Langvardt footnotes part 2
To Part 1 of Foototes
244.
See, e.g., Boos v. Barry, 485 U.S. 312, 318, 321 (1988).
245.
Johnson, 109 S. Ct. at 2541. According to the Court, there was no showing
that a disturbance of the peace had occurred or threatened to occur as a
result of the defendant's burning of the flag. Id.
246.
Id. at 2542, 2544-46, 2547. According to the Court, "[N]obody can suppose
that this one gesture of an unknown man will change our Nation's attitude
towards its flag." Id. at 2547.
247.
See id. at 2546 ("It is not the State's ends, but its means, to which
we object.").
248.
For discussion of the role this distinction must play in order to properly
accommodate first amendment interests in trademark parody cases, see infra
notes 385-490 and accompanying text.
249.
See, e.g., Valentine v. Christensen, 316 U.S. 52, 54-55 (1942) (noting that
"the Constitution imposes no . . . restraint on government as respects
purely commercial advertising").
250.
425 U.S. 748 (1976).
251.
Id. at 771-72 n.24. Although explicit recognition of first amendment protection
of commercial speech did not come until Virginia Board of Pharmacy, two
earlier decisions had strongly hinted that such a conclusion was imminent.
See Bigelow v. Virginia, 421 U.S. 809, 818-22 (1975); Pittsburgh Press Co.
v. Pittsburgh Comm'n on Human Relations, 413 U.S. 376, 389 (1973).
252.
Compare Virginia Bd. of Pharmacy, 425 U.S. 748 (limited first amendment
protection for commercial speech) with Valentine, 316 U.S. 52 (no first
amendment protection for commercial speech).
253.
See, e.g., Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 66 (1983); Virginia
Bd. of Pharmacy, 425 U.S. at 762.
254.
See, e.g., Posadas de P.R. Assocs. v. Tourism Co., 478 U.S. 328 (1986);
Bolger, 463 U.S. 60; Central Hudson Gas & elec. Corp. v. Public Serv.
Comm'n, 447 U.S. 557 (1980); Virginia Bd. of Pharmacy, 425 U.S. 748.
255.
Central Hudson, 447 U.S. at 561.
256.
See Bolger, 463 U.S. at 68 (finding commercial speech present even though
advertisements at issue contained some speech that did not propose commercial
transaction); see also Friedman v. Rogers, 440 U.S. 1, 11 (1979) (trade
name that does not by itself seem to propose commercial transaction but
does seem solely in economic interest of speaker and audience held commercial
speech).
257.
See Harte-Hanks Communications, Inc. v. Connaughton, 109 S. Ct. 2678, 2685
(1989); City of Lakewood v. Plain Dealer Publishing Co., 486 U.S. 750, 756
n.5 (1988); Pittsburgh Press Co. v. Pittsburgh Comm'n on Human Relations,
413 U.S. 376, 385 (1973); Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495,
501-02 (1952). The Falwell case is also consistent with this proposition,
given the full first amendment protection extended to Hustler's parody despite
the obvious fact that the magazine was sold to make a profit. For a discussion
of the Falwell case, see supra notes 232-37 and accompanying text. Speech
which involves a profit motive is not necessarily solely in the economic
interest of the speaker and his audience. Instead, the speech at issue in
the above cited cases (speech in newspapers, movies, and the like) communicates
ideas that have social significance going well beyond the mere economic
interests of the speaker/writer and listener/reader.
258.
Although the Supreme Court has been less than clear concerning what other
factors besides the mere existence of a profit motive are necessary in order
for speech to be considered commercial speech, the closer the speech comes
to the sale of goods or services--as opposed to the context of the "sale"
of ideas, as in a newspaper, book, or movie--the more likely it is that
the speech will be considered commercial speech. See Bolger, 463 U.S. at
66-68 (speech that contains some noncommercial aspects but is primarily
advertising of commercially sold product should be treated as commercial
speech for first amendment purposes).
259.
Harte-Hanks Communications, 109 S. Ct. at 2685 ("If a profit motive
could somehow strip communications of the otherwise available constitutional
protection, our cases . . . would be little more than empty vessels.").
260.
Id.; see Falwell, 485 U.S. at 53-55 (discussing value of, and first amendment
protection given to, various forms of parody and satire that obviously have
some attached profit motive).
261.
Virginia Bd. of Pharmacy, 425 U.S. at 763. The Virginia Board of Pharmacy
Court struck down a state regulation that effectively prohibited pharmacists
from advertising the prices they would charge for prescription drugs. Id.
at 749-50, 752.
262.
Id. at 770-72. In the realm of noncommercial speech, however, false statements
and statements about unlawful matters are treated much differently. See
New York Times Co. v. Sullivan, 376 U.S. 254, 270-73 (1964) (falsity of
speech does not necessarily cause loss of first amendment protection); Brandenburg
v. Ohio, 395 U.S. 444, 447 (1969) (speech about unlawful activity protected
by first amendment unless speech is both directed to incite and likely to
incite imminent lawless activity).
263.
447 U.S. 557 (1980).
264.
This test was designed to give substance to the partial first amendment
protection contemplated by Virginia Board of Pharmacy. See 425 U.S. 748
(1976).
265.
Central Hudson, 447 U.S. at 566.
266.
Id. The "negative" answer contemplated in the text would mean
that the commercial speech either was about an unlawful activity or was
misleading.
