Amicus Curiae Brief — Moseley v. v. Secret Catalogue, Inc.

Supreme Court brief2003

Ask Donna

What actually matters in this document.

Text

No. 01-1015

In the

Supreme Court of the United States

Victor Moseley & Cathy Moseley,

d.b.a. Victor’s Little Secret

Petitioners,

V. Secret Catalogue, et al.

Respondents.

On Wnit of Certioran to the United States Court

of Appeals for the Sixth Circuit

BRIEF OF MALLA POLLACK, AMICUS CURIAE

SUPPORTING PETITIONERS

Malla Pollack

Visiting Associate Professor of Law

University of Memphis

Cecil C. Humphreys School of Law

3715 Central Ave.

Memphis, TN 38152-3140

901-678-2421

ee cntecnnienicenammunnminnimnemnmnneel i

Table iA cis sceanocsneas enaineenmnanatins il

IN TETIIIIID scccescnersvensinmicensesnennsesensomeniensenenen l

Authority to File............ Sea iaiieldelideaeneabinimesieadtineiniesi

FR eccctectcericsmmniantninimninmmnennn l

II ceccersecestnsmeeianvmnensmnsaennenesemeessnmaenes 2

I. Three Cannons of Statutory Construction

Support the Actual Harm Requirement....................... 3

II. Removing the Actual Harm Requirement

Raises Serious First Amendment Problema................ 5

II. Removing the Actual Harm Requirement

Raises Potential Issues Under the Copyright

eee ea 21

ETE Oe aCe ESTO Nr Se Rae el Raa

TABLE OF AUTHORITIES

Cases

Ashwander v. TVA, 297 U.S. 288 (1936)...........ccccscesseeeeeeeees 3

Avery Denison Corp. v. Sumpton, '

189 F.3d 868 (9 Cir. 1999)........cccccsesesseseseseseceees 6n.4

Boos v. Berry, 485 U.S. 312 (1988).................. seinuuntiatiia 11n.12

Central Hudson Gas & Elec. Corp. v.

Public Svc. Comm’n,

AS 5 & n.5; 20

Compco Corp. v. Day-Brite Lighting, Co.,

te Dt) ee 24 n.32

Curtis Publ. v. Butts, 388 U.S. 130 (1967)...........cccceseeseesees 14

DeBartolo Corp. v. Florida Gulf Coast Bldg.

& Constr. Trades Council, :

SBS US. SEB CGB IR cccnsersssecsencesinintiniitemeanae 4

Deere & Co. v. MTD Prods., Inc.,

41 F.3d 39 (2d Cir. 1994)... ceccesesseeseeeeees 8 2.21

Dept. of Housing & Urban Dev. v. Rucker,

bee Go. | nme 3

Eldred v. Ashcroft, U.S. Sp. Ct. No. 01-618..............00 2 n.2

Eli Lilly & Co. v. Natural Answers, Inc.,

i eetcesnernnsnssnsnesnanensccsense’ 6n.4

Feist Publ’ns v. Rural Tel. Svc.,

oni crecancencnnensnnnnensenensnenssaccesent 21

Gideons Int’] v. Gideon 300 Ministries,

94 F. Supp.2d 566 (E.D. Penn. 1999)............... 14n.14

Greater New Orleans Broad. Ass’n v.

United States, 527 U.S. 173 (1999)..............00 20 n.23

Holmes v. Hurst, 174 U.S. 82 (1899)............cccccccceeceeeseeeeeeeees 9

INS v. St. Cyr, 533 U.S. 289 (2001).......0cccccercceccescsersescecceeses 3

LP. Lund Trading v. Kohler Co.,

163 F.3d 27 (1* Cir. 1998)............ 4n.3; 6n.4; 25 n.33

Jews for Jesus v. Brodsky,

993 F. Supp. 282 (D.N.J.),

aff'd without op., 159 F.3d 1351

EE 13; 14.14; 18

Kellogg Co. v. Exxon, 209 F.3d 562

a 6 n.4; 21 n. 25

Kellogg Co. v. National Biscuit Co.,

ET 24 n.32

L. L. Bean, Inc. v. Drake Publs.,

EE OEE, GITIY Pidccsccccsnssssseeseveseccssseccseed 4n.3

-iii-

Lorillard Tobacco Co. v. Reilly,

533 U.S. 525, 554 (2001)........eceecereesereeneneees 12; 20; 21

M’Culloch v. Maryland, 17 U.S. 316 (1819).............. .23 0.28

In re Mogen David Wine Corp.,

372 F.2d 539 (CCPA 1967).......-cceccesserseereenenes 24 n.31

Nabisco, Inc. v. PF Brands, Inc.,

191 F.3d 208 (2d Cir. 1999)...........c00000 6 n.4; 22 n.25

Planned Parenthood Fed. v. Bucci,

42 U.S.P.Q.2d 1430 (S.D. N.Y. 1997),

aff'd without op., 152 F.3d 920

(2d Cir.), cert. denied,

525 U.S. 834 (1998) ..c.sccccccseee 12 & n.13; 13 n.13; 18

Posadas de Puerto Rico Ass’n v. Tourism Co.,

Po jt 0, 19 n.23; 20 n.23

Railway Labor Executives Ass’n v. Gibbons,

xy 23 n.28

Ringling Bros.-Barnum & Bailey Combined

Shows v. Utah Div. of Travel

ey A 0 Th 6n4

San Francisco Arts & Athletics, Inc. v.

