27
Apr/06

Does the 43(c) Revision Remove Defenses to 43(a)?


Section 43 (a) of the Lanham Act covers false designations and false descriptions. 43(c) applies to dilution. 43(c)(4) reads:
(4) The following shall not be actionable under this section:
(A) 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.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary.
(emphasis added).
The use of ‘section’ in 43(c)(4) is ambiguous, as 43 is a section and 43(c) is a sub-section. Every other word in 43(c) appears to refer to dilution. However 43(b) uses the term ‘subsection.’
The proposed dilution revision bill, HR 683, reads in part:
(3) EXCLUSIONS- The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
`(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.
`(B) All forms of news reporting and news commentary.
`(C) Any noncommercial use of a mark.
(emphasis added).
What to make of the change from ‘not actionable under this section’ to ‘not actionable as dilution by bluring or dilution by tarnishment under this subsection’?
INTA argues that the use of ‘section’ was a drafting error and that 43(c)(4) was never intended to create statutory defenses applicable to 43(a).
Public Citizen argues that the removal of the word ‘section’ with term ‘dilution’ shows a subtle intent to remove the defenses from 43(a).
INTA’s Executive Director has now responded saying that these defenses are embodied in common law of 43(a) and notes that the defenses are being expanded and strengthened in 43(c).
It would be odd that an act titled as a dilution revision act and identified in its preamble as a dilution revision act and consisting of text, dealing entirely as a dilution revision act, was intended by Congress to remove important defenses from 43(a) (and leave the defenses in for the other infringement section, Section 32).
Public Citizen’s position is: ‘why not clarify this then?’

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