267.
Id.
268.
Id. In Board of Trustees of the State University of N.Y. v. Fox, 109 S.
Ct. 3028 (1989), however, the Supreme Court lessened the rigor of the fourth
element of the Central Hudson test. The Court discarded Central Hudson'
s "no more extensive than necessary" inquiry, substituting an
inquiry as to whether the government action was "narrowly tailored"
to serve the underlying interest. Fox, 109 S. Ct. at 3035. For present purposes,
however, it is sufficient to say that affirmative answers to each of the
questions posed in the last three elements of the four-part test would enable
the government action to withstand the first amendment challenge, whereas
a negative answer to any of the three questions would make the action unconstitutional.
For a further discussion of Fox, see infra notes 282-94 and accompanying
text.
269.
See Zauderer v. Office of Disciplinary Counsel, 471 U.S. 626, 637-38 (1985);
Bolger, 463 U.S. at 68-75; Central Hudson, 447 U.S. at 564; Bates v. State
Bar of Ariz., 433 U.S. 350, 363-64 (1977); Virginia Bd. of Pharmacy, 425
U.S. at 749, 750-52, 773. In all of these cases, the Court struck down restrictions
on nonmisleading speech about lawful activities.
270.
463 U.S. 60 (1983).
271.
Id. at 75.
272.
Bolger is significant for another reason that is well-suited to the purposes
of this article. A threshold issue in the case was whether the contraceptive
advertisements constituted commercial speech or, instead, more strongly
protected political speech. See id. at 65. The noncommercial aspects of
the advertisements consisted of statements concerning the usefulness of
contraceptive devices in preventing pregnancy and minimizing the risk of
transmission of venereal disease. Id. at 67-68. The Court noted, however,
that the speaker's economic motivation is also an important consideration
in determining whether expression is commercial speech. Id. at 67. This
statement by the Court must not be taken too far out of its context: the
advertisements at issue in the case pertained predominantly to the sale
of a commercial product. The Bolger Court concluded that if expression seems
predominantly commercial, despite having some noncommercial, political aspects,
it should be classified as commercial and thus entitled to only partial
first amendment protection. Id. at 66-68. The Court's approach to making
commercial/noncommercial distinctions can be useful in the trademark parody
setting. See infra notes 407-12 and accompanying text.
273.
Bolger, 463 U.S. at 71-75. Recognizing that the government had a substantial
interest in aiding parents in deciding when and whether to discuss matters
pertaining to contraception with their children, the Court nonetheless concluded
that the statute's sweeping ban on unsolicited advertisements was unconstitutional.
The statute did little to further the state's interest and was far too broad
in its application. See id.
274.
478 U.S. 328 (1986).
275.
Id. at 330-31, 344.
276.
Id. at 331.
277.
Id. at 340.
278.
See id. at 341-44. See Lively, The Supreme Court and Commercial Speech:
New Words with an Old Message, 72 MINN. L. REV. 289, 292, 301 (1987) (noting
deferential approach taken by Posadas Court).
279.
Posadas, 478 U.S. at 341-44.
280.
Compare Posadas, 478 U.S. at 341-44 with Zauderer, 471 U.S. at 638; Bolger,
463 U.S. at 69; Central Hudson, 447 U.S. at 564; Virginia Bd. of Pharmacy,
425 U.S. at 773.
281.
See Posadas, 478 U.S. at 341-44. In addition to altering the Court's approach
to the final two elements of the Central Hudson test, Posadas suggested
an alternative means of analysis with potentially grave consequences for
commercial speech. After concluding that the restriction on advertising
at issue passed the four-part test and therefore was constitutional, the
majority asserted that because Puerto Rico would have had the power to ban
casino gambling, it should logically have the power to take the less intrusive
step of allowing casino gambling while prohibiting certain advertising of
it. Id. at 345-47. If this dictum is seized upon in future cases, it could
become a broad-ranging doctrine that would justify many restrictions on
commercial speech, because there are few underlying activities that the
government could not constitutionally prohibit. See Lively, supra note 278,
at 300. The dissenters in Posadas accused Justice Rehnquist of having the
analysis backwards. They regarded the advertising ban as the more drastic
action, in terms of constitutionally protected freedoms, than a ban on the
underlying activity of gambling because gambling is unlikely to enjoy constitutional
protection. Posadas, 478 U.S. at 354 n.4 (Brennan, J., dissenting). It remains
to be seen to what extent the Posadas dictum will be relied on in future
commercial speech decisions.
282.
109 S. Ct. 3028 (1989).
283.
Id. at 3032-35. Fox dealt with a state university's regulation that restricted
private parties from holding "Tupperware parties" in students'
dormitory rooms. Id. at 3030. The student plaintiffs alleged that the regulation
unconstitutionally deprived them of their rights to receive commercial speech.
Id.
284.
For a discussion of this element of the Central Hudson test, see supra note
268 and accompanying text.
285.
Fox, 109 S. Ct. at 3032-35.
286.
Id. at 3033.
287.
Id. at 3034-35.
288.
Id. at 3035. The Fox trial court had ruled for the university, but the court
of appeals reversed and remanded because the trial court had not considered
whether the university regulation was the least restrictive means by which
the university could further its substantial interests in preserving an
educational environment and in minimizing the risk that students would be
taken advantage of by unscrupulous merchants. Fox v. Board of Trustees,
841 F.2d 1207, 1213-14 (2d Cir. 1988), rev'd, 109 S. Ct. 3028 (1989). The
Supreme Court reversed and remanded because the court of appeals had erroneously
required a "least restrictive means" analysis. Fox, 109 S. Ct.
at 3037-38.
