Footnotes: Langvardt

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1. Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985); 1 J. MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION ss 2:5(D), 2:12(A) (2d ed. 1984). Both federal and state law provide protection to trademarks. For a discussion of this protection, see infra notes 37-42, 113-30, 132-38 and accompanying text. In its narrowest sense, the word "trademark" refers to a word, name, symbol, or device that identifies the source of goods. See 15 U.S.C. s 1127 (1988). The term "service mark" contemplates the same sort of identifier of the source of services. Id. The common law sometimes distinguishes between trademarks and "trade names," the latter being available for use as to goods or services or as the name of a business. See RESTATEMENT OF TORTS s 716 comment a (1938) [hereinafter RESTATEMENT]. In this article, the legal treatment given to trademarks, service marks and trade names is the same. Therefore, for purposes of convenience, the term "trademark" or the shorter term "mark" will be used herein, even where a service mark or trade name is involved.

2. See, e.g., Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198, 203 (D. Md. 1988) (fast food giant McDonald's Corp. spent approximately $917 million in advertising and promotion in fiscal 1987); see also Carter, The Trouble with Trademark, 99 YALE L.J. 759, 761-62 (1990) (discussing importance of trademarks to goodwill of business).

3. See, e.g., Quality Inns, 695 F. Supp. at 203, 211-12 (various McDonald's Corp. trademarks enjoy "instant recognition among virtually all members of our society;" surveys show Ronald McDonald character recognized by 100% of children between ages two and eight, "a figure matched only by Santa Claus"); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183, 1187 (E.D.N.Y. 1972) ("one would have to be a visitor from another planet not to recognize immediately" the Coca-Cola Co. trademark in its familiar script).

4. Berlin v. E.C. Publications, Inc., 329 F.2d 541, 545 (2d Cir.), cert. denied, 379 U.S. 822 (1964).

5. See II THE COMPACT EDITION OF THE OXFORD ENGLISH DICTIONARY 119-20, 489 (1971); Dorsen, Satiric Appropriation and the Law of Libel, Trademark, and Copyright: Remedies Without Wrongs, 65 B.U.L. REV. 923, 923-24 (1985).

6. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir.), appeal dismissed, cert. denied, 483 U.S. 1013 (1987) (quoting Dorsen, supra note 5, at 939).

7. See, e.g., Crazy Eddie, Inc. v. Lois Pitts Gershon, Inc., 600 F. Supp. 537, 539 (S.D.N.Y. 1984) (defendant and plaintiff direct competitors in sale of audio and video electronic equipment); Wendy's Int'l, Inc. v. Big Bite, Inc., 576 F. Supp. 816, 824 (S.D. Ohio 1983) (defendant and plaintiff direct competitors in "fast food" sales).

8. See, e.g., Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398 (8th Cir. 1987) (plaintiff, not defendant, involved in insurance business), cert. denied, 488 U.S. 933 (1988); Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1174 (C.D. Cal. 1986) (plaintiff marketed and produced gourmet chocolates for human consumption; defendant marketed dog biscuits), aff'd without opinion, 830 F.2d 197 (9th Cir. 1987); Tetley, Inc. v. Topps Chewing Gum, Inc. 556 F. Supp. 785, 787 (E.D.N.Y. 1983) (plaintiff sold tea products; defendant sold bubble gum and children's novelty products).

9. See, e.g., L.L. Bean, 811 F.2d at 27 (plaintiff marketed products through catalog sales; defendant published adult magazine); Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124, 133-34 (N.D. Ga. 1981) (plaintiff advertised and distributed food products; defendant published pornographic magazine); Reddy Communications, Inc. v. Environmental Action Found., 477 F. Supp. 936, 939, 941 (D.D.C. 1979) (plaintiff provided public relations services to public utilities; defendant, non-profit corporation, educated public on environmental issues); Girl Scouts of United States v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1230 (S.D.N.Y. 1969) (plaintiff operated non-profit character building organization for girls; defendant printed and distributed posters).

10. Just as persons do not wish to be the subject of jokes, trademark owners prefer not to see their marks used as vehicles for another's humor. 2 J. MCCARTHY, supra note 1, s 31:38.

11. See, e.g., Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198, 201 (D. Md. 1988) (suit to enjoin hotel chain from using name "McSleep Inn"); McDonald's Corp. v. McBagel's, Inc., 649 F. Supp. 1268, 1269 (S.D.N.Y. 1986) (suit to enjoin bagel bakery and restaurant from using name "McBagel's"). For discussion of these cases, see infra notes 88-91 and accompanying text.

12. See Power, Don't Sue: We P*omise to be Mo*e Ca*eful About Ou* Lette*, Wall St. J., Dec. 2, 1986, at 35, col. 1 (eastern ed.).

13. Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). For a discussion of this case, see infra notes 96-100 and accompanying text.

14. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.), appeal dismissed, cert. denied, 483 U.S. 1013 (1987). For discussion of L.L. Bean, see infra notes 159-62, 174-77, 321-37 and accompanying text.

15. For convenience, the term "parody" will be used in this article to refer to parody, satire, burlesque, farce and similar forms of expression. The technical differences among these forms of expression do not result in different legal treatment.

16. See Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124, 135 (N.D. Ga. 1981) (plaintiff alleged defendant's parody in pornographic magazine caused trademark to become distasteful or repulsive to some consumers); see also Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398 (8th Cir. 1987) (manufacturer alleged trademark disparaged by parody), cert. denied, 488 U.S. 933 (1988); L.L. Bean, 811 F.2d at 27 (lower court found that parody undermined "goodwill and reputation" associated with trademark).

17. See, e.g., Jordache Enters. Inc., v. Hogg Wyld, Ltd., 828 F.2d 1482, 1483 (10th Cir. 1987) (plaintiff investing $30 million annually in advertising product sued to stop defendant from using parody of plaintiff's trademark as name of defendant's blue jeans); Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198, 203 (D. Md. 1988).

18. For a discussion of trademark parody cases involving first amendment defenses, see infra notes 298-337, 364-73 and accompanying text.

19. See infra notes 298-320 and accompanying text.

20. The primary theories used by trademark owners are trademark infringement and dilution. Section II discusses these theories as well as various other legal claims of a secondary nature.

21. Free speech concerns become especially significant in dilution-based suits. See infra notes 326-28, 453-54, 481-90 and accompanying text.

22. For a discussion of guidelines for making the distinction between commercial and noncommercial parodies, as well as an explanation of how the respective first amendment interests of commercial and noncommercial parodists should be accommodated and implemented, see infra notes 385-490 and accompanying text.

23. For cases discussing the distinction between commercial and noncommercial speech in situations not involving trademarks, see infra notes 250-60 and accompanying text.

24. See Board of Trustees of State Univ. of N.Y. v. Fox, 109 S. Ct. 3028 (1989); Texas v. Johnson, 109 S. Ct. 2533 (1989); Hustler Magazine Inc. v. Falwell, 485 U.S. 46 (1988). For a discussion of Fox, see infra notes 282-94 and accompanying text. For a discussion of Johnson, see infra notes 238-47 and accompanying text. For a discussion of Falwell, see infra notes 232-37, 399-404 and accompanying text.

25. 1 J. MCCARTHY, supra note 1, s 2:2.

26. See id. s 2:12(A).

27. See id.; Denicola, Trademarks as Speech: Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 WIS. L. REV. 158, 160, 161-63.

28. Unlike trademark law, article I, section 8 of the U.S. Constitution and the federal patent statute, 35 U.S.C. ss 1-376 (1988), leave no room for the states to regulate on the subject of patents. See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964). Additionally, the Copyright Act of 1976, 17 U.S.C. s 301 preempts state copyright law. See 17 U.S.C. s 301 (1988).

29. 1 J. MCCARTHY, supra note 1, ss 5:2-:4; Denicola, supra note 27, at 160-62.

30. Trademark Act of 1946 (Lanham Act), 15 U.S.C. ss 1051-1127 (1982), amended by Trademark Law Revision Act of 1988, 15 U.S.C. ss 1051-1128 (1988).

31. See 1 J. MCCARTHY, supra note 1, s 32:1.

32. Id.; Carter, supra note 2, at 759-60. For a discussion of the standards for registration of a mark pursuant to federal law, see infra note 38 and accompanying text.

33. These statutes are essentially duplicative of the common law or of federal law, and thus add little to the substantive law of trademarks. See Denicola, supra note 27, at 161.

34. Anti-dilution statutes are a special breed of enactment, protecting against dilution of the distinctive quality of a mark, regardless of the likelihood of consumer confusion. For a discussion of these statutes, see infra notes 132-40, 164-66 and accompanying text.

35. 1 J. GILSON, TRADEMARK PROTECTION AND PRACTICE s 1.03[5] (1988); 1 J. MCCARTHY, supra note 1, s 2:6. For instance, if the mark qualifies for registration on the Principal Register created by federal law, the mark's validity is virtually incontestable after five years of registration. The registration amounts to nationwide constructive notice of the registrant's claim to ownership of the mark, and the registrant obtains nationwide protection against infringing uses of the mark. See 15 U.S.C. ss 1065, 1072, 1114 (1988).

36. 1 J. MCCARTHY, supra note 1, s 2:6; Denicola, supra note 27, at 165.

37. See Shire, Dilution Versus Deception--Are State Antidilution Laws and Appropriate Alternative to the Law of Infringement? 77 TRADEMARK REP. 273 (1987). But as will be seen, the dilution theory is increasingly being relied upon by trademark owners as a means of policing the marketplace for unconsented uses of their marks. See infra notes 152-63, 167-77, 453-54 and accompanying text.

38. The owner of a trademark is not entitled to the protections of federal law unless the mark has been registered on the Principal Register created by the federal trademark statute. 1 J. MCCARTHY, supra note 1, s 32:2(A). Subject to certain limitations and conditions that are not germane to the purposes of this article, a mark is registrable if it is a word, name, symbol, device, or combination thereof, that is capable of distinguishing the owner's goods or services from those of another. 15 U.S.C. ss 1052-1053 (1988).

39. Protection of a trademark or trade name under the common law is acquired through use of the mark or name, as there is obviously no registration scheme under the common law. 1 J. GILSON, supra note 35, s 104[2], at 1-47. The protection afforded by the common law is generally restricted to the geographic area of actual use of the mark or name. See Carter, supra note 2, at 766.

40. See 15 U.S.C. s 1114(1) (1988); RESTATEMENT, supra note 1, s 717. In a trademark infringement claim with at least a remote claim to validity, this first element is virtually a given.

41. See 15 U.S.C. s 1114(1) (1988); RESTATEMENT, supra note 1, ss 717-28; 2 J. MCCARTHY, supra note 1, s 23:1; Denicola, supra note 27, at 160-66. If the plaintiff succeeds in proving infringement, possible remedies include injunctive relief, damages, and recovery of the infringer's profits attributable to the infringement. 15 U.S.C. ss 1114(2), 1117 (1988); RESTATEMENT, supra ss 745-47.

42. See 15 U.S.C. s 1114(1) (1988); RESTATEMENT, supra note 1, s 728 comment a; 2 J. MCCARTHY, supra note 1, s 23:2(A). Nonetheless, the plaintiff who possesses evidence of actual confusion will want to produce it at trial because instances of actual confusion obviously constitute strong, if not the best, evidence of likelihood of confusion. See, e.g., Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 400 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988).

43. 2 J. MCCARTHY, supra note 1, s 24:3(B).

44. See id.

45. See id. s 24:3(B)-(C); Denicola, supra note 27, at 163-64.

46. 1 J. MCCARTHY, supra note 1, s 2:3.

47. See Anheuser-Busch, Inc. v. Florists Ass'n, 603 F. Supp. 35, 36-39 (N.D. Ohio 1984). Although its slogan was not a federally-registered trademark, Anheuser-Busch claimed common law trademark protection of the slogan. Id. at 36. Despite the defendant's verbatim use of the plaintiff's slogan, the court though it "absurd," given the advertisements' context and the vast difference between beer and flowers, to believe that consumers were likely to be confused concerning source, origin, sponsorship, or affiliation. Id. at 37-39. But see Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433 (5th Cir. 1962) (court found infringement of Anheuser-Busch's protected slogan "Where there's life there's Bud"; likelihood of confusion created as to defendant's use of "Where there's life . . . there's bugs" in commercials for combination floor wax-insecticide), cert. denied, 372 U.S. 965 (1963).

