Why The Theory Of 'Tarnishment' Doesn't Make Sense For Trademark Law

from the nope dept

We've pointed out many times in the past that trademark law really doesn't belong under the same heading as patents and copyrights, even though they're frequently lumped together as "intellectual property." Patents and copyright are from the same clause in the Constitution and, we're told, are supposed to be about "promot[ing] the progress of science and the useful arts." The origin of trademark law, however, comes out of the commerce clause, and was initially designed to be a consumer protection vehicle, to protect consumers from confusion: you wouldn't want to buy Bob's Crappy Cola thinking that it's really Coca Cola. Over the years, however, some lawyers have worked hard to turn trademark from a purely consumer protection play, into something more akin to copyright and patents, granting trademark holders greater and greater rights to limit what others can do. These are more recent variations on trademark law, and unfortunately some of them have snuck their way into the law. That's why you see things like discussion about "dilution" or "tarnishment."

The theories behind such efforts have always seemed quite questionable and, as with these kinds of laws, the effort to put them into the law (and to expand them) are almost always anecdotal, rather than empirical. So you hear plenty of talk about how even if there isn't any consumer confusion, a brand could be "harmed" by dilution or tarnishment. For example, just recently, we had a discussion about Ben & Jerry's ice cream suing a porn company, for creating porn movies that used covers that looked similar to Ben & Jerry's packaging. We noted a complete lack of likelihood of customer confusion, but, as many of our commenters pointed out, the theory in the lawsuit was more focused on tarnishment.

However, for the life of me, I can't see how a brand is "tarnished" if there's no consumer confusion. The two seem intimately linked. If someone knows that it's just some porn company -- and not Ben & Jerry's itself -- making those movies, how would it ever actually harm Ben & Jerry's? No one seems to be able to explain that part.

And, now there's some empirical evidence to suggest that the theory of tarnishment isn't particularly well supported in the real world. The study is one that we already wrote about, Do Bad Things Happen When Works Enter the Public Domain?: Empirical Tests of Copyright Term Extension by Christopher Buccafusco and Paul Heald -- though we focused on the main argument in that paper, that the public domain does not harm works. However, in proving that point, Buccafusco and Heald actually dabble a bit into the question of tarnishment as it pertains to trademarks. That's because they explore whether or not tarnishment is an issue with works in the public domain, and come up with a situation that has close parallels to the trademark realm. And, as I expected, the tarnishment argument has little support. As you may recall, the study looked at audiobooks for works both in the public domain and out of it. But they also compared professional recordings to amateur ones (from Librivox) and looked at how people judged the quality -- but also how that impacted the perceived value of the underlying works. The results are quite informative:
outside of the realm of copyright law, our study might provide support for those who applaud the judiciary’s continuing reluctance to vigorously implement the Federal Trademark Anti-Dilution Act. The tarnishment prong of dilution doctrine asserts that a trademark loses some of its intrinsic value when consumers encounter the mark used in an inappropriate context, such as when the mark is placed on goods of inferior quality. Our data show that listeners to Librivox recordings find the readers to be inferior but do not translate that sentiment to a significantly lower valuation of the associated work. Finally, the doctrine of post-sale confusion in trademark law rests on the assumption that a trademark owner is harmed when a bystander merely observes a trademark on an inferior product (imagine someone who sees a poor quality Chicago Bears sweat shirt without knowing that it’s a knock off). Our data may suggest that the assumption of such a harm is unrealistic.
This seems rather important, and raises significant questions about why we still allow dilution and tarnishment claims under trademark law, when the data continues to suggest little support for the anecdotal reasons behind them. Perhaps it's time to revisit these theories and bring trademark law back in line with its intended purpose: as a consumer protection statute, and not as a tool for brands to shut down things they don't like.

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  1. icon
    Chris Brand (profile), 17 Oct 2012 @ 9:46am

    Re: Re: Re: Response to: Anonymous Coward on Oct 16th, 2012 @ 8:22pm

    You could easily argue that the marketers of "coke" should be celebrating that achievement - "We're so dominant that even when people are talking about our competitors, they're still using our name. We're always in their thoughts."

    And of course that's another example where there could be "consumer confusion".

    Don't marketers get paid to increase "mindshare" ? So isn't almost any use of the brand name a good thing ? Granted, "there's no such thing as bad publicity" isn't always true, but it's still true more often than not.

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