289.
Id. at 3035.
290.
See id. at 3033-35.
291.
See id. at 3034-35. In Posadas, the Court adopted a similar approach: effectively
altering the Central Hudson test while purporting to adhere to it. For a
discussion of Posadas, see supra notes 274-81 and accompanying text.
292.
Fox, 109 S. Ct. at 3035. The rational basis test is often used to determine
whether the equal protection clause of the fourteenth amendment has been
violated by an economic regulation that did not affect a suspect class or
the exercise of a fundamental right. Under this test, an economic regulation
will be sustained if it is reasonably related to a legitimate government
purpose. The regulation will normally be upheld when this test applies because
the government can establish "reasonable relation" with ease.
See J. NOWAK, R. ROTUNDA & J. YOUNG, CONSTITUTIONAL LAW 530 (3d ed.
1986). Despite the Court's disavowal of the rational basis test in Fox,
the Court's focus on a "reasonable" fit between the regulation
and the underlying government interest seems akin to adopting a rational
basis type of review. See Fox, 109 S. Ct. at 3035. It should also be noted
that the Fox Court spoke approvingly of the deferential approach taken in
Posadas. See id. at 3034. For a discussion of the deferential approach used
in Posadas, see supra note 281 and accompanying text.
293.
For a discussion of the degree of constitutional protection afforded political
and noncommercial speech, see supra notes 238-47 and accompanying text.
294.
In Fox, Justice Scalia stated that the decision actually strengthened "the
essential protections of the First Amendment" by confirming that a
meaningful distinction was kept between fully protected noncommercial speech
and less-valued commercial speech. See Fox, 109 S. Ct. at 3035. The Court's
recent ringing endorsements of noncommercial (as opposed to commercial)
speech highlight this distinction. See Texas v. Johnson, 109 S. Ct. 2533
(1989); Hustler Magazine Inc. v. Falwell, 485 U.S. 46 (1988).
295.
See, e.g., Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1490
n.7 (10th Cir. 1987) (first amendment issue noted in footnote but not dealt
with because defendant found not liable for infringement or dilution); Toho
Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981); Universal
City Studios, Inc. v. T-Shirt Gallery, Ltd., 634 F. Supp. 1468 (S.D.N.Y.
1986); Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F. Supp. 785 (E.D.N.Y.
1983).
296.
See, e.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Celozzi-Ettelson
Chevrolet, Inc., 855 F.2d 480 (7th Cir. 1988); Original Appalachian Artworks,
Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031 (N.D. Ga. 1986); Wendy's
Int'l, Inc. v. Big Bite, Inc., 576 F. Supp. 816 (S.D. Ohio 1983); Pillsbury
Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124 (N.D. Ga. 1981); Edgar
Rice Burroughs, Inc. v. High Soc'y Magazine, Inc., 7 Media L. Rep. (BNA)
1862 (S.D.N.Y. 1981); General Elec. Co. v. Alumpa Coal Co., 205 U.S.P.Q.
(BNA) 1036 (D. Mass. 1979); Gucci Shops, Inc. v. R.H. Macy & Co., 446
F. Supp. 838 (S.D.N.Y. 1977); Edgar Rice Burroughs, Inc. v. Manns Theatres,
195 U.S.P.Q. (BNA) 159 (C.D. Cal. 1976). Some of these courts' failures
to address the constitutional issue were harmless error. In view of the
nature of the defendant's use, the first amendment would not have saved
the defendant from liability. In other decisions, however, the failure to
consider the first amendment issue resulted in defendant being held liable
when constitutional considerations should have dictated a finding of no
liability. Section V of this article will set forth criteria for determining
when the first amendment should protect the parodist from liability.
297.
See, e.g., General Foods Corp. v. Mellis, 203 U.S.P.Q. (BNA) 261, 263-64
(S.D.N.Y. 1979); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183,
1192-93 (E.D.N.Y. 1972); cf. Columbia Pictures Indus., Inc. v. Miller, 211
U.S.P.Q. (BNA) 816, 820 (T.T.A.B. 1981) (affirming denial of registration
of "mark" that was parody of previously registered mark).
298.
407 U.S. 551 (1972).
299.
Id. at 552, 556.
300.
Id. at 567-68, 570.
301.
Id. at 564-67. Significantly, the Court observed that the content of the
handbills did not pertain to the shopping center owner or to the purposes
for which the shopping center was built or was being used. Therefore, it
was not essential that the would-be speakers gain access to the privately
owned shopping center. They could have distributed their materials at numerous
public places. Id. at 564.
302.
604 F.2d 200 (2d Cir. 1979).
303.
Id. at 205-06.
304.
Id. at 206 (quoting Lloyd, 407 U.S. at 567). The court also concluded that
the issuance of an injunction against the defendants' movie would not constitute
government action but would instead be only an outgrowth of the trademark
owner's legitimate efforts to enforce its property rights. Id. The conclusion
that there would be no government action in such an instance was erroneous.
See infra notes 374-84 and accompanying text.
305.