United States Olympic Comm.,

483 U.S. 522 (1987) (“SFAA” ).......c-cccceeeeeeeees passim

Sears, Roebuck & Co., v. Stiffel Co.,

lt) | a 24 n.32

Stanley Labs. v. FTC, 138 F.2d 388 (9® Cir. 1943)......17 n.20

Syndicate Sales v. Hampshire Paper,

192 F.3d 633 (7® Cir. 1999).........cccccese00e 4n.3; 22 n.27

Thompson v. Western State Med. Center,

ee ee te Oe ccctnrcnneniseninrnepnmscnnscssts 8 n.6; 20

Times Mirror Magazines v. Las Vegas Sports News,

212 F.3d 157 (3 Cir. 2000)...........c00000-. 6 n.4; 22 n.27

Toro Co. v. ToroHead Inc.,

61 U.S.P.Q.2d 1164 (TTAB 2001)......... 6 n.4; 22 n.25

TrafFix Devices v. Marketing Displays,

532 U.S. 23 (2001)................ 23 n.29; 24 nn.30, 31, 32

Trademark Cases, 100 U.S. (18 Otto) 82 (1879).............000.. 21

United States v. O’Brien, 391 U.S. 367(1968)................. 5; 20

Vermont Agency v. United States

ex rel Stevens, 529 U.S. 765 (2000)............. re 3

V Secret Catalogue v. Moseley,

259 F.3d 464 (6" Cir. 2001),

cert. granted, 122 S. Ct. 1536 (2002)

I icctintininnetrncssnnntatentanapesenmmenesnnmaceel 6n.4

Westchester Media v. PRL USA Holdings,

103 F. Supp.2d 935 (S.D. Tex. 1999),

aff'd in relevant part,

214 F.3d 658 (5® Cir. 2000).........6 n.4; 8; 9 & n.8; 10

US. Const.

Art. L, Sec. 8, cl. 3 (Commerce Clause)..............:-s-s++++ 23 n.28

Art. I, Sec. 8, cl. 4 (Bankruptcy Clause)...............-0:00+5 .23 n.28

Art. I, Sec. 8, cl. 8

(Copyright and Patent Clause).................-ssss+ passim

Art. I, Sec. 8, cl. 18 (Necessary and Proper Clause).....23 n.28

Art. IL, Sec. 2, cl. 2 (Treaty Power)............cscssesesseeereee .23 0.28

Amd. I (First Amendment)................0csesesseeeeeseeneenees passim

Statutes

Amateur Sports Act,

36 U.S.C. § 380 (“Sports Act”).........cccceccereerensenes 7; 11

Federal Trade Comm. Act, 15 U.S.C. § 41 ef seg......... 18 n.20

Federal Trademark Dilution Act,

15 U.S.C. § 1125(c) (“FTDA”)........cc0ceeceseerenees passim

Lanham Act, 15 U.S.C. § 1127........sccccssessereeneesenensenes 8; 11; 22

x 15 n.17

a 17 n.20

Legislative & Administrative Material

141 Cong. Rec. H14317

(daily ed. Dec. 12, 1995), available at

Shittp://thomas. lOc. ZOV>..........s-sssssssssseseseseseseseenees 7n.5

141 Cong. Rec. $19311

(daily ed. Dec. 29, 1995), available at

Shttp://thomas. lOc. ZOV>............sseescesesseseseseeseeeeeees 7n.5

H. Rept. No. 104-374, available at

SII FAB GID 200ecccecccccccccccccescesscceqeceesee 7n.5

Hearing Before the Subcomm. on Courts, the Internet,

and Intellectual Property, of the House

Comm. on the Judiciary, 107 Cong. 2d Sess.

(Feb. 14, 2002; Serial No. 53) (“2002 Hearings”)

available at

bttp:/ iadicior htm>

(link to “Committee Print”’.......... 6 n.4; 8n.7; 11 n.12

Legislative Hearings on H.R. 1270,

The “Madrid Protocol Implementation

Act of 1995" and H.R. 1295,

The “Federal Trademark Dilution

Act of 1995" Before Subcomm. on

Courts and Intellectual Property

. of the House Comm. on the Judiciary,

104* Cong., 1" Sess. (July 19, 1995),

available at

<http://www.hours.gov/judiciary/478.htm> ............-:00++. 7n.5

U.S. Tmk. Reg. No. 0118372, available at

kN, Ce 167.18

-Vii-

U.S. Tmk. Reg. No. 0366744, available at

<hitin://tess. USD. GOV>............0..ecrecrecrsseeceeseese 160.18

U.S. Tmk. Reg. No.0404302, available at

<http://tess. USPtO. QOV>..........scesseereersereereenneneees 160.18

U.S. Tmk. Reg. No. 1225776, available at

<http://teSS.USPLO. QOV>..........eeeeeerrserrreerrseeeneees 10n.10

U.S. Tmk. Reg. No. 1956740, available at

<hittp://teSs.USPtO. QOV>..........scseeseerseereereeerseenees 16n.18

Secondary Sources

Robert C. Denicola, Trademarks as Speech:

Constitutional Implications of the Emerging

Rationales for the Protection of Trade

Symbols, 1982 Wisc. L. Rev. 158........... 4n.3; 14n.15

Megan E. Gray, Defending Against A

Dilution Claim: A Practitioner's Guide,

4 Tex. Int’] Prop. L.J. 205 (1996)... 5 n.3

Paul J. Heald & Suzanna Sherry, /mplied Limits

on the Legislative Power,

2000 Univ. of 1. L. Rev. 1119... cceeeeeeeees 23 n.28

David Lange, Recognizing the Public Domain,

44 (no. 4) Law & Contemp.

Ee l

-Viii-

Hugh Latimer & Karyn K. Ablin,

Stealth Patents: The Unconstitutionality

of Protecting Product Designs under

the Federal Trademark Dilution Act,

90 Trademark Rep. 489 (2000)............... 5 n.3; 22 n.26

Lost Angeles Rubber Works,

<http://www. larubberworks.com/index.htm|>.15 & nn.16, 17

McCarthy on Trademarks and

Unfair Competition (3 ed.)........10 nn. 9, 11; 22 n.26

Sarah Mayhew Schlosser, The High Price of

(Criticizing) Coffee: The Chilling Effect

of the Federal Trademark Dilution Act

on Corporate Parody,

43 Anzona L. Rev. 931 (2001)............... 5 n.3; 140.15

INTEREST OF THE AMICUS CURIAE

Amicus Malla Pollack' (“Pollack”) is a law professor

specializing in intellectual property. She has no direct

financial interest in the outcome of this litigation. Pollack

has two interests in this case. As a consumer, she wishes to

protect free competition because it increases choice and

quality while decreasing prices. As a law professor, she

fulfills her service duty by filing amicus briefs in support of

the under-represented public domain. See, e.g., David Lange,

Recognizing the Public Domain, 44 (no. 4) Law & Contemp.