48. The same factors tend to be applied regardless of whether the infringement case involves a mark registered pursuant to federal law or an unregistered mark protected under the common law. See Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 399 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988); Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1484 (10th Cir. 1987); Pizzeria Uno Corp v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984); Sun-Fun Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 189 (5th Cir. Unit B. Sept. 1981); Squirt Co. v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980); RESTATEMENT, supra note 1, s 729. Although the actual application of the factors may vary depending upon the facts of the particular case, it is possible to make a few generalizations about their usual application. See infra notes 50-55.

49. This list was set forth by the United States Court of Appeals for the Eighth Circuit. See Mutual of Omaha, 836, F.2d at 399 (citing Squirt Co., 628 F.2d at 1091).

50. The first factor rests on the premise that the stronger the plaintiff's mark, the more probable it is that the defendant's use would create a likelihood of confusion. See, e.g., Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198, 209-12 (D. Md. 1988). Ordinarily, marks that are truly distinctive in the sense of being arbitrary, fanciful, or unique (such as "Polaroid") are considered to be stronger than marks that describe the product or service being provided (such as "Apple Raisin Crisp," a breakfast cereal brand name). See General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 625-26 (8th Cir. 1987); Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830, 837 (7th Cir. 1963).

51. There is a common-sense rationale for this factor: the stronger the similarity between the plaintiff's mark and the defendant's use, the more probable it is that the public could become confused. See, e.g., McDonald's Corp. v. McBagel's, Inc., 649 F. Supp. 1268, 1275 (S.D.N.Y. 1986).

52. This factor involves consideration of not only the geographic areas in which the plaintiff and defendant operate, but also the extent of similarity between the products or services with which the plaintiff and defendant have used the mark. The greater the similarity in products or services and the greater the overlap in geographic areas of doing business, the more likely it is that there could be public confusion arising from the defendant's use of the same or substantially similar mark. See Mutual of Omaha, 836 F.2d at 399; McBagel's, 649 F. Supp. at 1276-77. Thus, if the parties operate in completely different territories and/or provide quite dissimilar products or services, the third factor would tend to point toward a finding of no likelihood of confusion. See, e.g., Florists Ass'n, 603 F. Supp. at 37; Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F. Supp. 785, 790-91 (E.D.N.Y. 1983). This is not to say, however, that the plaintiff cannot prevail in a trademark infringement action unless the defendant's use pertained to a product or service directly competitive with the plaintiff's. There have been numerous decisions in which likelihood of confusion was found even though the plaintiff's and defendant's goods or services were not sold in competition with each other. See Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198 (D. Md. 1988) (fast food and lodging); Grey v. Campbell Soup Co., 650 F. Supp. 1166 (C.D. Cal. 1986) (chocolate candy and dog biscuits), aff'd without opinion, 830 F.2d 197 (1987); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F. Supp. 990 (W.D. Mo. 1986) (greeting cards and automobiles).

53. It is important to note the proper role of this factor in trademark infringement litigation. The trademark owner is not required, as an element of an infringement claim, to demonstrate that the defendant intended to infringe or to trade on the reputation associated with the plaintiff's mark. 2 J. MCCARTHY, supra note 1, s 23:31(A). If, however, the defendant intended to have the public mistake his goods or services for those of the plaintiff, that intent is probative of whether the intended confusion would be likely to occur. Id. s 23:31(B). Some courts, therefore, have concluded that an inference of likelihood of confusion may arise from proof that the defendant intended to create confusion concerning the source or origin of his goods or services by using the plaintiff's mark or something closely resembling it. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1535 (4th Cir. 1984); Quality Inns, 695 F. Supp. at 206, 211. A defendant's intent to use the plaintiff's mark, does not necessarily translate into an intent to cause confusion, however. Accordingly, standing alone, such an intent should not give rise to an inference of likelihood of confusion. See Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987); Universal City Studios, Inc. v. T-Shirt Gallery, Ltd., 634 F. Supp. 1468, 1478-79 (S.D.N.Y. 1986); Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F. Supp. 785, 791 (E.D.N.Y. 1983). Some courts have failed to appreciate this distinction between intent to use and intent to confuse. See Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 1038 (N.D. Ga. 1986); Wendy's Int'l, Inc. v. Big Bite, Inc., 576 F. Supp. 816, 822 (S.D. Ohio 1983); Universal City Studios, Inc. v. Montgomery Ward & Co., 207 U.S.P.Q. (BNA) 852, 857 (N.D. Ill. 1980). The distinction becomes especially significant in trademark infringement suits against parodists because the trademark parodist clearly intends to use the plaintiff's mark, but usually does not intend to cause confusion concerning source, origin, sponsorship, or affiliation. See, e.g., Jordache, 828 F.2d at 1486; Tetley, 556 F. Supp. at 791.

54. This factor must also be kept in proper perspective. As the legal standard is whether there was a likelihood of confusion, the plaintiff is not required to prove actual confusion in order to prevail on an infringement claim. See supra notes 41-42 and accompanying text. The existence of actual confusion, however, is obviously probative of whether a likelihood of confusion was created, and is probably the most telling evidence of such a likelihood. Conversely, some courts reason that the absence of evidence of actual confusion points toward a finding of no likelihood of confusion. T-Shirt Gallery, Ltd., 634 F. Supp. at 1478; Tetley, 556 F. Supp. at 791.

55. The degree of care contemplated by this factor depends on the sort of goods or services involved and on the sophistication of the consumers who desire such goods or services. See Mutual of Omaha, 836 F.2d at 4401 (purchaser of relatively inexpensive item such as t-shirt may not be likely to use high degree of care to ascertain actual source of product). In applying this factor, some courts have been more than willing to assume that much of the buying public is gullible and easily duped. See Wendy's, 576 F. Supp. at 822-24; Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183, 1190-91 (E.D.N.Y. 1972).

56. See Mutual of Omaha, 836 F.2d at 399, 400 (court found trademark infringement although no evidence of fourth factor of intent to pass of parodied goods as those of trademark owner); Pizzeria Uno, 747 F.2d at 1527 ("Not all these [factors] are always relevant or equally emphasized in each case.").

57. Compare Anheuser-Busch, Inc. v. Florists Ass'n, 603 F. Supp. 35 (N.D. Ohio 1984) (florists' use of "This Bud's for You" not infringement because parody too obvious to create confusion) with Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433 (5th Cir. 1962) (insecticide manufacturer's substitution of "Bugs" for "Bud" in slogan likely to cause confusion).

58. The reasoning here is that the public generally would not expect the plaintiff to poke fun at its own valued trademark or to make it the object of the humorous or sometimes caustic commentary found in parodies. When consumers see such a use of the plaintiff's trademark, they probably would recognize the use for what it is: a use by a party other than the plaintiff and without the permission of the plaintiff.

59. 556 F. Supp. 785 (E.D.N.Y. 1983).

60. Id. at 786-87.

61. Id. at 787.

62. Id. The words "Orange Pekingese Fleas" also appeared on the sticker as an obvious takeoff on the "Orange Pekoe Tea" language that appeared on the plaintiff's packages of tea. Id. at 790. The sticker was part of the Wacky Packs series, in which Topps parodied numerous well-known products and trademarks. See id. at 787.

63. Id. at 792. As further support for its conclusion that there was no likelihood of confusion, the court emphasized that the plaintiff's and defendant's products were vastly different and were sold to different sorts of consumers in different markets. Id. at 790-91. The court also noted that the absence of any evidence of actual confusion would seem to cut against a finding of likelihood of confusion. Id. at 792, 794.

64. See id. at 790, 792. Indeed, a parody cannot be effective unless it causes the reader or hearer to think of the original being parodied. See Note, Trademark Parody: A Fair Use and First Amendment Analysis, 72 VA. L. REV. 1079, 1079 (1986).

65. See, e.g., Jordache Enters., Inc. v. Hogg Wyld, Ltd., 625 F. Supp. 48, 55 (D.N.M. 1985), aff'd, 828 F.2d 1482 (10th Cir. 1987). This case provides an excellent illustration of the notion that a business competitor--both parties sold designer jeans--may deliberately use a similar or even identical version of another competitor's trademark and not be liable for trademark infringement if the use does not create a likelihood of confusion. This is true even when the use involves taking a slightly off-color "jab," as the "Lardashe" name seems to do, at the other party or its trademark. Whether the defendant may be liable to the trademark owner on another legal theory in this sort of instance will be explored later. See infra notes 166-67, 186-211 and accompanying text.

66. See Universal City Studios, Inc. v. T-Shirt Gallery, Ltd., 634 F. Supp. 1468, 1477-78 (S.D.N.Y. 1986); Universal City Studios, Inc. v. Casey & Casey, Inc., 622 F. Supp. 201, 204-05 (S.D. Fla. 1985), aff'd without opinion, 792 F.2d 1125 (11th Cir. 1986).

67. Anheuser-Busch, Inc. v. Florists Ass'n, 603 F. Supp. 35, 37 (N.D. Ohio 1984). For discussion of the case, see supra note 47 and accompanying text. For other cases in which the plaintiff's infringement claim failed because no likelihood of confusion was created by the defendant's parody in a commercial context, see Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112 (2d Cir. 1984) (Nintendo's "Donkey Kong" did not infringe Universal Studios' "King Kong" trademark); Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981) (use by Sears of name "Bagzilla" for garbage bags did not infringe plaintiff's "Godzilla" trademark); Dr. Pepper Co. v. Sambo's Restaurants, Inc., 517 F. Supp. 1202 (N.D. Tex. 1981) (restaurant chain's commercials parodying Dr. Pepper's "Be a Pepper" advertisements not trademark infringement, but copyright infringement found); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Chandris America Lines, Inc., 321 F. Supp. 707 (S.D.N.Y. 1971) (cruise ship company's use of "The Greatest Show on Earth Isn't" slogan did not infringe plaintiff's "The Greatest Show on Earth" trademark).

68. A substantial argument may be made that uses of this nature are outside the legitimate reach of trademark rights doctrines because those doctrines should operate only when commercial uses are involved. See San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 560-73 (1987) (Brennan, J., dissenting); Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931, 933-35 (D.D.C. 1985); Stop the Olympic Prison v. United States Olympic Comm., 489 F. Supp. 1112, 1120-21 (S.D.N.Y. 1980). As will be seen, a noncommercial use of a trademark triggers a stronger first amendment-based defense than does a commercial use thereof. See infra notes 409-11, 448-90 and accompanying text.

69. 477 F. Supp. 936 (D.D.C. 1979).

70. Id. at 942, 945. The plaintiff trademark owner was in the business of providing advertising and public relations services to utility companies. Id. at 939.

71. Id. at 948.

72. Id. Perhaps the most interesting and telling caricature used by EAF depicts Reddy Kilowatt sticking out his tongue at the reader. Presumably, this was intended to convey EAF's view of utility companies' attitudes toward the public. See id. at 949. The court was kind enough to favor readers of the opinion with a reproduction of the caricature. See id.

73. 489 F. Supp. 1112 (S.D.N.Y. 1980). the organization known as Stop the Olympic Prison will be referred to in subsequent discussion as "STOP" and the United States Olympic Committee will be referred to as "USOC."

74. Id. at 1114-15, 1127.

75. Although STOP sold some of the posters, it did so to solicit contributions for its cause. It gave away most of the posters without charge. Id. at 1115.

76. USOC raised other claims besides trademark infringement. One was a claim that STOP's poster violated section 110 of the Amateur Sports Act of 1978, 36 U.S.C. s 380, which purports to grant USOC exclusive rights to the use of the word "Olympic" and the Olympic symbol of five interlocking rings. The court also rejected this claim, interpreting the statute as pertaining only to commercial uses. Stop the Olympic Prison, 489 F. Supp. at 1118-21. The court hinted that the statute might implicitly contain a likelihood of confusion requirement. See id. at 1119-20. In a later decision dealing with another party's unconsented use of "Olympic," the United States Supreme Court concluded that the Amateur Sports Act of 1978 pertains predominantly to commercial uses but does not implicitly require USOC to prove likelihood of confusion in order to enforce its statutory exclusive rights against another party. See San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 535, 539-41 (1987). For a discussion of this case, see infra notes 382, 393-98 and accompanying text.

77. Stop the Olympic Prison, 489 F. Supp. at 1123.

78. Id. In addition to containing material that reasonable persons would be unlikely to attribute to USOC, the poster stated that the STOP organization had produced it. Id.