Dallas Cowboys, 604 F.2d at 206. According to the court, however, the movie
had "a barely discernible message." Id. The court was not presented
with the question of whether the movie was obscene. Id.
306.
Thus, the trademark is still a vital part of the parody's content even when
the parody is primarily a vehicle for commentary on something other than
the trademark or its owner, rather than an irreverent "jab" at
the trademark or its owner. See, e.g., Cliffs Notes, Inc. v. Bantam Doubleday
Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989) (parody employing
likeness of Cliffs Notes cover and style of writing was adverse commentary
on novels being "summarized" in parody rather than adverse commentary
on Cliffs Notes).
307.
See Denicola, supra note 27, at 206; Note, supra note 64, at 1110-12.
308.
For a discussion of this article's proposed accommodation, see infra notes
448-90 and accompanying text.
309.
See Denicola, supra note 27, at 196-97, 206; Note, supra note 64, at 1111-12;
see also Rogers v. Grimaldi, 875 F.2d 994, 998-99 (2d Cir. 1989) (voicing
disapproval of applying Lloyd approach to literary expression); L.L. Bean,
Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir.) (expressing disagreement
with applying Lloyd approch in trademark parody setting), appeal dismissed,
cert. denied, 483 U.S. 1013 (1987).
310.
For a discussion of how judicial enforcement of private trademark rights
is government action for purposes of first amendment issues, see infra notes
374-84 and accompanying text.
311.
A federal district court decision that preceded Dallas Cowboys took the
same approach to first amendment issues. See Interbank Card Ass'n v. Simms,
431 F. Supp. 131 (M.D.N.C. 1977). Largely by virtue of its attention- getting
facts, however, Dallas Cowboys acquired more notoriety. In Interbank, the
court granted the owners of the "Master Charge" name and the trademarked
Master Charge interlocking circle design a preliminary injunction against
defendants who had distributed numerous likenesses of Master Charge cards
with religious messages on them. Id. at 132-33. The court, citing Lloyd,
rejected the defendants' first amendment argument and concluded that the
defendants had various adequate alternatives by which to communicate their
messages other than through the use of plaintiff's trademarks. Id. at 133-
34. The court also concluded that judicial enforcement of the plaintiff's
trademark rights was not government action implicating first amendment concerns.
For a discussion of why this conclusion was erroneous, see infra notes 374-84
and accompanying text. The facts of Interbank suggest some interesting issues.
The defendants' first amendment argument seemingly would have been grounded
not only on the freedom of speech clause, which is commonly invoked by defendants
in parody cases, but also on the freedom of religion component of the first
amendment. With its misplaced reliance on Lloyd, however, the Interbank
court avoided addressing these issues in any depth.
312.
836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988).
313.
Id. at 398, 402-03.
314.
Id. at 402. In fairness to the Eighth Circuit, the court did not embrace
the Dallas Cowboys approach to its fullest extent. Implicit in the court's
opinion is a concession that judicial enforcement of trademark rights is
government action, although there was not, in the court's view, impermissible
government action in the facts of the case. See id. at 402- 03. The Dallas
Cowboys court found no such government action. See supra note 304 and accompanying
text. The Mutual of Omaha Court also appeared to recognize that there may
be limits to the application of the Dallas Cowboys approach. It emphasized
that the injunction at issue only barred the defendant from "commercial"
use of Mutual of Omaha trademarks--the type of use the court concluded was
involved in the case despite the defendant's argument that he was communicating
a noncommercial, protected message. Mutual of Omaha, 836 F.2d at 402 &
n.8, 403 n.9. The court observed that the injunction, and presumably Mutual
of Omaha's trademark rights, would not bar the defendant from using his
Mutant of Omaha designs in "an editorial parody in a book, magazine,
or film." Id. at 402. Finally, the court attempted to show that its
decision was not inconsistent with L.L. Bean, Inc. v. Drake Publishers,
Inc., 811 F.2d 26 (1st Cir. 1987), one of the leading trademark parody decisions
dealing with first amendment issues. The Mutual of Omaha court labeled the
parody involved in L.L. Bean as editorial or artistic and noncommercial,
but stressed that the "Mutant of Omaha" parody was both commercial
and likely to cause confusion. Mutual of Omaha, 836 F.2d at 403 n.9. Interestingly
enough, the L.L. Bean court, referring to the preliminary injunction hearing
in Mutual of Omaha, seemed to reject the notion that the parody in Mutual
of Omaha was purely commercial. L.L. Bean, 811 F.2d at 32 n.4. Rather, it
referred to Mutual of Omaha as a case involving a parody whose primary purpose
was the communication of a message. Id. For a discussion of the first amendment
aspects of L.L. Bean, see infra notes 321-37 and accompanying text. Under
this article's proposed first amendment framework, the result in Mutual
of Omaha was correct--even though the first amendment model adopted in the
decision was flawed--if the defendant's parody was both commercial and likely
to cause confusion. For this article's proposed first amendment framework,
see infra notes 448-90 and accompanying text. For the related discussion
of making commercial/noncommercial distinctions in trademark parody cases,
see infra notes 407-47 and accompanying text.
315.
304 F. Supp. 1228 (S.D.N.Y. 1969).
316.
Id. at 1235.
317.
22 A.D.2d 452, 256 N.Y.S.2d 301, aff'd mem., 15 N.Y.2d 940, 207 N.E.2d 508,
259 N.Y.S.2d 832 (1965).
318.
