SALT LAKE CITY, UT — In defending his state’s recently passed Trademark Protection Act (TPA), Senator Dan Eastman recently stated on his blog that the Utah legislature has “been catching hell from the fringes on this issue.” He has linked to commentary published on the bill issued by the Electronic Frontier Foundation (EFF) and the director of the Santa Clara University’s High Tech Law Institute, Eric Goldman, as examples of the “fringe” elements opposing the law.What Eastman omitted from his blog, is that Utah’s own Office of Legislative Research and General Counsel (GC) is among those that believe the TPA will ultimately fail court scrutiny and be found unconstitutional as violating the dormant commerce clause.

In its analysis of the TPA, the Utah GC notes that the Commerce Clause of the U.S. Constitution empowers Congress to regulate interstate commerce and contains a “dormant” aspect that “prohibits state…. regulation that discriminates against or unduly burdens interstate commerce.”

“Although the dormant aspect of the Commerce Clause is not implicated when Congress has delegated its power to regulate in an area to the states, that delegation must be either ‘expressly stated’ or made ‘unmistakably clear,’” the GC analysis continues, citing New York State Dairy Foods, Inc. v. Northeast Dairy Compact Commission.

With respect to Utah’s TPA, the GC notes in its analysis, “there has been no specific delegation by Congress of the authority to regulate the type of Internet advertising that this legislation targets, whether triggered by an electronic registration mark or any other method. Thus, the dormant Commerce Clause is implicated and the legislation will be analyzed to determine whether it places a burden on interstate commerce that outweighs the state’s benefit.”

The “electronic registration mark” referenced by the GC is a creation of Utah’s TPA, a new manner of trade/service mark, one that “may not be used to trigger advertising for a competitor,” as it is described in the TPA.

The GC notes in its analysis that the Tenth Circuit U.S. Court of Appeals held in ACLU v. Johnson that a New Mexico law which prohibited “the dissemination of material harmful to minors by computer” violated the Commerce Clause because the law “applied to material that was being disseminated over the Internet.”

“This legislation [the TPA] is not dissimilar from the laws struck down in ACLU v. Johnson, in that it has the effect of requiring entities outside of Utah to verify the location of a user or ensure that all content complies with Utah law,” the GC states in its review of the TPA. “Additionally, the benefit to the state from this legislation is likely less than in ACLU v. Johnson, which dealt with the protection of minors from pornography.”

In the GC’s view, the fact that the law seeks to regulate conduct outside the state of Utah, combined with the likelihood that the legislation “provides a benefit that is substantially outweighed by the burdens on interstate commerce,” leads to a “high probability of being held to be unconstitutional.”

In his defense of the TPA, entitled “Identity Theft: The Next Generation,” Eastman asserts that “People who own a trademark or hope to own one will love this new law. People who want to carjack someone else’s trademark will hate it.”

“Trademark violations on the internet are rampant,” Eastman states. “In some cases people invest millions on their trademark, only to have their customers’ on-line word searches shanghaied by a pirate who bought off the search engines.”

From his blog entry, Eastman links to “an excellent case-in-point” of what he calls a “creative new kind of identity theft” offered up by Searchblog proprietor John Battelle in January of 2006.

Battelle notes that when Pontiac started an advertising campaign in which it promoted the company’s car line by encouraging users to “Google Pontiac,” Battelle hypothesized that another car company might consider bidding on that keyword. Sure enough, within a couple of weeks, Mazda began running ads with link text like “Mazda vs Pontiac,” urging users to compare Pontiac’s cars with those of Mazda.

Eric Goldman, the Santa Clara University law professor identified by Eastman as one of the voices from the “fringe” that had been critical of the TPA, isn’t much impressed with Eastman’s defense of the law.

“While invoking the Big Scary Threat of ‘identity theft’ is a clever rhetorical move, it’s also analytically indefensible,” Goldman replied via his own blog. “Identity theft occurs when someone makes a false representation, but this law bans competitive keyword advertising that is completely truthful and does not confuse anyone.”

The EFF’s Corynne McSherry concurs with Goldman, stating in a recent article posted to the EFF website that on top of its “constitutional flaws, the law is just bad public policy.”

“[The Utah TPA] undermines the fundamental purpose of trademarks: to improve consumer access to accurate information about goods and services,” asserts McSherry. “Trademarks are just shorthand terms that designate the origin of a product. Comparative advertising uses those shorthand terms to provide more information about the trademarked product and competitive products. That’s why comparative trademark use is clearly protected under federal trademark law. If it weren’t, Pepsi wouldn’t be able to tell consumers that more people think Pepsi tastes better than Coke, and Apple wouldn’t be able to make fun of Microsoft on national television every night.”

McSherry concludes that there is some good news with respect to the TPA; it’s likely to fail the scrutiny of U.S. courts.

“(G)iven the constitutional problems, the law is likely to be challenged in court… too bad the Utah legislature didn’t heed its own counsel’s advice and save Utah taxpayers the cost of defending this anti-consumer legislation,” McSherry writes.

The Utah State Senate, meanwhile, has moved on to what is likely to prove its next controversial attempt at crafting new cyberlaw; an attempt to block internet porn through legislative means.

According to the Salt Lake Tribune, the legal and technical details of the issue are proving difficult for lawmakers to wrap their heads around.

“I’m grasping at this for all I’m worth because I want to understand this,” Senator Scott Jenkins told the Public Utilities and Technology Interim Committee after hearing testimony from “experts” on the adult internet business, according to the Tribune.

“My brain is on the edge of fry,” added Jenkins.

According to the Tribune, Brigham Young University law professor Cheryl Preston and anti-pornography activist Ralph Yarro told Senators that “Internet providers could be offered incentives to voluntarily aid obscenity law enforcement without violating freedom of speech or undermining online commerce.”

Yarro, Chairman of the CP80 Foundation, reportedly acknowledged that his ultimate aim is to establish new federal laws to “pursue pornographers.” Yarro recently assisted the Utah legislature in crafting House Concurrent Resolution 3 (HCR 3), a resolution that “urges the United States Congress to take action to help stop children and employees from accessing Internet pornography.”

Yarro’s foundation/company, CP80, advocates a dual technical and legislative approach they call “The Internet Channel Initiative.”

Under the initiative, CP80 “proposes that an Internet governing body, accountable to the general world public, designate content-specific ports that categorize the Internet into Community Ports (or Community Channels) and Open Ports (Or Open Channels). Community Ports would be designated for content that is appropriate for a general audience; and Open Ports would be designated for all legal content.”

The EFF also opposes the Internet Channel Initiative, which EFF spokesperson Rebecca Jeschke noted is a proposal that has been raised many times over the years, but has never been implemented, because “it’s a bad idea.”

Last month, Jeschke told the Provo Daily Herald that the Internet Channel Initiative suffers from the same legal problems as measures like the Child Online Protection Act (COPA), stemming from the question of what content is considered “adult,” what content is not to be considered “adult,” and whose definition of the term prevails in making such a decision.

Whatever “solution” the Utah legislature arrives at for blocking internet porn within the state, it is almost sure to be challenged – quite possibly successfully, given Utah’s track record defending its cyberlaws in court.

“Legislators enact stupid laws all of the time,” writes Goldman on his blog, “but some laws transcend mere stupidity and produce a single 3 letter response: WTF?… And no legislature has passed more WTF Internet laws than Utah’s.”