Photo Attorney

Feb 9, 2006

Proposed Changes in Trademark Law of Concern to Photographers

In trademark law, "famous" marks are protected against dilution as well as infringement. Infringing a trademark occurs when the use of the mark causes likelihood of confusion as to the source of the product or service. Dilution happens when a trademark is used in a manner that weakens the "distinctive quality" of the mark. But proposed changes to trademark law may make it even harder for photographers to use photos with trademarks in them.

The Trademark Dilution Revision Act of 2005 ["TDRA"] has been passed by the House and is now before the Senate Judiciary Committee. It was drafted in response to the Supreme Court decision in Moseley v. V Secret Catalogue, Inc., 123 S. Ct. 1115 (2003), which required proof of actual dilution for an injunction to prevent someone else from using the trademark.

Dilution claims are made when the use of the mark causes:

- "Blurring," where the connection in the consumers' minds between the trademark owner's mark and the trademark owner's product or service is weakened; or
- "Tarnishment," when the use of the mark is unsavory or unwholesome or when the mark is used in connection with inferior products.

Dilution claims are available only for famous marks. Courts look at many factors to determine whether a mark is famous. These include:

(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the mark is used;
(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

As in copyright law, trademark law [also known as the "Lanham Act"] includes exceptions for certain trademark uses. They currently include:

1. Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark;
2. Noncommercial use of a mark; and
3. All forms of news reporting and news commentary.

The TDRA proposes a revision to number 2 of these exceptions. It states:

2. Fair use of a famous mark by another person, other than as a designation of source for the person's goods or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

Note that the "non-commercial use" exemption has been removed. The TDRA proposes other revisions of concern to photographers: it allows an injunction with only a showing a likelihood of (rather than actual) dilution. It also allows a trademark holder to sue anyone who intended to trade on the recognition or reputation of a famous mark.

Let your senators know that you oppose this legislation. Go to www.senate.gov to contact your Senators. A decision is expected soon, so act quickly.

See the full text of the TDRA HERE.