79. 215 U.S.P.Q. (BNA) 124 (N.D. Ga. 1981).

80. Id. at 125-26, 133-34. This use by the defendant had both commercial and noncommercial attributes. The publisher expected to make a profit from the sale of the magazine, but that of course is also true of magazines commonly perceived as more "legitimate" than the one at issue in the case. The sense of relevant Supreme Court decisions is that a commercial profit motive is not by itself sufficient to make the speech of a magazine commercial rather than noncommercial. See infra notes 257-60 and accompanying text. The primary importance of the commercial/noncommercial distinction is that it dictates the level of first amendment protection speech receives. See infra notes 249-52, 261-94 and accompanying text. For purposes of later analysis, a use such as that in Pillsbury would be classified as noncommercial despite its partially commercial nature. See infra notes 409-11, 424 and accompanying text.

81. Pillsbury, 215 U.S.P.Q. (BNA) at 133-34. It should be noted, however, that Pillsbury prevailed on an alternative claim for violation of a state anti- dilution statute. Id. at 135. For a discussion of this aspect of the case, see infra notes 168-69 and accompanying text.

82. 886 F.2d 490 (2d Cir. 1989).

83. Id. at 495-97. The Second Circuit reversed the district court's issuance of a preliminary injunction against the publisher of Spy Notes. Id. at 497. Technically, the case was brought on the theory that Spy Notes violated s 43(a) of the Lanham Act, 15 U.S.C. s 1125(a) (1982) (amended 1988), by employing a cover, name and format confusingly similar to Cliffs Notes and thereby implicitly making the false representation that the publisher of Cliffs Notes also produced Spy Notes. Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 718 F. Supp. 1159, 1160 (S.D.N.Y.), rev'd, 886 F.2d 490 (2d Cir. 1989). Lanham Act cases fitting such a fact pattern are effectively the same as trademark infringement claims; therefore likelihood of confusion is a required element. See infra notes 117-21 and accompanying text.

84. The parodies involved in the case are noteworthy because of their "double parody" nature. Cliffs Notes, 886 F.2d at 492. They were not only parodies of the Cliffs Notes' approach to summarizing works of literature, but also parodies of recent "cool, ironic, sophisticated, urbane" novels. Id. It appears that the takeoffs on Cliffs Notes were little more than humor directed at Cliffs Notes, whereas the "jabs" taken at the spy novels and their authors were evidently intended to be not only amusing but also critical of the supposed quality of the novels. Id.

85. Id. at 495-97. The Second Circuit also placed heavy emphasis on first amendment concerns. It classified the parodies as "artistic expression" entitled to considerable constitutional protection despite the profit motive of the publisher of Spy Notes. See id. at 493-94, 497. For a discussion of those aspects of the case, see infra notes 364-73 and accompanying text.

86. See Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978) (lower court incorrectly granted summary judgement on Disney's claim that its "Silly Symphonies" trademark was infringed by defendant's use of "Silly Sympathies" in adult comic books), cert. denied sub nom. O'Neill v. Walt Disney Prods., 439 U.S. 1132 (1979); General Mills, Inc. v. Henry Regnery Co., 421 F. Supp. 359 (N.D. Ill. 1976) (denying request for preliminary injunction against publisher of cookbook entitled "Betty Cooker's Crock Book for Drunks" for alleged infringement of "Betty Crocker" trademark); Girl Scouts of United States v. Personality Posters Mfg. Co., 304 F. Supp. 1228 (S.D.N.Y. 1969) (defendant's "Be Prepared" poster showing pregnant teenager in Girl Scout uniform held not to infringe Girl Scouts' trademarks). In a recent noncommercial use case the court's decision on the likelihood of confusion issue would have been interesting if the case had not been settled a few months after it was filed. See Wall St. J., Mar. 8, 1990, at B8, col. 5 (eastern ed.). Miller Brewing Co. filed suit against Doctors Ought to Care (DOC), "a [non-profit] coalition of health professionals . . . that is helping to educate the public, especially young people, about the major preventable causes of poor health and high medical costs." DOC News and Views, Winter 1990, at 2, col. 1 (masthead). DOC places "particular emphasis on counteracting the promotion of tobacco and alcohol," and regards alcohol and tobacco use as "killer habits." Id. Miller filed suit alleging that DOC's parodies of the "Miller Lite" trademark and the "We're having a party" slogan that Miller had used in advertisements for Miller-sponsored parties and concerts constituted infringement. DOC, Miller Lite in Bill of Rights Brew-ha- ha, DOC News and Views, supra, at 1, col. 1. DOC's parodies appeared on t- shirts sold by DOC to raise money for the Texas Special Olympics. The t-shirts were sold outside the Houston Astrodome, where the first of the Miller parties and concerts took place. One side of the shirts referred to "Killer Lite" beer and added the statement, "We're pushing a drug." The other side of the shirts parodied the "We're having a party" slogan with the words "We're grabbing a potty" and a depiction of a person vomiting into a toilet. Id.; Green, Miller Doesn't See Humor in T-Shirts Mocking "Lite" Ads, Wall St. J., Oct. 13, 1989, at B3, col. 5 (eastern ed.). The shirts also bore a list of alcohol-related diseases. DOC, Miller Lite in Bill of Rights Brew-ha-ha, supra, at 1 col. 1. Miller alleged trademark infringement as well as a variety of other legal theories, including trademark dilution, unfair competition, copyright infringement, and interference with contractual relations. Id. at 3; Green, supra. It is difficult to believe that Miller could have succeeded on the trademark infringement claim if the case had gone to trial. The context and content of DOC's parodies would seem to make it nearly impossible for Miller to prove the necessary likelihood of confusion. Other theories raised by Miller would not have required proof of likelihood of confusion, however. For a discussion of dilution theory and Miller's dilution claim, see infra notes 139-83 (discussion of dilution theory), 484-85 (discussion of Miller's dilution claim) and accompanying text. Had the case gone to trial, the defendant's first amendment interests would have become especially important in the resolution of Miller's dilution claim. See Green, supra; DOC, Miller Lite in Bill of Rights Brew- ha-ha, supra, at 3. The case was settled, however, with neither party conceding that the other's position was valid. Wall St. J., Mar. 8, 1990, supra.

87. See Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397 (8th Cir. 1987) (use of "Mutant of Omaha" on t-shirts sold by supposed anti-nuclear weapons activist infringed plaintiff's "Mutual of Omaha" trademark), cert. denied, 488 U.S. 933 (1988); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979) (use of cheerleading uniform similar to plaintiff's in pornographic movie violated plaintiff's trademark rights); Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433 (5th Cir. 1962) (floor wax-insecticide manufacturer's use of "where there's life . . . there's bugs" in advertisements infringed upon Busch's "where there's life . . . there's Bud" slogan), cert. denied, 372 U.S. 965 (1963); Walt Disney Co. v. Powell, 698 F. Supp. 10 (D.D.C. 1988) (Disney's copyrights and trademark rights violated by defendant's use of versions of Mickey Mouse and Minnie Mouse characters on t-shirts and sweatshirts), aff'd in pertinent part, rev'd in part, 897 F.2d 565 (D.C. Cir. 1990); Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198 (D. Md. 1988) (use of "McSleep" as name of motel chain infringed McDonald's Corp. marks); Grey v. Campbell Soup Co., 650 F. Supp. 1166 (C.D. Cal. 1986) (use of "Dogiva" and "Cativa" for gourmet pet biscuits infringed "Godiva" trademark used by Campbell for chocolates and other candy), aff'd, 830 F.2d 197 (9th Cir. 1987); McDonald's Corp. v. McBagel's, Inc., 649 F. Supp. 1268 (S.D.N.Y. 1986) (use of "McBagel's" for bakery and restaurant infringed McDonald's Corp. marks); Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031 (N.D. Ga. 1986) (defendant's "Garbage Pail Kids" stickers violated plaintiff's trademark rights and copyright protection concerning "Cabbage Patch Kids" dolls); Crazy Eddie, Inc. v. Lois Pitts Gershon, Inc., 600 F. Supp. 537 (S.D.N.Y. 1984) (temporary restraining order granted to owner of "Crazy Eddie" trademark against competitor's "Confessions of Crazy Eddie" commercial); DC Comics Inc. v. Unlimited Monkey Business, Inc., 598 F. Supp. 110 (N.D. Ga. 1984) (owner of trademarks and copyrights in Superman and Wonder Woman characters entitled to injunction against defendant's use of "Super Stud" and "Wonder Wench" characters in singing telegram business); Wendy's Int'l, Inc. v. Big Bite, Inc., 576 F. Supp. 816 (S.D. Ohio 1983) (advertisement using girl who stated "ain't no reason to go any place but Big Bite" infringed Wendy's trademarked "Little Wendy" character and "ain't no reason to go any place else" slogan); Edgar Rice Burroughs, Inc. v. High Soc'y Magazine, Inc., 7 Media L. Rep. (BNA) 1862 (S.D.N.Y. 1981) (adult magazine's satirical depiction of Tarzan and Jane characters infringed plaintiff's trademark rights in those characters); Universal City Studios, Inc. v. Montgomery Ward & Co., 207 U.S.P.Q. (BNA) 852 (N.D. Ill. 1980) (defendant's use of "Jaws" as name of garbage disposals preliminarily enjoined at request of movie studio); General Elec. Co. v. Alumpa Coal Co., 205 U.S.P.Q. (BNA) 1036 (D. Mass. 1979) (t-shirts bearing "Genital Electric" inscription held to infringe General Electric trademarks); General Foods Corp. v. Mellis, 203 U.S.P.Q. (BNA) 261 (S.D.N.Y. 1979) (preliminary injunction awarded against defendants' song "I'm the Pop Rock King" held to infringe "Pop Rocks" trademark used by plaintiff as name of candy); Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977) (use of "Gucchi Goo" on diaper bag infringed "Gucci" trademark); Interbank Card Ass'n v. Simms, 431 F. Supp. 131 (M.D.N.C. 1977) (preliminary injunction awarded against defendant's use of religious cards and stickers referring to "charge" and trademarked rings of plaintiff charge card association); Edgar Rice Burroughs, Inc. v. Manns Theatres, 195 U.S.P.Q. (BNA) 159 (C.D. Cal. 1976) (references to Tarzan and Jane characters in title and story line of X-rated movie infringed plaintiff's trademark rights and copyright protection in those characters); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972) ("Enjoy Cocaine" poster infringed Coca- Cola Co.'s trademarks).

88. McBagel's, 649 F. Supp. at 1282.

89. Quality Inns, 695 F. Supp. at 221-23. McDonald's has adopted an aggressive enforcement policy concerning its various "Mc"-prefixed trademarks. It has threatened or instituted litigation against various alleged infringers. McDonald's Plays Name Game Hardball, Bloomington (Ind.) Herald-Telephone, June 15, 1988, at B7, col. 1 (Scripps Howard News Service article that first appeared in San Francisco Examiner). The court's opinion in the McBagel's case lists more than 30 food-related trademark registrations that belong to Mc Donald's and involve use of the "Mac" or the "Mc" prefix. McBagel's, 649 F. Supp. at 1270 n.2. McDonald's also claims several other "Mc"-prefixed marks for uses that are not limited to the fast food context. See Quality Inns, 695 F. Supp. at 203 (noting such examples as "McKids" for children's clothing and "McJobs" for job programs). Although the Quality Inns case was believed to be the first judicial decision finding infringement of a McDonald's mark outside the food setting, McDonald's has favorably settled many such claims over the years. Koenig, McDonald's Victory Turns Out Lights for 'McSleep Inn,' Wall St. J., Sept. 19, 1988, at 42, col. 3 (eastern ed.).