Id. at 454, 458, 256 N.Y.S.2d at 304, 307. The movie, "John Goldfarb,
Please Come Home," was described by the court as a "broad farce"
that dealt with government, religion, and football in a satirical fashion.
Id. at 453, 256 N.Y.S.2d at 303. Notre Dame's suit was based on a New York
statute that allowed nonprofit corporations to restrain the use of their
name for advertising purposes or for purposes of trade. Id. at 455-56, 256
N.Y.S.2d at 305. The case was therefore a trademark parody case. The court
concluded that the movie was not the sort of commercial use contemplated
by the statute, and that, in any event, the movie was constitutionally protected
expression. Id. at 456-58, 256 N.Y.S.2d at 305-07.
319.
Id. at 457, 458, 256 N.Y.S.2d at 306, 307.
320.
In Girl Scouts, for example, the court had already rejected the plaintiff's
several claims before making its first amendment observations which it conceded
were unnecessary to the decision in favor of the defendant. See Girl Scouts,
304 F. Supp. at 1235. In the University of Notre Dame case, the court acknowledged
the first amendment argument after concluding that the statute on which
Notre Dame based its claim did not cover uses of nonprofit entities' names
in movies. Notre Dame, 22 A.D.2d at 456, 256 N.Y.S.2d at 305. Other cases
include Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931 (D.D.C. 1985),
Stop the Olympic Prison v. United States Olympic Committee, 489 F. Supp.
1112 (S.D.N.Y. 1980) and Reddy Communications, Inc. v. Environmental Action
Foundation, 477 F. Supp. 936 (D.D.C. 1979). The court in Stop the Olympic
Prison rejected the Olympic Committee's various trademark rights theories
on the facts, ostensibly without resorting to a first amendment rationale.
See Stop the Olympic Prison, 489 F. Supp. at 1126. Nevertheless, the court
made various observations that had a freedom of expression ring to them.
See id. at 1120-26. In Lucasfilm, the court ruled for the defendant after
concluding that the defendant's use was not the sort prohibited by conventional
trademark doctrines. See Lucasfilm, 622 F. Supp. at 933-36. The court's
opinion has clear constitutional overtones, however. See id. Similarly,
in Reddy Communications, the court found in favor of the defendant parodist
on the substantive trademark rights theories, but made enough references
to the defendant's "satirical commentary" to give the decision
a freedom of expression flavor. Reddy Communications, 477 F. Supp. at 943-48.
321.
811 F.2d 26 (1st Cir.), appeal dismissed, cert. denied, 483 U.S. 1013 (1987).
322.
Id. at 34.
323.
L.L. Bean Inc. v. Drake Publishers, Inc., 625 F. Supp. 1531, 1538 (D. Me.
1986), rev'd, 811 F.2d 26 (1st Cir.), appeal dismissed, cert. denied, 483
U.S. 1013 (1987).
324.
L.L. Bean, 811 F.2d at 34. For a discussion of the dilution by tarnishment
aspect of the court's decision, see supra notes 174-77 and accompanying
text.
325.
L.L. Bean, 811 F.2d at 29. The court approvingly cited Lucasfilm, 622 F.
Supp. at 933-35 in which the use of the name "star wars" in political
advertisements was held to be noncommercial and therefore not violative
of Lucasfilm's trademark rights in the name "Star Wars." Id.
326.
As indicated in previous discussion, first amendment jurisprudence has long
recognized a commercial/noncommercial distinction. See supra notes 250-52
and accompanying text. The commercial/noncommercial distinction is critical
to the proper accommodation of first amendment interests in trademark parody
cases, as the framework proposed later herein reveals. See infra notes 448-90
and accompanying text.
327.
L.L. Bean, 811 F.2d at 30-31.
328.
Id. at 30-31, 33-34; cf. Hustler Magazine, Inc. v. Falwell, 485 U.S. 46,
51-56 (1988) (recognizing first amendment protection of speech that offends--
and even is calculated to offend--hearers or readers). According to the
L.L. Bean court, the application of the dilution by tarnishment theory should
be restricted to clearly commercial settings where the defendant uses the
plaintiff's mark in a trademark-like sense to promote goods or services
that are in some sense inferior to the plaintiff's. L.L. Bean, 811 F.2d
at 31-32. The court saw no such use in the case before it. Id. at 32.
329.
L.L. Bean, 811 F.2d at 32. For a discussion of the approach(es) mandated
by the Supreme Court for cases involving government restrictions on commercial
speech, see supra notes 263-94 and accompanying text.
330.
L.L. Bean, 811 F.2d at 32. The court offered some reasons why the parody
in High Society magazine was not commercial in nature: The article was labelled
as "humor" and "parody" in the magazine's table of contents
section; it took up two pages in a one-hundred-page issue; neither the article
nor appellant's trademark was featured on the front or back cover of the
magazine. [High Society] did not use Bean's mark to identify or promote
goods or services to consumers; it never intended to market the "products"
displayed in the parody. Id. It should be noted that the obvious wish of
High Society's publisher to make a profit on the magazine was not enough
to make the defendant's use commercial rather than noncommercial. This is
consistent with relevant Supreme Court precedent. See supra notes 257-60
and accompanying text. Although the L.L. Bean court distinguished Dallas
Cowboys as a case involving a commercial use of another's trademark, it
did not explain why the use in Dallas Cowboys, a sexually explicit movie,
was significantly different from the use in L.L. Bean, a sexually explicit
magazine. L.L. Bean, 811 F.2d at 31-32. A possible explanation is that in
Dallas Cowboys, the defendants had falsely advertised that the movie's star
had been a cheerleader for the Dallas Cowboys. Dallas Cowboys, 604 F.2d
at 203 & n.2. The defendants in Dallas Cowboys could therefore be seen
as actively "marketing" the movie on the basis of some supposed
connection with the plaintiff, whereas the defendants in L.L. Bean did not
undertake actions of that sort. See L.L. Bean, 811 F.2d at 32.
