The Volokh Conspiracy ? Don't Screw Around with that State Whose ...

So here?s a steamy little trademark dispute: The Texas Dep?t of Transportation is suing Hachette Books to enjoin publication of Christie Craig?s ?Don?t Mess with Texas,? on the ground that it dilutes TxDOT?s trademark. Though I confess that I probably wouldn?t be wasting my time or yours on this if the book didn?t contain phrases like ?She glanced down at his sex, still standing completely erect,? and ?Pleasure exploded inside her and her entire body shook with sweet spasms of release,? (and a host of similarly cringe-inducing prose, quoted in more detail in the article linked to above; I must say, if this is what passes for pornography these days, I?m in the wrong business), the case actually illustrates a couple of interesting things about trademark law.

To begin with, notice that the action is for ?dilution? of the trademark, not ?infringement.? TxDOT apparently has a trademark in this phrase by virtue of its use as part of TxDOT?s anti-littering campaign (Get it? Don?t Mess with Texas). Fair enough ? but a trademark infringement action would require the DOT to show that consumers are confused about the source or goods or services as a consequence of the infringing use ? that is, that consumers think that the book ?Don?t Mess with Texas? is somehow connected to the DOT ? a fairly preposterous claim (even in?Texas).

Trademark dilution, though, is different ? a trademark can be diluted even if consumers are not ?confused? by the offending use, as long as the use causes the mark to become less distinctive. The example usually given is something like ?Imagine that dozens of services or products (hair care, automotive supplies, legal services, dry cleaning services, electronic pagers, . . .) were all called ?Nike,? or ?Buick.? Consumers wouldn?t be confused into thinking the trademark owners had branched out into these unrelated businesses ? but the value of the mark would decline over time, as its distinctiveness wore off as a result of such common usage. Dilution also lies where the mark has become ?tarnished? ? a mark associated with cleanliness and propriety and good behavior (like this one ? anti-littering, remember?) which is now being associated with, in DOT?s words, ?graphic references to sexual acts and states of sexual arousal.? [Start distributing, say, Mickey Mouse condoms, or Star Wars vaginal lubricants, and the cease-and-desist letter you?ll get, probably the following day, from the trademark owners will tell you all you need to know about tarnishment . . .]

The cause of action for dilution, though, is only available for ?famous? marks. You can understand why it is restricted in this way; because it involves suppressing uses of trademarks even in situations where there?s no consumer confusion, dilution is potentially very troublesome from a free speech perspective, and widespread use of the dilution remedy would give all trademark owners potentially vast control over the use of the English language without providing any real benefit to the public.

This is where, in my opinion, TxDOT?s claim is going to founder. ?Don?t Mess with Texas,? to be sure, is a very famous phrase ? but it is not a famous trademark. I don?t know about you, but I never heard of the anti-littering campaign labelled with that mark, and I suspect most people haven?t heard of it either. This is just what dilution law is supposed to avoid: giving the first person who happens to use the phrase ?Don?t Mess with Texas? in connection with some goods or services complete control over use of the phrase, even for entirely unrelated goods and services, forevermore. So for better or for worse, I think the book stays on the shelves.

[Thanks to Q. Boyer for the pointer]

Source: http://volokh.com/2011/09/02/dont-screw-around-with-that-state-whose-capital-is-austin/

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