90. The commercial setting has spawned numerous business names that appear to be parodies of the McDonald's name. These include McDonuts (for baked goods), McMaid (for a maid service), McFranchise (for management consulting services), McPrint (for printing services), McQuik (for oil change franchises), and McTravel (for a travel agency). Quality Inns, 695 F. Supp. at 213. Recently, two familiar fast food chains, Kentucky Fried Chicken and Pizza Hut, have parodied the Ronald McDonald character and other McDonald's trademarks in advertisements. See McCarthy, Kentucky Fried Chicken Draws Squawks from CBS with Ads Ribbing McDonald's, Wall St. J., Jan. 8, 1990, at B6, col. 1 (eastern ed.). Gibson, Two Giants Give Each Other the Works as They Fight to Slice up Pizza Market, Wall. St. J., Sept. 15, 1989, at B1, col. 4 (eastern ed.). It does not appear, however, that McDonald's has taken legal action against either firm. In addition, the familiarity of the McDonald's name and image has led to journalistic uses of the "Mc" prefix as a means of indicating thrift, speed and convenience. For example, the Quality Inns court noted that journalists have coined the terms McMedicine (for inexpensive medical care facilities), McLaw (for legal services franchises), McFuneral (for funeral service franchises), McPaper (for the newspaper USA Today) and McGod (for religion as practiced by television evangelists). Quality Inns, 695 F. Supp. at 215. The court referred to its written decision as a McPinion after observing that a newspaper account of the case had mentioned the Mccourt. Id. Nevertheless, the court rejected the argument of Quality Inns that the "Mc" prefix had become a generic, and hence unprotectable by McDonald's, way of expressing notions of speed, convenience, and the like. Id. at 216. Another example of a parody of McDonald's trademarks in a noncommercial setting was a syndicated political cartoon that depicted a likeness of then- President Reagan posting the number 10 next to the words "million unemployed" on a "McRonald's" sign which included the familiar golden arches. McBagel's, 649 F. Supp. at 1272. It would seem difficult for McDonald's to successfully attack such uses on an infringement basis, primarily because their noncommercial nature would probably cut against a finding of likelihood of confusion. As will be seen, however, not all trademark rights theories require proof of likelihood of confusion. See infra notes 132-38 and accompanying text. For a discussion of why these noncommercial uses should have substantial first amendment protection, see infra notes 469-90 and accompanying text.

91. In each of the cases, surveys given considerable weight by the court indicated that more than 30% of those surveyed were actually confused. Quality Inns, 695 F. Supp. at 208-09, 218-19; McBagel's, 649 F. Supp. at 1277-78. Evidence of actual confusion, of course, is frequently considered the best evidence of likelihood of confusion. See supra note 42.

92. 648 F. Supp. 905 (D. Neb. 1986), aff'd, 836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988). The percentage of survey participants who were actually confused was approximately 10%. Id. at 911. This is considerably less than the 30% figures seen in the surveys in Quality Inns and McBagel's. See supra note 91. The likelihood of confusion issue was therefore a closer call in Mutual of Omaha. Although it affirmed the district court's decision in Mutual of Omaha, the Eighth Circuit observed that it might have reached a different conclusion if the likelihood of confusion issue were before it on de novo review. Mutual of Omaha, 836 F.2d at 398-99. Because such review was not called for, however, the Eighth Circuit found the record sufficient to support the district court's finding of likelihood of confusion. Id.

93. Besides using the "Mutant of Omaha" phrase, the t-shirts sold by the defendant showed an Indian head logo arguably similar to the one used by the plaintiff insurance company. Mutual of Omaha, 648 F. Supp. at 907. The t- shirts also contained the language "Nuclear Holocaust Insurance" and "When the world's in ashes we'll have you covered." Id. The defendant later began selling merchandise that bore the "Mutant of Omaha's Mutant Kingdom" inscription as a takeoff on the plaintiff insurance company's longstanding sponsorship of the "Wild Kingdom" television program. Id. According to the defendant, the t-shirts and other merchandise constituted expression of his opposition to nuclear weapons. Id. at 911. Both the district court and the Eighth Circuit rejected the first amendment argument made by the defendant. Mutual of Omaha, 836 F.2d at 402-03; Mutual of Omaha, 648 F. Supp. at 907. For a discussion of this aspect of the case, see infra notes 312-14 and accompanying text.

94. Mutual of Omaha, 648 F. Supp. at 910. The district court distinguished Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F. Supp. 785 (E.D.N.Y. 1983), by observing that the parody of the Mutual of Omaha trademark was not "so obvious and heavy handed" as the parody in Tetley. Mutual of Omaha, 648 F. Supp. at 910. For a discussion of Tetley, see supra notes 59- 64 and accompanying text.

95. See, e.g., Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433 (5th Cir. 1962) (floor wax-insecticide manufacturer's use of "where there's life . . . there's bugs" slogan held to infringe Busch's "where there's life . . . there's Bud" slogan), cert. denied, 372 U.S. 965 (1963); Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031 (N.D. Ga. 1986) (defendant's "Garbage Pail Kids" stickers held to infringe trademarks and copyrights of plaintiff in connection with "Cabbage Patch Kids" dolls); Edgar Rice Burroughs, Inc. v. High Soc'y Magazine, Inc., 7 Media L. Rep. (BNA) 1862 (S.D.N.Y. 1981) (use of Tarzan and Jane characters in satirical depiction in adult magazine held to violate plaintiff's trademark rights in those characters).

96. 346 F. Supp. 1183 (E.D.N.Y. 1972).

97. Id. at 1193.

98. Id. at 1186. In addition to ruling for the plaintiff on the infringement claim, the court grounded its decision on the alternative theories raised by the plaintiff. See id. at 1190-91. Only the infringement claim is being considered in this portion of the article. Coca-Cola Co.'s concern about being linked with cocaine in any way--even an apparently implausible way--is reflected in its recent suit against a manufacturer of powdered candy that was sold in a small bottle. Coca-Cola claimed that the bottle resembled the trademarked Coca-Cola bottle, that the powdered candy inside the bottle could be mistaken for cocaine, and that consumers could therefore believe that Coca-Cola Co. is a participant in or endorser of the cocaine trade. See Coke Sues Candy Firm, Alleging Product Links Soft Drink to Cocaine, Wall St. J., Aug. 11, 1989, at B3, col. 6 (eastern ed.). Although the court in Coca-Cola's suit concerning the "Enjoy Cocaine" poster noted that there is no shortage of gullible, easily confused consumers, see Coca-Cola, 346 F. Supp. at 1190, it is difficult to imagine even the most hopelessly naive consumer believing that cocaine was the product being sold in the small bottles appearing on the shelves of a legitimate business establishment.

99. The court noted the familiarity of the Coca-Cola trademarks and disapprovingly commented on the defendant's "predatory intent." Coca-Cola, 346 F. Supp. at 1187. In addition, the court expressed concern about protecting the business reputation of the plaintiff and about the "tragic drug problem" in the United States as a result of the use of "noxious substance[s]" such as cocaine. Id. at 1189. The gist of the court's statements is that Coca-Cola Co. was being unfairly put-upon by an irresponsible free-rider, and that such actions should not be countenanced. See id. at 1188-90.

100. The court did cite, almost in passing, affidavits that contained evidence to support a finding of likelihood of confusion. See id. at 1189 n.9. Nonetheless, the court seemed disinclined to explore the substantiality of that evidence and failed to engage in meaningful discussion of factors ordinarily considered in likelihood of confusion analysis. See id. at 1188- 89. For a discussion of the types of factors ordinarily considered, see supra notes 48-56 and accompanying text. It is perhaps only a slight overstatement to say that the court was effectively employing a standard under which a likelihood of confusion would be found if there was any supporting evidence, no matter how insubstantial. Whether Coca-Cola could have prevailed at trial-- where the affidavits it employed in seeking the preliminary injunction would not have been admissible--is an interesting question that remains unanswered because the issuance of the preliminary injunction effectively ended the litigation. For another parody case in which the court issued a preliminary injunction after applying a very low threshold in determining likelihood of confusion, see Wendy's International, Inc. v. Big Bite, Inc., 576 F. Supp. 816, 823-24 (S.D. Ohio 1983).

101. 604 F.2d 200 (2d Cir. 1979). Technically, the case was brought under s 43(a) of the federal Lanham Act. For a discussion of the similarity between Lanham Act and trademark infringement claims, see infra notes 116-21 and accompanying text.

102. Dallas Cowboys, 604 F.2d at 204-05.

103. Id. at 203.

104. Id. at 206-07. The court rejected the defendant's first amendment arguments. Id. at 206. For a discussion of that aspect of the decision, see infra notes 302-10 and accompanying text. The victorious plaintiff in Dallas Cowboys also found appellate success in another parody-based case. In Dallas Cowboys Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184 (5th Cir. 1979), the United States Court of Appeals for the Fifth Circuit affirmed the district court's conclusion that the defendant Scoreboard had infringed the plaintiff's copyrighted poster of the Cowboys cheerleaders in their uniforms. Id. at 1188-89. Scoreboard's infringement consisted of a poster that strongly resembled the plaintiff's except that the ex-Cowboys cheerleaders shown in the poster were partially out of their Cowboys-like uniforms. Id. at 1186-88. Although the Fifth Circuit decided the case on copyright infringement grounds, the district court had also based its judgement for the plaintiff on trademark infringement and unfair competition grounds. id. at 1186, 1188 n.1.

105. Dallas Cowboys, 604 F.2d at 202, 205. The court noted, however, that the question of whether the movie was obscene was not before the court. Id. at 206 n.10.

106. Dallas Cowboys Cheerleaders v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 376-77 (S.D.N.Y. 1979), aff'd, 604 F.2d 200 (2d Cir. 1979).

107. The defendant in Dallas Cowboys claimed that the movie "Debbie Does Dallas" was intended as a parody of or satire on cheerleaders. Id. at 375. The trial court disagreed, saying that the movie was neither humorous nor a vehicle for meaningful commentary. See id. at 376. The Second Circuit also said it was neither a parody nor a satire. Dallas Cowboys, 604 F.2d at 206. Even if the movie was not a true parody, the lawsuit presented the same basic issues seen in trademark parody cases. Assuming, however, that "Debbie Does Dallas" was at least in part a parody, the parody itself has now been parodied in a commercial setting. Newspaper accounts report the existence of a Fort Collins, Colorado establishment known as "Debbie Duz Donuts," which employs topless waitresses and sells donuts, coffee and adult videos. Lincoln (Ne.) Journal-Star, Aug. 20, 1989, at 2A, col. 2.

108. For discussion of the significant difference between intent to use and intent to confuse, see supra note 53 and accompanying text. The parodist wants the public to recognize the original being parodied, but does not generally intend for the public to become confused concerning source, sponsorship, or endorsement. See id. For another parody case in which the court failed to appreciate the difference between intent to use and intent to confuse, see Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 1038 (N.D. Ga. 1986).

109. Dallas Cowboys, 604 F.2d at 205.

110. For a discussion of these different sorts of uses, see supra notes 58-86 and accompanying text.

111. Although the focus of this article is on trademark parody, parodies of copyrighted works also have given rise to a considerable amount of litigation. See Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986) (copyright on song "When Sunny Gets Blue" not infringed by parody titled "When Sunny Sniffs Glue"); MCA, Inc. v. Wilson, 677 F.2d 180 (2d Cir. 1981) (copyright on song "Boggie Woogie Bugle Boy of Company B" infringed by parody titled "Cunninlingus Champion of Company C"); Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d Cir. 1964) (Mad Magazine parodies did not infringe copyrights on Irving Berlin Songs), cert. denied, 379 U.S. 822 (1964); Benny v. Loew's Inc., 239 F.2d 532 (9th Cir. 1956) (comedian Jack Benny held liable for parody of play "Gas Light"), aff'd mem. by an equally divided Court sub nom. Columbia Broadcasting Sys. v. Loew's, Inc., 356 U.S. 43 (1958) (per curiam); Elsmere Music, Inc. v. National Broadcasting Co., 482 F. Supp. 741 (S.D.N.Y. 1980) (no copyright infringement when television program "Saturday Night Live" included song "I Love Sodom," which parodied copyrighted song "I Love New York"), aff'd per curiam, 623 F.2d 252 (2d Cir. 1980); Columbia Pictures Corp. v. National Broadcasting Co., 137 F. Supp. 348 (S.D. Cal. 1955) (television skit "From Here to Obscurity" did not infringe copyright on movie "From Here to Eternity"). Unlike trademark infringement, copyright infringement may occur even though the defendant's use did not cause likelihood of confusion concerning source, endorsement, affiliation and the like. See 17 U.S.C. s 501 (1988); 1 J. MCCARTHY, supra note 1, s 6:4. Copyright law, however, has long recognized the "fair use" defense, first as a judicially created doctrine and more recently by virtue of a provision in the Copyright Act of 1976. See Berlin, 329 F.2d at 543-45 (discussing fair use defense); 17 U.S.C. s 107 (fair use defense). The fair use defense frequently, though not always, protects the parodists from liability to the copyright owner. See, e.g., Fisher, 794 F.2d 432 (parodist protected from liability by fair use defense); Berlin, 329 F.2d 541 (same); Elsmere Music, 482 F. Supp. 741 (same); Columbia Pictures, 137 F. Supp. 348 (same). But see MCA, 677 F.2d 180 (parodies at issue not fair use); Benny, 239 F.2d 532 (same). Some litigation over parodies involves claims by plaintiffs that both copyright and trademark rights were violated. See Fisher, 794 F.2d at 434 (copyright and disparagement claims); Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 238 (2d Cir. 1983) (copyrights and trademarks associated with Superman character not infringed by television program "The Greatest American Hero"); Dallas Cowboys Cheerleaders, Inc., v. Scoreboard Posters, Inc., 600 F.2d 1184, 1186 (5th Cir. 1979) (trial court found probable infringement of copyrighted poster of cheerleaders and probable unfair competition); Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 752 n.2 (9th Cir. 1978) (summary judgment for plaintiffs affirmed on copyright infringement claim concerning use of copyrighted characters in adult "counter-culture" comic books, but reversed on trademark infringement claims concerning uses of plaintiffs' titles), cert. denied sub nom. O'Neill v. Walt Disney Prods., 439 U.S. 1132 (1979). For useful discussion of copyright parody cases, the fair use doctrine and first amendment interests in the copyright context, see generally Clemmons, Author v. Parodist: Striking a Compromise, 46 OHIO ST. L.J. 3 (1985); Denicola, Copyright and Free Speech: Constitutional Limitations on the Protection of Expression, 67 CALIF. L. REV. 283 (1979); Dorsen, supra note 5; Goetsch, Parody as Free Speech-- The Replacement of the Fair Use Doctrine by First Amendment Protection, 3 W. NEW ENG. L. REV. 39 (1980); Note, supra note 64, at 1079.

