Thursday, June 28, 2007

More on the literal reading of the Trademark Dilution Revision Act of 2006

The Trademark Dilution Revision Act of 2006, which modified the Trademark Act of 1946 by stipulating that the owner of a “famous mark” may obtain injunctive relief against another party that “at any time after the owner’s mark has become famous, commences the use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence of absence of actual or likely confusion, of competition, or actual economic injury.” The change, as often noted, is that the mark owner may file for pre-emptive injunctive relief before damage to the trademark occurs, upon reasonable expectation that it is likely to occur at an unspecified time in the future This is the “pre-emptive first strike” theory.

The last posting referred to some comments by various legal groups that anticipate widespread litigation. I’m not aware that this has occurred in the eight months since passage. Nevertheless, one of the major ways a name gets introduced into commerce, especially by “amateurs” is domain names.

I looked up the Uniform Domain Name Dispute Resolution Policy, here, of ICANN, the International Corporation for Assigned Numbers and Names. It does not appear to have changed. It specifies a low-cost administrative (rather than court-driven and litigious) manner to resolved domain name disputes. The main requirement is that the domain name owner not register the name in “bad faith” in order to disrupt another business. Examples of bad faith are intentional misspellings (which McAfee Site Advisor now catches and flags sites as yellow), and probably use of similar names with other .TLD’s to provide “parked domains” that will provide links and ad revenue, with no real content, trying to profit on typing errors by visitors seeking the original domain. This practice is very common, and usually it is not worth the trouble to try to stop it.

The text of the new Act does provide affirmative defense provisions as exclusions: “The following shall not be actionable as dilution by blurring or dilution by tarnishment”. Point (A) that follows is “fair use” that is somewhat analogous to fair use in copyright law. But point (B) says “all forms of news reporting and news commentary” and point (C) reads literally “Any noncommercial use of a mark.” Taken together, these provisions would seem to suggest that a domain whose name happens (especially unintentionally) to resemble the name of a company would be OK if it did not charge for content or seek advertising revenues (that is, was noncommercial) and/or provided only news, commentary and interpretation. Note that (B) and (C) are separated apart from the “fair use” provision (A). These “exclusions” seem to match, in spirit at least, what ICANN means by “good faith use” of a domain name.

There is one cultural aspect of the trademark dilution concept that creates concern, and that is the recent bashing of “amateur culture” on the web. This was demonstrated in the recent book by Andrew Keen, “The Cult of the Amateur”. The review is here. This Act, among other legal tactics, could conceivably be used for turf protection against the fear of dilutive competition from amateurs. However, if so, that concedes that amateur speech and commerce is effective, and makes one wonder what is wrong with larger, older, less nimble companies.

A link to the text of the Act appears in the June 7 post.

1 comment:

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