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ASMP recommends action on bill H.R. 683 pending in Senate

If it is enacted without amendment, the Act may encourage trademark owners to be overly aggressive in suppressing photos that contain their marks.

Update, Feb. 16: Because of the many public comments received, the Subcommittee is amending the bill to add back the missing language on non-commercial use. Good!

ASMP encourages you to contact the Senators on the Intellectual Property Subcommittee of the Senate Judiciary Committee about H.R. 683, the “Trademark Dilution Revision Act of 2005.” Ask them to restore the exception for non-commercial use of a trademark.

How to write. You can email your letter to each Senator by following the links in the “Whom to Contact” box. If one of these Senators represents your state, they will pay extra attention to your opinion, but all of them need to hear from you. You should also contact your state’s Senators as well, in case the bill comes to a vote before the full Senate.

We do not want to recommend a model statement for you to build on. Capitol staffers quickly learn to recognize when they are the targets of organized lobbying campaigns, and they discount such letters. It is better to compose your own letter, in your own style. Simply state what action you are asking for and explain why it is important to you. In this case, you are asking them to put a specific exception for non-commercial uses of a trademark in the legislation because, as currently written, the bill would result in your receiving unjustified legal threats and pressure from trademark owners to prevent you from showing their trademarks in your photographs.

However, you may pick up some ideas from the letter that ASMP's General Counsel has sent to the Subcommittee members.

A bit of background. The Lanham Act (formally called the Trademark Act of 1946, although it has been amended many times since then), spells out the rules governing the use and protection of trademarks and service marks. It covers the registration process for marks, defines various misuses of marks, and provides penalties for infringing a mark. Misuse includes both outright fraud — by applying a maker’s mark to forgeries, for instance — and also “dilution,” which is any action that would reduce the distinctiveness of a mark in the marketplace.

The Federal Trademark Dilution Act of 1995 goes further and grants special protection to “famous” marks against two particular kinds of dilution. One is blurring, that is, actions that would blur the connection in a consumer’s mind between the mark and the product. The other is tarnishment, which means using the mark in an unsavory or unwholesome manner.

However, the 1995 act also makes certain exceptions: for fair use (such as comparative advertising), for all forms of news reporting and editorial commentary and, most importantly, for non-commercial uses.

This bill. H.R. 683 attempts to clarify the 1995 law by restating the legal standard for “famous” and the definitions of blurring and tarnishment. It also restates the exceptions, and there lies the problem. In its current form, the bill keeps the original exceptions for news and fair use, and it clearly states that parody and criticism are fair uses. Unfortunately, the list of exceptions does not mention non-commercial use. That is, the specific exception for non-commercial uses has been dropped.

In a court of law, this might not matter much — trademark law is all about the commercial use of a mark. But because the old law contained specific language protecting non-commercial use and the new law lacks that language, an aggessive trademark owner might believe that non-commercial use is no longer protected. The courts probably would not go along with the idea. But win or lose, the cost of fighting a trademark lawsuit could put most photographers out of business.

The bill has already passed the House and is now before the Senate Judiciary Committee’s Subcommittee on Intellectual Property. It is impossible to predict when the Subcommittee will bring it to a vote, so we recommend that you contact the Senators soon.