112. See Denicola, supra note 27, at 159, 165-66. For a discussion of the proper application of the likelihood of confusion requirement, see infra notes 450-52, 475-80 and accompanying text. A persistent problem, however, is that the likelihood of confusion element is not always properly applied. See supra notes 95-112 and accompanying text.

113. 15 U.S.C. s 1114(1) (1988).

114. Id. s 1125(a). The standard interpretation of section 43(a) has been that only business plaintiffs are entitled to bring suit under the statute. Consumers are not regarded as permissible section 43(a) plaintiffs. Best, Monetary Damages for False Advertising, 49 U. PITT. L. REV. 1, 2 n.1 (1987).

115. Best, supra note 114, at 4 n.7, 5 n.14; see also 15 U.S.C. s 1125(a) (1988) (nothing in s 43(a) language indicating that federally registered trademark is necessary for plaintiff to properly bring suit thereunder).

116. See Bauer, A Federal Law of Unfair Competition: What Should Be the Reach of Section 43(a) of the Lanham Act?, 31 UCLA L. REV. 671, 671-72, 680-81 (1984). For examples of the various contexts in which section 43(a) may be employed, see id.; Langvardt, Free Speech Versus Economic Harm: Accommodating Defamation, Commercial Speech, and Unfair Competition Considerations in the Law of Injurious Falsehood, 62 TEMP. L. REV. 903, 949- 50 & n.269 (1989).

117. See Best, supra note 114, at 4 n.7, 5 n.14. For cases illustrating the use of section 43(a) in the context of alleged infringement of unregistered marks, see infra note 120 and accompanying text.

118. See Rogers v. Grimaldi, 875 F.2d 994, 1000 (2d Cir. 1989).

119. As noted earlier, trademark infringement claims under federal law or common law involve essentially the same claim: that the defendant's use of the plaintiff's mark, or of something substantially similar thereto, would likely cause the public to become confused concerning such matters as source, origin, endorsement, or business affiliation. See supra notes 40-46 and accompanying text.

120. A number of the parody cases cited or discussed previously involved a s 43(a) claim as an alternative theory of recovery. See, e.g., Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989); Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112 (2d Cir. 1984); Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981); Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979); Anheuser-Busch, Inc. v. Florists Ass'n, 603 F. Supp. 35 (N.D. Ohio 1984); Dr. Pepper Co. v. Sambo's Restaurants, Inc., 517 F. Supp. 1202 (N.D. Tex. 1981); Stop the Olympic Prison v. United States Olympic Comm., 489 F. Supp. 1112 (S.D.N.Y. 1980); Reddy Communications, Inc. v. Environmental Action Found., 477 F. Supp. 936 (D.D.C. 1979); Gucci Shops, Inc. v. R.H. Macy & Co., 466 F. Supp. 838 (S.D.N.Y. 1977); Girl Scouts of United States v. Personality Posters Mfg. Co., 304 F. Supp. 1228 (S.D.N.Y. 1969).

121. The Trademark Law Revision Act's recent amendment of s 43(a) expressly requires proof of likelihood of confusion for s 43(a) claims of this sort. See 15 U.S.C. s 1125(a) (1988). The likelihood of confusion determination in these cases involves application of essentially the same factors employed in other infringement suits and discussed previously herein. See, e.g., Reddy Communications, 477 F. Supp. at 946-47. For a discussion of these factors, see supra notes 48-56 and accompanying text.

122. See Kobak & Fleck, Commercial Defamation Claim Added to Revised Lanham Act, Nat'l L.J., Oct. 30, 1989, at 33, col. 1. The new s 43(a) has added this additional basis of liability without eliminating any sorts of claims actionable under the former Lanham Act version. See id.

123. RESTATEMENT (SECOND) OF TORTS s 623A (1977) [hereinafter RESTATEMENT (SECOND)]. This tort is sometimes referred to as disparagement because that is the name of its most frequently encountered form. Injurious falsehood has sometimes been an alternative theory in trademark parody litigation.

124. 15 U.S.C. s 1125(a) (1988) (emphasis added). Specific language of the sort quoted in the text accompanying this footnote did not appear in the Lanham Act's version of s 43(a) prior to its amendment by the Trademark Law Revision Act of 1988. See 15 U.S.C. s 1125(a) (1982) (amended 1988).

125. S. REP. NO. 100-515, 100th Cong., 2d Sess. 40 (1988), reprinted in 1988 U.S. CODE CONG. & ADMIN. NEWS 5577, 5603; Kobak & Fleck, supra note 122, at 33; Lavelle, What's in a Name? New Law Explains, Nat'l L.J., Mar. 6, 1989, at 1, col. 1. Former s 43(a)'s general prohibition of false descriptions or representations in connection with goods or services, 15 U.S.C. s 1125(a) (1982) (amended 1988), was regarded as covering the defendant's false or misleading representations concerning the nature, quality, or characteristics of his own goods or services. The consistent judicial interpretation of former s 43(a), however, was that the statutory language did not reach the defendant's false or misleading representations concerning the plaintiff's goods, services, or business. See, e.g., Bernard Food Indus., Inc. v. Dietene Co., 415 F.2d 1279, 1283-84 (7th Cir. 1969), cert. denied, 397 U.S. 912 (1970); see also S. REP. NO. 100-515, supra (noting this judicial interpretation of s 43(a)). Thus, claims for what would have been disparagement or other forms of injurious falsehood under the common law were not regarded as actionable under the pre-TLRA version of s 43(a), because such claims necessarily involved the defendant's statements about the plaintiff's products, services, or business. See Bernard Food, 415 F.2d at 1283-84.

126. See S. REP. NO. 100-515, supra note 125; Kobak & Fleck, supra note 122, at 33-35.

127. For discussion of proof of fault requirements in injurious falsehood law, see infra note 209 and accompanying text. Section 43(a) does not contain any requirement that the plaintiff prove the defendant's actual or constructive knowledge of the falsity of the representation concerning which suit was brought. See 15 U.S.C. s 1125(a) (1988). Such requirements are imposed for first amendment reasons in defamation law and in injurious falsehood law. See infra notes 203, 209 and accompanying text. If plaintiffs begin employing the new s 43(a) as a means for bringing claims that formerly would have been actionable on injurious falsehood or even defamation grounds, courts will have to determine whether the fault requirements of defamation and injurious falsehood may be evaded by styling the case as a s 43(a) claim. The same considerations that prompted the development of fault requirements in defamation and injurious falsehood law would seem to apply to those s 43(a) claims that are essentially the same as defamation or injurious falsehood claims. Langvardt, supra note 116, at 950-51 & nn.272-74.

128. 15 U.S.C. s 1125(a)(2) (1988).

129. For instance, if a manufacturer of a product sues a magazine because it allegedly stated a falsehood in the course of a review of the effectiveness of the plaintiff's product, the claim may well be actionable on common law injurious falsehood grounds but should not be actionable under the new s 43(a). This is because the magazine's statement would not have been in the context of "commercial advertising or promotion."

130. See 15 U.S.C. s 1125(a)(2) (1988). In the Trademark Law Revision Act of 1988, Congress rejected calls to enact a separate "trademark disparagement" section. See Lavelle, supra note 125, at 50. Even without such a separate section, however, some instances of trademark disparagement arguably would be actionable under the amended s 43(a). See supra notes 120-27 and accompanying text.

131. See supra notes 40-41, 46 and accompanying text.

132. See Shire, supra note 37, at 273 n.2.

133. Note, supra note 64, at 1087; see Cal. Bus. & Prof. Code s 14330 (West 1987); Ga. Code Ann. s 10-1-451(b) (1989); Ill. Rev. Stat. ch. 140, para. 22 (1988); N.Y. Gen. Bus. Law s 368-d (McKinney 1984). For additional discussion of the differences between the infringement and dilution theories, see Shire, supra note 37. When Congress recently revised the Lanham Act in 1988, it rejected a strong lobbying effort in favor of a proposed federal anti- dilution provision. Lavelle, supra note 125, at 50.

134. See 2 J. MCCARTHY, supra note 1, s 24:13(A); Shire, supra note 37, at 275.

135. Shire, supra note 37, at 274; Note, supra note 64, at 1088. This popularity among trademark owner-plaintiffs is understandable, given the dilution doctrine's lack of the troublesome likelihood of confusion requirement.

136. 2 J. MCCARTHY, supra note 1, s 24:13(B).

137. MODEL STATE TRADEMARK BILL s 12 (United States Trademark Ass'n 1964), reprinted in 2 J. MCCARTHY, supra note 1, s 22:4.

138. For a thorough discussion of these two theories, see Denicola, supra note 27, at 187-90; Note, supra note 64, at 1088-90.

139. See MODEL STATE TRADEMARK BILL, supra note 137, s 12. This sort of dilution claim was envisioned by Frank Schechter, who is generally regarded as the originator of the dilution theory. See Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813 (1927).

140. Schechter, supra note 139, at 825.

141. Note, supra note 64, at 1086 n.37, 1089.

142. See Schechter, supra note 139, at 825; 2 J. MCCARTHY, supra note 1, s 24:13(A).

143. Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830, 836 (7th Cir. 1963).

144. Id. at 836-37.

145. There was evidence of actual confusion in Polaroid, but in a dilution claim, neither actual nor likely confusion is a requirement. See id.

146. See id.

147. Exxon Corp. v. Exxene Corp., 696 F.2d 544, 550 (7th Cir. 1982) (description of Polaroid case).

148. See id.; 2 J. MCCARTHY, supra note 1, s 24:13(A).

149. 2 J. MCCARTHY, supra note 1, s 24:13(B).

150. See supra notes 40-46 and accompanying text.

151. See 2 J. MCCARTHY, supra note 1, s 24:13(A). After the defendant has made such a use, the plaintiff's mark would be diluted because the plaintiff's legitimate uses of the mark would then cause the public to think not only of the plaintiff but also of the defendant's goods or services. See, e.g., Polaroid, 319 F.2d at 836. This would be so even though the public would not be confused concerning what each party was producing or providing. Of course, if the defendant's use does produce a likelihood of confusion, the dilution claim is superfluous because the plaintiff would have a meritorious infringement claim. 2 J. MCCARTHY, supra s 24:13(A).

152. Polaroid, 319 F.2d at 836. Concern about this "heavy hand" has led some courts to be reluctant to enforce anti-dilution statutes or to read a likelihood of confusion requirement into them. In recent years, however, the dilution doctrine has become a powerful force in trademark rights litigation. See Denicola, supra note 27, at 184-85; 2 J. MCCARTHY, supra note 1, s 24:13(B)-(D).

