Hearing of House Subcommittee on Courts, the Internet, and Intellectual Property: Trademark Dilution Revision Act of 2005
HEARING OF HOUSE SUBCOMMITTEE ON COURTS, THE INTERNET, AND INTELLECTUAL PROPERTY: TRADEMARK DILUTION REVISION ACT OF 2005
February 17, 2005
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Mr. Schiff. Thank you, Mr. Chairman, and I will keep it very quick.
I really wanted to just ask the three of you to comment on a hypothetical that Mr. Johnson raised. If I understand it correctly, Mr. Johnson, your thought was that in the Joe Chemo example, that barring the sale of t-shirts to support the website, the website itself would not run afoul of the dilution law as amended by this bill. However, it would be problematic if they sold t-shirts to support the website, which would keep the website operating.
Is that, for the three of you, your collective view of the impact of the bill, as well, that the ability to use the Joe Chemo image would not be prohibited by the amendments represented in this bill, but deriving some kind of a revenue of it would be?
I, I guess, feel a little bit differently about it than my colleague. You don't have to use a trademark to disparage a product like tobacco, but sometimes it can be very effective for the reasons you point out, Mr. Johnson, that showing the flip side of Joe Camel can be a very kind of pointed way of making the point about tobacco.
So if the three of you could comment on how you see these changes affecting an issue like the one that was raised.
Mr. Barber. I think I agree in principle with Mr. Johnson that that type of use of a famous mark is protected free speech. I think courts have been able to handle that just fine under basic first amendment and fair use principles. However, if there is a concern there that it is unclear whether that type of parody is protected, the place to address that is in the defenses, and AIPLA has proposed a specific defense to address use of a famous mark to comment on, criticize, or parody the owner of the famous trademark or the trademark owner's goods or services.
Now, some parodies use a famous mark but are really parodying something completely different. The ``Enjoy Cocaine'' poster is an example where cocaine has nothing to do with Coca-Cola. So that is an abuse of the Coca-Cola mark to parody something that has nothing to do with the trademark owner, and that should not----
Mr. Schiff. Do you share his view that the derivation of the income, though, would make that practice vulnerable under this bill where it would not be vulnerable under existing law?
Mr. Barber. I think the derivation of the income makes it a closer case because then it is arguably a commercial use and arguably a designation of source. There would be some clarity.
Mr. Lemley. I actually think the designation of source provision in the bill solves this problem. It would not be illegal under the bill because you are not using Joe Chemo as a brand to attract people for the sale of goods. I think it would be a problem if we adopted Mr. Barber's proposal and got rid of the designation of source, and that is one of the reasons I think we should keep that in the bill.
Ms. Gundelfinger. And I will just say what he said.
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