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

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0535%3A11

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2003
- **Citation:** 537 U.S. 418

## 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.

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
............-:00++. 7n.5
U.S. Tmk. Reg. No. 0118372, available at

kN, Ce 167.18

-Vii-

U.S. Tmk. Reg. No. 0366744, available at
............0..ecrecrecrsseeceeseese 160.18

U.S. Tmk. Reg. No.0404302, available at
..........scesseereersereereenneneees 160.18

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

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

a

Amendment and the “limited times” requirement of the
Copyright and Patent Clause.’ The FTDA’s possible validity
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.

2.

|

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

2.

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
Copyright and Patent Clause].”); L. L. Bean, Inc. v. Drake
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

4-

—— = -

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).

rN

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

(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

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

(visited May 28, 2002);141
Cong. Rec. H14317-18 (daily ed. Dec. 12, 1995), available

at (visited May 28, 2002); 141
Cong. Rec. $19306 (daily ed. Dec. 29, 1995), available at

, (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).

8-

_—

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
(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

a

——————— 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

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
(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
Rubber Works © 2002. See
(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 (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.
(C) All forms of news reporting and news
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’
Copyright and Patent power because such marks are neither
“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-

a.

copyrightable if independently created.

Trademark protection of copyrightable works whose
copyright protection has expired has been allowed by some
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
Copyright and Patent Clause.

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
Copyright and Patent Clause.

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

Visiting Associate Professor of Law
University of Memphis

Cecil C. Humphreys School of Law
3715 Central Ave.

Memphis, TN 38152-3140
901-678-2421

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0535%3A11. Public record. Not legal advice.