153. Parody-based dilution claims are usually raised as an alternative theory of recovery. Part of the explanation for the minimal judicial analysis of these dilution claims is that other theories of recovery--most notably trademark infringement--usually receive greater attention in the written opinions. Indeed, the resolution of the dilution claim may sometimes appear to be little more than an afterthought, with the result on the dilution claim usually tracking the outcome of the infringement claim despite the absence of the likelihood of confusion element in a dilution claim. For representative cases illustrating the foregoing assertions, see infra notes 159-60, 163 and accompanying text. But see Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124, 134-35 (N.D. Ga. 1981) (although absence of likelihood of confusion compelled conclusion that parody was not trademark infringement, parody tended to dilute distinctiveness of Pillsbury's trademark and was thus enjoined).

154. For decisions illustrating these two factors, see infra notes 156-63 and accompanying text.

155. For discussion of this underlying concern, see supra note 140 and accompanying text.

156. 649 F. Supp. 1268 (S.D.N.Y. 1986).

157. Id. at 1271, 1278.

158. Id. at 1280-81. McDonald's also prevailed on a trademark infringement theory. For a discussion of the infringement aspect of the case, see supra notes 88-91, and accompanying text. Numerous other factually similar cases have been decided the same way. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Celozzi-Ettelson Chevrolet, Inc., 855 F.2d 480, 482-83 (7th Cir. 1988) (car dealer's sign on showroom roof reading "The Greatest Used Car Show on Earth" held likely to dilute distinctiveness of "The Greatest Show on Earth" slogan of circus); Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1175 (C.D. Cal. 1986) (defendant's use of "Dogiva" and "Cativa" as names of gourmet pet biscuits would whittle away at distinctiveness of plaintiff's "Godiva" trademark), aff'd without opinion, 830 F.2d 197 (9th Cir. 1987); Universal City Studios, Inc. v. Montgomery Ward & Co., 207 U.S.P.Q. (BNA) 852, 858-59 (N.D. Ill 1980) (distinctiveness of movie studio's "Jaws" trademark would be damaged by defendant's use of same name for garbage disposals). But see Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1489-91 (10th Cir. 1987) (no loss of distinctiveness of plaintiff Jordache's trademark because public identification of Jordache name with plaintiff would not be eroded by defendant's parody version "Lardashe"); Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 120 (2d Cir. 1984) (defendant's use of name "Donkey Kong" for video game would not have blurring effect on plaintiff's "King Kong" mark); Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 793 (9th Cir. 1981) (use of "Bagzilla" as name of garbage bag would not dilute distinctive quality of plaintiff's "Godzilla" trademark).

159. 811 F.2d 26 (1st Cir. 1987), appeal dismissed, cert. denied, 483 U.S. 1013 (1987).

160. Id. at 27, 30-33. L.L. Bean's suit was based on a High Society magazine feature titled "L.L. Bea''s Back-to-School Sex Catalog." Id. at 27 (emphasis supplied). Besides using a name similar to the L.L. Bean trademark, the "catalog" parodied the style normally used in the plaintiff mail order company's catalogs. Id. The First Circuit was actually ruling on the question whether the defendant's parody constituted dilution by tarnishment. For a discussion of dilution by tarnishment, see infra notes 166-77 and accompanying text. Nevertheless, the court's opinion contains discussion of dilution claims involving loss of distinctiveness. See L.L. Bean, 811 F.2d at 30. It is clear that the First Circuit, which concluded that there was no tarnishment and hence no dilution of that sort, also would have rejected any claim of dilution by loss of distinctiveness. See id. at 30-33. L.L. Bean, one of the few trademark parody cases in which the court has devoted serious discussion to first amendment issues, will be examined again in later sections dealing with dilution by tarnishment and first amendment considerations. See infra notes 174-77, 321-37 and accompanying text.

161. The court concluded that anti-dilution statutes were designed to apply to certain commercial uses of trademarks. L.L. Bean, 811 F.2d at 29-33. It appeared to restrict the commercial use classification to instances where the defendant uses the plaintiff's mark in a trademark-like sense, such as by adopting the mark as the name of a product, service, or business. See id. at 29, 31-33. The parody at issue in the case was classified by the L.L. Bean court as "editorial or artistic," and hence noncommercial. Id. at 32. For a discussion of the importance of the commercial/noncommercial distinction to first amendment concerns in trademark parody cases, see infra notes 407-90 and accompanying text.

162. The parody in L.L. Bean should be considered a one-time use even though there would have been a large number of copies of the magazine in which the parody appeared. The defendant's parody was an isolated instance in one issue of the magazine. That single parody presumably would fade from public attention after a reasonable time, unlike the parody used day after day as the name of a product, service, or business to which the public is consistently exposed.

163. See Universal City Studios, Inc. v. T-Shirt Gallery, Ltd., 634 F. Supp. 1468, 1479-80 n.16 (S.D.N.Y. 1986) (defendant's t-shirt picturing "Miami Mice" poked fun at plaintiff's "Miami Vice" trademark but was unlikely to dilute its distinctiveness); Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F. Supp. 785, 794 (E.D.N.Y. 1983) (defendant's parody of Tetley trademarks held not to dilute distinctiveness of trademarks where parody was part of defendant's Wacky Packs stickers which poked fun at various companies' well- known products and trademarks); Stop the Olympic Prison v. United States Olympic Comm., 489 F. Supp. 1112, 1123 (S.D.N.Y. 1980) (protest-oriented poster that employed version of plaintiff's protected trademark constituted commentary and would not dilute distinctiveness of trademarks); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Chandris America Lines, Inc., 321 F. Supp. 707, 712-13 (S.D.N.Y. 1971) (cruise line's one-time use in advertisement of words "The Greatest Show on Earth Isn't" would not dilute distinctiveness of familiar slogan of circus). But see Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205 n.8 (2d Cir. 1979) (holding, without discussion, that defendant's use of plaintiff's trademark in sexually explicit movie violated anti-dilution statute); Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124, 135 (N.D. Ga. 1981) (summarily holding that use of Pillsbury trademarks in parody by adult magazine likely to dilute distinctive quality of trademarks).

164. For a discussion and examples of anti-dilution statutes, see supra notes 132-38 and accompanying text.

165. 2 J. MCCARTHY, supra note 1, s 24:13(E). This sort of claim is occasionally seen in the trademark parody context. See, e.g., Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1490-91 (10th Cir. 1987) (Jordache loses dilution claim because any lack of prestige associated with defendant's Lardashe jeans unlikely to affect prestige of Jordache jeans); Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1175 (C.D. Cal. 1986) ("Godiva" trademark on premium-quality food products for human consumption diluted because of lower prestige of animal foods for which defendant used the names "Dogiva" and "Cativa"); Gucci, 446 F. Supp. at 840 n.6 (defendant's use of "Gucchi Goo" on inexpensive diaper bag would detract from prestige and high-fashion image of Gucci name).

166. See Denicola, supra note 27, at 185, 189-90; Dorsen, supra note 5, at 941-44.

167. See Dallas Cowboys, 604 F.2d at 202, 205 & n.8 (plaintiff's trademark used in sexually explicit movie); Pillsbury, 215 U.S.P.Q. at 125-26 135 (plaintiff's trademarks used in adult magazine); Edgar Rice Burroughs, Inc. v. High Soc'y Magazine, Inc., 7 Media L. Rep. (BNA) 1862, 1863-64 (S.D.N.Y. 1981) (plaintiff's trademarks used in adult magazine). But see L.L. Bean, 811 F.2d at 27, 29-32 (rejecting notion that finding of trademark tarnishment may be based on single use in unwholesome context; dilution claims inappropriate when asserted against parody that is editorial in nature rather than commercial).

168. 215 U.S.P.Q. (BNA) 124 (N.D. Ga. 1981).

169. Id. at 134-35. For a discussion of the trademark infringement aspect of Pillsbury, see supra notes 79-81 and accompanying text. The court seemed to take it as a "given" that the appearance of the trademark parody in an adult magazine would have a tendency to damage the reputation associated with the Pillsbury trademarks. See Pillsbury, 215 U.S.P.Q. (BNA) at 135. The same sort of reaction was obtained from the courts in the Dallas Cowboys and Edgar Rice Buroughs cases. One might argue that those who actually saw the parodies in these cases--readers of adult magazines or viewers of adult movies--probably would be the consumers least likely to have a resulting lower opinion of the plaintiffs and their trademarks. Hence, the argument goes, there was neither actual nor probable dilution by tarnishment. If such an argument was made in Pillsbury, Dallas Cowboys, or Edgar Rice Burroughs, the courts obviously did not give it credence.

170. 346 F. Supp. 1183, 1189-92 (E.D.N.Y. 1972).

171. Id. 1191-92. In ruling for the plaintiff on the dilution claim, the court observed that "[t]o associate such a noxious substance as cocaine with plaintiff's wholesome beverage as symbolized by its 'Coca-Cola' trademark and format would clearly have a tendency to impugn that product and injure plaintiff's business reputation, as plaintiff contends." Id. at 1189; see also General Foods Corp. v. Mellis, 203 U.S.P.Q. (BNA) 261, 263 (S.D.N.Y. 1979) (commenting on unwholesome nature of drug references in defendant's song which used plaintiff's trademark). For a discussion of the court's conclusion that the poster also infringed Coca-Cola's trademarks, see supra notes 96-100 and accompanying text.

172. See Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 1039-40 (N.D. Ga. 1986) (dilution by tarnishment). In Topps Chewing Gum, the court's distaste for the Garbage Pail Kids stickers, a popular item designed for and sold to children, is reflected in its statement that the stickers "derisively depict dolls with features similar to Cabbage Patch Kids dolls in rude, violent and frequently noxious settings." Id. at 1032. The court's objection to the content of the stickers also goes a long way toward explaining the ease with which it found likelihood of confusion on the plaintiff's alternative claim for trademark infringement. See id. at 1039.

173. See Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1490- 91 (10th Cir. 1987) (no unwholesome context and hence no tarnishment of Jordache mark when defendant used "Lardashe" as name of its large-size designer jeans); Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 793 (9th Cir. 1981) (use of "Bagzilla" as name of garbage bags did not tarnish "Godzilla" mark because mark not linked with something unsavory); Universal City Studios, Inc. v. T-Shirt Gallery, Ltd., 634 F. Supp. 1468, 1479-80 n.16 (S.D.N.Y. 1986) (connotations suggested by "Miami Mice" t-shirts did not tarnish "Miami Vice" trademark); Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F. Supp. 785, 794 (E.D.N.Y. 1983) (dilution by tarnishment not likely where defendant's "Petley Flea Bags" stickers poked fun at Tetley trademarks). Girl Scouts of United States v. Personality Posters Manufacturing Co., 304 F. Supp. 1228 (S.D.N.Y. 1969), is also noteworthy because the court refused to entertain the Girl Scouts' dilution claim even though the defendant's "Be Prepared" poster dealt, in some sence, with the subject of sex. Id. at 1233-34. The court found that notwithstanding the poster's depiction of a smiling, pregnant "Girl Scout," the poster was unlikely to tarnish the reputation of the Girl Scouts organization or its symbols. See id. at 1231, 1234-36.

174. L.L. Bean, 811 F.2d at 27, 30-34. For an earlier discussion of this case, see supra notes 159-62 and accompanying text.

175. Id. at 30-33.

176. Id. In other words, the L.L. Bean court effectively would limit dilution by tarnishment to tarnishment caused by the inferior nature of the defendant's goods, and would prohibit the use of the unwholesome context route. The court also noted the first amendment difficulties inherent in determining what is offensive or unwholesome. Id. at 34. For a discussion of tarnishment caused by the inferior nature of the defendant's products, see supra notes 164-65 and accompanying text. The court also noted the first amendment difficulties inherent in determining what is offensive or unwholesome. L.L. Bean, 811 F.2d at 34.

177. Id. at 33-34. First amendment considerations provided the main reason for the limits placed by the court on the application of the anti- dilution statute. See id. at 29-34. For a discussion of L.L. Bean's focus on the first amendment, see infra notes 321-37 and accompanying text.

178. See L.L. Bean, 811 F.2d at 29-34.

179. For a discussion of these first amendment issues, see infra notes 295- 314 and accompanying text.

180. 2 J. MCCARTHY, supra note 1, s 24:15; see Denicola, supra note 27, at 190.

