Legislative Update

Copyright and Trademark Bills Advance in Congress

On March 9, the House Judiciary Committee took up four intellectual property-related bills, which were quickly approved and sent to the House. Two of the bills - H.R. 683, the "Trademark Dilution Revision Act of 2005," and §167, the "Family Entertainment and Copyright Act of 2005" - contain significant changes to trade-mark and copyright law. The other two are technical amendments to correct drafting errors in bills enacted last Congress.

Amendments to the 1995 Trademark Dilution Act

The Trademark Dilution Revision Act is designed in part as a response to the decision of the U.S. Supreme Court in Moseley v. V Secret Catalogue, 537 U.S. 418 (2003), where the Court held that actual dilution, rather than a likelihood of dilution, is the proper standard for adjudicating cases under the Federal Trademark Dilution Act of 1995 (FTDA). In dicta, the Moseley decision also raised questions about the availability of an action for dilution by tarnishment under the FTDA. H.R. 683 addresses these issues by amendments to the FTDA to establish a "likelihood of dilution" standard and to expressly provide for a cause of action based on dilution of a famous mark by tarnishment.

Other changes in H.R. 683 include a new definition of a famous mark, revision of the factors for determining fame, and clarification that the FTDA extends protection to famous marks with acquired distinctiveness, as well as those that are inherently distinctive. Under the new definition of a famous mark ("widely recognized by the general consuming public of the United States") marks that are famous in a niche product or service market or that are recognized only in a limited geographic region will not qualify for federal dilution protection.

As introduced, H.R. 683 would have limited actions under the FTDA to those in which the defendant used the challenged mark as a "designation of source" for his own company, goods, or services. This provision was dropped from the bill in the final stages of development. At the same time, language was added to expressly provide that fair use under the FTDA extends to use of a famous mark "for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods and services of the famous mark owner."

Copyright Package from 108th Congress

§167, the "Family Entertainment and Copyright Act of 2005." §167 brings together provisions from several Senate and House bills of the 108th Congress that passed one or both houses of Congress, none of which were enacted. §167 would:
· Provide criminal penalties for using a camcorder to videotape a film in a movie theater;
· Criminalize willful copyright infringement committed by distributing on a computer network a work known to be intended for commercial distribution;
· Permit pre-registration of an unpublished work being prepared for commercial distribution, and provide an action for infringement of pre-registered works.
· Exempt from copyright and trademark infringement liability the use of technology that permits skipping over selected content during private viewing of motion pictures for private or in-home use.
· Reauthorize the National Film Preservation Act.
· Amend the Sonny Bono Copyright Term Extension Act to allow libraries to make copies of certain copyrighted works, such as films and musical compositions that are in the last 20 years of their copyright term, are no longer commercially exploited, and are not available at a reasonable price.