More Reaction to Column on Trademark Law

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By: by E&P Staff

The recent column by Steve Yahn on possible changes in protections for journalists under trademark law has drawn a wide reaction. We published two letters and Yahn?s response yesterday. Here is another letter and reply.


The online Editor & Publisher article by Steve Yahn dated April 22 and entitled ?New Trademark Law Might Restrict Free Speech? states that H.R. 683, the Trademark Dilution Revision Act, a bill which the members of INTA strongly support, will ?remove key free-speech protections that have been part of U.S. trademark law since 1996.? That would be alarming if true, but it?s not.

One look at H.R. 683 makes clear that the bill not only preserves the defenses to a dilution claim that exist today ? fair use, news reporting, and commentary ? but, thanks in part to free speech interests, adds to them by: creating a parody defense; explicitly protecting both nominative and descriptive fair use; and protecting the facilitation of fair use.

The public records of three Congressional hearings on trademark dilution also make it clear that the adequacy of free speech defenses to dilution claims was a central concern in evaluating the proposed legislation. Everyone who testified, and more importantly the members of Congress, all commented on the importance of free speech rights. H.R. 683 never would have gotten out of committee if the legislators from both parties had not been confident that free speech rights were protected.

Instead, last April, H.R. 683 passed the House by a wide, bipartisan margin of 411 to 8, and the Senate passed the measure via unanimous consent last month. It passed with statements of support from leaders of both parties, which included comments on the successful efforts to address free speech concerns. I would be pleased to provide to you with these statements of support, which are in the Congressional Record.

The Yahn piece quotes Public Citizen?s Paul Levy who implies that, prior to 1996, the year the current dilution statute was signed into law along with its associated defenses, there were no first amendment defenses to trademark infringement claims. Of course, infringement, which deals with the likelihood of confusion involving any trademark, is entirely different from dilution, a highly specialized cause of action meant to protect truly famous brands from uses that blur their distinctiveness or tarnish their reputation. And 100 years of case law demonstrates the availability of fair use, noncommercial use and news commentary defenses to infringement claims. The federal dilution law did not disturb that precedent in 1996, and those defenses to infringement claims are unaffected by H.R. 683, which, as noted, strengthens the free speech defenses to dilution claims.

H.R. 683 is a well-balanced, carefully crafted piece of legislation that benefits trademark owners and consumers and enjoys very broad support, and I would be pleased to answer any questions that you might have about it.

Alan C. Drewsen
Executive Director
International Trademark Association
New York, NY


Paul Levy responds:

I am pleased that Alan Drewsen of INTA agrees that my charge that H.R. 683 removes express protections for fair use, noncommercial use, and news reporting from the Lanham Act, if correct, would be “alarming.” My charge is correct, as revealed by careful review of the statutory language which extends the defenses to ?this section? (section 43), as compared to the bill which limits them to ?this subsection? (subsection(c)).

Drewsen charges me with “imply[ing] that . . . there [a]re no first amendment defenses to trademark infringement claims.” I imply no such thing. Yes, we who represent artists and consumers who use trademarks in the course of their speech invoke the First Amendment as a defense, and everything we have sent to Congress to try to fix this bill has been very explicit about that. But what Congress has done in past years, when amending the Lanham Act, is recognize that it is not enough to pass a law and let the courts worry about whether it is constitutional or whether some parts of the statute would be unconstitutional as applied. Instead, the constitutional value of free speech should be reflected in the language of the statute. That is what the defenses of fair use, noncommercial use and news reporting do.

H.R. 683 restricts those defenses so that they only apply to dilution, and prevents them from applying, as they now do, to limit infringement or unfair competition claims under section 43(a) of the statute. Why is INTA so insistent on changing the status quo? What harm has the current statutory language done to any legitimate interests? How would keeping the existing language that applies the three defenses to ?this section? hurt any legitimate interests? And why wasn?t INTA open about this in the first place?

Drewsen states that the bill had been ?carefully crafted? and that it has been vetted by ?three Congressional hearings? that paid attention to the impact of the bill on ?dilution.? Indeed. I challenge Drewsen to show where in the record of those hearings INTA witnesses ? or anybody else ? told Congress about the clever little change in introductory language of section 43(c)(3), why that change in language was needed, and what court precedents it was intended to fix. I have not been able to find that testimony. Yes, this bill was ?carefully crafted,? but it contains a land mine, and its crafters very nearly pulled this off without anybody noticing. The surest indicator of Congressional intent is a change in statutory language, and if INTA gets away with this change, trademark owners will be pointing to the change and arguing that Congress must have meant to deny such defenses against section 43(a) claims.

Other (private) statements that I have seen claim that this change was not intentional; but now that it has been pointed out, INTA insists that this change is so crucial to the bill that they cannot possibly yield on it. So readers should ask INTA the same question that we have been asking in public forums ? why is that language change so important? What are you trying to accomplish?

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