331.
L.L. Bean, 811 F.2d at 33. The court contrasted such a use with what the
defendant did not do: attempt to "market goods or services" through
the use of L.L. Bean trademarks. Id.
332.
Id.
333.
See id. at 33-34. The court also noted the latitude historically afforded
parodists and satirists even though their speech may offend those who are
the object of it. Id. at 33. This aspect of the court's reasoning appeared
to anticipate the Supreme Court reasoning the following year in Falwell.
For discussion of Falwell, see supra notes 232-37 and accompanying text.
The L.L. Bean court concluded that, given the usual tolerance for parody
and satire, "[i]t would be anomalous to diminish the protection afforded
parody solely because a parodist chooses a famous trade name, rather than
a famous personality, author or creative work, as its object." L.L.
Bean, 811 F.2d at 33 (footnote omitted). In addition, the court voiced constitutional
reservations about calling on courts--as broad application of the dilution
by tarnishment doctrine would seem to call for--to determine whether the
parodist's speech is unwholesome, coarse, or offensive. Id. at 33-34. It
noted that even though the High Society parody may be "coarse and vulgar,"
much speech of that nature is fully protected under the first amendment
unless it is obscene. Id. at 34. The case did not involve any claim that
the parody was obscene. Id. at 34 n.6.
334.
L.L. Bean, 811 F.2d at 32-33. In dictum, the court briefly mentioned that
the parody would have received less first amendment protection if it had
caused consumer confusion because "[a] parody which causes confusion
in the marketplace implicates the legitimate commercial and consumer protection
objectives of trademark law." Id. at 32 n.3. Presumably, the court's
statement was referring to the notion of likelihood of confusion in the
traditional trademark law sense. For discussion of that concept, see supra
notes 37-57 and accompanying text. Commercial parodies that create such
a likelihood of confusion should not receive first amendment protection,
as the following section's proposed framework indicates. See infra notes
448-49 and accompanying text. The L.L. Bean court also noted that it had
"no occasion to consider the constitutional limits which might be imposed
on the application of anti- dilution statutes to unauthorized uses of trademarks
on products whose principal purposes is to convey a message." L.L.
Bean, 811 F.2d at 32 n.4. The court cited the "Mutant of Omaha"
t-shirts as an example of such a use even though the Mutual of Omaha court
found a purely commercial use in that case. See supra note 314 and accompanying
text. For cases where the trademark parody appears on a product that is
intended to communicate a message, the L.L. Bean court asserted that the
appropriate first amendment approach would be to balance "the harm
suffered by the trademark owner against the benefit derived by the parodist
and the public from [such] unauthorized use of [the] trademark . . . ."
L.L. Bean, 811 F.2d at 32 n.4.
335.
L.L. Bean, 811 F.2d at 28-34. The trial court's rejection of the defendant's
first amendment argument was based on the notion that the defendant could
have chosen means other than using L.L. Bean trademarks to express its message.
The trial court also maintained that its injunction was not an impermissible
prior restraint because it amounted to only enforcement of the plaintiff's
property rights. See L.L. Bean, 625 F. Supp. at 1537-38. In disposing of
the first amendment issue in this manner, the trial court essentially tracked
the approach taken in Dallas Cowboys. For discussion of this approach, see
supra notes 302-14 and accompanying text.
336.
See L.L. Bean, 811 F.2d at 34. The court acknowledged that the result it
reached differed from that in the Pillsbury case discussed earlier. Id.
at 33 n.5. In Pillsbury, an injunction was granted on a dilution by tarnishment
theory against an adult magazine that used the plaintiff's trademarks in
a parody. For a discussion of Pillsbury, see supra notes 79-81, 168-69 and
accompanying text. The L.L. Bean court noted that in Pillsbury, the defendant
had not argued that it had engaged in parody as a defense to the plaintiff's
dilution claim. L.L. Bean, 811 F.2d at 33 n.5. The defendants in L.L. Bean,
however, did assert the defense of parody. Therefore, the L.L. Bean court
concluded that Pillsbury was not a parody case and neither controlled nor
stood for the proposition that a parody may be enjoined under an anti-dilution
statute. Id. Despite the court's attempt to explain Pillsbury, Pillsbury
and L.L. Bean cannot be read as anything but inconsistent. The speech involved
in the two cases is too similar, regardless of whether both, one, or neither
case involved a parody. Put simply, from a first amendment perspective,
L.L. Bean was right and Pillsbury was probably wrong. The proposed first
amendment framework set forth in section V will make this conclusion apparent.
See infra notes 481-90 and accompanying text.
337.
L.L. Bean, 811 F.2d at 34 (citations omitted).
338.
875 F.2d 994 (2d Cir. 1989).
339.
