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DOCUMENT RESUME ED 473 795 CS 511 780 TITLE Proceedings of the Annual Meeting of the Association for Education in Journalism and Mass Communication (85th, Miami, Florida, August 5-8, 2002). Law Division. PUB DATE 2002-08-00 NOTE 247p.; For other sections of these proceedings, see CS 511 769-787. PUB TYPE Collected Works Proceedings (021) Reports Research (143) EDRS PRICE EDRS Price MF01/PC10 Plus Postage. DESCRIPTORS Comparative Analysis; Copyrights; *Court Litigation; Foreign Countries; *Freedom of Speech; Higher Education; *Internet; *Journalism Education; Legal Problems; Privacy IDENTIFIERS Europe; *First Amendment; Internet Service Providers; Low Power Radio; Opinion Polls; Senate; South Africa; Trademarks ABSTRACT The Law Division of the proceedings contains the following 8 papers: "Trademarks and the First Amendment: The Anatomy of a Conflict" (Retha J. Martin); "Exit Polls and Other Bad Habits: An Analysis of First Amendment Considerations Concerning Policy Recommendations to Control or Prohibit Media Election Forecasts" (Niels Marslev); "Theory Rejected: The Framing of the Freedom of Expression Section of the South African Constitution" (Thomas A. Schwartz); "Protecting a Delicate Balance: Facts, Ideas, and Expression in Compilation Copyright Cases" (Matthew D. Bunker and Bethany White); "Online Privacy: A Comparative Study of Privacy Practices on European and American Web Sites" (Bastiaan Vanacker); "'An Evil Act': The Battle to Define Communication in 'Texas v. Johnson'" (David J. Vergobbi); "Redefining 'Internet Service Providers': Towards a New Legal Framework for Internet Regulation" (Seung Eun Lee); and "Localism Reconsidered: The Lessons of Docket 80-90 and Low Power FM" (Gregory D. Newton).(RS) Reproductions supplied by EDRS are the best that can be made from the original document. Proceedings of the Annual Meeting of the Association for Education in Journalism and Mass Communication (85th, Miami, FL, August 5-8, 2002): Law Division. PERMISSION TO REPRODUCE AND DISSEMINATE THIS MATERIAL HAS BEEN GRANTED BY 14c_Gt I( TO THE EDUCATIONAL RESOURCES INFORMATION CENTER (ERIC) 1 U.S. DEPARTMENT OF EDUCATION Office of Educational Research and Improvement EDUCATIONAL RESOURCES INFORMATION CENTER (ERIC) This document has been reproduced as received from the person or organization originating it. Minor changes have been made to improve reproduction quality. Points of view or opinions stated in this document do not necessarily represent official OERI position or policy. BEST COPY AVAILABLE CD 00 2 C/D U Trademarks and the First Amendment: The Anatomy of a Conflict Division: Law Primary Contact Person: Retha J. Martin Graduate Teaching Associate and Doctoral Student School of Journalism University of Tennessee 300 Communications Building Knoxville, TN 37996-0330 Office Tel.: 865-974-8007 Home Tel.: 865-579-2860 E-mail: [email protected] Trademarks and the First Amendment: The Anatomy ofa Conflict Table of Contents Subheading Page Introduction 1 How a Trademark Functions 1 Figure 1Commercial Product Transaction Process 5 Contextual Factors Influencing the Interpretation of the Meaning of Trademarks 6 Emergence of the Property-Based Trademark 8 Trademark Dilution Law: Overprotection of Trademarks andUnderprotection of Free Speech a.Federal Trademark Dilution Act of 1995 9 b.Courts Afford Trademark Rights Greater Protection Than First Amendment Rights 13 Parody and the First Amendment Under the Federal Trademark DilutionAct 20 First Amendment Rights to use Cultural Icons 23 Why is Corporate America Implicated? 23 4 Trademarks and the FirstAmendment: The Anatomy ofa Conflict Introduction Evolving technology, new legislation and trends in judicial thinkinghave contributed to changes in the area of trademark protection and policy with threadsof First Amendmentconcerns woven throughout. The thesis of thispaper is that developments in trademark protectionhave created a legal environment in whichthe rights of trademarkowners are valued over First Amendment rights of free speech. Inorder to discern how First Amendment issuesarise in relation to trademarks, it is necessary to understand the commercialfunction of a trademark and the two major theories for protection of trademarks, namely 1)trademark protection against infringement under Section 43(a) of the Lanham Act,' and 2) trademark protectionbased on the federal dilution law as set forth in