Info/Law

A heated argument has now broken out in Washington over revision of trademark law. It hinges, as only lawyers’ arguments can, on the difference between a “section” and a “subsection.” That may seem silly, but the ramifications for trademark fair use could be significant.

I have been working for some time on a research project studying fair use-like defenses under trademark law. Unlike copyright law, where fair use is codified in a single section of the statute, in trademark law courts have traced the comparable defenses to various scattered portions of the statute as well as to common law and the First Amendment

In 1996, Congress created a federal trademark dilution cause of action, which was inserted into section 43(c) of the principal federal trademark statute. Section 43(a) already contained an older provision under which many trademark suits are brought. Although courts might well have expanded the preexisting fair use defenses to the new dilution cases, Congress also codified some of the most important ones when it passed the dilution law. It did so in Section 43(c)(4) of the statute.

Can you guess where this is going? That’s right, section 43(c)(4) says that certain types of uses “shall not be actionable under this section.” Does “this section” mean only the dilution portion (section 43(c)) or all of section 43? There are plausible arguments on both sides.

There is now a bill before Congress to revise the dilution law, in response to a 2003 Supreme Court decision interpreting its main provisions narrowly. The bill has already passed the House and Senate, but not in the same form; the House Judiciary Committee is currently considering the Senate version. It may well pass. (There are other potential objections to the bill; see here for concerns articulated by Public Knowledge.)

Guess how the fair use defense is phrased in the new bill? Sure enough:

(3) EXCLUSIONS- The following shall not be actionable 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.

This language ensures that the fair use defenses codified here apply only to dilution — that is, to “this subsection.” Maybe that’s what Congress meant to say all along, and maybe not. But that question seems beside the point. Now, lawmakers have the chance to make it clear that reasonable fair use provisions apply to trademark law generally, just as the authors of the copyright statute did when they codified over a century of common law principles of fair use in the 1976 Copyright Act. At a minimum they should leave the “section” language in place so that it will be open to that interpretation. Better yet, they could amend it to further specify the general applicability of fair use to trademark law.

Paul Alan Levy of Public Citizen is leading a campaign to keep the “section” language. A number of IP lobbying groups are resisting it. See here for an example of their frank exchange of views.  (I am only speculating, but I bet the real concern of the bill’s supporters is that any change would require the legislation to go back through the Senate again, and time is running out before the elections.)

Filed under: Trademarks