Probs. 147, 176 (1981) (in view of collective action

problems, requesting courts to appoint guardians ad litem for

the public domain in intellectual property cases or, at the

least, to welcome amicus participation).

AUTHORITY TO FILE

Counsel for petitioners and respondents have

consented to the filing of this brief. The consent letters have

been filed with the Clerk of the Court.

SUMMARY OF ARGUMENT

This Court granted certiorari to answer a question of

statutory construction. Petitioners did not question the

constitutionality of the Federal Trademark Dilution Act

(“FTDA”). The FTDA, however, may violate both the First

1. No part of this brief was authored by counsel for any

party to this case. The cost of this filing has been paid in

full by Malla Pollack.

Amendment and the “limited times” requirement of the

rests, in large part, on the requirement that an injunction be

issued only if the junior user “causes dilution,” 15 U.S.C.

§ 1125(c), actually produces unnecessary, economic harm to

the alleged victim.

If this Court forces the statute into requiring

injunctions on a mere inferenc¢ of “likelihood of dilution,”

(1) the statute will become more constitutionally doubtful on

its face, and (2) instances of possibly unconstitutional

application of the statute will multiply.

Therefore, in this case, the rule that a statute should

be construed according to its plain meaning is supported by

two other strong cannons of statutory construction. First, the

rule that statutes should be read to prevent raising doubts of

their constitutionality. Second, the rule that, unless Congress

has spoken with extreme clarity, statutes should not be read

to approach the limits of Congress’ power.

ARGUMENT

Amicus Malla Pollack (“Pollack’’) agrees with

Petitioners that the plain language of the Federal Trademark

Dilution Act (“FTDA”) requires that the party requesting its

extraordinary relief prove the existence of actual dilution-

harm. See 15 U.S.C. § 1125(c)(“causes dilution” (using

2. U.S. Const. Art. I, Sec. 8, cl. 8 (“Congress shall have

the power . . . To promote the progress of science and

useful arts by securing for limited times to authors and

inventors exclusive rights in their respective writings and

discoveries.”). The meaning of “limited times” is before

this Court in Eldred v. Ashcroft, U.S. Sp. Ct. No. 01-618.

Sr gy =

present tense). Pollack writes separately to emphasize that a

contrary reading of the statute would needlessly increase

constitutional problems.

L Three Cannons of Statutory Construction Support the

Actual Harm Requirement

First, a statute must be construed according to its

plain meaning except in extraordinary conditions, which are

not present here. See Dept. of Housing & Urban Dev. v.

Rucker, 122 S. Ct. 1230, 1233 (2002) (relying on “plain

language of the statute.”). The plain meaning of 15 U.S.C.

1125(c) (“causes dilution’’) requires actual harm before an

injunction is granted. Pollack leaves further statutory

construction arguments to Petitioners.

Second, the actual harm requirement is supported by

the rule of constitutional doubt. Respect for Congress

requires the Court to refuse even “an otherwise acceptable

construction of a statute” which raises “serious constitutional

problems” whenever “an alternative interpretation of the

statute is ‘fairly possible.”” INS v. St. Cyr, 533 U.S. 289,

299-300 (2001 (citations omitted); Vermont Agency v.

United States ex rel Stevens, 529 U.S. 765, 787 (2000)

(same); Ashwander v. TVA, 297 U.S. 288, 348 (1936)

(Brandeis, J., concurring) (“When the validity of an act of the

Congress is drawn into question, . . . it is a cardinal principle

that this Court will first ascertain, whether a construction of

the statute is fairly possible by which the question may be

avoided.”’\citation omitted).

Third, the actual harm requirement is supported by the

plain statement rule. A clear command is required when

Congress nears the edge of its authority. See St. Cyr, 533

U.S. at 299 (“[W]hen a particular interpretation of a statute

invokes the outer limits of Congress’ power, we expect a

clear indication that Congress intended that result”; invoking

“plain statement rule.”). Without extremely clear statutory

language, the Court will not assume “that Congress intended

to infringe constitutional liberties or usurp power

constitutionally forbidden it.” DeBartolo Corp. v. Florida

Gulf Coast Bldg. & Constr. Trades Council, 485 U.S. 568,

575 (1988)(invoking canon to prevent First Amendment

question regarding “truthful[]” handbills).

As discussed below, abandoning the plain meaning of

1125(c) raises serious questions regarding its constitutionality

under the First Amendment and will require courts repeatedly

to handle difficult issues related to the Copyright and Patent

Clause.’

3. The constitutionality of dilution relief has been

questioned repeatedly. See, e.g., Syndicate Sales v.

Hampshire Paper, 192 F.3d 633, 639 (7™ Cir. 1999) (“

[Defendant’s] constitutional argument . . . is . . . not an

insubstantial one,” but has been waived); I.P. Lund Trading

v. Kohler, Co., 163 F.3d 27, 53 (1* Cir. 1998) (Boudin, J.,

concurring) (“[T}t is a difficult constitutional question

whether protecting the investment [in a famous trade dress]

can ever outweigh the public interest in replication

[demonstrated by the “limited times” provision of the

Publs., 811 F.2d 26, 33-34 (1* Cir. 1987) (holding Maine

anti-dilution statute unconstitutional under First

Amendment as applied to magazine article parodying L.L.

Bean’s catalogue); Robert C. Denicola, Trademarks as

Speech: Constitutional Implications of the Emerging

Rationales for the Protection of Trade Symbols, 1982 Wisc.

L. Rev. 158, 206 (“The First Amendment will not permit

the trademark owner the power to dictate the form, and thus

—— = -

tl le ——

This Court used intermediate scrutiny to probe a

much narrower dilution statute for First Amendment

infirmity. See San Francisco Arts & Athletics, Inc. v. United

States Olympic Comm., 483 U.S. 522, 577 & n.16 (1987)

(“SFAA” ) (using tests from United States v. O’Brien, 391

U.S. 367, 388 (1968), and Central Hudson Gas & Elec. Corp.

v. Public Svc. Comm’n, 447 U.S. 557, 566 (1980)).

