Lamar Smith Not Stopping At Copyright Law; Wants To Make Trademarks Worse, Too

from the intellectual-property-smackdown dept

We’ve written a few stories recently about how too many people are trying to expand the boundaries of trademark law well beyond where they should be. The entire purpose of trademark law is not about “ownership” of your trademark, but to prevent consumer confusion. That is, so that one company can’t put out a product riding on the coattails of another — tricking users into believing it’s the other company’s product. I can’t release a Techdirt soda and call it Coca-Cola, because that could confuse people. It’s not supposed to be for preventing everyone else from ever using your trademark — though, in today’s age where the purpose of intellectual property is often misunderstood, that’s certainly the way many are trying to stretch trademark law. The latest, as pointed out by the EFF is a new bill on trademark law that completely guts many of the exceptions to trademark law. Specifically, it gets rid of exceptions for fair use, news reporting and commentary, and non-commercial use. There is no reasonable justification for this under the basis of what trademark law is designed to protect — except to give trademark holders more rights that they don’t need and which they’ll use to suppress perfectly reasonable actions. And who’s sponsoring the bill? None other than the same Congressman who’s trying to expand copyright laws in dangerous ways as well, Rep. Lamar Smith. Apparently, Rep. Smith is very focused on working as hard as possible to make intellectual property as stifling as possible. Update: There’s a good discussion in the comments about the wording of the bill that suggests the original articles were misreading the bill. The new bill doesn’t completely elminate those exceptions — but limits them only to cases involving dilution of trademark, as opposed to across all trademark cases.

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Comments on “Lamar Smith Not Stopping At Copyright Law; Wants To Make Trademarks Worse, Too”

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Anonymous Coward says:

Re: Why any trademark law?

I don’t think its technically false advertising if the person just calls it Coca-Cola. False advertising implys saying a product can do something it can’t or is something its not. Now if they where deliberatly trying to make people think it is Coca-Cola then yes it would technically be false advertising and fraud. Trademark law is what is used to prosecute for that version of false advertising, but it has other effects as well.

Coca-Cola’s a bad example for this.. There really isn’t any reason to name your soda Coca-Cola for any reason other than to trick people into buying it.

Here in Madison there used to be a sub store called Big Mike’s (Or something like that) he was planning to expand out to other citys but found out there where already several places with the name Big Mike’s. If he had expanded with that name people would have related him with the other places. Causing confusion in the market as people would apply their experiences with one place to another place. IE: Say his sub store has crappy service (Not that it does.), people would think the other Big Mikes places also had crappy service.

I believe this is the type of situation trademark law is supposed to prevent.

Yeah, trademark law really is somewhat of a subset of false advertising. Its just such a major section that its given its own title.

Anonymous of Course says:

Public Servants.

What a wonderful fellow. He’s so busy protecting IP

…it just makes me want to puke.

Rep Smith was named a Most Important Person

by Managing IP Magazine! From the press release

gushing about Rep. Smith’s patent omibus bill…

“If the bill is passed, it will see the US adopt a first ­to ­file

system, eliminate best mode practice and place a limit on

damages awarded for wilful infringement. The bill will also

require the USPTO to publish all patent applications. If

passed, the law would dramatically alter the US patent

regime ­ in large part thanks to the efforts of Smith and

his staff.”

You see, patents aren’t about protecting your invention,

they are a commodity to be managed like stocks or pork

bellies by these yahoos.

Once you realize this it all makes a lot more sense.

God save us from such wonderful people.

Mike C. says:

Maybe I am just reading this wrong, but..

Can someone please point out the exact text that says what’s going on here? I looked up HR683 at the Library of Congress and found the following:

`(3) EXCLUSIONS- The following shall not be actionable(emphasis added) as dilution by blurring or dilution by tarnishment under this subsection:
`(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with–
`(i) advertising or promotion that permits consumers to compare goods or services; or
`(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
`(B) All forms of news reporting and news commentary.
`(C) Any noncommercial use of a mark.

Am I reading this wrong or is this actually saying the exclusions are still in there?

discojohnson says:

Re: Maybe I am just reading this wrong, but..