For a discussion of s 43(a) and its application in trademark parody cases,
see supra notes 113-30 and accompanying text.
340.
Rogers, 875 F.2d at 997.
341.
Id.
342.
The right of publicity doctrine gives public figures, celebrities and entertainers
the ability to obtain appropriate legal relief concerning unconsented uses
of their name, likeness, or public identity for commercial purposes. Id.
at 1003-04. For useful background on this doctrine, see Zacchini v. Scripps-Howard
Broadcasting Co., 433 U.S. 562 (1977); Guglielmi v. Spelling-Goldberg Prods.,
25 Cal. 3d 860, 603 P.2d 454, 160 Cal. Rptr. 352 (1979).
343.
Rogers v. Grimaldi, 695 F. Supp. 112, 120-21 (S.D.N.Y. 1988), aff'd, 875
F.2d 994 (2d Cir. 1989).
344.
Rogers, 875 F.2d at 996-97.
345.
Id. at 997.
346.
Id. at 998.
347.
Id. at 997.
348.
Id. at 997, 1001 & n.8. This evidence came primarily in the form of
survey results. See id.
349.
Id.
350.
Id. (footnote omitted). In other words, the expressive elements of titles
make them predominantly noncommercial, as compared to the commercial nature
of a trademark-like use. The same sort of analysis may be applied to parodies
that poke fun at a trademark or engage in commentary on it, but do not employ
the trademark for the purpose of identifying the source of goods or services.
See infra notes 417-24 and accompanying text.
351.
Rogers, 875 F.2d at 998.
352.
Id. at 998-99. The court noted that granting the relief requested by the
plaintiff would be an impermissible restriction on the content of the defendants'
speech. Id. at 999.
353.
For discussion of the approach used in Dallas Cowboys, see supra notes 302-14
and accompanying text.
354.
The court did not overrule Dallas Cowboys, but attempted to distinguish
it on the basis that the defendants in Dallas Cowboys had explicitly and
falsely advertised a connection between their movie and the plaintiff. Rogers,
875 F.2d at 999 n.4. For discussion of the false advertising aspect of Dallas
Cowboys, see supra note 330 and accompanying text. The Rogers court noted
that "[w]e do not read Dallas Cowboys Cheerleaders as generally precluding
all consideration of First Amendment concerns whenever an allegedly infringing
author has 'alternative avenues of communication."' Rogers, 875 F.2d
at 999 n.4. Arguably, the Second Circuit may have been restricting the Dallas
Cowboys precedent by classifying it as a case involving a commercial use
because the defendants' false advertising was a blatant attempt to capitalize
commercially on a supposed connection with the plaintiff. So limited, Dallas
Cowboys would not be controlling with regard to an artistic use of the sort
found in Rogers. Whatever gloss the Rogers court wished to place on Dallas
Cowboys, the first amendment approach of Dallas Cowboys has been restricted
to the facts of that case and thus has effectively been overruled in the
Second Circuit. See id. at 998- 99 & n.4. It is noted, however, that
the first amendment approach of Dallas Cowboys remains alive in the Eighth
Circuit. See supra notes 312-14 and accompanying text.
355.
Rogers, 875 F.2d at 999.
356.
Id. (footnote omitted). Even though the court was ruling in the context
of a claim under the Lanham Act's pre-1988 version of s 43(a), it is logical
to assume that the Second Circuit would take the same approach to a claim
brought under the present s 43(a), which exists as part of the Trademark
Law Revision Act of 1988 (TLRA). See 15 U.S.C. s 1125(a) (1988). For a discussion
of the TLRA, see supra notes 122-30 and accompanying text.
357.
The title was artistically relevant because it was connected with the subject
matter of the film. See supra notes 340-43 and accompanying text. It was
not explicitly misleading because it only arguably implied some connection
between Rogers and the movie. Rogers, 875 F.2d at 999-1001. The court noted
that if the title had been "The True Life Story of Ginger and Fred,"
the title, though artistically relevant, might well have been explicitly
misleading and therefore not protected by the first amendment against a
s 43(a) claim. Id. at 1000. It also set forth other hypotheticals to illustrate
its rule requiring that the title be both artistically relevant and not
explicitly misleading in order to merit first amendment protection against
a s 43(a) claim. See id. at 999-1000. This was too much for Judge Griesa
who concurred only in the result. Although he agreed that the first amendment
protected the defendants from liability, he regarded the specific rule adopted
by the majority as unworkable and unnecessary to the resolution of the case.
See id. at 1005-07 (Griesa, J., concurring).
358.
Id. at 1000-01.
359.
Id. at 1004.
360.
Id. (quoting Guglielmi v. Spelling-Goldberg Prods., 25 Cal. 3d 860, 865
n.6, 603 P.2d 454, 457 n.6, 160 Cal. Rptr. 352, 355 n.6 (1979) (Bird, C.J.,
concurring), and Frosch v. Grosset & Dunlap, Inc., 75 A.D.2d 768, 769,
427 N.Y.S.2d 828, 829 (1980)). The defendant's use of the "Ginger and
Fred" title was held permissible because it was related to the movie's
subject matter and was not a disguised commercial advertisement. See id.
at 1004-05.
361.
For a discussion of artistic parodies, see supra notes 68-85 and infra notes
439-45 and accompanying text.
362.
