Ahead of a debate at the INTA 2016 annual meeting in Orlando between a professor and practitioner on whether tarnishment law suppresses free speech, one of the speakers, Glynn Lunney, previews the session.
On Sunday, May 22, attendees at the International Trademark Association’s annual conference can enjoy the session “Resolved: Tarnishment Law is Just a Tool to Suppress Free Speech”, which is being held in CSU01 from 11.00am to 12.15pm.
As the professor (at Texas A&M University School of Law), I will advocate for the resolution, while the practitioner, Antoine Gautier-Sauvagnac of FTPA in France, will advocate against.
My argument that tarnishment law suppresses speech rests on three principal points. First, the premise at the heart of tarnishment is that consumers will hold unauthorised and unattractive, usually sexually charged, uses against the trademark owner. This premise is false. Recent studies have demonstrated that what courts have considered paradigmatic tarnishing uses do not in fact tarnish the reputation of the trademark owner.
Second, when trademark owners have prevailed on tarnishment claims, they have suppressed constitutionally protected speech. Early judicial decisions rejected First Amendment arguments on a mixture of reasons: that the message was not worthy of constitutional protection because it was offensive, that free speech did not trump property rights, and that a private action to enforce a trademark is not government action meriting First Amendment scrutiny. Subsequent developments in the courts’ free speech jurisprudence have decisively rejected each of these arguments.
Third, even when claims of tarnishment fail, which is by far the usual outcome, the mere threat of a tarnishment claim suppresses constitutionally protected speech. As we evaluate the consequences of recognising tarnishment as actionable, we must keep firmly in mind that litigated cases are the proverbial tip of the iceberg. For every case that makes it to a court, there are dozens, perhaps even hundreds, where the use ends in response to a cease-and-desist letter.
As a result, the full cost to free expression of recognising tarnishment as actionable can never be known. However, given that the underlying premise proffered to support tarnishment is false, any cost is too high.
INTA 2016, INTA, Glynn Lunney, trademark, tarnishment