Dilution by Tarnishment: An Unworkable Cause of Action in Cases of Artistic Expression

INTRODUCTIONIn July 2010, a controversy arose in Poland surrounding an extremely large poster, which depicted the work of artist Max Papeschi and advertised an exhibition of his work at a local gallery.1 The poster combined Mickey Mouse's image with a swastika and the body of a nude woman.2 The work was part of a larger series that portrayed iconic American cartoon figures with images of destruction.3 The contrast of the familiar Mickey Mouse trademark with images of nudity and Nazism appeared to tarnish the fun-loving and child-friendly reputation of Dis1 ney's Mickey Mouse trademark.4 Nonetheless, the Trademark Dilution Revision Act (TDRA) would fail to provide Disney any sort of protection should they decide to bring action against Max Papeschi under the TDRA.5Trademark dilution doctrine seeks to protect the goodwill investment of mark holders by preventing the blurring or tarnishment of a trademark owner's famous mark.6 When an artist portrays a mark negatively, the public may associate the mark with the negative portrayal, thus damaging the mark's reputation and selling power.7 This theory of dilution is called dilution by tarnishment.8Relief under this theory, however, is limited when artists use a famous trademark in then' expressive work.9 Although the mark holder may have a cause of action for dilution by tarnishment, tension exists between recognizing such an action and protecting First Amendment rights where the tarnishing use is in an expressive work.10 Despite the 2006 passage of the TDRA, which made dilution by tarnishment a statutory cause of action for mark holders,11 the Act's current textual and analytical framework is favorable to artists.12In response to the number of trademark and copyright infringement cases over the last ten years, and in the wake of the TDRA, scholarship has focused on ensuring adequate First Amendment protection for artists against infringement and dilution claims.13 This Note, how ever, seeks to push the debate in a new direction by suggesting that First Amendment protection in the trademark dilution context has been stretched too far, leaving corporations unable to attain even injunctive relief against diluters.14 Unlike the more tailored and flexible free speech doctrines found in the laws of trademark infringement, copyright, and right of publicity, dilution by tarnishment as constituted under the TDRA effectively prevents companies from prevailing against artists no matter how harmful the appropriation may be to the corporation's mark.15 Papeschi, for example, would be free of liability despite the extremely unsavory association of the positive Disney brand with a swastika.16Part I of this Note introduces trademark dilution and the codification of the Federal Trademark Dilution Act (FTDA) into the Lanham Act.17 It also discusses the TDRA's enactment and its amendments to the statutory cause of action for dilution in the Lanham Act and the resulting benefits to artists.18 It then compares and contrasts the TDRA exclusions with trademark infringement's artistic relevance test.19 Part II follows this comparative analysis with one of copyright law' and the balancing test courts use under the fair use doctrine.20 Part III similarly examines state right of publicity statutes and compares this area of law to dilution by tarnishment.21 Part IV analyzes the current deficiencies under the TDRA that allow artists to escape liability.22 Part V draws from the deficiencies of Part IV and looks to copyright law and the right of publicity to suggest an alternative way in which trademark law could better serve the interests of intellectual property owners when faced with defendants who use the owners' marks in expressive works.23I. Trademark Dilution by Tarnishment: The Clash of Artistic Expression and Trademark Owners' Goodwill Investment Under the Current Statutory FrameworkThe Lanham Act, the federal statute of trademark law, prohibits trademark dilution, trademark infringement, and false advertising. …