ANALYSIS, OBSERVATIONS, REFLECTIONS AND CONCLUSIONS
A) The FTDA and the First Amendment
The FTDA was passed extremely quickly after minimal debate and deliberation.6
Only one hearing was held to discuss the contents of the bill (the 1995 hearing)7 and all of the testifying witnesses were stakeholders in a position to benefit from the passage of
5See H.R. Rep. No. 104-374 at 8 (1995) (noting that the section of the law listing non-actionable uses was “designed to preclude the courts from enjoining speech that courts have recognized to be constitutionally protected”); See also H.R.REP. No. 109-23,at 26 (2005) (introductory statement of Representative Howard Berman) (discussing the improved protection of First Amendment speech provided by the amended statutory exclusions).
6See Sandra L. Rierson, The Myth and Reality of Dilution, 11DUKE L.&TECH.REV.212, 281 (2012) (describing the bill, which was introduced on November 30,1995 and approved by both houses within one month as “cut[ting] through Congress like a hot knife through butter”).
7Madrid Protocol Implementation Act and Federal Trademark Dilution Act of 1995; Hearing on H.R 1270
and H.R. 1295 Before the Subcomm. on Courts and Intel. Prop. of the H. Comm. on the Judiciary, 104th Cong. (1995) [hereinafter 1995 Hearing].
the proposed law.8 It appears from the record that there were no witnesses present to
represent the interests of civil liberties organizations, small businesses, or other
organizations and stakeholders that might have been negatively impacted by the proposed law. The First Amendment was rarely addressed at the hearing and, when addressed, most witnesses suggested that the statutory exclusions were sufficient to protect First Amendment rights.9
Protecting the First Amendment interests of media organizations appears to have been a particularly important concern when crafting the FTDA’s exclusions: two of the three statutory exclusions specifically addressed the First Amendment rights of
advertisers and the news media to use marks by excluding comparative advertising and news reporting and commentary.10 Supporters of the bill also repeatedly asserted that the
law would protect the fair use of marks by media organizations.11 This emphasis on First
8 Mary Ann Alford, executive vice president, International Trademark Association; James K. Baughman, assistant general counsel, Campbell Soup Co.; Phillip G. Hampton, Assistant Commissioner for
Trademarks, Patent and Trademark Office, U.S. Department of Commerce; Victor N. Montan, senior intellectual property counsel, Warner Bros.; Jonathan E. Moskin, partner, Pennie & Edmonds; Gregory W. O’Connor, patent counsel and assistant secretary, Samsonite Corporation.
9See 1995 Hearing, supra note 7, at 38 (statement of Phillip G. Hampton, Assistant Commissioner for Trademarks, Patent and Trademark Office, U.S. Department of Commerce)(stating that the “injunctive relief is not overreaching in scope so as to infringe on any First Amendment rights); id. at 110 (statement of Victor N. Montan, senior intellectual property counsel, Warner Bros) (“I believe the relatively narrow scope of the bill and the historic ability of federal courts to set clear boundaries for the proper parameters of intellectual property law argue well for the enactment of H.R. 1295.); id. at 194 (statement of Steven M. Getzoff, director of Intellectual Property, American Express) (stating that the exclusions will serve to limit possible abuses of dilution laws by overzealous, overreaching trademark owners.).
10 Federal Trademark Dilution Act of 1995, Pub. L. No. 104- 98, 109 Stat. 985, at subsection (c)(4) (excluding fair use comparative advertisement, non-commercial uses and news reporting and commentary),
repealed by Trademark Dilution Revision Act of 2006, Pub. L. No 109–312, 120 Stat. 1730 (codified as amended at 15 U.S.C.§1125(c)) [hereinafter FTDA].
11See, e.g., 1995 Hearing,supra note 7,at 84 (statement of Mary Ann Alford, executive vice president, International Trademark Association)(“ With respect to the bill's constitutionality, we note that the broadcasting, publishing, and advertising industries were all briefed on the contents of the bill prior to its introduction and they agree that the First Amendment issues have been properly addressed.”); see also H.R. Rep. No. 104-374 at 4 (1995) (“The bill includes specific language exempting from liability the ‘fair use’ of a mark in the context of comparative commercial advertising or promotion as well as all forms of news
Amendment protections for the media likely reflects significant role that these organizations played in defeating the 1988 dilution bill.12
It appears that all other forms of First Amendment protected speech were expected to fall under the protection of the non-commercial use exclusion.13
Unfortunately, none of the legislative documents accompanying the FTDA provide a definition for the term “non-commercial use” or any clear guidance on how the exclusion should be applied.14 Instead, the accompanying 1995 House Report and Joint Resolution offered only vague references to the “commercial speech doctrine,”15 and a few examples of uses that would not be considered protected if “not part of a commercial transaction.”16
reporting and news commentary… recognize[ing] the heightened First Amendment protection afforded the news industry.”).