You’re absolutely correct. Editor and Publisher needs to do some fact checking…as does Techdirt. Don’t believe everything you read on the Internet until you get the information FROM THE SOURCE! Good catch, Mike C. In fact, the exclusions only got better for the general good on the 6th draft (the one in question). The original text:

`(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.

Jeff G. says:

Re: Maybe I am just reading this wrong, but..

Umm…I thinking you’re conflating two things:

1) the new bill eliminates language that is currently there; so to see the removal you would have to look at the old law and look at the new law and see that parts of the old law are no longer there (rarely does legislation say “remove x” – it usually just re-writes the section with the removed stuff missing

2) very importantly – just because the new bill removes the ‘explicit’ exceptions does not mean that those exceptions are removed; prior to 1996 (when the explicit sections were added) these exceptions existed as part of the common law interpretation of the fair use doctrine for trademarks. Of course, fair use is not being removed from the legislation (even if the legislation removed it, courts would not – contrary to what the RIAA and others would have you believe fair use is inherent to our very basis of intellectual property). The removal of the explicit exceptions would remove the explicit safe harbor. So now, newpapers (for example) would have to demonstrate that their use was a “fair use” instead of the presumption of fair use that they received – it is basically shifting the burden of evidence back on to the alleged infringer to show that their use is fair.

This is actually a pretty significant change, and I only have to point to the DMCA’s take-down notice provisions as proof. Under that regime, the alleged infringer must remove the content until it can prove that it is not infringing (by way of affidavit). It is subject to a HUGE amount of abuse – where copyright owners with absolutely no case file DMCA notices because it is easier to comply (in fact take-down upon notice, regardless of the baselessness of the accusation, is mandated) than to meet the burden of proof that you are not infringing – it is basically a ‘guilty until you can show you are innocent’ (notice, I didn’t say “prove” – the one making the accusation always has the burden to “prove” infringement – these rules just work to shift burdens of proof and production of evidence).

Mike (profile) says:

Re: Maybe I am just reading this wrong, but..

Am I reading this wrong or is this actually saying the exclusions are still in there?

Yeah, I just added a clarification to the top. What’s happening is that the new bill is limiting those exclusions only to dilution claims, as opposed to across trademark law, apparently. So, yes, those exceptions are still there… but only for dilution claims.

Frank says:

Re: Re: Maybe I am just reading this wrong, but..

However dilution claims can only occur when a company has somehow messed with, or diluted, their own TM. So in order for a dilution claim to arise, the company must actively do something to its trademark to open itself up to such claims, meaning anyone who rationally uses a TM in an article, song, artwork, etc., is still very liable under this proposed bill.

Good job on the clarification, Mike, however your original concerns are still very valid since dilution only applies to the company holding the TM.

Greg Beck says:

It’s a very subtle change with far-reaching consequences. If you read the two versions of the statute carefully, you’ll notice that the first version says the exceptions are not actionable under this “section.” The new version, however, says the exceptions are not actionable under this “subsection.” “Subsection” refers only to section 43(c) of the Lanham Act, which covers dilution, while “section” refers to all of section 43, which also includes unfair competition and common-law trademark claims. So by changing “section” to “subsection,” the drafters eliminated these statutory exceptions for regular trademark infringement claims. Although the change is slight, the effects are so big that it’s hard to beileve the change was merely an oversight.

RoyalPeasantry says:

Reading it wrong again?

Ok… One thing I want to clarify as well..

Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended–

(1) by striking subsection (c) and inserting the following:

`(c) Dilution by Blurring; Dilution by Tarnishment-

And later

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

I may be reading it wrong as well, but it seems to me as though this amendment only affects Section 43 subsection (c) which is the section on dilution by blurring and dilution by tarnishment. Which would be why the text of the exclusion is limited to only dilution claims.

Now I don’t know how to navigate the library of congress (I tried, but it seems my web searching skills have failed me..) but if someone could explain how to find the current law with all of the previous addendums added in that would be most usefull. If the rest of the law still contains the normal exclusions then its a false alarm. (For the removal of exclusions at least)

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