't think this is a good idea. I don't think that Congress should tinker with this section if the purpose of the amendment is focused on the other provisions.
posted by monju_bosatsu at 11:13 PM on February 3, 2006

Offspring of the corporate oligarchy and our legal system:


posted by Rothko at 11:15 PM on February 3, 2006

monju, isn't commercial use of something that's too close to an existing trademark already enforced? it's the non-commercial use that's at risk, no? Give us an example of what would change non-commercially.
posted by amberglow at 11:51 PM on February 3, 2006

Call me petty, but the first thing I noticed on the GovTrack site linked here was that the "Representatives" icon is a direct lift from the BeOS ?Users icon.

Not to start an oiled-up semiosis cage match on the nature of "icon", or anything...

Just sayin'.
posted by j-dub at 12:26 AM on February 4, 2006

God bless our common-sense, pro-business congress.
posted by Thorzdad at 4:32 AM on February 4, 2006

America sucks more every day.
posted by wakko at 6:28 AM on February 4, 2006

Ah, bringing up the Victor's Secret case reminds me of this great example of how supreme court coverage should be done. The Miracle Bra argument. The convertible bra argument. The full-coveage bra argument.
posted by Firas at 7:03 AM on February 4, 2006

Corporate fascism is on the march!

The K Street Project is alive and well.
posted by nofundy at 7:04 AM on February 4, 2006

I recently attended a conference at which a founder of a high-profile, DC-based advocacy group called Public Knowledge presented a brilliant indictment of current U.S. intellectual property law, and called for a complete reform and revisioning. Even those of use who thought we were on firm footing beforehand about fair use learned from her report that the sands are continually shifting; this area of the law is a moving target, changing daily as digital media pose new challenges and as the increasingly business-friendly legal environment of the US encroaches on freedom of speech. Check out some of these crazy stories.

One of her most important points was that corporations are feeling more and more emboldened to start a 'cease-and-desist' process even when an artistic or educational use clearly falls under fair-use guidelines. THis bullying tactic is often enough to cause an artist, school, or small non-profit to back down and cancel a project that is legal -- simply because the cost of retaining a lawyer to file responses, and potentially end up in a civil suit, is beyond the affordability of most of us small-timers.

Good catch, amberglow.
posted by Miko at 7:59 AM on February 4, 2006

This only effects fair-use concerning dilution by blurring or tarnishment.

Right now, judges find dilution all the time. I think this bill could end up shooting big corporations in the foot: if judges see that dilution now applies to cases which were formerly protected by fair-use, they might start reigning in dilution and applying it more narrowly.

But yeah, what monju_bosatsu said. It is not at all clear to me that this change in language creates any major change. But I'm not a full-time Lanham Act scholar (only part-time!).
posted by falconred at 8:10 AM on February 4, 2006

Personally, I wouldn't mind if I never heard "American Pie" again.
posted by 327.ca at 8:19 AM on February 4, 2006

has anyone taken it upon themselves to develop a Famous Mark™ line of, say, hot sauces? I'm finding this very hard to Google.
posted by arialblack at 8:35 AM on February 4, 2006

Dilution solely applies to marks that are "famous." The vast majority of trademark infringement actions do not involve so-called famous marks. Although most infringement actions claim dilution, plaintiff's marks are usually not deemed famous for the purpose dilution under federal law. The bar for fame is quite high.
posted by anathema at 8:42 AM on February 4, 2006

What about this quashing sites like aolsucks.com? (which doesn't exist...this is just an example)

It seems like this is tarnishment and therefore the attempted destruction of people's right to say what they feel about a company.
posted by Kickstart70 at 8:44 AM on February 4, 2006

PLEASE! Please let it pass.

After any congress-kritter utters the words in my upcomming Congress RPG - BAM! Lawsuit.

Just wait 'till I get the 'Secrets of the Black Robe' expansion module is done....then no judge could rule on infringement - conflict of interest!

Pelase let this new law pass, for actually selling the Congress RPG doesn't look like a big money maker.
posted by rough ashlar at 8:48 AM on February 4, 2006

so then this means that instead of companies having to prove that actual real dillution happened, individuals will now have to prove that no dullution could even theoretically happen? that sounds... impossible.
posted by shmegegge at 9:34 AM on February 4, 2006

im suprised they want to get rid of the free advertisement.
posted by trishthedish at 9:49 AM on February 4, 2006

But yeah, what monju_bosatsu said. It is not at all clear to me that this change in language creates any major change. But I'm not a full-time Lanham Act scholar (only part-time!).

