Hearing of House Subcommittee on Courts, the Internet, and Intellectual Property: Trademark Dilution Revision Act of 2005
HEARING OF HOUSE SUBCOMMITTEE ON COURTS, THE INTERNET, AND INTELLECTUAL PROPERTY: TRADEMARK DILUTION REVISION ACT OF 2005
February 17, 2005
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Mr. Issa. Thank you, Mr. Chairman.
Professor, I don't think this came out in the earlier questioning, or I know it didn't. If you had United Airlines, isn't it almost 100 percent sure that United Airlines had to disclaim the word ``United'' when it got its mark?
Mr. Lemley. I think that is correct because there are so many other Uniteds out there.
Mr. Issa. On the other hand, Victoria's Secret, I would assume, didn't have to give up either part of it in the process. In all likelihood, although there is a Victoria and there is a Queen Victoria, neither ``Victoria'' nor ``Secret'' is disclaimed, but ``Victor's Secret'' falls right under exactly the kind of ripping off of trademarks that goes on that has been a problem, I think for every trademark owner. Am I missing something there, that likely there was no disclaimer there?
Mr. Lemley. No, I agree.
Mr. Issa. Mr. Johnson, I was pleased to hear you say what you said because it appears as though this legislation does stop you from using the fame of a mark to disparage the mark, and that is what you think it will do.
Mr. Johnson. Well, to some extent, yes, I think it will, and I think the bill is much better crafted to solve some of the problems that have existed before. My position is that it doesn't solve all of the free speech issues, though.
Mr. Issa. But back to your free speech issue, what would be the benefit of using a sickly camel if this particular tobacco company--and I am not a supporter of tobacco companies, but no matter what it is, I don't care if it is a NASCAR with a particular number of a particular--well, for example, Dale Earnhart's number--what would be the reason you would use a particular car and a particular number if you wanted to disparage NASCAR if they hadn't already made it famous? Isn't there an absolute link that you are admitting when you are calling it a parody, but then you are denying when you say you disparage it?
Mr. Johnson. Well, that is my point, is that if you essentially say you cannot disparage something because it is a famous mark, then you are essentially limiting the speech that can be used about that particular famous mark. So the whole idea of using Joe Chemo is, again, because it has that link with Joe Camel and you are essentially showing the flip side of the suave and debonair Joe Camel to the sickly Joe Chemo, which you are pointing out is the actual result of the suave and debonair lifestyle of Joe Camel.
So I think the point is that if you are going to indulge in effective parody, you almost have to take on a famous mark under some--at least under some circumstances.
Mr. Issa. So your position is that you have to be able to rip off somebody's mark in order to disparage cigarettes?
Mr. Johnson. Well----
Mr. Issa. Wait a second. Just hear me out, because I am absolutely in agreement with what you think this will do and I am absolutely in support of doing it. If you want to disparage cigarettes, and I encourage people to disparage cigarettes, picking the fame of a particular brand and the intellectual property that has been built up in this legal product is the only way you can disparage it? You can't show a full-color picture of a diseased lung and use the words ``cigarettes'' and ``tobacco,'' which are not trademarks?
Mr. Johnson. Well, you can, but under the first amendment, the whole idea is that you should not be limited necessarily on the speech that you use. Now, when you use Joe Camel to essentially sell cigarettes to children, why should you then say, well, I am going to steer away from Joe Camel because it may offend this particular famous mark in showing what the end result is if you live the life style of Joe Camel.
Mr. Issa. Wouldn't you agree that a registered trademark, a patent, a copyright, all are constitutional limitations on free speech?
Mr. Johnson. I think that they are to some extent constitutional limitations on free speech, yes. But the question becomes on can you remove something from the public discourse simply because it is a famous mark and I don't believe that that is really what the Federal Trademark Dilution Act intended, because----
Mr. Issa. Mr. Johnson, my time is going to run out very quickly. I am only asking about the Constitution, not something that we flawed individuals did a decade ago. The Constitution and the first amendment are simultaneous events. They were thought out in concert. The rights to limit other people's use and to charge for those uses was anticipated in the Constitution and restricted at the same time as we were ensuring free speech.
If you are able to disparage a product by using its name so people understand what the product is, or using the description, on what basis do you have to go further and use the fame and the good will and the artistic genius that was created to support that product? Why do you have to use that in order to tear it down? Why do you have to use the intellectual property if you are able to accurately describe the product and disparage it in plain English, understandable? Why do you have to take that next step in order to use that intellectual property that the Constitution granted the individual?
Mr. Johnson. First of all, let me point out that, as Chairman Smith pointed out, trademark dilution is not something that is enshrined in the Constitution. This is purely a statutory creation.
Mr. Issa. And again, I am staying off the statutory. I simply want you to answer the question as to original intent in the Constitution.
Mr. Lemley. Could I perhaps speak to that?
Mr. Issa. Please.
Mr. Smith. I have to tell you, the gentleman's time has expired, and frankly, our Subcommittee's time has virtually expired.
Mr. Issa. But I would love to see it in writing, Mr. Chairman.
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