As many already know, HB 450, the bill to amend Utah’s Trademark Protection Act, did not get past the Utah Senate before the end of the 2009 Legislative Session. Since Utah’s 2009 Legislative Session has closed, I thought I would provide some interesting insights regarding the last days of HB 450.

My perspective comes in part from my experience as Chair of the Cyberlaw Section of the Utah State Bar and from participation this year as a member of the Utah State Bar’s Governmental Relations Committee. However, my comments here are solely mine and I do not write on their behalf.

A few weeks ago, HB 450 was submitted to the Utah State Bar’s Governmental Relations Committee (GRC) for review. As stated on the Bar’s website:

“The Bar’s Governmental Relations Committee meets on a weekly basis throughout the Legislative session each year. A legislative representative retained by the Bar tracks all pending or proposed legislative action. Under direction from the Utah Supreme Court, the Committee studies and provides assistance on public policy issues, and advises the Bar Commission on positions to adopt on public policy issues. This includes the courts of this state, procedure and evidence in the courts, the administration of justice, the practice of law, and matter of substantive law on which the collective expertise of lawyers has special relevance and/or which may affect an individual’s ability to access legal services or the legal system defined by the Utah Supreme Court. The Committee also uses the broad participation of the Bar members to review and analyze pending legislation which may affect an individual’s ability to access legal services or the legal system, and to provide technical assistance to the Legislature, the Governor, the Judicial Council and other public bodies upon request.”
As a practical matter, the Bar avoids taking positions where there are competing views among its members with respect to policy. Consequently, in most cases the GRC votes to take “no position” except where there is problematic language, such as language creating unintended consequences, or where there is a negative impact on access to justice.
In the case of HB 450, it came before the GRC towards the end of the 2009 Legislative Session. My initial reaction was concern with the cumbersome language selected by the drafters. Several other lawyers from other Sections of the Bar but who were also experienced in the relevant field likewise expressed concern. In fact, two former Chairs of the Cyberlaw Section of the Bar also expressed to me many of the same concerns. In each case, except one, those expressing concerns over HB 450 confided they were in favor of HB 450’s underlying policy, but had doubts regarding the language and/or approach.

I attempted to contact one of HB 450’s sponsors so I could discuss my concerns with him before the GRC took a vote. I wanted to discuss my concerns with the language and to make sure I understood the intent behind the HB 450’s language. My hope was to suggest language that would both comply with the sponsors’ intent and avoid the problems stemming from the existing language (which was conflicting and had substantial potential for unintended consequences).

Unfortunately, I did not hear back from the bill’s sponsor before the GRC took a vote. Consequently, several members, including myself, recommended that the Bar oppose HB 450 as written (based on the language problems and not on the underlying policy). The GRC ended up voting (unanimously, as I recall) for the Bar to oppose HB 450 “as written.”
After the GRC vote, the Bar Commission requested that I meet with one of HB 450’s legislative sponsors and one of its drafters to discuss the Bar’s concerns. We had what I believed to be productive meetings and discussions. We eventually came to a consensus regarding the problems and how HB 450’s language could be amended to address them. It was my understanding that the changes would be made by way of a floor amendment in the House.

Based on the apparent consensus, I agreed to make a recommendation to the Bar to withdraw its opposition with the understanding that the discussed changes would be made to HB 450 on the House floor. Apparently, another communication also took place between one of the bill’s supporters and one of the Bar Commissioners to the effect that if the Bar withdrew its opposition, the agreed to changes would be made by way of floor amendment. It is not perfectly clear what happened next, except that HB 450 passed in the House by a vote of 38-36-01 and the agreed upon changes were never made.

After HB 450 went to the Utah Senate, opponents of the bill reinvigorated their campaign to sway Senate votes against HB 450. Apparently, one or more of the opponents had influence on the Utah Technology Council (UTC), which began a campaign against HB 450 with what I believe were misleading talking points. The UTC’s arguments were not well made and certainly led some of the local attorneys who specialize in “cyberlaw” to believe the UTC was merely acting as the mouthpiece for another entity.

Sources tell me that the law firm Workman Nydegger was behind the UTC’s campaign against HB 450; and Workman Nydegger, of course, represents Microsoft on a substantial number of matters. So an educated guess leads one to believe that Microsoft may have had substantial influence, albeit indirect, behind the UTC’s campaign against HB 450. You can read more about the UTC’s talking points against HB 450 at Rand Bateman’s IP Thoughts or in my previous blog on the subject.

Shortly before the end of Utah’s 2009 Legislative Session I called a friend who is in the know on bills being voted on. He sent me the following via text messages:

“It’s not going to make it through this year. Senate leadership decided to pull it back, study it over the next year, and then bring it back next year. I think they want to call Google’s bluff, i.e., they want to tell those who oppose the bill that the Senate leadership sees the use of trademarked ad-words as a problem, and that the bill’s opponents should either propose a compromise solution or expect some form of this bill to pass next year. Senate leadership apparently believed that there were not enough votes to pass it this year, but that they could gather the votes to pass it by next year.”

It appears that of the two major debates over HB 450 – language and policy – the Utah legislature is generally behind HB 450’s policy but want to make sure they do their homework so the policy is implemented using the right language. Utah’s Senate may have sedated HB 450, but they did not kill it. We can likely expect to see it rise again during next year’s legislative session.

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