12 Staff of S. Subcomm. on Courts Subcommittee on Courts, Civil Liberties and the Administration of Justice of the H. Comm. Of the Judiciary, Report to Accompany H.R. 5372 at 4, 100th Cong. (1988) (recommending that the dilution provisions of the bill be stricken based on First Amendment concerns voiced by media organizations).
13 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:81 (4th ed. 2005). See also H.R. Rep. No. 104-374 at 8 (1995)(noting that the section of the law listing non-actionable uses was “designed to preclude the courts from enjoining speech that courts have
recognized to be constitutionally protected”); 141 CONG.REC. S19306-10, 8 (1995) (statement of Sen. Hatch) (“The proposal adequately addresses legitimate first amendment concerns espoused by the broadcasting industry and the media. The bill will not prohibit or threaten noncommercial expression, such as parody, satire, editorial and other forms of expression that are not a part of a commercial transaction.”). 14See generally Jessica Taran, Dilution by Tarnishment: A Case for Vulgar Humor, 7 INTELL.PROP.L. BULL. 1, 7 (2002) noting that Senator Orin Hatch’s explanation of the non-commercial use exclusion “does not provide as much guidance as one would hope because many parodies are an element of a commercial transaction.”);Keren Levy, 69 GEO.WASH.L.REV. 425, 435 (2001)(speculating that “because courts are
ill-equipped with a federal dilution statute that is unclear on First Amendment defenses, they are left to devise their own application of free speech rights to trademark law); Sarah Schlosser, The High Price of (Criticizing) Coffee: The Chilling Effect of the Federal Trademark Dilution Act on Corporate Parody, 43 ARIZ.L.REV. 931, 955 (2001) (noting that “the distinctions between commercial and noncommercial
parodies of corporate trademarks are minor” and speculating that courts would construe the commercial use language inconsistently “giving the parody artist relatively little notice about what is and what is not protected”).
15 H.R.REP.NO.104-374 at 8 (1995) (stating that Section (4)(B) of the bill “expressly incorporates the concept of ‘commercial’ speech from the ‘commercial speech’ doctrine, and proscribes dilution actions that seek to enjoin use of famous marks in ‘non-commercial’ uses, and further noting that “nothing in this bill is intended to alter existing case law on the subject of what constitutes ‘commercial’ speech.”).
Several scholars predicted that the lack of clarity regarding the non-commercial use exclusion would lead to inconsistent holdings, particularly in cases involving “mixed” commercial and non-commercial speech.17 As Levy and Taran noted, the line between commercial and non-commercial speech can be difficult to discern, particularly online, and neither the FTDA nor its legislative history provide real guidance for courts on how to balance the expressive and commercial qualities of an allegedly diluting use.18
This sort of vagueness was characteristic of the FTDA as a whole, and contributed to its eventual replacement with the Trademark Dilution Revision Act (TDRA) of 2006.19
Based on the review conducted for this study, the limited legislative history of the FTDA seems to indicate that the 104th Congress devoted minimal attention to the First Amendment concerns created by a federal cause of action for trademark dilution. Rather, it appears that the primary concern was to quickly pass a statute containing just enough First Amendment protections so as to avoid a backlash from media organizations and withstand constitutional scrutiny. The non-commercial use exclusion appears to have been created as a catchall for most forms of First Amendment speech, so that judges could interpret the law in a way that would avoid constitutional conflicts.
17See, e.g., Terry R. Bowen, The Federal Trademark Dilution Act of 1995--Does It Address the Dilution
Doctrine's Most Serious Problems?, 7DEPAUL-LCAJ.ART &ENT.L.75, 85 (1996); Levy, supra note 14; Taran, supra note 14.
18See generally Levy, supra note 14; Taran, supra note 14, at 7-8; see also Schlosser, supra note 14, at 954-55.
19 See generally, Barton Beebe, A Defense of the New Federal Trademark Antidilution Law, 16FORDHAM INTELL.PROP.MEDIA &ENT.L.J. 1143 (2006).