What is interesting about the opinion for us Intellectual Property nerds is that the concurrence and the dissent both appear to suggest that the harm resulting from such behavior is analogous to dilution in trademark law. Admittedly, I sounded a little like Marge Simpson as I muttered “mmmmmm” when reading that part of the opinion, but let’s explore the concept a bit further anyway.
Dilution is a kind of legal claim a trademark owner can make when there is an unauthorized use of his or her mark. It’s different from your garden-variety infringement argument because there is no confusion requirement. You don’t even have to show actual dilution. Instead, to make such a claim stick, all that is required is that the use of a “famous” mark erodes the “distinctive quality” of the mark. The standard for a dilution claim operates independent of competing goods or confusion and focuses on “the lessening of the capacity of a famous mark to be attributed to a single source”.
There are two flavors of dilution — blurring and tarnishment. Blurring happens when there is an “association arising from the similarity of” the parties’ respective marks (not goods) that “impairs the distinctiveness of the famous mark.” An example would be if a food company started making Buick Mayonnaise. To determine if blurring has happened, a court will look to a number of factors such as the degree of similarity between the marks or whether the user intended to create an association with the famous mark.
Tarnishment involves an unauthorized use of a mark which links it to shoddy products or portrays it in an unsavory context. The tarnishment analysis seeks to answer if there is an association arising from the similarity to a famous mark that harms its reputation, as would be the case if, for example, an adult company started making Disney brand sex toys. Whether a mark has been tarnished will vary depending on the jurisdiction, but generally speaking, using a famous mark in connection with sex, drugs, or racism can land you in hot water. Both analyses are heavily fact-driven.
Bear in mind that a dilution cause of action (be it blurring or tarnishment) will only work if your mark is strong enough, meaning it has to be famous or at least have some sort of acquired distinctiveness. Again, it is a fact dependent analysis. Generally speaking, a mark is famous if it is widely recognized by the general consuming public. And I do mean widely recognized — just being registered and having a solid customer base is not enough. Coca-Cola, McDonalds, and Starbucks are all examples of famous marks.
It may help to think of it in terms of licensing. Coca-Cola can get away with slapping its mark on an assortment of sundries because there is no chance the public would think that the soft drink company had switched gears and suddenly got into the clothing business. The most recent example I can think of is Nestle making Girl Scout cookie candy bars (dear god help us all — THIN MINTS!)
With that background in mind, let’s circle back to the First Amendment. The Court in Alvarez didn’t get into this, but there are some interesting dilution issues related to free speech. The Trademark Dilution Revision Act (HR 683) makes it clear that certain actions would not survive a dilution claim. Specifically, the Act states that noncommercial uses (such as parody, satire, and editorial commentary) would not constitute dilution. Could this provide an out for liars like the Respondent in Alvarez in the future? It might if a non-commercial use argument sticks in the “demonstrating harm” analysis. The Court in Alvarez noted that the lie did not occur with the hope of some sort of tangible benefit (other than an ego-boost) so that question remains unanswered.
Where the concurrence and the dissent were going with their analogy in Alvarez is that the public is harmed by lies about receiving military honors so there should be some way to proscribe this activity. Justice Breyer’s concurrence and Justice Alito’s dissent both mention, albeit, briefly, that the harm in permitting a person to lie about receiving the Medal of Honor is analogous to dilution because it damages the value of the medal to the actual recipients and has the potential to diminish the value of the award in the mind of the public.
The Supreme Court was not suggesting some sort of remedy or even a cause of action arising out of trademark law and neither am I. It’s merely an interesting idea that trademark dilution concepts could provide guidance in demonstrating the harm that lying about military honors causes. It may even provide some sort of basis to shape a newly drafted statute that is more likely to pass Constitutional muster. The concurrence and the dissent in Alvarez were simply making a unique analogy (especially if one considers the non-commercial use defense to dilution). The Court left the door wide open for the government to rewrite the Stolen Valor Act and I would not be surprised if this issue comes up again.