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Important New Legislation Proposal UPDATE |
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Written by Paul Alan LevyPublic Citizen Litigation Group
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Wednesday, 15 February 2006 |
We understand that communications from artists and others who would be personally affected by the elimination of the "non-commercial use" defense is finally getting the attention of some members of the Judiciary Committee, and there may be some movement on this subject in the last 48 hours before the scheduled markup. Accordingly, we sent the following cover note with an attached document giving some examples of "incidental" references to trademarks that are exposed to litigation, or the threat of litigation, as well as explaining why the possibility of defending on grounds of "nominative fair use" does not give much comfort to individuals or small businesses.
Attached is PDF document that graphically illustrates some examples of the unintended consequences of the deletion of the non-commercial use defense . The examples show uses of famous trademarks that would be readily subject to litigation, but which do not comment on the trademark holder or on its product.
Editors Note: The Attached is PDF document to which Mr. Levy refers to above references two attached letters. Those letters can also be downloaded as PDFs. Letter 1, Letter 2.
Thus, the defense of such cases would require invoking the laborious, multifactor defense of nominative use but would be clearly protected by the non-commercial use exception. In its recent decision in Century 21 Real Estate Corp v. Lendingtree, Inc., 425 F3d 211, it took the Third Circuit ten pages in F3d to explain how nominative use cases should be analyzed under its three pronged test (four pages on the nominative use defense alone), while the concurring opinion contains a lengthy critique of that analysis. The courts of appeals are still deciding what the nominative use defense includes, not to speak of the exact parameters for its application. The Third Circuit, for example, modified the Ninth Circuit's test adopted in Playboy v. Welles. It will take years before the meaning and application of the term becomes settled. Commercial users can afford to litigate cases like this, but non-commercial users should be able to escape simply because they are noncommercial.
The only actual demand letter on which we can lay our hands on short notice is the letter from Volkswagen to Don Stewart (a copy is attached), but letters from photographers or lawyers who customarily represent photographers and similar artists insist that such demand letters are commonplace. Some of the letter writers testify regularly before the Judiciary Committee on intellectual property issues and so their reputations should support the claim that the impact of such demands poses a serious problem. I am attaching the letter from Edward Greenberg, and giving the URLs from other letters that have been sent but which I do not have permission to copy. letter_to_senator_hatch.pdf (Dick Weisgrau); http://www.asmp.org/news/spec2006/HR683letter.php (Victor Perlman).
As a final thought, consider the ACLU's recent pizza order video that dramatized the danger created by massive, cross-referenced private databases. http://www.aclu.org/pizza/
If instead of using a generic company name, Pizza Palace, the ACLU had put Domino's logo in the video as an embodiment of takeout pizza, couldn't the ACLU be sued for dilution? The purpose of the video is not to comment on Domino's but rather on growing assault on privacy. This is the kind of non-commercial speech that ought to be automatically exempted from trademark claims.
Paul Alan Levy
Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000
http://www.citizen.org/litigation |
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Last Updated ( Thursday, 16 February 2006 )
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