The following message is from Edward Greenberg. It was origionally posted on the EP forums. Edward has been kind enough to allow us to post it here also. This is an extremely important issue. Also take a look at the attached PDF document. Don Stewart has gladly granted his permission for his letter to Senator Sessions to be posted freely.


A few weeks ago I referenced a proposed new Trademark law formally entitled "HR 683 - the Trademark Dilution Revision Act". It passed in the House of Representatives and is under consideration by the Judiciary Committee.

Now stay with me, don't get bored. This is important.

The Act contains certain anti-speech aspects which will directly affect illustrators, photographers and others.

It will serve to eliminate the current protection for non-commercial speech currently contained in the Lanham Act. It will prevent businesses (artists)and consumers from invoking famous trademarks to explain or illustrate their discussion of public issues.

For example, using the phrase "Where's the Beef" could be actionable. Although you might use it in a non-commercial way, the (very) famous Wendy's slogan when used to comment might not be protected by the fair use exception.

The Act would give companies considerable leverage in preventing artists and photographers from employing their marks in images by claiming the mark is being "diluted". The bigger the company, the more famous the trademark, the easier it will be to prevent you guys from using it. National companies with highly recognizable marks would have more leverage than any single creator or small business and would easily outspend any of you to prevent your using their mark.

Exceptions for fair use, non-commercial use, reportage, commentary, etc. currently existing could disappear and would be no defense to claims of infringement of a registered or unregistered mark. Trade dress is often unregistered.

To see how this new legislation might operate, go to www.dsart.com/Gallery/VW_bug.htm. That illustration was created by Donald Stewart in 1992. Mr. Stewart has displayed the work to students in classes and used it as a teaching tool. The image has also been sold.

VW of America has threatened Mr. Stewart with litigation in anticipation of the new law. The Volkswagen Beetle is composed of bugs.
The illustration does not disparage VW in any way. It is lighthearted and whimsical. It clearly posts the VW marks.

I dare say most if not all of you, have created works which like Mr. Stewart's, are not disparaging and employ some recognizable mark somewhere in your image. A photo using a Hummer for example, to comment on the proliferation of gas guzzling SUVs could give GM/Hummer cause to prevent the publication of your image. Incidental, background use of a recognizable mark like a Coke can for example, could easily result in your prompt receipt of a lawyer's letter from a really big law firm representing a really, really big corporation.

As written, strong cases have/could be made against candidates who have used popular marks to comment on their opponents. This is not a right wing/left wing thing. It is a free speech, little guy against big guy thing. Your artistic freedom is at risk.

I urge all of you to write to Senator Arlen Specter, Chairman of the Senate Judiciary Committee, 711 Hart Building, Washington, DC 20510 to voice your opposition to this bill.

Mr. Stewart is ably represented by Paul Alan Levy, Esq. who is with Public Citizen Litigation Group, 1600-20th Street, NW Washington DC 20009 www.citizen.org/litigation. He has taken an active role in fighting this proposed legislation and deserves your vocal and written support.

This is your livelihood we are talking about here. Don't bitch about corporate coercion, do something about it. Send a letter or better, send a photograph accompanied by a short note to make your point. You guys get paid to create images to sell products and ideas get people's attention. Get Senator Specter's attention and write to your own Senator as well.  The bad guys are betting heavy on your well earned reputation for apathy.


Edward C. Greenberg
Erica Galinski
Greenberg & Reicher, LLP
50 East 42nd St. 17th floor
New York, NY 10017
212.697.8777
ecglaw@aol.com

No, this bill if passed would allow companies to go after anyone whose image showed a trademarked item in any way. Good, bad or indefferent.

From Ed's post: "The Act would give companies considerable leverage in preventing artists and photographers from employing their marks in images by claiming the mark is being "diluted"."

and

"Exceptions for fair use, non-commercial use, reportage, commentary, etc. currently existing could disappear and would be no defense to claims of infringement of a registered or unregistered mark. Trade dress is often unregistered."

In other words, any company could come after you if their "Mark" appeared in one of your images whether that "Mark" was registered or not.

Sorry it's taken so much time to get this posted but it has been a hectic last few days.

Below is my letter to Senator Spector which I also sent to both of Senators from my state. I hope everyone will take a few minutes to do the same. Contact information for US Senators can be found at http://www.senate.gov/.

Anyone wanting to use my letter as a basis for your own, please feel free to do so.

To: Senator Arlen Specter
Chairman, Senate Judiciary Committee
711 Hart Building
Washington, DC 20510


Dear Senator Specter,

I am writing you regarding the Trademark Dilution Revision Act, HR 683 that concerns me greatly. I understand this bill makes changes to section 43(c) of the Lanham Act which, will only serve to further protect the interests of large companies while severely curtailing the right of individual free speech.

