Thursday, January 15, 2009

Sexy Underwear Party + American Idol = Hilarity Ensues

What kind of world have we come to where the humble and hard-working adult dancer is in danger of being sued for trademark infringement by a giant media conglomerate.1 First off, I find the idea that a strip club "tarnishes" the American Idol image to be on the hilarious side. But really there is one thing I wanted to touch on, the allegations of trademark "tarnishment."2

As far as "tarnishment" of a trademark goes...that really puts things under the purview of the Federal Trademark Dilution Act ("FTDA"),3 a subsection of the Lanham Act.4 Tarnishment is a type of trademark dilution and is defined in the statute as an "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark."5 However, this raises one problem because to qualify for FTDA protections, "American Idol" must be deemed a "famous mark." The test for which essentially asks if the mark is so prominent that it is "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner."6 In the story at issue, it's probably arguable that "American Idol" is widely recognized by the general consuming U.S. public, except for probably the Amish. Most people when they see the "American Idol" logo would likely assume that whatever the logo is on comes from "American Idol," presuming the product has something to do with singing, show business, Ryan Seacrest, or some "Idol" product endorsement. Thanks to the recent passage of the Trademark Dilution Revision Act ("TDRA"), "Idol" does not have to prove the strip club would actually harm their mark, only that it is likely that it will.7

The FTDA arguably would qualify "American Idol" as famous, but ultimately, the question of "tarnishment" is a bit ridiculous. Granted, without an actual picture of the alleged infringing logo and t-shirts in question, it's hard to say how close the two are, but the fact that one involves a local stripping competition in Texas and the other a nationwide singing competition, the actual likelihood of confusion is probably minimal, as my guess is many of the male patrons of the strip club probably do not watch a whole lot of "American Idol," but I imagine they are probably fans of "Stripper Idol." Prior to the passage of the TDRA, I would think that the strip club probably has a pretty solid argument, but the newer statute weakens the argument a bit. Either way, I will be watching for the results of this case with interest.

1: See "'American Idol' sues Austin strip club," Emily Ramshaw, Dallas Morning News, January 13, 2009, available at http://www.dallasnews.com/sharedcontent/dws/news/texassouthwest/stories/DN-stripperidol_13tex.ART.State.Edition1.4b919b4.html.
2: Id.
3: See generally Federal Trademark Dilution Act, 17 U.S.C. § 1125 (2002).
4: See generally Lanham Act, 17 U.S.C. §§ 1051-1129 (2002).
5: 17 U.S.C. § 1125 (c)(2)(C) (2002).
6: Id. at § 1125 (c)(2)(a).
7: Trademark Dilution Revision Act of 2006, 12o Stat. 1730, 1730-32 (2006) (providing a famous mark holder only need prove that the alleged infringer's use would likely dilute the rights holder's mark); but see Mosely v. V. Secret Catalogue, Inc., 537 U.S. 418 (2005), superseded by statute, TDRA, supra note 3 (holding a trademark owner had to prove actual dilution and harm to succeed on a claim of trademark dilution).

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