Section 43(c) of the Lanham Act.2 How a Trademark Functions Trademarks are a form of commercial expression, hence, the Federal government's right to regulate trademarks arises under the Commerce Clause of the U.S. Constitution. The commercial process of producing, advertising and selling branded goods to meetconsumer needs (or perceived needs) is the contextual background for this analysis of how trademarks represent. Beginning in the early 1900's, the courts recognized that trademarks function as symbols that convey information regarding sources or origin of a product and its quality.Consistent with this concept, the Trademark Act of 1946 (the Lanham Act) provided the following legal definition of a trademark: The term 'trademark' includes any word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.3 Trademark Act of 1946, 15 U.S.C. §§ 1051-1127, 1127. 2 Trademark Act of 1946, 15 U.S.C. § 1125 (c)(1) (as amended). 3 15 U.S.C. §§ 1051-1127, 1127. BEST COPY AVAILABLE 15 Trademarks and the First Amendment: The Anatomy of a Conflict Trademarks can thus be seen to represent the physical and functional "aboutness"of a product, including:1) the product characteristics or features, 2) the quality, and the 3)source . (manufacturer or retailer). Many modern marks represent "hugely informative data clusters" with regard to the attributes of goods.4 In his Harvard Law Review article in 1948, the marketing scholar, Ralph Brown, referred to this as the "informative function of trade symbols." He noted that this informative role of trademarks rarely exists independently of advertising.5 The consumer experiences a trademark in the context of advertising, and the meaning of the trademark to the consumer is shaped by the advertising. Trademarks, thus, serve as identifiers for advertising and a trademark can be seen to represent present and past advertising messages. Trademarks, also represent psychological or emotional meaning associated with a product. Justice Frankfurter eloquently referred to this level of meaning and the communication role of trademarks in the Supreme Court opinion he wrote for Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co. in 1942: The protection of trade-marks is the law's recognition of the psychological function of symbols...A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the sameto convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears... If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress. (emphasisadded)6 4 Jerre B. Swann, Sr., David A. Aaker and Matt Reback, "Trademarks and Marketing," Trademark Reporter 91 (July/August 2001): 787-832, 796. 5 Ralph S. Brown, Jr., "Advertising and the Public Interest: Legal Protection of Trade Symbols," Yale Law Journal 108 (1948): 1165 -1215, 1187. 6 Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942). 6 Trademarks and the First Amendment.: The Anatomy of a Conflict The consumer shares a psychological association with the trademark so that it becomes an old friend with its own personality. Emotional attachments with the trademark lead to use experiences that have a high level of richness and depth. The psychological meaning that a trademark represents is reinforced through advertising. However, if a trademark is limited to representing only a data cluster of product information plus psychological meaning, the trademark owner may find itself still struggling for commercial success in the current environment of merchandising and multi- faceted use of trademarks. Aggressive marketing strategists seek to create expanded meanings for their trademarks. This has led to the emergence of a new role of trademarks as a promise of a"self- expressive" or "transformative" experience. Consumers can enjoy a heightened senseof success by owning the product, can become a rebel or become more elegant, adventuresome orefficient. They can experience a change in their professional, social andpersonal personas because of their association with the trademark. For example, a MONTBLANC pen at abusiness meeting allows the user to experience feelings of success andconfidence. The latest model of NIKE shoes instills a "hipness" in the teenager wearingthe shoes on the street or in school. Driving a LEXUS automobile transforms the driver into a person withsuperiority and authority that may be decidedly different from the person they werebefore. Consumers may even buy a product purely

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