TARNISHMENT - THE FLUFFY APPROACH

In today’s New York Times, the actor Paul Newman writes of his intention to sue the US Department of Housing and Urban Development “for piracy of personality and copycat infringement.” This follows Fox’s decision to bring a trade mark suit against Al Franken for using the term “fair and balanced” in the title of his forthcoming book, Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right. Newman claims that he has suffered harm because the government department’s acronym, HUD, has resulted in an association between a socially useful entity and Newman’s performance as a hardman in the 1963 film HUD. Says Newman:

“[HUD] is a fair and balanced institution and that some of its decency and respectability has unfairly rubbed off on his movie character, diluting the rotten, self-important, free-trade, corrupt conservative image that Mr. Newman worked so hard to project in the film.”

An obvious (and amusing) parody thinks the IPKat, but behind it there is a serious trade mark point. Does it count as tarnishment if a third party uses a trade mark that has a reputation for being associated with antisocial, deviant or evil behaviour on intrinsically pleasant or virtuous goods. For example, would it be tarnishment if someone took it upon himself to launch a range to MARILYN MANSON (registered as a CTM and a US trade mark) cuddly toys? In the EU, Article 5(2) of the Trade Mark Directive talks about use that is “detrimental to the repute of a trade mark.” If the mark’s reputation is for bad taste or the like then this reputation will be damaged if the mark is used on innocuous or even cutesy items. In the US, it’s not 100% clear that the Lanham Act provides a federal action for tarnishment following Moseley v V Secret Catalogue but if it does then it seems unlikely that use on nice products would fall into the standard definition of tarnishment, which tends to focus on the negativeness of the defendant’s use. For those who want further reading, McCarthy at §24:104 points to a few cases where tarnishment was not found because there was nothing inherently objectionable about the defendant’s goods or services.

Paul Newman gets saucy here
Virtuous products here
Be an angel here