Assuming argunedo the continued validity of SFAA, the

Federal Trademark Dilution Act (““FTDA”) may still violate

the effectiveness, of another’s speech simply because his

trademark has been used to express ideas that he would

prefer to exclude from the public dialogue”; criticizing

dilution theory); Megan E. Gray, Defending Against A

Dilution Claim: A Practitioner's Guide, 4 Tex. Int’] Prop.

L.J. 205, 225 (1996) (“Arguably, application of the Central

Hudson test results in the conclusion that dilution laws are

unconstitutional [under the First Amendment.].””); Hugh

Latimer & Karyn K. Ablin, Stealth Patents: The

Unconstitutionality of Protecting Product Designs under

the Federal Trademark Dilution Act, 90 Trademark Rep.

489, 511 (2000) (concluding that dilution protection of

product designs is unconstitutional patent without time

limitation); see also Sarah Mayhew Schlosser, The High

Price of (Criticizing) Coffee: The Chilling Effect of the

Federal Trademark Dilution Act on Corporate Parody, 43

Arizona L. Rev. 931 (2001) (discussing unpublished case in

which a court granted a preliminary injunction under the

FTDA while holding the First Amendment bared relief

under trademark or copyright).

the First Amendment because of numerous differences

between the statutes at issue. Furthermore, since SFAA, this

Court has signaled greater concern with government

interference with commercial speech. Yet none of the leading

circuit cases on “causes dilution” analyzed the First

Amendment implications of allowing relief for mere

“likelihood of dilution.”

4. See V Secret Catalogue v. Moseley, 259 F.3d 464 (6"

Cir. 2001), cert. granted, 122 S. Ct. 1536 (2002) (No. 01-

1015); Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164

(TTAB 2001); Eli Lilly & Co. v. Natural Answers, Inc.,

233 F.3d 456 (2000); Westchester Media v. PRL USA

Holdings, 214 F.3d 658 (5® Cir. 2000) (discussing First

Amendment only in relationship to likelihood of confusion

standard as applied to book and magazine titles); Kellogg

Co. v. Exxon Corp., 209 F.3d 562 (6" Cir. 2000); Times

Mirror Magazines v. Las Vegas Sports News, 212 F.3d 157

(3™ Cir. 2000); Nabisco, Inc. v. PF Brands, Inc., 191 F.3d

208 (2d Cir. 1999); Avery Denison Corp. v. Sumpton, 189

F.3d 868 (9" Cir. 1999); Ringling Bros.-Barnum & Bailey

Combined Shows v. Utah Div. of Travel Dev., 170 F.3d

449 (1999); IP. Lund Trading v. Kohler Co., 163 F.3d 27

(1* Cir. 1998). But see Hearing Before the Subcomm. on

Courts, the Internet, and Intellectual Property, of the

House Comm. on the Judiciary, 107 Cong. 2d Sess. at 37

(Feb. 14, 2002; Serial No. 53) (hereinafter “2002

Hearings”) (Letter Testimony by the American Civil

Liberties Union) (asserting that the “likelihood of dilution”

standard “would prohibit trademark use that is protected by

the First Amendment.”), available at

<http://www.house.gov/judiciary/courts.htm> (link to

“Committee Print,” visited May 25, 2002).

SFAA involves Section 110 of the Amateur Sports

Act, 36 U.S.C. § 110 (“Sports Act”) in which Congress

decided to protect in specified circumstances a few statutorily

listed symbols held by one named organization. Compared to

the Sports Act, the FTDA provides wider protection for a

much larger set of marks. The FTDA, therefore, allows

protection without requiring any of the limiting

circumstances relied on by the Court to uphold the Sports

Act.

First, Congress was presumed to have considered the

specific symbols protected by the Sports Act. See SFAA, 483

U.S. at 539 (“Congress’ judgment respecting a certain word

is not so limited.”). Congress certainly did not consider each

potentially protected mark before passing the FTDA.* The

FTDA provides dilution protection for any “famous” mark,

registered or unregistered. Fame is judged during suit with

the guidance of a vague list of statutory factors. See 15

U.S.C. § 1125(c)(1)(A)-(H). No registry of famous marks

exists; would-be junior-users, therefore, have no clear notice

5. See Legislative Hearings on H.R. 1270, The “Madrid

Protocol Implementation Act of 1995" and H.R. 1295, The

“Federal Trademark Dilution Act of 1995" Before

Subcomm. on Courts and Intellectual Property of the

House Comm. on the Judiciary, 104" Cong., 1" Sess. (July

19, 1995), available at

<http://www.hours.gov/judiciary/478.htm> (visited May

25, 2002); H. Rept. No. 104-374, available at

<http://www.thomas.loc.gov> (visited May 28, 2002);141

Cong. Rec. H14317-18 (daily ed. Dec. 12, 1995), available

at <http://thomas.loc.gov> (visited May 28, 2002); 141

Cong. Rec. $19306 (daily ed. Dec. 29, 1995), available at

<http://thomas.loc.gov>, (visited May 28, 2002).

x %

about the status of questionably famous marks. —

Second, in SFAA, Congress was presumed to have

found that “most commercial uses of the Olympic words and

symbols are likely to be confusing.” SFAA, 483 U.S. at 539.

“The Government constitutionally may regulate deceptive or

misleading speech.” Jd. at 535 n.12 (internal quotation marks

and citation omitted). The FTDA provides relief when no

likelihood of confusion exits. See 15 U.S.C. § 1127 (defining

“dilution” as occurring “regardless of the presence or absence

of . . . likelihood of confusion, mistake, or deception”).

Third, Congress was presumed to have found that the

U.S. Olympic Committee’s efforts created the value of the

word “Olympic.” See SFAA, 483 U.S. at 534 (“Congress

could reasonably conclude that the USOC has distinguished

the word “Olympic” through its own efforts.”). Even the few

cases already litigated have demonstrated that mark holders

will attempt to reap sole benefit of others’ efforts. For

example, a representative of Polo by Ralph Lauren (“PRL”),

testifying in favor of the likelihood of dilution standard,

lamented that under that standard PRL would have won a

dilution claim it lost under the actual dilution test,’ referring

to litigation over the single word “POLO,” Westchester

6. See also Thompson v .Western States Med. Center,

122 S. Ct. 1497, 1504 (2002) (“[A]s a threshold matter [we

ask] whether the commercial speech concerns unlawful

activity or is misleading. If so, then the speech is not

protected by the First Amendment.”).

