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Scrivener's Error Regarding Lanham Act Section 43(c)(6)
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Scrivener's Error Regarding Lanham Act Section 43(c)(6)

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Presentation regarding error in Lanham Act as to "registration defense" to dilution actions.

Presentation regarding error in Lanham Act as to "registration defense" to dilution actions.

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  • 1. The “Scrivener’s Error” Regarding Registration Defense to DilutionClaims in Lanham Act Section 43(c)(6) © 2012 Womble Carlyle Sandridge & Rice, LLP Michael A. Cicero IPO Annual Meeting September 10, 2012 1 1
  • 2. Source spotlighting the problem: Timothy A. Lemper & Joshua R. Bruce,Beware the Scrivener’s Error: Curing theDrafting Error in the Federal Registration Defense to Trademark Dilution Claims, 19:2 TEX. INTELL. PROP. L. J. 169 (2011) (“Lemper et al.”) 2 2
  • 3. Professor Timothy A. Lemper • Clinical Associate Professor of Business Law and Ethics at Indiana University • Former IP Litigator at Finnegan, Henderson, Farabow, Garrett & Dunner LLP and Baker & Hostetler LLP • Harvard Law School, 2001 • M.S., Public Admin. & Public Policy, London School of Economics, 1997• Served as staff assistant to Sen. Richard Lugar• Served as Mgt. Consultant for USAF 3 3
  • 4. FTDA § 43(c)(3)• “That section provides that federal registration of a trademark is a complete defense to state and common law dilution claims and it was included to encourage federal registration. ”• “While section 1125(c)(3) provides an absolute defense to dilution claims based on state law, it has no impact on dilution claims that are based on federal law.”Westchester Media Co. LP v. PRL USA Holdings, Inc., 103F.Supp.2d 935, 976 (S.D. Tex. 1999), aff’d in part, vacated andremanded in part on other grounds, 214 F.3d 658 (5th Cir.2000). 4 4
  • 5. Successive Texts Regarding § 43(c)(6) 5 5
  • 6. Subsections (A) and (B) of Current § 43(c)(6)(A)(i) is brought by another person under the common lawor a statute of a State; and(ii) seeks to prevent dilution by blurring or dilution bytarnishment; or(B) asserts any claim of actual or likely damage or harm tothe distinctiveness or reputation of a mark, label, or formof advertisement.Sub§ (A) limits defense to state dilution statutes, butSub§ (B) contains no such limitation! 6 6
  • 7. Likelihood of Courts Interpreting Sub§ (B) as Not Limited to State Dilution Statutes“Where Congress includes particular language in onesection of a statute but omits it in another section of thesame Act, it is generally presumed that Congress actsintentionally and purposely in the disparate inclusion orexclusion.”Russello v. United States, 464 U.S. 16, 23 (1983) (quoted inGozlon-Peretz v. United States, 498 U.S. 395, 404 (1991)). 7 7
  • 8. Likelihood of Courts Interpreting Sub§ (B) as Not Limited to State Dilution Statutes“‘It is beyond our province to rescue Congress from itsdrafting errors, and to provide for what we might think isthe preferred result.’”Lamie v. United States Trustee, 540 U.S. 526, 542 (2004)(quoting United States v. Granderson, 511 U.S. 39, 68(1994)) (cited in Lemper et al. at 170 n.1). 8 8
  • 9. Statutory Construction in Russello v. United States RICO statute: 18 U.S.C. § 1963(a)Person convicted of RICO violation under § 1962 shall forfeitto the United States:Sub§ (1) – any interest acquired or maintained in violation of§ 1962, andSub§ (2) – any interests in . . . any enterprise which he hasestablished, operated, controlled . . . in violation of § 1962. 9 9
  • 10. Statutory Construction in Russello v. United StatesIssue: Does § 1963(a)(1) require convicted arsonist to forfeit tothe U.S. $340,043.09 in illegally-obtained insurance proceeds,even though these were not interests in an “enterprise”?Held: Yes; § 1963(a)(1) is not limited to interests in anenterprise, so insurance proceeds must be forfeited to the U.S. 10 10
  • 11. Statutory Construction in Russello v. United States Rationale“Had Congress intended to restrict § 1963(a)(1) to an interestin an enterprise, it presumably would have done so expresslyas it did in the immediately following subsection (a)(2).”Russello, 464 U.S. at 23.“We refrain from concluding here that the differing language inthe two subsections has the same meaning in each. We wouldnot presume to ascribe this difference to a simple mistake indraftsmanship.” Id. (emphasis added) 11 11
  • 12. Statutory Construction in Russello v. United States Rationale (cont’d)“An early proposed version of RICO, S. 1861. . . had a singleforfeiture provision for § 1963(a) that was limited to ‘all interestin the enterprise.’ This provision, however, later was dividedinto the present two subsections and the phrase ‘in theenterprise’ was excluded from the first. Where Congressincludes limiting language in an earlier version of a bill butdeletes it prior to enactment, it may be presumed that thelimitation was not intended.” Russello, 464 U.S. at 23(emphasis added). 12 12
  • 13. Successive Texts Regarding § 43(c)(6) 13 13
  • 14. Problems With Not Limiting § 43(c)(6)(B) to State Dilution Statutes• Bars federal dilution action against federal registrants.• Prevents owners of famous marks from asserting dilution as a basis for canceling federal registrations, conflicting with §§ 14 & 24 of Lanham Act. • “Unscrupulous actors” could register diluting marks, then extort money from such owners to abandon registration, stop using the mark, or both. Lemper et al. at 186. • Registering a diluting mark – such as BUICK for aspirin – would be fairly easy to do since refusals to register not based on dilution grounds. Id. at 186-87. 14 14
  • 15. Problems With Not Limiting § 43(c)(6)(B) to State Dilution Statutes• Judicial uncertainty. Potential split of authority, similar to that experienced with Moseley saga regarding “actual” or “likely” dilution. • Some courts may strictly construe statute according to literal meaning, will others may seek to interpret it consistently with legislative history. Lemper et al. at 190. • Resulting uncertainty increases costs and risks to mark owners. Id. at 191. 15 15
  • 16. Proposed Revisions to § 43(c)(6) 16 16
  • 17. Letter 07/31/12 from Herbert Wamsley to Reps. Lamar Smith and John Conyers, Jr. Supporting H.R. 6215• “[Current § 43(c)(6)] stands to significantly harm owners of famous marks in their efforts to enforce their trademark rights using a federal dilution claim.”• “We believe this result is contrary to the history and intent behind the TDRA.”• “IPO believes that H.R. 6215 makes the necessary corrections to conform this section to original legislative intent and restore to owners of famous marks the full scope of protection to which they are entitled under the Lanham Act.” 17 17
  • 18. Opening Statement 08/01/12 from Chairman Smith in U.S. House Judiciary Committee re H.R. 6215• “Last year, two law professors discovered a technical problem with one of the 2006 changes. . . . This produced an unexpected and unintended change to the law.”• Echoed concerns about difficulty for mark owners to cancel diluting mark registrations.• “This bill ensures that the trademark community is protected from those who look to use this loophole as a way to disparage legitimate trademarks and cost their holders time and money.”• Ranking Member Conyers concurred with Chairman Smith. 18 18
  • 19. Status of H.R. 6215 at Time of this Writing• Bill reported favorably in House Judiciary Committee.• Letters of support from INTA, IPO, and AIPLA entered into the record. 19 19
  • 20. THE END 20 20