24.05.2006 

MarkenNews

Non-Commercial Use of Trademarks to be limited in Future?

Amendment in American Trademark Law provokes Protests

The American artist Don Steward was cautioned at the beginning of the year by Volkswagen because he had drawn a Beetle car out of insects. The American Charles Smith received mail from Wal-Mart after he had used his bad-taste campaign ‘Walocaust-The World is Our Workplace’ to draw attention to the business practices of the supermarket chain. Stewart and Smith were accused of harming the trademark. Both insisted however on their right to freedom of opinion, which in the USA allows the use of registered word and picture trademarks so long as it is  for non-commercial purposes. Thus stands  the principle of ‘fair use’. That could all soon change however. A new law should make it easier in future for trademark owners to proceed against a possible dilution of their motifs. The protection of non-commercial free expression of opinion involving registered trademarks should thereby be relaxed. Critics believe that the so-called Trademark Dilution Revision Act (H.R. 683)  will massively cut back the rights of non-trademark owners.

Civil rights organizations, journalists, artists and photographers are therefore protesting against this legal initiative. They fear that after the law comes into force, they will be prevented from using trademark emblems and protected slogans in texts, artistic works or photographs. The trademark owner need only be of the opinion that their trademark is being diluted for an infringement to come about, according to the new law. As grounds for an injunction, it would then only be necessary that a  notional connection exists between a concept and a similar, known trademark, leading to a weakening of the power of identity or  adverse effects on its status. Therefore a stop could be put to text and image portrayals  in which critical opinions are expressed on companies and their products.   That would benefit the more famous owners of trademarks especially.

This alteration of trademark law goes back to a legal initiative  which came into being in connection with a decision of the Supreme Court from 2003 in the case of Victoria’s Secret against Victor’s Little Secret (as we have reported). The well-known lingerie label  sued the sex shop because it was of the opinion that the value of its underwear brand was  being diminished by the name of the shop. The judges of the Supreme Court ruled at the time that the bare assumption  that the name of a famous brand would be damaged  by the brand name of a third party is not sufficient in itself.  On the contrary, the dilution has to be actually proven.  The burden of proof was therefore put on the owner of the rights. As a result, the larger companies began to doubt their ability to assert their trademark rights and have been pressing for an alteration to the Federal Trademark Dilution Act. Out of this came H.R. 683. The new law has already been approved by the Senate and House of Representatives and will now undergo a last examination before it is laid before the President for signing.

The Electronic Frontier Foundation, a non-profit organization, which applies itself to the protection of digital copyright , have classified the new ruling as a ‘Dream for a Large Company’. Lawyers would be able to sue business people and individuals because of the use of words, pictures or colors  which appear similar to those of famous company trademarks. And that is without having to prove that any damage has truly been suffered by the company. Other organizations also, like Public Citizen,  the American Library Association, Public Knowledge or the Professional Photographers of America are protesting against the law. The American Property Lawyer Association and the International Trademark Association however dismiss any accusations that the new law would restrict freedom of speech and artistic freedom.

How the law is interpreted and what consequences it will carry in its train will only be shown in the run of time by the administration of justice in each case.

rmb / juk

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