7. See 2002 Hearings, at 14-15, 17, 18 (statement of

Sherry L. Jetter, Vice President, Intellectual Property, Polo

Ralph Lauren Corp).

_—

Media Co. v. PRL USA Holdings, 103 F. Supp.2d 935, 981

(S.D. Tex. 1999)(stating that outcome turned on view that

FTDA required actual dilution, not a likelihood of dilution),

aff'd in relevant part, 214 F.3d 658 (5® Cir. 2000).* The

Fifth Circuit recognized PRL’s over reaching:

PRL’s claim [is] to police use of the “POLO” mark by

the publisher of the [United States Polo

Association] ‘s official magazine. PRL products

became famous by basking in the reflected glow of an

elegant sport. PRL now asserts that it, not the sport,

is the source of the glow. . . . [W]e cannot be blind,

when balancing the equities, to the fact that PRL is

arrogating the very name of a sport from the players’

publication. In a sense, PRL is biting the hand that

fed it.

Westchester Media, 214 F.3d at 673.

Language is not private property. “[W]Jords, because

they are the common property of the human race, ... are as

little susceptible of private appropriation as air or sunlight. . .

.” Holmes v. Hurst, 174 U.S. 82, 86 (1899) (internal

quotations & citation omitted). The public’s common

ownership of words underlies the rule against assignment of

trademarks in gross, and the need to prove secondary

meaning when claiming trademark rights in descriptive

8. PRL, furthermore, did obtain relief because it

demonstrated likelihood of confusion. See Westchester

Media, 214 F. 3d at 668, 672-675 (affirming judgment of

terms.’

Words have value and meaning before their use by

trademark holders. The International Olympic Committee

chose the word “Olympic” because of its history in ancient

Greece. The Fifth Circuit recognized that PRL chose “polo”

because that word conjured up a rich-man’s sport. See

Westchester Media, 214 F.3d at 673. Apple Computer uses a

logo showing a fruit with one bite missing."° While

“APPLE” is certainly “arbitrary”"’ as a mark for computers,

the choice of this particular fruit is not random. Most

American speakers of English presumably know about

Johnny Appleseed, “an apple for the teacher,” “an apple a

day keeps the doctor away,” “A is for Apple” when learning

the alphabet, and that apples grow on the Tree of Knowledge

in the center of the Garden of Eden. The SFAA Court

recognized that someone needs to determine whether the

mark holder is responsible for enough of a famous mark’s

power to justify limits on others’ non-confusing speech. See

SFAA, 483 U.S. at 534. The FTDA does not require either

evidence or proof on this issue. |

9. See McCarthy on Trademarks and Unfair Competition

§ 18.01[2] (explaining rule against assignments in gross)

(3™ ed.); id. at § 11.05 [3] (explaining need for secondary

meaning).

10. U.S. Tmk. Reg. No. 1225776, available at

<http://tess.uspto.gov> (visited May 28, 2002).

11. See McCarthy on Trademarks and Unfair

Competition §§ 11.01, 11.02, 11.04 (explaining “arbitrary”

and other strength-terms used for marks).

-10-

Fourth, the SFAA Court opined that Congress has a

special interest in American participation in the international

Olympic festival and providing means for the USOC to raise

money to advance that participation. See SFAA, 483 U.S. at

537-38. No semi-public purpose supports the FTDA.””

Fifth, the Sports Act prevents use of the word

“Olympic,” only “for the purpose of trade, to induce the sale

of any goods or services, or to promote any theatrical

exhibition, athletic performance, or competition.” 36 U.S.C.

§ 380, as quoted in SFAA, 483 U.S. at 527 n.4. The

SFAA Court saw “no basis in the record [to fear] that the

[Sports] Act will be interpreted or applied to infringe

significantly on noncommercial speech rights.” Jd. at 536

n.15. This Court now has a firm basis for recognizing that

the FTDA is interpreted and applied to infringe significantly

on noncommercial speech rights.

The FTDA has a broader scope than the Sports Act.

The FTDA reaches all “commercial use in commerce,” 15

U.S.C. § 1125(c)(1)(first paragraph), but not

“{njoncommercial use of a mark,” id. at (4)(C). “The word

‘commerce’ means all commerce which may lawfully be

regulated by Congress.” 15 U.S.C. § 1127.

As applied, the noncommercial use exception does

not match the First Amendment concept of commercial

speech. For the purposes of locating speech with somewhat

limited First Amendment protection, “commercial speech” is

12. Its advocates do not claim that the “likelihood of

dilution” standard is mandated by some international

agreement. See 2002 Hearings. Furthermore, a treaty does

not override the First Amendment. See Boos v. Berry, 485

U.S. 312 (1988) (refusing to allow counselor treaty to

permit limitation of First Amendment rights).

“speech proposing a commercial transaction, which occurs in

an area traditionally subject to government regulation.”

Lorillard Tobacco Co. v. Reilly, 533 U.S. 525, 554 (2001).

The FTDA’s noncommercial use exception, however, does

not limit dilution liability to “advertising or a sale of goods or

services.” Planned Parenthood Fed. v. Bucci, 42 U.S.P.Q.2d

1430, 1435 (S.D. N.Y. 1997) (denying “noncommercial use”

defense to 1125(c)), aff'd without op., 152 F.3d 920 (2d Cir.),

cert. denied, 525 U.S. 834 (1998).

