Title: To amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment.

The full text of the bill is available on Thomas.

Introduced

February 9, 2005

Analysis

H.R.683's Impact on Small and Existing Businesses

Dilution was originally codified in order to prevent the use of marks like DUPONT shoes, BUICK aspirin, and KODAK pianos. However, a mark does not to be identical to a famous mark to be enjoined. A mark need only be "similar." Thus, it is quite possible that courts will enjoin KADEK pianos, BIECK aspirin and DOPUNT shoes as well.

Although this is also the case under the current statute, H.R.683 allows famous mark holders to succeed by showing only "a likelihood of dilution" and thus makes injunctions and litigation generally much more likely. Existing small businesses and potential future businesses will be severely limited when choosing how to market their products and refer to themselves.

H.R.683 Impacts Free Speech

Although H.R.683 contains language intended to preserve the first amendment rights of individuals wishing to criticize or comment upon trademarks and trademark holders, the language is misleading and will likely be interpreted by the courts to exclude protection in many circumstances.

The bill now provides that:

"fair use of a famous mark by another person, other than as a designation of source for the person's goods or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner"

is not actionable. This language could be read to say that so long as a person is not using a parody as a "designation of source," she is free to parody a famous mark. A designator of source is basically synonymous with a trademark. In order to be registered, a mark must be capable of distinguishing the applicant's goods from those of others. If courts adopt this interpretation, it would allow famous mark holders to enjoin parodies that are capable of distinguishing their goods from the goods of others, even if the actual source of the goods is unknown.

In other words, if Lawrence Lessig sells t-shirts bearing the "Free Mickey" logo and that logo distinguishes the source of the goods bearing the logo, in the minds of consumers, from other goods, courts could enjoin the sale of the t-shirts if they found that the t-shirts were likely to tarnish the Mickey mark by creating an "association arising from the similarity between [Free Mickey and Mickey] that harms the reputation of the famous mark [Mickey]."

If courts begin issuing injunctions in such circumstances a wide variety of creative speech will suffer. As stated in the Public Knowledge's brief in Moseley,

"Through advertisements, commercials, and other promotional efforts by mark holders, trademarks have become essential to the communication about the particular goods or service, often representing the most effective means by which to state a position."

Limiting the rights of individuals to utilize trademarks in their speech not only chills the ability of individuals to communicate to the public, it prevents the public from hearing the often valuable messages being expressed by the individuals. By making injunctions against speech that comments on products and the corporations who distribute them more likely, H.R.683 diminishes the right of the public to access information about the largest and most influential corporations in American society today.

Additionally, because H.R.683 allows famous mark holders to seek injunctions based on a likelihood of dilution (as compared to the higher standard in Moseley which requires a showing that dilution by blurring is actually occurring) and validates tarnishment claims, it is likely that the new bill will chill more creative speech despite the parody and criticism exception than the current statute chills without it.

Sponsors

Rep. Lamar Smith [TX]

Status

Became Public Law No: 109-312