Technical-Legal Confluence News

The “Prioritizing Resources and Organization for Intellectual Property Act of 2008”, H.R. 4279, has this link on govtrack. http://www.govtrack.us/congress/bill.xpd?bill=h110-4279 , introduced in the 110th Congress by John Conyers (D-MI).

The Congressional Research Service gives this summary.

There are multiple provisions, including some strengthening of administrative procedures to protect trademark, establishment of an IP czar (“Executive Office of the President the Office of the United States Intellectual Property Enforcement Representative (IP Enforcement Representative)”) , providing a “safe harbor” provision in copyright registration, and increasing penalties for introducing instrumentalities into foreign commerce that encourage copyright infringement.

The full text of the bill is here.

There is an ongoing controversy involving trademark law and online advertising. Companies sometimes complain that search engine companies (like Google) or various other software products display ads of competitors (of trademark holders) as a result of searches on their wordmarks. There are various circumstances in which these situations may occur. Some of the complaint seems to deal with the natural result that search results for competitors may be displayed, or that criticism of the original mark holder may appear.

An important case, decided by the Second Circuit, was WhenU.com v. Vision Direct, Inc., in 2003. The Opinion is here.

The Electronic Frontier Foundation amicus brief is here.

Other cases include
American Blind and Wallpaper Factory v. Google, complaint (2004)

Letter to Google from American Blind’s counsel regarding Adwords (2003)

Account of oral arguments in Rescuecom v. Google (March 2003) as logged by “The Laboratorium,” is here.

It’s unclear as of yet as to whether the “prospective dilution” component of the 2006 law could matter in these cases.

The Trademark Dilution Revision Act of 2006 was passed by the 109th Congress and signed by President Bush in October 2006. It carried the House number 683. There had been an earlier bill in 2005 with the same number. When it was signed, there was little attention to it, and many websites did not update the 2005 to 2006 so people would find it. It was introduced by Rep. Lamar Smith (R-TX).

The law’s essential purpose is to allow plaintiffs in trademark claims to act on the likelihood of future dilution or tarnishment of their brands or “famous marks” rather have to prove that harm to their brands has already occurred.

The official byline for the law is “Trademark Dilution Revision Act of 2006 - Amends the Trademark Act of 1946 to revise provisions relating to trademark dilution.”

The Govtrack link for the law (H.R. 683) is this:

The link for the Congressional Research Service Summary is this.

The link for the text of the act is this.

When the bill was introduced, and again when it passed, there were snow flurries of Internet papers claiming that the law would encourage frivolous lawsuits, especially against small businesses, since some of these had already occurred. There is no obvious evidence yet that this has happened. The Act does provide some positive defenses, including reporting or commentary, and non-commercial use. The Act appears to respect the concept of registering a domain name to present political or social content when there is no commercial activity on the site (in other words, the use of catchy domain names for “free content”). It’s not completely clear if modest advertising revenue would make such sites commercial. Another issue is whether the Act would respect ICANN’s concepts for registering domain names in good faith; ICANN has administrative procedures for mediating domain name disputes and ICANN already discourages practices like parking or “domain tasting” when they imitate legitimate marks.

Running news on my trademark issues blog, link here.