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Trademark Act May Threaten Fair Use

by NewStandard Staff

Feb. 6, 2006 – The legal protections that allow a reporter, musician, small business or just about anyone else to mention a registered brand name in a creative work would be dramatically altered under a bill currently moving through the US Senate. In anticipation of committee hearings slated for next week, a broad coalition of groups has requested that the Senate Judiciary Committee members consider the adverse effects the measure may have on creative expression.

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Last Friday, privacy and free speech advocates Public Citizen, Public Knowledge and the Electronic Frontier Foundation joined with trade associations representing librarians, photographers and video sellers in calling for "two minor changes" to the bill. The proposed amendments to the Trademark Dilution Revision Act of 2005, described in a letter to lawmakers, are intended to preserve an existing safeguard a longstanding precedent. Known as "fair-use," the long-honored provision permits the use of brand names for educational and non-commercial purposes.

Current judicial interpretation of trademark law generally permits artistic use of copyrighted names and symbols – for instance, a parody of a popular copyrighted song in a comedic performance. Commercial use is also allowed but subject to certain limitations.

Large businesses have long been fighting for tighter regulation of the use of their trademarks, an effort partially stalled in 2004 when the Supreme Court set a relatively high bar for proving a trademark violation in Moseley v. Victoria Secret Catalogue.

According to that landmark decision, in order to block the use of its trademark, the owner must demonstrate that other use of the trademark actively lessens or "dilutes" public recognition of the original, thereby undermining its commercial value.

Under the law up for consideration in the Senate, trademark holders would be permitted to seek injunctions against use of their marks if they can prove the representation is "likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury," according to a summary of the bill by the nonpartisan Congressional Research Service. The House passed the bill last April,

The groups that authored the letter, which included the American Library Association and the Professional Photographers of America, said that this seemingly minor expansion of the dilution threshold could boost the power of trademark owners to impinge on free expression. The groups’ main concern is that the revisions would place the burden of proof on defendants who have few, if any, resources to launch a legal defense of their use of a trademarked symbol or name.

Ultimately, the groups warned, the bill would grant larger corporations and wealthy people a weapon to squelch free speech, including public criticism.

While the groups wrote that they believe "trademarks play a vital role in helping consumers distinguish between goods and services," they warned that the current language of the bill showed that "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."

The Senate Judiciary Committee is scheduled to hold a February 16 hearing on the measure.

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The NewStandard ceased publishing on April 27, 2007.


This News Report originally appeared in the February 6, 2006 edition of The NewStandard.
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