No Use for Fair Use: More Dangerous Trademark Legislation on the Horizon
June 12, 2007
Senator Ellen Corbett
Chair, Senate Judiciary Committee
State Capitol, Room 3092
Sacramento, CA 95814
RE: A.B. 1484, Model State Trademark Law
Dear Senator Corbett,
The undersigned, a group of law professors, consumer advocates, and trademark lawyers practicing in California, write to express our deep concerns regarding AB 1484, the proposed revision to California?s trademark law.
As a general matter, we note that the bill?s numerous dilution provisions depart significantly from the provisions set forth in last year?s major revision to the federal dilution statute. See Trademark Dilution Revision Act of 2006, H.R. 683 (109th Congress). For example, the proposed bill includes a woefully inadequate fair use exception. Specifically, the nominative fair use provision 14247 (b)(1) is much too narrow, covering only comparative commercial advertising and thereby excluding even straightforward nominative fair uses such as mechanic putting up a sign declaring "I fix Volkswagens." The provision should at least track the new federal dilution law by covering
(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."
15 U.S.C. 1125(c)(3). In addition, the proposed statute?s list of factors relevant to a finding of ?famousness? incorporates factors that have been eliminated from the federal dilution context, such as consideration of ?the degree of recognition of the mark in the trading areas and channels of trade . . . used by the mark?s owner,? i.e., niche fame rather than general fame. This factor greatly expands the range of marks to which the dilution provision will apply. Any number of marks may be famous within a given trade, but virtually unknown to the general public. The federal statute, by contrast, stresses that a mark should only be treated as famous if it is ?widely recognized by the general consuming public . . . as a designation of source of the goods or services of the mark?s owner." 15 U.S.C. 1125(c)(2).
The undersigned understand that one of the major goals of the bill was to bring California?s trademark law into conformity with national standards. Adopting a law that departs so significantly from to the new federal statute, which was itself the product of intensive negotiation and compromise between trademark owners, users, academic experts and consumer advocates, would seem to run directly contrary to that goal.
There are other significant problems as well that appear to be specific to the California context. To wit: Section 14245(5(d) appears to authorize injunctive relief against purely ornamental uses of a mark even where such uses are not likely to cause confusion or dilute a mark. Given that such uses are arguably not even trademark uses, California's trademark law should exclude them.
In addition, we note that Section 14245(a)(3) suggests that any person who has assisted in the selling, display or use of any goods or services bearing a trademark may find themselves liable if (1) those goods are found to be infringing; and (2) the alleged ?facilitator? had received a cease and desist letter claiming infringement. Prior to the Internet, such a provision might have been reasonable: a person running a swap meet, for example, could be expected to bear some responsibility for goods and services being sold on its premises, and a specific cease and desist letter would be an appropriate means of prompting an inspection if need be. And, if the swap meet owner concluded the goods were not infringing, it could decline to take action, comfortable that it would bear no liability down the road. Today, however, Internet service providers such as Google AOL, Yahoo! and eBay arguably ?assist? the display of any number of goods and services bearing trademarks. To investigate every website that was the subject of a cease and desist letter would be extraordinarily burdensome.
We understand that the International Trademark Association (?INTA?) is contemplating a package of revisions to its model state trademark bill, which served as a model for A.B. 1484 as well, but may not have an opportunity to approve those revisions and present them to the legislature before this Committee has held hearings on A.B. 1484. We are hopeful that these revisions will address our concerns, but are aware that INTA may be unable to complete its review in time. It is imperative that A.B. 1484 be revised to address these crucial issues. Therefore, the Committee may wish to defer consideration of the bill until INTA can complete its review and its proposed revisions can be circulated for public comment. Alternatively, we would appreciate the opportunity to propose alternative language to address the aforementioned issues.
Corynne McSherry, Electronic Frontier Foundation
Prof. Eric Goldman, Santa Clara University School of Law
Prof. Tyler Ochoa, Santa Clara University School of Law
Prof. J. Thomas McCarthy, University of San Francisco School of Law (author of:
Trademarks and Unfair Competition)
Prof. David Welkowitz, Whittier Law School; (author, Trademark Dilution: Federal
State and International Law)
Barbara Friedman, Secretary, Executive Committee of the Intellectual Property Section
of the State Bar of California.
Christine Kopitzke, Advisor, Executive Committee of the Intellectual Property Section of
the State Bar of California and Chair, Intellectual Property/ Technology Business
Section, Santa Barbara County Bar Association
Prof. William Gallagher, Golden Gate University School of Law
Prof. Margreth Barrett, University of California Hastings School of Law
Prof. Robert Talbot, University of San Francisco School of Law
Prof. Stephen Barnett, University of California, Berkeley School of Law
Prof. Mark Lemley, Stanford Law School
cc: Assembly Member Paul Krekorian
Senate Judiciary Committee Counsel Benjamin Palmer