Two Views for the Steeple: Testing Porn Exceptionalism in Trademark and Copyright Tarnishment Claims

Authors: Christopher Buccafusco (Chicago-Kent College of Law) and Paul Heald (University of Illinois)

Abstract
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 to prevent what they perceive to be unwholesome consumer associations. In a nutshell, Disney 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. Even copyright skeptics admit that “Rowling, Disney and other creative authors have at least some justification for being outraged when their characters are used in contexts wholly different from the original, such as pornography.” Whether the fear of tarnishment is justified or not, claims of damage have had real world effects. In 2006, Congress amended the Lanham Trademark Act to provide a remedy against those who “use of a mark or trade name in commerce that is likely to cause . . . dilution by tarnishment of [a] famous mark.” In 1998, Congress also retroactively extended the term copyright 20 years, a solution suggested by those who feared works falling into the public domain would be subject to misuse. Overseas, the specter of tarnishment has stunted the full development of a parody defense in EU copyright law and may have resulted in the narrowing of the parody defense in U.S. law.

Despite its surface appeal, the theory underlying the tarnishment hypothesis is surprisingly thin and 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. This article presents three novel experiments designed to test the tarnishment hypothesis. In Part I of this article, we briefly survey how tarnishment doctrines, particularly those condemning sexual associations, operate in law. In Part II, we summarize the theories that explain the danger posed by unwholesome, unauthorized uses of copyrighted and trademark goods. In Part III, we summarize the extant literature on the effect of sex on brand perception and purchasing decisions and propose a test of tarnishment caused by pornographic associations, the most extreme worry asserted by image owners. In Part IV, we describe our methodology and report the results of three experiments. These experiments attempt to induce and measure tarnishment by exposing subjects to movie posters of pornographic versions of existing popular movies. We test whether subjects who have been exposed to these poster attach diminished market value or personal value to the underlying movies compared with subjects who have not seen the tarnishing images. In Part IV, we caution policymakers about blindly accepting the tarnishment hypothesis and make some modest recommendations for reform, including the elimination of the distinction currently made between parody and satire in copyright law and elimination of the presumption of harm currently made in certain types of trademark tarnishment cases.

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