Despite alleged-dilutors’ invocation of the

“noncommercial use” exception, the FTDA has been used to

impose limitations on “commercial use” outside the First

Amendment’s “commercial speech” category. The FTDA

was held to reach a web site critical of the religious beliefs

and proselytizing of Jews for Jesus because:

[a]lthough the Defendant Internet site does not solicit

funds directly like the defendant’s site did in Planned

Parenthood,” the Outreach Judaism Internet site

13. Planned Parenthood Fed. v. Bucci, 42 U.S.P.Q.2d

1430 (S.D. N.Y. 1997) (holding web site providing,

without charge or obligation, the text of anti-abortion book

diluted pro-abortion group’s mark), aff'd without op., 152

F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834 (1998). The

District Court denied a “noncommercial use” defense to the

FTDA:

I hold . .. that defendant’s use of plaintiff's mark is

“commercial” for three reasons: (a) defendant

engaged in the promotion of a book, (2) defendant

is, in essence, a non-profit political activist who

solicits funds for his activities, and (3) defendant’s

——————— ee a

(available through the hyperlink) does do so through

the sale of certain merchandise.

The conduct of the Defendant also constitutes a

commercial use of the Mark and the Name of the

Plaintiff Organization because it is designed to harm

the Plaintiff Organization commercially by

disparaging it and preventing the Plaintiff

Organization from exploiting the Mark and the Name

of the Plaintiff Organization.

Jews for Jesus v. Brodsky, 993 F. Supp. 282, 308 (D.N.J.),

aff'd without op., 159 F.3d 1351 (3™ Cir. 1998) (footnote

added). If Brodsky had posted disparaging opinions about a

actions are designed to, and do, harm plaintiff

commercially.

Planned Parenthood, 42 USPQ2d at 1435.

14. The District Court quoted the following text from

Defendant Brodsky’s web site:

Jews for Jesus?

Are you interested in learning about Jews

and Jesus?

Want to know why one cannot believe in

Jesus and be a Jew?

Click here to learn more about how the Jews

for Jesus cult is founded upon deceit and

distortion of fact. . . . This website is an

independent project which reflects the

personal opinion of its owner . ..

-13-

famous natural person, a “public figure,” and these postings

were likely to prevent that person from earning as much as he

would otherwise, presumably the First Amendment would

have prevented the District Court of New Jersey from

enjoining his speech on that sole basis.'* See Curtis Publ. v.

Jews for Jesus, 993 F. Supp. at 282 n.13 (emphasis

in orginal). See also Gideons Int’! v. Gideon 300

Ministries, 94 F. Supp.2d 566 (E.D. Penn. 1999) finding

dilution of non-profit religious organization’s mark by

another nonprofit religious organization). The Gideons

court rejected the defense of noncommercial use because:

[b]y incorporating, raising money, and distributing

goods and services [for free] to the consuming

public [the homeless], Gideon 300 engages in

commercial activity. Gideon 300's use of the

United States mail to solicit contributions in

interstate commerce is further, strong evidence of

the enterprise’s commercial character.

Furthermore, the purpose of the [FTDA]’s

noncommercial use exception was not to exempt

not-for-profit corporations, but to protect parody,

satire, editorial, and other forms of expression that

are not part of a commercial transaction.

Id. at 588 (internal quotation marks and citations omitted).

15. See also Denicola, supra note 3, at 197-99 (likening

constitutional limits on use of trademarks to constitutional

limits on use of famous persons’ names); Schlosser,

supra note 3, at 959 (same).

-14-

Butts, 388 U.S. 130, 155 (1967) (plurality opinion) (“a

‘public figure’ who is not a public official may also recover

damages for a defamatory falsehood . . . on a showing of

highly unreasonable conduct . . ..”) (emphasis added).

The narrowness of the “noncommercial use”

exception as applied is illustrated by the following

hypotheticals. First, consider the “[a]lternative art rubber

stamps for the easily amused!” sold by Lost Angeles Rubber

Works (“LARW”).'® LARW is engaged in commerce. Its

site offers rubber stamps for sale. Stamp 1902-B, offered for

sale at $6.55, is reproduced below”:

16. See <bttp://www. larubberworks.com/index.htm|>

(visited May 30, 2002) (showing this slogan on firm’s

home page).

17. This image is reproduced without permission under a

claim of fair use. See 17 U.S.C. §107. Lost Angeles

<http://www.larubberworks.com/stmpt4 htm|> (visited

May 30, 2002).

-15-

The cigarette box depicted bears an interesting

resemblance to the box used by Lucky Strike®."*

Hypothetically, we could increase the resemblance by slightly

modifying the circle design and changing the brand name to

“UNLUCKY STRIKES.” Such a stamp would be quite

useful for anti-smoking campaigns. For example, a school’s

parent organization could use the stamp to make invitations

and decorations for the junior high school prom. If the

cigarette manufacturer sues LARW under § 1125(c), LARW

would not be able to claim non-commercial use on behalf of

its intended customers. It would also be ineligible for the

news reporting or comparative advertising exceptions."”

18. See U.S. Tmk. Reg. No.0404302, (showing

registration of design for use on “cigarettes and smoking

tobacco” with first use in commerce 1871); see also U.S.

Tmk. Reg. No. 0366744 (showing registration of circle

design containing words “LUCKY STRIKE” for use on

“cigarettes and smoking tobacco” with first use in

commerce 1871); U.S. Tmk. Reg. No. 1956740 (showing

registration of similar circle design for use on “men’s and

women’s clothing” with first use in commerce 1993); U.S.

Tmk. Reg. No. 0118372 (showing registration of word

mark ‘LUCKY STRIKE,” with no limitation on style or

color of lettering, for various types of tobacco products

with first use in commerce 1883). All registrations

available at <http://tess.upsto.gov> (visited May 30, 2002).

19. The only three exceptions from dilution liability read:

(4) The following shall not be actionable under this

section:

(A) Fair use of a famous mark by another person in

-16-

wee

Second, assume that American doctors of Arab

descent decide to raise American consciousness of the

Middle East by spreading information about Arab

contributions to world culture during the Middle Ages. The

doctors form “Arabian Culture, Inc. (“AC”), a non-profit

corporation which does not solicit funds from non-members.

Most members of AC believe that funds donated to the

International Red Cross end up disproportionately in Israeli

hospitals. As part of its awareness campaign, AC creates an

_ Internet site which includes a picture of a defeated army of

Crusader-knights being treated by persons in traditional Arab

robes. The knights are bleeding; their blood forms a large

pool shaped to match the Greek-cross insignia of the

International Red Cross.” The AC site does not itself ask for

comparative commercial advertising or promotion

to identify the competing goods or services of the

farnous mark.

