Several consumer, arts and public interest groups jointly sent a letter to the Senate Judiciary Committee on February 3 condemning provisions in the Trademark Dilution Revision Act (H.R. 683) that weaken protections for individuals and small businesses that refer to companies by their trademarks. The letter, along with their analysis is presented below in it's entirety.There is also a PDF of the transcript of a panel discussion at Fordham Law School in which Paul Levy participated along with representatives from the two main sponsors of the bill.

    February 3, 2006

The Honorable Name
Xxx
U.S. Senate—
Washington, D.C. 20510
 
Dear Senator:

    We write to express concern about a few anti-consumer, anti-speech provisions of H.R. 683, the Trademark Dilution Revision Act, which passed the House last spring, and will be considered at the Judiciary Committee’s business meeting later on February 16.  Two technical changes threaten to harm consumers as well as artists and other small business owners both by making it more difficult for consumers to refer to big companies by mentioning their trademarks, and by making it more difficult for companies to promote their own products by providing truthful information to consumers about why their products are better.  With two minor changes (proposed changes are attached), we would not oppose the bill.

    Our organizations strongly support the trademark laws, because trademarks play a vital role in helping consumers distinguish between the goods and services that come from businesses on which they have learned to rely, and from impostors who are trying to trade on some other company’s hard-earned reputation.  Unfortunately, some trademark owners are not content with using trademarks to inform consumers of their sponsorship, but would like to expand the trademark laws to interfere with robust commentary.

    Our specific concerns are that H.R. 683 would:

• eliminate the protection in current law for non-commercial use of a mark (section 43(c)(4)(B) of the Lanham Act); and                       
• change the application in current law of all the defenses in section 43(c)(4) so that none of them apply to claims of “unfair competition” under section 43(a).

     
    To understand the impact of the changes that H.R. 683 would make, consider this example: Walter Mondale's put-down of Gary Hart during the 1984 primaries, using the Wendy’s slogan “Where’s the Beef,” could be actionable as dilution under the bill as passed by the House.   It is quite likely that the slogan would be a famous trademark even under the new definition of famousness; a strong case could be made for likelihood of blurring; and although the use is non-commercial, that alone would not be a protection from the dilution cause of action.  The phrase was used to comment, to be sure, but not to comment on Wendy's; Mondale just borrowed the phrase to comment on Hart.  Thus, it would not be protected by the specific definitions of fair use.  

    We urge that H.R. 683 be revised so that it no longer removes the non-commercial use exception, now in section 43(c)(4)(B), and no longer to removes the language now in section 43(c)(4) that extends these exceptions to “this section.”  We attach amendments that would effectuate this change.  We also attach a detailed legal analysis and an explanation of the many ways in which the bill as it currently stands would hurt consumers, artists, and small business owners.

    We’d be glad to meet with you or your staff to elaborate on these concerns.  In fact, over the past few months we have tried to engage with the private sector sponsors of the bill to get them to articulate reasons why meeting our concerns would harm their interests, so that we could try to shape a compromise that meets everybody’s needs.  They have yet to respond publicly, and the private explanations we have received simply do not hold water and are even self-contradictory.  Indeed, when questioned about noncommercial at a public forum last fall at Fordham Law School, representatives of both the International Trademark Association and the American Intellectual Property Lawyers Association stated that they had no problem in principle with excluding purely noncommercial uses; but although they are unwilling to explain why publicly, neither is willing to compromise.  We therefore ask the Committee to correct these problems at its business session this month.

Sincerely yours,


Joan Claybrook                    Lynne Bradley
Paul Alan Levy                    American Library Association
Public Citizen
                           

Fred von Lohmann                    Gigi Sohn
Electronic Frontier Foundation            Public Knowledge


Stephen Mooser                    David Trust
Society of Children’s                     Professional Photographers of America   
Book Writers and Illustrators

                                           
Brian Newman
National Video Resources