Monday, March 20, 2006

Trademark as Free Speech?

The ACLU provided testimony this week before the House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property on H.R. 683, "The Trademark Dilution Revision Act of 2005"

The ACLU is particularly concerned about the possible chilling effects the act could have on free speech. In particular:
Parodies that use trademarks and corporate logos to generate awareness about social issues represent a type of important civic speech that is traditionally protected under the First Amendment. They make critical commentary on the trademark holder, furthering the traditional goals of trademark law by informing the consumer about the goods and services they purchase.

In his testimony, Johnson noted that the bill seeks to greatly expand the existing Trademark Dilution Act, making it easier for trademark holders to prove trademark violations, while simultaneously watering down protections for free speech. He urged Congress to accept amendments that would safeguard free speech.

According to The International Trademark Association (INTA):
Dilution is the unauthorized use of a highly distinctive mark by another in a manner which tends to blur its distinctiveness or tarnish its image even without any likelihood of confusion. Dilution is when the unauthorized use of a famous mark reduces the public’s perception that the mark signifies something unique, singular or particular.

H.R. 683 is arguable Congress’ response to the Moseley v. V Secret Catalog, Inc. (2003), case in which the Supreme Court held that an actual showing of dilution, rather than a likelihood of dilution, was required and thus objective proof of actual injury to the economic value of a famous mark was required in order for a trademark dilution action to proceed. H.R. 683 would appear to reverse this holding and merely require a trademark owner to prove that dilution was “likely” to occur regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

Trademark practitioners may want to keep track of the status of this bill via GovTrack.

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