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Tarnishment and free speech debated

Professor Glynn S. Lunney Jr. and Antoine Gautier-Sauvagnac dueled over tarnishment law in INTA’s Annual Professor vs. Practitioner Debate on Sunday.

In a racy session, Professor Lunney of Texas A&M University School of Law argued for the premise—and title of the debate—that “tarnishment law is just a tool to suppress free speech,” while his opponent, Gautier-Sauvgnac, of FTPA in Paris, France maintained that free speech and tarnishment law can coexist effectively.

Tarnishment law is a form of dilution in which a famous mark or one confusingly similar to it is used by another party in a way that could damage the reputation of the mark. Brand owners worry that “third parties’ usage will somehow get tangled up and carry over in the consumer’s mind,” as Lunney said, and usually the worrisome instances are related to illicit or politicized topics. So, as one might imagine, Lunney and Gautier-Sauvagnac drew on some rather colorful examples to illustrate their points.

Each debater was allotted 18 minutes to state his case, followed by a five-minute rebuttal. The first to take the podium, Lunney began by arguing that tarnishment—at least in the sense that it is meant by the Federal Trademark Dilution Act—doesn’t exist. “Now I realize there are lots of ways you can tarnish your trademark,” he conceded, listing examples of brands that have infamously brought defective products to the market, “but you have to do it to yourself.”

It’s furthermore problematic that judges hearing tarnishment cases, according to Lunney, essentially don’t have evidence to prove that consumers make these connections, or that those connections change their impressions of a brand. He cited social science studies conducted by lawyers that showed that consumers’ opinions of brands were not negatively affected by exposure to what would be considered tarnishing reappropriations.

Lunney cited one case involving “Debbie Does Dallas” (an adult film that incited a lawsuit from the Dallas Cowboy Cheerleaders) as evidence of a worrisome consideration of property rights over freedom of speech. He also argued that “the fact Debbie Does Dallas or some of these other uses are objectionable is the point. That’s what makes them speech worthy of protection.”

Lunney concluded by declaring that “criticizing the famous brands is important political speech in our society, because it reminds us that our political heroes, our sports heroes, our religious heroes may also have feet of clay,” and that the existence of tarnishment law discourages this kind of skepticism.

Not to be outdone, Gautier-Sauvagnac opened with the confident assertion that France is, above all, “a country of free speech,” and that its citizens are unfazed by much of what Americans consider lewd, immoral or inappropriate. He referenced examples like the huge boost in sales helmet maker Dexter received after French President Francois Hollande was seen wearing one of its helmets while visiting his mistress in 2014 to demonstrate the French attitude.

French law protects parody under freedom of expression, but judges will “not allow denigration of brands, when [the benefits of that denigration] goes to big money-makers,” Gautier-Sauvagnac said. He argued that, with a more liberal attitude toward what might tarnish a brand’s reputation, trademarks can be effectively protected by tarnishment law.After rebuttals, the audience voted for the debate’s winner, but a show of hands was too close to call, and Professor Lunney was declared the winner of the debate and was awarded a bottle of (French) wine.

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