Let me be clear, I'm not saying that there wouldn't be a major change in how this section works. Indeed, there likely would be, because as I noted above, the exclusion for noncommercial use is converted to an exclusion for fair use. I'm not sure how much substantive difference there is between those two categories, but certainly there is a procedural difference in how a defendant proves each. It may be relatively easy to prove that a use is noncommercial, but fair use requires a multi-factor, context-sensitive test. In other words, even if, ultimately, there is no difference in the types of uses excepted under this section, the change may increase the costs of defending a lawsuit.
posted by monju_bosatsu at 10:50 AM on February 4, 2006

Well that's the problem of course, trademark suits are already highly fact-specific, so who knows what practical effect these changes will have.
posted by falconred at 11:30 AM on February 4, 2006

this already happens without the new law, example the lady who named her coffie shop after herself and then had to fight starbucks in a legal battle, and lost. this bill will make things like that even easier for large corperations to pull off.
posted by stilgar at 2:08 PM on February 4, 2006

stilgar, the owner of that coffee shop had a ridiculous argument, with or without the new law. She didn't name her coffee shop Sam Buck's Coffee Shop, which almost certainly would have been legal; she named it Sambuck's in a deliberate attempt to trade on Starbuck's mark. That's neither a noncommercial use nor a fair use.
posted by monju_bosatsu at 4:22 PM on February 4, 2006

Right. I don't think that trademark infringement law is that complicated and requires one of you smartiepants lawyers to explain. It's common sense: if you're in the same industry, and you're obviously trying to take advantage of a famous trademark someone else uses, you can't. It's not rocket science. And it's commonsensically fair, too.
posted by Ethereal Bligh at 5:56 PM on February 4, 2006

One of her most important points was that corporations are feeling more and more emboldened to start a 'cease-and-desist' process even when an artistic or educational use clearly falls under fair-use guidelines.

Lawrence Lessig (a board member for Public Knowledge) has a lot to say about this in his book Free Culture (although his focus is on copyright law, not trademark law).
posted by Creosote at 8:09 PM on February 4, 2006

The arguments above are interesting. Monju's latest illustrates how trademark thinking has changed over time. Originally, a trademark was an origin of a good or service. Sambuck's is very clearly NOT Starbucks, and no one is going to enter the Sambuck's Coffee store believing it is a Starbucks. That was the end of the analysis, originally. Didn't matter HOW you used the Starbucks mark, as long as you weren't hanging it over your door in an attempt to lure in customers who honestly believed they were entering a Starbucks - but weren't. Fair enough.

Now, however, trademark holders have sought and received great expansions of their "rights". Monju calls it "trading on" the Starbucks name. Indeed, Sambuck's Coffee might remind people of Starbucks, although it is *clearly* not the same. This "reminiscence" would have been legal once, but obviously not today. Again, you've left behind the original meaning of trademark - no one believes they're entering Starbucks when they enter Sambuck's - and entered a new realm where a trademark can't even be vaguely associated with anyone else's commercial endeavor, or that second person has committed an offense.

It has been noted above, but to summarize: the effect of this change in the law would be to eliminate the current burden of proof on plaintiffs in getting an injunction (and possible massive monetary penalties, including all profits made by the defendant while using the trademark in question). They will not need to prove that anyone actually thought of Starbuck's when they saw Sambuck's, for example. This should substantially increase the power of trademark holders that do business nationwide to eliminate anyone with names or logos even vaguely similar to theirs. It's a straightforward increase in corporate power over individual power, for absolutely no reason - Starbucks hasn't lost one cent of business due to Sambuck's being in operation. This is purely a "because we can" type of law, without even an ostensible showing of harm. Indeed, it's *because* corporations can't show any harm from places such as Sambuck's that this law is being passed. This is the worst sort of pro-business law - one that stomps on individual freedoms and doesn't even do anything useful for businesses.
posted by jellicle at 10:04 PM on February 4, 2006

But this would make the "Laffy Taffy" song illegal, yes?
posted by iamck at 12:21 AM on February 5, 2006

"I drove my automobile whose brand name name I cannot legally mention to the levee but the levee was dry"
posted by troutfishing at 10:35 AM on February 5, 2006

I'm just a bill.
Yes, I'm only a bill.
And I'm sitting here on Capitol Hill.
Well, it's a long, long journey
To the capital city.
It's a long, long wait
While I'm sitting in committee,
But I know I'll be a law someday
At least I hope and pray that I will,
But today I am still just a bill.
posted by moonbiter at 10:07 PM on February 5, 2006