181. See 2 J. MCCARTHY, supra note 1 s 24:15; Denicola, supra note 27, at 190. For examples of courts resorting to pseudo-dilution, see infra notes 182- 83 and accompanying text. It must be remembered that because neither the federal trademark statute nor the common law recognizes the dilution doctrine, the dilution theory is available only when there is an applicable state anti- dilution statute. 1 J. GILSON, supra note 35, s 7.04, at 7-33. Not all states have such statutes. See id. at 7-34. Therefore, dilution claims cannot always be raised in trademark rights litigation.

182. See, e.g., Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433 (5th Cir. 1962) (producer of floor wax-insecticide deliberately altered plaintiff's "Where there's life . . . there's Bud" slogan by substituting "bugs" for "Bud"), cert. denied, 372 U.S. 965 (1963); General Foods Corp. v. Mellis, 203 U.S.P.Q. (BNA) 261 (S.D.N.Y. 1979) (defendant used plaintiff's trademark in song with drug-oriented content); Edgar Rice Burroughs, Inc. v. Manns Theatres, 195 U.S.P.Q. (BNA) 159 (C.D. Cal. 1976) (defendant used plaintiff's Tarzan and Jane characters in title and storyline of X-rated movie).

183. See Chemical Corp., 306 F.2d at 435-38; General Foods, 203 U.S.P.Q. (BNA) at 263; Interbank Card Ass'n v. Simms, 431 F. Supp. 131, 134- 35 (M.D.N.C. 1977); Manns Theatres, 195 U.S.P.Q. (BNA) at 161-62; see also 2 J. MCCARTHY, supra note 1, s 24:15 (noting this tendency of courts); Denicola, supra note 27, at 186 (same).

184. See, e.g., Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938).

185. See Fisher v. Dees, 794 F.2d 432, 440 (9th Cir. 1986); Warner Bros. v. American Broadcasting Cos., 720 F.2d 231, 247 (2d Cir. 1983); Reddy Communications, Inc. v. Environmental Action Found., 477 F. Supp. 936, 948 (D.D.C. 1979). Section 43(a) of the Lanham Act and Trademark Law Revision Act, which can cover passing off cases, also requires proof of likelihood of confusion. 15 U.S.C. s 1125 (1988); see, e.g., Warner Bros., 720 F.2d at 247. A passing off claim is likely to fail in a parody setting because the parodist generally does not attempt to pass off the parody as the original. Instead, the parodist wants the public to recognize that he is at once drawing upon the original and doing something different--engaging in humor or commentary. See, e.g., Fisher, 794 F.2d at 440 (defendant's song "When Sonny Sniffs Glue" parodied plaintiff's "When Sunny Gets Blue," but defendant not attempting to pass off parody as plaintiff's).

186. See International News Service v. Associated Press, 248 U.S. 215 (1918) (leading case in early development of misappropriation). The International News Court used the misappropriation doctrine as the basis for allowing Associated Press (AP) to prevail in an unfair competition claim against International News Service (INS) for its practice of copying news after it appeared in stories in AP-subscribing newspapers on the East Coast. Id. at 232. INS would alter the form of the stories and send them by telegraph to its subscribers on the west coast. See id. at 236-40. AP was allowed to prevail because a contrary result would allow INS to "reap where it had not sown" in that AP had gone to the time, trouble, and expense of assembling an effective news-gathering operation, and INS took advantage of the results of that operation. Id. at 239-40. Since International News, the misappropriation doctrine has been criticized as likely to endanger the proper intellectual property balance developed by federal law. See Denicola, supra note 27, at 172-73, 179 n.101. For a complete discussion of the history and development of the misappropriation tort, see id. at 171-81.

187. See Denicola, supra note 27, at 173-74.

188. International News, 248 U.S. at 239-40.

189. 1 J. MCCARTHY, supra note 1, s 2:10.

190. See Universal City Studios, Inc. v. Montgomery Ward & Co., 207 U.S.P.Q. (BNA) 852 (N.D. Ill. 1980) (misappropriation of well-known "Jaws" trademark). In this case, the court expressly relied on the misappropriation doctrine as a basis for enjoining the defendant's use of "Jaws" as the name of a garbage disposal. Id. at 857-58.

191. See Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 794 (9th Cir. 1981) (noting that misappropriation theory does not require likelihood of confusion, but refusing to apply misappropriation theory to trademark rights); Universal City Studios, 207 U.S.P.Q. (BNA) at 858 (misappropriation claim does not require proof of likelihood of confusion). The common law's protection of trademarks has traditionally required likelihood of confusion as an element of the trademark owner's claim. See supra notes 40-46 and accompanying text.

192. See Toho, 645 F.2d at 794; cf. Eagle's Eye, Inc. v. Ambler Fashion Shop Inc., 627 F. Supp. 856, 860-61 (E.D. Pa. 1985) (court expressed concern in trademark parody case about use of misappropriation doctrine to skirt likelihood of confusion requirement under trademark infringement theory); see also Denicola, supra note 27, at 176-77, 178-81 (noting objections to recognition of misappropriation theory in trademark rights setting). Application of the misappropriation tort has generally been reserved for situations in which there is not another applicable body of law to govern the case, but unfair competition considerations make its use a necessity. See, e.g., International News Serv. v. Associated Press, 248 U.S. 215 (1918); United States Golf Ass'n v. Saint Andrews Sys., Data-Max, Inc., 749 F.2d 1028, 1034-35 (3d Cir. 1984). In the trademark rights context, however, there are numerous legal theories on which trademark owners may rely.

193. See, e.g., Toho, 645 F.2d at 794; cf. Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931, 933-36 (D.D.C. 1985) (holding that owner of "Star Wars" trademark not entitled to prevail on misappropriation grounds against public interest groups that referred to "star wars" in political advertisements opposing Reagan Administration's strategic defense initiative). A further cause for uncertainty in the application of the misappropriation theory is that some misappropriation claims are preempted by s 301 of the Copyright Act of 1976. See 17 U.S.C. s 301 (1988). That section provides that a state law-based cause of action is preempted by federal copyright law if (1) the party bringing the state law claim asserts rights in or as to a work that comes within the subject matter of the Copyright Act (i.e., a work fixed in a tangible medium), and (2) the rights asserted in the work under state law are equivalent to the rights guaranteed by the Copyright Act. Id. An exploration of the intricacies and application of s 301 is beyond the scope of this article. For present purposes, it should suffice to say that if a plaintiff alleges both trademark and copyright infringement by the parodist-- allegations that may be raised, for instance, where a plaintiff's fictional character or song is parodied--an alternative claim for misappropriation is likely to be preempted. See Fisher v. Dees, 794 F.2d 432, 440 (9th Cir. 1986) (misappropriation claim preempted); Warner Bros., Inc. v. American Broadcasting Cos., 720 F.2d 231, 247 (2d Cir. 1983) (same); Universal City Studios, Inc. v. T-Shirt Gallery, Ltd., 634 F. Supp. 1468, 1474-76 (S.D.N.Y. 1986) (same). For further discussion of preemption, see Denicola, supra note 27, at 172-73, 179 n.101.

194. See, e.g., Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA), 124, 135 (N.D. Ga. 1981) (rejecting what amounted to misappropriation claim). A court that takes this approach has missed a crucial point: full recognition of the misappropriation doctrine in the trademark context would provide the trademark owner a distinct advantage over what he has under the federal trademark statute or the common law, because the misappropriation theory would allow relief without proof of likelihood of confusion.

195. See, e.g., Boston Professional Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1011 (5th Cir.), cert. denied, 423 U.S. 868 (1975) (misappropriation-like rationale applied in allowing injunctive relief against defendant's sale of patches employing hockey teams' trademarks); Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433, 435, 437-38 (5th Cir. 1962) (use of misappropriation-like rationale in finding trademark infringement); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 372, 374, 376 (S.D.N.Y. 1979), aff'd, 604 F.2d 200 (2d Cir. 1979) (court employs misappropriation language and concepts in finding sexually explicit movie infringed plaintiff's trademark).

196. See, e.g., Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 80 (2d Cir. 1981) (citing International News Service v. Associated Press, 248 U.S. 215, 239 (1918)).

197. As with dilution, the absence of the likelihood of confusion element gives the misappropriation doctrine the potential to suppress an undue amount of speech if it is applied to the trademark parody setting. This suppression serves as another reason not to recognize misappropriation in the trademark rights setting. See infra note 454 and accompanying text.

198. See RESTATEMENT (SECOND), supra note 123, ss 558-559, 621-622. Although defamation claims were first recognized only in favor of natural persons, it is now commonly accepted that corporations are permissible plaintiffs in defamation cases because they have business reputations to protect. See; W. KEETON, D. DOBBS, R. KEETON & D. OWEN, PROSSER AND KEETON ON THE LAW OF TORTS s 111, at 779 (5th ed. 1984) [hereinafter PROSSER & KEETON]; RESTATEMENT (SECOND), supra, s 561 & comment b.

199. See RESTATEMENT (Second), supra note 123, s 561(a) & comment b; Langvardt, A Principled Approach to Compensatory Damages in Corporate Defamation Cases, 27 AM. BUS. L.J. 491, 496 (1990).

200. RESTATEMENT (SECOND), supra note 123, ss 558, 561. A decrease in the value of the trademark itself does not mean that the plaintiff's reputation is harmed. Courts generally are hesitant to assume that a statement which is harmful to the plaintiff's economic interest (and hence may give rise to an injurious falsehood claim) necessarily harms the plaintiff's overall reputation. PROSSER & KEETON, supra note 198, at 965. For discussion of injurious falsehood claims, see infra notes 204-11 and accompanying text.

201. See Fisher v. Dees, 794 F.2d 432, 440 (9th Cir. 1986); Stop the Olympic Prison v. United States Olympic Comm., 489 F. Supp. 1112, 1124-26 (S.D.N.Y. 1980); Girl Scouts of United States v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1234, 1235-36 (S.D.N.Y. 1969). But see Coca-Cola v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). In Fisher, the plaintiffs' song "When Sunny Gets Blue" had been parodied by the defendant in a song called "When Sonny Sniffs Glue." Fishe, 794 F.2d at 434. The court easily disposed of the plaintiffs' defamation claim, stating that the parody "cannot reasonably be understood in a defamatory sense by those who hear it." Id. at 440. In other words, the court concluded that there was no possibility of harm to the plaintiffs' reputation. See id. In Stop the Olympic Prison, the court treated the Olympic Committee's disparagement claim as a defamation claim because it alleged harm to the Olympic Committee's reputation as a result of the STOP organization's protest-oriented poster. Stop the Olympic Prison, 489 F. Supp. at 1123-24. The court concluded that there was no reasonable prospect of such reputational harm, see id. at 1126, and insufficient evidence that STOP had even communicated a falsehood concerning the Olympic Committee. Id. at 1125. In the Girl Scouts case, the court found no basis for concluding that the defendant's "Be Prepared" poster had either actually or probably harmed the reputation of the Girl Scouts organization. Girl Scouts, 304 F. Supp. at 1234-35. The court concluded with this observation: Those who may be amused at the poster presumably never viewed the reputation of the plaintiff as being inviolable. Those who are indignant obviously continue to respect it. Perhaps it is because the reputation of the plaintiff is so secure against the wry assault of the defendant that no such damage [to reputation] has been demonstrated. Id. at 1235-36. The Coca-Cola case, however, provides conflicting indications as to whether the court was recognizing Coca-Cola's defamation claim as an alternative basis for the granting of a preliminary injunction against the producer of the "Enjoy Coca-ine" poster. Defamation was among the plaintiff's various claims, although the plaintiff apparently focused more heavily on its trademark infringement and dilution claims. See id. at 1190-93. Likewise, the court's major concern was with the latter claims. See Coca-Cola, 346 F. Supp. at 1186-93. Nonetheless, the court spoke of harm to the plaintiff's overall reputation and thus appeared to be sustaining the defamation claim as well as the infringement and dilution claims. See id. at 1188-89, 1191. Later in the opinion, however, the Coca-Cola court seemed to indicate that it was not ruling on the defamation claim. See id. at 1192-93. It stressed that the trademark infringement and dilution theories were the heart of the plaintiff's case. See id. In avoiding careful consideration of the defamation claim, the court seemingly wished to avoid tackling the difficult issue of whether the requisite degree of fault had been displayed by the defendant. See id. To complicate matters further, the court again referred to possible harm to the plaintiff's reputation near the end of the opinion. Id. at 1193. To the extent that the confusing Coca-Cola decision may be read as recognizing a defamation claim under the circumstances of the case, the decision does not have great precedential value because the court glossed over important questions of falsity and fault. For discussion of the falsity element of a defamation claim, see infra note 202. For discussion of fault requirements in defamation cases, see infra note 203.

