Testing tarnishment in trademark and copyright law: the effect of pornographic versions of protected marks and works.

• Author: Buccafusco, Christopher

Federal and state law both provide a cause of action against inappropriate and unauthorized uses that "tarnish" a trademark. Copyright owners also articulate fears of tarnishing uses of their works in their arguments against fair use and for copyright term extension. The validity of these concerns rests on an empirically testable hypothesis about how consumers respond to inappropriate unauthorized uses of works. In particular, the tarnishment hypothesis assumes that consumers who are exposed to inappropriate uses of works will find the tarnished works less valuable afterwards. This Article presents two novel experimental tests of the tarnishment hypothesis, focusing on unauthorized and unwanted pornographic versions of targeted works. We exposed over one thousand subjects to posters of pornographic versions of popular movies and measured their perceptions of the targeted movies. Our results find little evidence supporting the tarnishment hypothesis. We do, however, find some significant evidence for an alternative "enhancement" hypothesis. Some of our subjects had more favorable attitudes toward the supposedly "tarnished" movies. These results should place the burden on parties asserting tarnishment to prove that it actually exists. In addition, our data support changes to trademark and copyright laws with respect to proof of harm, fair use, and copyright term extension.

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TABLE OF CONTENTS INTRODUCTION I. TARNISHMENT THEORY AND TARNISHMENT LAW A. Tarnishment Theory B. Trademark Dilution Law C. Copyright Tarnishment 1. The Copyright Balance 2. Tarnishment in Copyright Doctrine a. Derivative Works, Fair Use, and Tarnishment b. Tarnishment and Term Extension D. Skepticism about Tarnishment II. CONSUMER PSYCHOLOGY RESEARCH ON SEX AND ADVERTISING A. Empirical Studies of Sex and Advertising B. Formulating the Hypotheses III. TWO EXPERIMENTS ON TARNISHMENT A. Experiment 1 1. Methods 2. Results B. Experiment 2 1. Methods 2. Results C. Notes about Our Experiments IV. LEGAL AND POLICY IMPLICATIONS A. Evidentiary Rules in Trademark Law B. Retroactive Copyright Term Extension C. Copyright Fair Use CONCLUSION APPENDIX A: EXPERIMENT 1 APPENDIX B: EXPERIMENT 2 "The existence of a 'Madeline Does Dallas' might lead to some awkward questions during bedtime stories." (1)

INTRODUCTION

Copyright and trademark owners fear that the valuable images and symbols they create will be tarnished by unauthorized uses, so they seek more perfect control over their works to prevent what they perceive to be unwholesome consumer associations. For example, Disney presumably fears the damage that might be caused by the release of an X-rated film starring Mickey and Minnie Mouse--and possibly Goofy--over the Internet. And the owners of valuable trademarks worry that consumers will not purchase their products once those marks have been associated with lewd or obscene content. (2) According to owners, the connection with sexually explicit material will tarnish their works and marks.

U.S. intellectual property (IP) law has recently been amended to provide trademark and copyright owners greater protections against these perceived risks. In 2006, Congress amended the Lanham Trademark Act to provide a remedy against those who use "a mark or trade name in commerce that is likely to cause ... dilution by tarnishment of [a] famous mark." (3) Instead of basing their claims on consumer confusion about the source of goods, trademark owners can now enjoin even non-confusing uses of their marks if they are tarnishing. Importantly, plaintiffs asserting tarnishment claims involving sexual uses of their marks are rarely, if ever, required to show that they have suffered meaningful harm. (4) Tarnishment theory has also affected recent developments in copyright law. In 1998, Congress retroactively extended the term of copyright twenty years, a measure suggested by those who feared works falling into the public domain would be subject to misuse, again without evidence of actual risk of tarnishment. (5) With this extension period ending in 2018, copyright owners may soon rely on tarnishment concerns to again argue for longer terms.

