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

Abstract

This Note argues that the Trademark Dilution Revision Act (TDRA), enacted to provide relief to companies whose trademarks are used in tarnishing ways, is unworkable when applied to tarnishing uses in artistic works. When the TDRA was enacted in 2006, it included several amendments to current dilution law that will keep defendants who used a trademark in an expressive work free from liability no matter how tarnishing the use. Specifically, the amendments require that the mark be nationally famous and that the defendant’s use of the mark be a trademark use. They also include a noncommercial use exclusion as well as a broad and loosely interpreted fair use exclusion. These amendments unfairly tilt the TDRA in favor of artists who create works for some commercial purpose. Drawing from other areas of intellectual property, this Note suggests that there is a more appropriate standard that should be applied in the TDRA’s stead. In addition to not requiring a mark be nationally famous or that the tarnishing use be a trademark use, there should be a multi-factorial fair use defense similar to that of copyright law. This standard would more appropriately balance First Amendment rights of artists with mark owners’ rights to preserve the reputation of their trademarks.