I am a freelance photographer located in Albuquerque, New Mexico and as such I have an abiding interest in preserving our First Amendment rights since my livelihood depends on those rights. Passage of Trademark Dilution Revision Act, HR 683 would most certainly have a chilling effect on those rights by inhibiting the free speech of all types of artists. While I agree that trademark holders should be allowed to protect their property, this should not be extended to what amounts to censorship under the guise of protecting their property against 'dilution'.

Under the current interpretation of the law, there are three defenses when trademarks or brands are used in creative works. These three defenses are fair use, non-commercial use and news reporting or commentary. Courts have long recognized artistic expression as a non-commercial use and protected by the First Amendment as speech even when these works are sold commercially. HR 683 would seek to eliminate entirely non-commercial use and restrict fair use to criticism and parody only.

No artist in this country has the resources to fight large companies or corporations in the courts. HR 683 will only increase the already overwhelming advantages these companies have over us. The simple fear of possible litigation will be more than enough to stifle the free and creative expression we have come to enjoy in this country. Please do not allow the passage of HR 683 to restrict that free expression.

Sincerely,

Jim Hunter

I spent a lot of time on Capitol Hill during the 15 years I was executive director at ASMP.  ASMP was either fighting or advocating for certain legislation. One thing I learned is that many Bill get passed in the House, as H.R. 683 has, only to die in the Senate.  Lobbyists will tell you that, if you want to kill legislation, you do it in the Senate. 

I just checked the Senate Judiciary Committee and its Intellectual Property Subcommittee Websites. No hearings are scheduled for H.R. 683.  At least not yet.  Seems like Judge Alito's confirmation hearing kept the subcommittee members busy. Since Arlen Specter seems hell bent on having hearings of the full committee on the NSA electronic eavesdropping issue, it is possible that H.R. 683 won't get a hearing for some time, if at all.

Since Trademark falls under a subcommittee's turf, the best course of action to protest it is to write to the members of the subcommittee.  That is especially true if you are a voter in one of the subcommittee members states. Writing to Arlen Specter, Judiciary Committee Chair is OK, but the subcommittee is the key unless H.R.. 683 is headed for a full judiciary committee hearing, and i doubt that is the case. It would be very unusual.

Below, I have posted the list of the Intellectual Property Subcommittee Members. There are two Senate Office Buildings, so if you want address of any senator you can just look them up on Google. They all have Websites. You can look up senators at www.senate.gov.  The most effective way to influence them is to telephone them. They keep a record of all phone call opinions. Faxes, email and snail mail are OK too.

I am going to confer with some of my old sources on the Hill to try to find out what the prospect for the Bill are in the Senate.  I expect that will take a couple of days. I'll report back what I learn.


Republican Members

Orrin G. Hatch, UT(Chairman)
Jon Kyl, AZ
Mike DeWine, OH
Lindsey O. Graham, SC
John Cornyn, TX
Sam Brownback, KS
Tom Coburn, OK

Democratic Members

Patrick Leahy, VT (Ranking Democrat)
Edward M. Kennedy, MA
Joseph R. Biden, JR., DE
Dianne Feinstein, CA
Herbert Kohl, WI
Richard J. Durbin, IL

Richard Weisgrau's article and letter to letter to Senator Orin Hatch have now been posted and can be found here.

I just received this note from Paul Levy. If anyone has any ideas, comments or suggestions as to how we can help get the word out about HR 683 post them here and I will pass them on to Paul. He has also provided us with a letter that was sent jointly by several consumer, arts and public interest groups to the Senate Judiciary Committee.

Also, it's not too late to write a letter to your Senators. Every little bit helps.



I saw your nice letter to Senator Specter.  Thanks for writing it, and for publicizing the issue on your web site. 

I am the lawyer at Public Citizen Litigation Group who has been involved in this issue.  We are trying to get the arts sections of the media to focus on the problem, given the way in which the bill threatens the livelihoods of photographers (and other artists) whose work includes incidental references to trademarks or trademarked goods of which  the trademark owners  may disapprove.  Publication in newspapers and broadcast coverage may be an effective way to bring the problem to the attention of Senators as well as their constituents.  Do you have any thoughts about how  we might make some progress in that direction?    Would photographers have good contacts with the arts reporters and editors at their local papers and stations?

Paul Alan Levy
Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000
http://www.citizen.org/litigation

Yesterday, I received an email message from the Authors Guild, of which I am a member. It went to all its members. The email voiced objection to HR683 and provided an one click automatically sent email to Senator Spector from the AG member.  I suspect that Spector has received hundreds and hundreds of emails from AG members by now with more to follow. It would be nice if photographers' organizations took the same energetic approach. Of course, maybe they have, and i am simply unaware of it.

As for how to spread the word, the best way is by pushing a message rather than waiting for a person to pull it. That makes email best. If this site has an email list of subscribers, it could send them a message asking them to visit the site for details and to send am email to Spector.

Personally, I sent emails to over 100 people making them aware of the situation. I am sure many of them will contact Spector. Anyone reading this ought to send an email to your own contact list if you share the concern with the rest of us.