Despite its surface appeal, the theory underlying the tarnishment hypothesis is surprisingly thin. Moreover, few attempts have been made to discover whether copyright and trademark owners actually suffer damage when unauthorized and unwholesome uses of their images are made. (6) This Article contributes to the latter issue by reporting the results of two novel experiments designed to test the effects of pornographic versions of creative works on the value of the underlying works. (7) In our experiments, subjects viewed movie posters of pornographic versions of popular movies before they were asked questions about those movies. Our data show little if any support for the tarnishment hypothesis. In addition, our data provide some significant support for an alternative enhancement hypothesis: some of our subjects actually perceived more value in the "tarnished" movies. We believe the results of these experiments put the ball back into the court of tarnishment theorists to prove their anxiety has a factual basis.

In Part I of this Article, we explain the tarnishment hypothesis and its emphasis on sexual associations, and we demonstrate how the tarnishment hypothesis operates in U.S. trademark and copyright law. In Part II, we summarize the extant literature on the effect of sexuality on brand perception and purchasing decisions, and we propose an experimental test of tarnishment caused by pornographic associations. In Part III, we describe our methodology and report the results of two experiments that exposed subjects to posters of unauthorized pornographic films and measured the effects on subjects' responses to the target of the association along several important dimensions, including their valuation of the affected work. In Part IV, we discuss the implications of our data for IP law. We caution policymakers about blindly accepting the tarnishment hypothesis and make some modest recommendations for reform, including the elimination of the presumption of harm currently made in certain types of trademark tarnishment cases, reconsideration of the concept of market harm in the fourth factor of the copyright fair use test, and the elimination of the distinction currently made between parody and satire in copyright law.

1. TARNISHMENT THEORY AND TARNISHMENT LAW

   Tarnishment theory--the claim that unsavory uses of marks or works harm their social and economic value--has become pervasive among owners of IP during the last half century. In response, IP law has provided protections against tarnishment in both trademark and copyright law. Claims of tarnishment have been actionable in trademark law for decades, (8) while the notion is more subtly embedded in copyright law. (9) Importantly, although tarnishment theory straddles these two doctrines, its fundamental principles are very similar in both areas. First we discuss the theory; then, we describe the legal treatment of tarnishment in these doctrines.

   1. Tarnishment Theory

      At its foundation, a claim of tarnishment, whether made in the copyright or trademark context, is a claim that an interior psychological reaction by a consumer has diminished the value of an image or symbol to that consumer. (10) The existence or non-existence of that psychological reaction can be tested. Forming testable hypotheses, however, requires a closer investigation into the nature of the alleged harm. Unfortunately, the legal literature has provided little in the way of theory or data to justify its claims.

      Serious discussion of the cognitive mechanisms that might underlie tarnishment is rare, but it is possible to outline the general assumptions of the theory. Tarnishment theory rests on a series of assumptions about how people attach value to the works and marks that they consume. Tarnishment theory asserts that people form mental associations with works and marks, and that these associations may have positive or negative valence. (11) When many fans think about Atticus Finch from To Kill a Mockingbird, their thoughts are cathected with positive associations and positive emotions that arise from their experiences with the work. And these associations are socially valuable--they generate consumer happiness and they increase the demand for copies or adaptations of the work.

      According to tarnishment theory, however, consumers' positive associations with works and marks can be disrupted, altered, and even inverted when they experience those works and marks in unsuitable ways. (12) Mockingbird fans who named their children and pets after its main character may feel dismayed if they learn that Atticus Finch was a racist. (13) Or the feelings that consumers of Rolls Royce automobiles have toward the brand may be disturbed if they see the same mark being used to sell cheap tube socks, even though they do not believe that the socks were produced by the famous car maker. (14) William Landes and Richard Posner, two of the strongest proponents of tarnishment theory, suggest that if

      anyone were free to incorporate the Mickey Mouse character in a book, movie, song, etc., the value of the character might plummet. Not only would the public rapidly tire of Mickey Mouse, but his image would be blurred, as some authors portrayed him as a Casanova, others as eatmeat, others as an animal-rights advocate, still others as the henpecked husband of Minnie. (15) Having been exposed to these tarnishing uses of Mickey, the amount that consumers would be willing to pay for Mickey-related goods would decrease and so, according to Landes and Posner's formulation, would social welfare. (16) Because consumers would not desire Mickey Mouse products after their positive associations with the character had been eroded, they would get less pleasure from him and they would value him less. Under the logic of tarnishment theory, this...