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ASMP's letter on HR 683

On February 7, ASMP sent this letter to members of the Senate Judiciary Committee’s subcommittee on Intellectual Property.

The Honorable Orrin G. Hatch
Chair, U.S. Senate Judiciary Subcommittee on Intellectual Property
United States Senate
Washington, DC 20510

Via E-mail

Re: H.R. 683 (“Trademark Dilution Revision Act of 2005”)

Dear Mr. Chairman:

I am writing to you to express concerns on behalf of ASMP’s 5,000 members relating to potential consequences of the changes in the language of The Trademark Act of 1946 proposed by H.R. 683. As you may recall, the American Society of Media Photographers (ASMP) is a not-for-profit trade association whose mission is to protect and promote the interests of professional photographers who earn their livings by making photographs for publication in the various media. Those photographers serve many markets, including the advertising, photojournalism, corporate and public relations worlds.

Our primary concerns are not that the language of the bill would, if enacted, result in adverse court decisions imposing liabilities on photographers that would not result under the current law. We do not expect that would be the case in most situations. Rather, our concern is with the presumably unintended chilling effect of deleting the current exception for “Noncommercial use of mark.” Under the existing law, photographers often receive cease and desist letters and other threats from trademark owners in connection with photographic uses of trademarks and similarly protected rights. In almost all of those cases, the trademark owners know that there is not really a violation of an enforceable right involved, and they simply go away without taking further action. However, if the specific exception for noncommercial uses of the marks that appears in the current version of the Act is eliminated, we believe that the mark owners will see this as a substantial broadening of their rights and will try to enforce rights that they appear to, but really have not, been granted by this legislation.

The exception for “All forms of news reporting and news commentary,” which would remain in the Act, is simply not nearly broad enough to cover a huge amount of the photography that is made and used in the United States. The world of publication photography consists loosely of two segments: commercial and editorial. Editorial usages include news reporting and news commentary, but they extend far beyond those two categories, and the proposed exception would simply not provide sufficient apparent protection for photographers. Under the proposed bill, it is likely that the vast majority of editorial photography would suddenly appear to lose the protection that it currently is afforded.

You are probably familiar with the decision in the case of the Rock and Roll Hall of Fame v. Chuck Gentile, in which the U.S. Court of Appeals for the Sixth Circuit ruled that Chuck Gentile’s photographic poster showing the Rock and Roll Hall of Fame building was not an infringement of the Hall of Fame’s trademark or other rights. What you probably do not know, however, was the Pyrrhic nature of that victory: in the end, the financial and personal demands of going through the trial and appellate court proceedings to seek vindication destroyed that photographer’s career and business and forced him out of the profession. For photographers, being on the right side of the language of the law is frequently not enough: they simply cannot afford to defend themselves in litigation, even if they are in the right. This is especially true in areas like trademark, where the plaintiffs are likely to be large and wealthy corporations with virtually unlimited funds, in-house legal staffs, and large law firms on retainer. Photographers need legislation that cannot easily be misinterpreted and misapplied against them.

To avoid needless litigation and the potential of grave injustice to photographers and the viewing public, we urge that the language of H.R. 683 be amended before being put to a vote to reinsert the current exception for the “noncommercial use of a mark” or in some other way so as clearly to protect editorial and other uses of photographs.

Thank you for your time and interest. If you or any of the other recipients of this message have any questions or need any additional information, we are at your disposal.

Respectfully yours,

Victor S. Perlman
General Counsel and Managing Director
American Society of Media Photographers, Inc. (ASMP)
150 North Second Street
Philadelphia, PA 19106-1912
Phone: 215-451-ASMP Ext. 1207
Fax: 215-451-0880
E-mail: perlman@asmp.org
URL: http://www.asmp.org

CC (via e-mail):
Hon. Arlen Specter
Hon. Jon L. Kyl
Hon. Mike DeWine
Hon. Lindsey O. Graham
Hon. John Cornyn
Hon. Sam Brownback
Hon. Tom Coburn
Hon. Patrick J. Leahy
Hon. Edward M. Kennedy
Hon. Joseph R. Biden, Jr.
Hon. Diane Feinstein
Hon. Herbert H. Kohl
Hon. Richard J. Durbin
Bruce Artim, Esq.
Bruce Cohen, Esq.
Ryan L. Triplette, Esq.