(B) Noncommercial use of a mark.

commentary.

15 U.S.C. § 1125(c 4A), (B), (C).

20. Conceivably this use might violate 18 U.S.C. § 706

(June 25, 1948, c. 645, 62 Stat. 732), which criminalizes

both fraudulent impersonation of a Red Cross worker and

“{w]hoever . . . uses the emblem of the Greek red cross on a

white ground, or any sign or insignia made or colored in

imitation thereof or the words “Red Cross” or “Geneva

Cross” or any combination of these words...“ I was

unable to locate any reported American case relying on 18

U.S.C. § 706 in comparable circumstances. Compare

e.g., Stanley Labs. v. FTC, 138 F.2d 388, 389 (9* Cir.

-17-

donations of any kind or offer merchandise for sale.

However, it has hyperlinks to the re-election committees of

several pro-Palestinian Congresspersons. These re-election

sites allow visitors to donate on-line by approving charges to

their credit cards. The AC site also links to bookstores

specializing in relevant history books. The Red Cross sues

AC for dilution of its famous cross-logo.

Under the analysis used in Planned Parenthood, and

Brodsky, the AC’s site forfeits the “noncommercial use”

exception because it links to several sites requesting

donations or offering books for sale. Since AC’s site deals

only with facts about the Middle Ages, it does not seem to

qualify for the news exception, § 1125(c)(4)(C). AC’s site is

not engaged in comparative commercial advertising, the only

other exception, § 1125(c)(4)(A).”"

1943) (enforcing Federal Trade Comm. cease and desist

order baring “use of the letters ‘M.D.’, either alone or in

conjunction with the pictorization of a doctor, nurse, or

cross, in connection with a medicated douche powder”

because such pictorization “is deceptive in that it tends to

lead the public to believe that the powder is endorsed by the

medical profession or by the American Red Cross”; relying

on Federal Trade Comm. Act, 15 U.S.C. § 41 et seq.).

21. A distortion of a pictorial mark may never be

allowable “[ flair 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,” 15 U.S.C. § 1125(c)4)(A). See Deere

& Co. v. MTD Prods., Inc., 41 F.3d 39 (2d Cir. 1994)

(affirming, under New York law, an injunction against

-18-

——ee ee

If all solicitation of funds is outside the

“noncommercial use” exception, even sites by the

Democratic National Committee, the Republican National

Committee, or committees formed to elect specific political

candidates are outside this exception. In ordinary language,

these sites are also outside the “comparative advertising”

exception. Are they within the exception for “[a]ll forms of

news reportiug and news commentary”? Most presumably

are, but “news” is arguably narrower than “politics.” An

Internet site or campaign flyer discussing only a candidate’s

personality or early life is not within the ordinary meaning of

“news.” All the uses mentioned in this paragraph, however,

are core political speech worthy of the strongest First

Amendment protection.

The need to prove actual dilution should prevent suits

similar to the above hypotheticals from becoming more than

mere nuisances.

Finally, SFAA was decided on the assumption that

“commercial speech receives a limited form of First

Amendment protection.” SFAA, 483 U.S. at 535 (internal

quotation marks and citations omitted). More recent cases

have suggested that First Amendment protection of

commercial speech is not as limited as previously believed.”

MTD television commercial implying superiority of MTD’s

products by using a humorous cartoon based on Deere’s

logo).

22. 15 U.S.C. § 1125(c(4)(C).

23. SFAA’s leading authority for the limited protection of

commercial speech is Posadas de Puerto Rico Ass’n. v.

-19- :

See Thompson, 122 S. Ct. at 1507 (emphasizing requirement

that Government prove “that the regulation directly advances

[it’s substantial] interest and is not more extensive than

necessary to serve that interest” while holding advertising

limitations unconstitutional) (internal quotation marks and

citations omitted); Lorillard, 533 U.S. at 561 (terming the

“fit” between means and goals the “critical inquiry”) (internal

quotation marks and citations omitted); see also Thompson,

122 S. Ct. at 1504 (admitting that some members of the Court

“have expressed doubts about the Central Hudson standard,”

and implying that Court is now being stricter in applying that

test, “Central Hudson as applied in our more recent

commercial speech cases, provides an adequate basis for

decision’’) (emphasis added; citations and internal quotation

marks omitted).

In summary, the First Amendment status of the FTDA

is unclear. This legislation is only sustainable if its

“incidental restrictions on First Amendment freedoms are

[not] greater than necessary to further a substantial

governmental interest.” SFAA, 483 U.S. at 536 (quoting

O’Brien). The only government interest supporting the

FTDA seems to be protecting one set of private property from

erosion through otherwise lawful, non-fraudulent, non-

confusing speech. If this Court weakens the harm

requirement to mere “likelihood of dilution,” the FTDA

becomes even more questionable under First Amendment

Tourism Co., 478 U.S. 328, 340 (1986). See SFAA, 483

U.S. at 535. This Court has since recognized that Posadas

applied the review standard in a uniquely lax manner. See

Greater New Orleans Broad. Ass’n v. United States, 527

U.S. 173, 182 (1999).

-20-

principles. “[A] government body seeking to sustain a

restriction on commercial speech must demonstrate that the

harms it recites are real . . . “ Lorillard, 533 U.S. at 555

(citations omitted; emphasis added). This Court should

enforce Congress’ plain requirement of real dilution.

The Constitution prevents Congress from giving

“authors” or “inventors” rights to “exclude” the public from

use of copyrightable or patentable subject matter for longer

than “limited times.”** Trademarks are not required to be

copyrightable or patentable subject matter. The Trademark

Cases, 100 U.S. (18 Otto) 82, 94 (1879) (holding that statute

protecting use-based trademarks is outside Congress’

“writings” nor “discoveries.”).

Many current trademarks, however, are copyrightable

subject matter, having the requisite “minimal level of

creativity.” Feist Publ’ns v. Rural Tel. Svc., 499 U.S. 340,

359 (1991). Many marks, for example, include drawings or

sculptural elements.*> Even simple drawings are

24. “Congress shall have the power . . . To promote the

progress of science and useful arts by securing for limited

times to authors and inventors exclusive nghts in their

respective writings and discoveries.” U.S. Const. Art. I.

