McDreamy, Podcasts, and Trademark Dilution

The Trademark Dilution bill is unfortunately set for passage on the floor schedule (it's currently number 27).

Trademark is an interesting animal in the intellectual property kingdom: Instead of being used as a limited monopoly to promote the sciences and useful arts, trademark can be a perpetual monopoly used to help consumers identify goods and services. A more recent flavor of trademark that cuts against its general consumer-protectiveness is dilution. Traditional trademark is changed by asking if the use of a mark, even in non-competitive markets, causes the mark to lose its association with a singular source or company, regardless of consumer confusion. Thankfully the US Supreme Court has up-to-now interpreted dilution narrowly, by saying the trademark holder has to show that actual dilution has occurred.

You may recall that this bill makes it much easier for trademark holders to receive court injunctions against another who's use of a mark is:

"likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury."

If you think it sounds like a rather weak standard, you're probably right. Even worse, originally, limitations like fair use didn't apply. We worked with folks like the Public Citizen, ACLU, and the EFF and with a little help from McDreamy (1,2(PDF)), an exclusions provision to allow for fair and non-commercial uses, was added to the bill.

Great, so the problem was fixed, right? We wish... The generally weak dilution standard still persists, but not only that, because of where the exclusions were placed in the bill, there's a bigger question of whether the exclusions of fair use, et al, will apply to the whole of trademark law.

Huh? Okay, let's try and take a step back. You may have read recently about the controversy of Apple Computers sending cease & desist (C&D) letters to companies who use the word "pod" or even as recently as last Friday, "podcast" in their product or service name. Generally, those are commercial uses, so regardless of whether or not Apple's claims have merit, HR 683 isn't going to change that issue.

However, think if you were using the term "pod" or "podcast" in a non-commercial setting. Thousands of users have setup their own podcasts to talk about whatever they want to--some commercial, but I would say predominantly non-commercial. If they use the term "podcast" to describe what they do, because of HR 683, the concepts of fair use or non-commercial use would not protect them. Why? Because the exclusions in the bill were applied only to the "subsection" of dilution, and not to the full section of the trademark statute.

While it looked like we were going to get out of this Congress without trademark dilution, the aforementioned groups have improved and delayed the bill as long as possible. We made our dent by getting the provisions to at least apply to dilution and there is hope for some positive legislative history language. Perhaps we can hope for some black-letter law fixes to these changes to trademark law next year.

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