202. A basic requirement of a meritorious defamation claim is that the defendant made a statement that was both defamatory (in the sense of having a tendency to harm the plaintiff's reputation) and false. RESTATEMENT (SECOND), supra note 123, s 558. This falsity requirement necessarily means that the statement must expressly or impliedly set forth a statement that is of supposed "fact," but is actually false. Even if a statement is cast in opinion form, it is actionable if it implies "facts" that are not true. Milkovich v. Lorain Journal Co., 110 S. Ct. 2695, 2705-07 (1990). The typical trademark parody case, if pursued on defamation grounds, is likely to fail because the reasonable reader or listener probably will not perceive any statements in the parody as serious statements of "fact." See Fisher, 794 F.2d at 440; Girl Scouts, 304 F. Supp. at 1235-36.

203. For first amendment reasons, the Supreme Court has required public official and public figure plaintiffs to prove a fault requirement known as "actual malice" in order to prevail in a defamation suit. Curtis Publishing Co. v. Butts, 388 U.S. 130, 164 (1967) (Warren, C.J., concurring); New York Times Co. v. Sullivan, 376 U.S. 254, 279-80 (1964). Actual malice is defined by the Court as meaning that the defendant made a false statement with knowledge that it was false or with reckless disregard for its truth or falsity. New York Times, 376 U.S. at 279-80. The existence of actual malice must be proved by clear and convincing evidence. See Gertz v. Robert Welch, Inc., 418 U.S. 323, 342 (1974); New York Times, 376 U.S. at 285-86. A private figure plaintiff, on the other hand, is not expected to prove actual malice but must prove at least negligence on the part of the defendant in failing to take the steps a reasonable person would have taken to ascertain the truth before making the statement. Gertz, 418 U.S. at 346- 48. When the statement giving rise to the suit was of public concern, the private figure plaintiff's damages are restricted to actual proven injury if she proves only the minimum fault requirement of negligence. Presumed and punitive damages are not allowable in such a scenario unless the plaintiff proves actual malice. Dun & Bradstreet, Inc. v. Greenmoss Builders, Inc., 472 U.S. 749, 751 (1985); Gertz, 418 U.S. at 349-50. The foregoing rules are complex and require difficult factual and legal determinations. Detailed consideration of them is beyond the scope of this article because defamation claims are of only marginal significance in the trademark parody setting. As previously noted, defamation claims based on trademark parodies usually fail on another basis before these difficult constitutional questions are encountered. See supra notes 199-201 and accompanying text. For more detailed discussion of the constitutional aspects of defamation law, see Langvardt, Media Defendants, Public Concerns, and Public Plaintiffs: Toward Fashioning Order from Confusion in Defamation Law, 49 U. PITT. L. REV. 91 (1987).

204. RESTATEMENT (SECOND), supra note 123, s 623A.

205. PROSSER & KEETON, supra note 198, s 128, at 964-65.

206. E.g., Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905 (D. Neb. 1986), aff'd, 836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988); Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931 (D.D.C. 1985). In Mutual of Omaha, the trial court recognized that a trademark may be disparaged, but rejected Mutual of Omaha's disparagement claim because the defendant's "Mutant of Omaha" t-shirts did not create an unsavory association with the plaintiff's trademarks. Mutual of Omaha, 648 F. Supp. at 912. As noted earlier, however, the trial court and the Eighth Circuit held in the plaintiff's favor on its trademark infringement claim. See supra notes 92-94 and accompanying text. In Lucasfilm, the court also recognized that a trademark constitutes the sort of economic interest that, if harmed, may give rise to a disparagement claim. Lucasfilm, 622 F. Supp. at 933. The court rejected the plaintiff's claim, however, because the defendant's "star wars" television spots were political commentary that did not disparage the plaintiff's "Star Wars" trademark. See id. at 935.

207. See Eagle's Eye, Inc. v. Ambler Fashion Shop, Inc., 627 F. Supp. 856, 862-64 (E.D. Pa. 1985) (plaintiff's allegations of disparagement in trademark parody setting held sufficient to withstand Rule 12(b)(6) motion for dismissal); Coca-Cola v. Gemini Rising, Inc., 346 F. Supp. 1183, 1190-91 (E.D.N.Y. 1972) ("Enjoy Cocaine" poster parodying Coca-Cola trademark also disparaged it); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Chandris America Lines, Inc., 321 F. Supp. 707, 712-13 (S.D.N.Y. 1971) (recognizing possibility of disparagement, but declining to find that plaintiff's trademark had been disparaged); cf. Anheuser-Busch, Inc. v. Florists Ass'n, 603 F. Supp. 35, 40 (N.D. Ohio 1984) (no disparagement because florists association's use of parody was in context of "promotion of something . . . wholesome, delectable, and appetizing"). Compare id. with Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433, 435-38 (5th Cir. 1962) (apparent reliance on disparagement notions in granting Busch relief against floor wax-insecticide manufacturer's "where there's life . . . there's bugs" parody).

208. For discussion of the dilution doctrine's focus on likely harm to marks as the result of unconsented uses in unwholesome contexts, see supra notes 167- 79 and accompanying text.

209. One element of disparagement is that the defendant made a false statement, either express or implied. RESTATEMENT (SECOND), supra note 123, s 623A comment g. In the trademark parody setting, the plaintiff may be hard- pressed to establish this element for the same reason noted earlier concerning defamation claims based on parodies. See supra note 202. No showing of falsity is required in a dilution case, however. Further, to succeed on a disparagement claim, the plaintiff must prove actual harm to his economic interests. RESTATEMENT, supra, ss 623A, 633, 651. In a dilution claim, likelihood of harm is sufficient. See MODEL STATE TRADEMARK BILL, supra note 137. Disparagement claims generally necessitate proof of some sort of wrongful intent or fault, either as a common law or constitutional matter. PROSSER & KEETON, supra note 198, s 128, at 968-70. In some states, the fault requirements for disparagement resemble those of defamation law. See supra note 203. In other states, the fault requirement is that the defendant made the false statement with ill will toward the plaintiff or because of spiteful motives. Langvardt, supra note 116, at 916-17. Dilution claims have not traditionally included such fault requirements, although first amendment considerations should not be ignored when the dilution theory is used to attack trademark parodies. See infra notes 453-66, 481-90 and accompanying text.

210. Where there is an applicable anti-dilution statute, a separate claim for disparagement is largely superfluous unless the plaintiff wishes to seek money damages, which are available in disparagement claims but not in dilution claims. Anti-dilution statutes typically allow only injunctive relief. See MODEL STATE TRADEMARK BILL, supra note 137.

211. Some disparagement claims may now be actionable under s 43(a) of the Trademark Law Revision Act of 1988. See 15 U.S.C. s 1125(a) (1988). For a discussion of the Trademark Law Revision Act of 1988, see supra notes 122-29 and accompanying text.

212. For a discussion of this avoidance by courts, see infra notes 295-97 and accompanying text.

213. Although the Court has not decided a trademark parody case, certain of its decisions are nonetheless highly relevant to the trademark parody context. For a discussion of these decisions, see infra notes 387-404 and accompanying text.

214. U.S. Const. amend. I.

215. The first amendment literally refers to actions by the federal government that interfere with free expression. Id. The first amendment's guarantees are regarded as incorporated within the fourteenth amendment's due process clause. Gitlow v. New York, 268 U.S. 652, 666 (1925). By virtue of this process of incorporation, the guarantees set forth in the first amendment restrict actions by the federal, state and local governments insofar as they unduly interfere with free expression. For purposes of convenience and clarity, this article will refer to the "first amendment" even in instances where a reference to the fourteenth amendment would be technically proper.

216. For discussion of the circumstances under which the government may regulate or restrict certain forms of expression without violating the first amendment, see infra notes 244-47, 262-68 and accompanying text.

217. For a discussion of courts' balancing of these competing interests, see infra notes 238-47, 263-94 and accompanying text.

218. See Dun & Bradstreet, Inc. v. Greenmoss Builders, Inc., 472 U.S. 749, 758-60 (1985) (indicating that not all speech is of equal value for first amendment purposes).

219. See id.

220. See id. A familiar first amendment notion is that the freedom of speech and press clauses contemplate a marketplace of ideas in which viewpoints and information pertaining to various subjects are traded freely. See Abrams v. United States, 250 U.S. 616, 630 (1919) (Holmes, J., dissenting).

221. Miller v. California, 413 U.S. 15, 23 (1973) (mailing of unsolicited sexually explicit material not protected by first amendment). Indecent expression, however, is generally protected. See Sable Communications Inc. v. FCC, 109 S. Ct. 2829, 2836 (1989) (sale of dial-a-porn messages to adults cannot be criminalized because indecent).

222. Brandenburg v. Ohio, 395 U.S. 444, 447 (1969).

223. See Texas v. Johnson, 109 S. Ct. 2533, 2539-40 (1989) (flag burning may be expressive action protected by first amendment); Hustler Magazine v. Falwell, 485 U.S. 46, 56 (1988) (first amendment requires that public figures and public officials prove "actual malice" on behalf of publisher to recover for tort of intentional infliction of emotional distress); First Nat'l Bank v. Bellotti, 435 U.S. 765, 784-86 (1978) (first amendment protects speech made by corporate representatives on behalf of corporation criticizing proposed legislation); New York Times Co. v. Sullivan, 376 U.S. 254, 269-71 (1964) (first amendment protects criticisms of public officials where no actual malice involved).

224. See, e.g., Johnson, 109 S. Ct. at 2542-43. For a discussion of the "full" first amendment protection given to political speech, see infra notes 242-44 and accompanying text.

225. Johnson, 109 S. Ct. at 2542-43; Boos v. Barry, 485 U.S. 312, 318 (1988) (content-based restriction on picketing in front of foreign embassy violative of first amendment).

226. See, e.g., Southeastern Promotions, Ltd. v. Conrad, 420 U.S. 546, 557-58 (1975) (theatrical production); Gertz v. Robert Welch, Inc., 418 U.S. 323, 339-40 (1974) (issues of public concern); Memoirs v. Massachusetts, 383 U.S. 413, 417 (1966) (works of literature).

227. Abood v. Detroit Bd. of Educ., 431 U.S. 209, 231 (1977).

228. Dun & Bradstreet, Inc. v. Greenmoss Builders, Inc., 472 U.S. 749, 758-60 (1985).

229. See Hustler Magazine Inc. v. Falwell, 485 U.S. 46 (1988) (parody concerning public figure); Time, Inc. v. Hill, 385 U.S. 374 (1967) (magazine article about play); Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495 (1952) (movie). For additional cases, see supra note 223 and accompanying text.

230. See Falwell, 485 U.S. at 50-56. For a discussion of the lesser protection given to commercial speech, and thus a satire or parody that is commercial in nature, see infra notes 261-94 and accompanying text.

231. See Cohen v. California, 403 U.S. 15, 25 (1971); Street v. New York, 394 U.S. 576, 592 (1969).

232. 485 U.S. 46 (1988).

233. See id. at 48-49.

234. Id. at 57.

235. Id. at 48-49. Although Falwell lost his defamation claim because the jury concluded that a reasonable person would not interpret any statements about him in the parody as actual facts, Falwell prevailed in the lower courts on the theory that the Hustler parody constituted intentional infliction of emotional distress. Id.

236. Id. at 50, 52-53.

237. See id. at 56-57. The Court required Falwell, a public figure plaintiff, to prove the "actual malice" requirement of a defamation case before prevailing on his intentional infliction of emotional distress claim.

238. 109 S. Ct. 2533 (1989).

239. Id. at 2548.

240. Id. at 2536, 2640-47.

241. Id. at 2544.

242. Id. at 2543 (quoting Boos v. Barry, 485 U.S. 312, 321 (1988)). Had the Court determined that the Texas statute was merely a time, place and manner restriction rather than a restriction on the content of speech, or that the defendant's conduct was not expressive, a far less rigorous test would have been applied. See id. at 2538.

243. See id. at 2543.

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