Sec. 8, cl. 8.

25. Examples are present even in the small group of

leading FTDA cases. See, e.g., Kellogg, 209 F.3d at 564

-21-

copyrightable if independently created.

Trademark protection of copyrightable works whose

courts on the ground that trademark protects consumers from

confusion.” However, relief for dilution does not require a

showing of even a likelihood of confusion. See 15 U.S.C.

§ 1127 (“The term ‘dilution’ means the lessening of the

capacity of a famous mark to identify and distinguish goods

or services, regardless of the presence or absence of —. . . (2)

likelihood of confusion, mistake, or deception.”’).

Hypothetically, therefore, allowing relief for mere

“likelihood of dilution,” may result in judgement for the

holder of a mark which is (a) a drawing containing

copyrightable subject matter, (b) which is deemed famous

because it is the mark emblazoned on the locally best selling

version of a very specialized product,”” and (c) confuses no

(cartoon drawing of tiger); Nabisco, 191 F.3d at 212

(goldfish shaped cracker); Toro Co., 61 USPQ2d at 1165

(drawing of bull’s head).

26. See McCarthy on Trademarks and Unfair Competition

§ 6.10 (3™ ed.) (providing overview of cases); see id. at 6-

52 (focusing on confusion requirement); see also

Latimer & Ablin, supra note 3, at 490 (“[TJhe key

distinction that allows trademarks peacefully to coexist

with patents and copyrights is that trademarks . . . require[]

a demonstration of consumer confusion .. . “).

27. Some courts have declared marks may be “famous”

even though they are well known only in niche markets.

See, e.g., Times Mirror, 212 F.3d at 164-65; Syndicate

2).

~~ Es — =

one — even without any proof that the mark holder has

suffered actual injury. Furthermore, the mark-holder may not

be the “author” as defined under the Copyright Act. The

protection will last until the mark is abandoned— potentially

forever — in violation of the constitutional “limited times”

requirement of Article I, Section 8, clause 8.”

Even more difficult issues arise under the Patent

prong of the Copyright and Patent Clause. Trademark rights

are available in product configurations, (often termed “trade

dress’), which may include formerly patented subject

matter,” or product elements unprotectable by utility or

Sales, 192 F.3d at 641.

28. The Lanham Act rests on Congress commerce power,

but the Commerce Clause may not be used to by-pass a

limit in the text of another Article I power. See Railway

Labor Executives Ass’n v. Gibbons, 455 U.S. 457, 465

(1982) (refusing to allow Commerce Clause by-pass of

uniformity limit in Bankruptcy Clause). Nor may the

Treaty Power be used to by-pass a textual fence blocking

Congress’ power. See Paul J. Heald & Suzanna Sherry,

Implied Limits on the Legislative Power, 2000 Univ. of I.

L. Rev. 1119, 1181-82 (explaining). The Necessary and

Proper Clause may not be used to “adopt measures which

are prohibited by the Constitution” or “pass laws for the

accomplishment of objects not intrusted to the

government.” M’Culloch v. Maryland, 17 U.S. 316, 423

(1819).

29. See TrafFix Devices v. Marketing Displays, 532 U.S.

23, 25-26 (2001) (trade dress infringement claim on road

-23-

es ee

design patent.” Even with the need to demonstrate

likelihood of confusion, this Court has refused to allow trade

dress in functional product configurations,”’ but has declined

to provide analysis of the difficult, underlying constitutional

issue.” The First Circuit declined to reach the limited times

sign covered by expired utility patent).

30. See id. at 28 (“It is well established that trade dress

can be protected under federal law,” and referring to “[t]he

design . . . of a product.”).

31. See id. at 32-33. But see In re Mogen David Wine

Corp., 372 F.2d 539, 545-46 (CCPA 1967) (Smith, J.,

concurring) (arguing that likelihood of confusion would

allow trade dress protection for wine bottle while, or after,

it was protected by design patent).

32. See TrafFix, 532 U.S. at 34 (reserving constitutional

issue). But see Compco Corp. v. Day-Brite Lighting, Co.,

376 U.S. 234, 234-35 (1964)(holding state law could not

prevent competitor from marketing lovk-alike product in

suit over lighting fixture which had been refused a utility

patent and whose design patent had been held invalid);

Sears, Roebuck & Co., v. Stiffel Co., 376 U.S. 225, 226

(1964) (holding state law could not prevent competitor

from marketing look-alike product in suit over lighting

fixture whose utility and design patents had both been held

invalid for want of invention); Kellogg Co. v. National

Biscuit Co., 305 U.S. 111 (1938) (refusing to allow

enforcement of either famous word mark or famous product

configuration mark after expiration of patents).

-24-

ee ae ee ee

issue regarding alleged dilution of a faucet because the design

was held not to be famous.” If this Court approves FTDA

relief whenever dilution is merely likely, the constitutional

issue of permanent protection for product configurations will

arise in a much larger number of cases.

In summary, dilution protection raises the same

“limited times” constitutional problem as does trademark

infringement, but dilution does not allow the same confusion-

based partial solution. Reading the FTDA to require only a

likelihood of dilution will increase the number of instances in

which a court will have to decide whether the FTDA as

applied violates the “limited times” provision of the

CONCLUSION

The plain meaning of the FTDA requires actual

dilution. The plain meaning is supported by two rules of

statutory construction. First, the rule that statutes should be

read to prevent raising doubts of their constitutionality.

Second, the rule that, unless Congress has spoken with

extreme clarity, statutes should not be read to approach the

limits of Congress’ power. Removing the actual harm

element of the FTDA would unnecessarily multiply

constitutional issues under both the First Amendment and the

33. See LP. Lund, 163 F.3d at 33, 35, 50, 51.

-25-

For all these reasons, this Court should hold that

“causes dilution” means what it says — a party demanding

FTDA relief must prove actual dilution-harm.

Respectfully submitted,

June 24, 2002

Mop?

Malla Pollack, Esq.

Member of the Bar of the Supreme Court