For a discussion of the likelihood of confusion standard under s 43(a),
see supra notes 117-21 and accompanying text. Rogers indicates that even
when a likelihood of confusion exists, the first amendment may prohibit
a conclusion that the defendant is liable under s 43(a) if the defendant's
use was noncommercial in nature. See Rogers, 875 F.2d at 998-1001. For a
discussion that such a notion should be applicable to the trademark parody
setting, see infra notes 474-80 and accompanying text.
363.
For a discussion of the dilution theory, see supra notes 131-34 and accompanying
text.
364.
886 F.2d 490 (2d Cir. 1989).
365.
Id. at 491-93, 497. The Spy Notes also parodied the spy novels summarized
in Spy Notes. Id. at 492.
366.
Id. at 494-97. The Second Circuit stressed the need to construe section
43(a) narrowly to avoid first amendment problems. Id. at 494.
367.
Id.
368.
Id. at 494-95. The court thus classified the defendant's parodies as artistic
expression. See id.
369.
See id. at 495-97.
370.
For a discussion of parody cases taking a cavalier approach to the likelihood
of confusion question, see supra notes 95-112 and accompanying text.
371.
Cliffs Notes, 886 F.2d at 497.
372.
Id.
373.
Id.
374.
See supra note 215 and accompanying text.
375.
See, e.g., Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604
F.2d 200, 206 (2d Cir. 1979); Interbank Card Ass'n v. Simms, 431 F. Supp.
131, 133-34 (M.D.N.C. 1977).
376.
376 U.S. 254 (1964).
377. Id. at 265. On the government action question,
the Court stated: Although this is a civil lawsuit between private parties,
the Alabama courts have applied a state rule of law which petitioners claim
to impose invalid restrictions on their constitutional freedoms of speech
and press. It matters not that that law has been applied in a civil action
and that it is common law only, though supplemented by statute. The test
is not the form in which state power has been applied but, whatever the
form, whether such power has in fact been exercised. Id. (citations omitted).
378.
See e.g., Harte-Hanks Communications, Inc. v. Connaughton, 109 S. Ct. 2678
(1989); Dun & Bradstreet, Inc. v. Greenmoss Builders, Inc., 472 U.S.
749 (1985); Gertz v. Robert Welch, Inc., 418 U.S. 323 (1974); Curtis Publishing
Co. v. Butts, 388 U.S. 130 (1967).
379.
See Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 52-57 (1988).
380.
See Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977). In
Zacchini, an entertainer claimed that his right of publicity was violated
when a television station's news report featured a videotape of his "entire
act." Id. at 563-64. The television station asserted that it should
be protected from liability by the freedom of speech and press clauses.
Id. at 566-67. Necessarily implicit in the Court's analysis of the first
amendment issue was this "given:" judicial enforcement of the
right of publicity granted under state law is government action for purposes
of a first amendment defense. Although the Court rejected the first amendment
defense in the factual context of Zacchini, the rejection was not on the
ground of lack of government action. Id. at 574-75, 578-79. The government
action in Zacchini was simply held not to violate the first amendment. Id.
381.
See id. at 573 (drawing analogy between right of publicity and forms of
intellectual property). For a discussion of the similarities between the
right of publicity and trademark rights, see supra notes 359-63 and accompanying
text.
382.
See Friedman v. Rogers, 440 U.S. 1, 12-16 (1979). Although the Court recognized
these first amendment concerns in Friedman, it concluded that a Texas statute
prohibiting optometrists from practicing their profession under a trade
name did not violate the first amendment because the statute was a proper
restriction of potentially misleading commercial speech. Id.; see also San
Francisco Arts & Athletics, Inc. [SFAA] v. United States Olympic Comm.,
483 U.S. 522, 535 & n.12, 536-41 (1987). Although the SFAA Court also
recognized that statutes establishing trademark rights may implicate first
amendment concerns, it concluded that section 110 of the Amateur Sports
Act of 1978, 36 U.S.C. s 380, did not violate the first amendment in granting
the U.S. Olympic Committee (USOC) an exclusive right to use the name "Olympic."
Id. at 526. The statute did not require USOC to prove likelihood of confusion
as a condition of enforcing its right against an alleged violator. Id. According
to the Court, the exclusive right granted by the statute was enforceable
primarily against commercial uses of the Olympic name and against only a
small number of arguably non-commercial uses. Id. at 535-41. The Court upheld
an injunction under the statute against a group (SFAA) that was using the
name "Gay Olympic Games" for an athletic event it sponsored. Id.
at 527-28. Some language in SFAA, if taken out of context, could give the
erroneous impression that the Supreme Court believes that judicial enforcement
of trademark rights is not government action for first amendment purposes.
When read in context, however, the language does not create that unfortunate
impression. Besides alleging unsuccessfully that the Amateur Sports Act's
grant of an exclusive right to USOC violated the first amendment, SFAA asserted
that USOC discriminatorily enforced its right and therefore violated the
equal protection clause of the fifth amendment. Id. at 542. The Court rejected
the equal protection claim because USOC was not a government actor and therefore
could not have violated the equal protection clause. Id. at 541-47. In its
equal protection analysis the Court observed: "Nor is the fact that
Congress has granted the USOC exclusive use of the word 'Olympic' dispositive.
All enforceable rights in trademarks are created by some governmental act,
usually pursuant to a statute or the common law. The actions of the trademark
owners nevertheless remain private." Id. at 544. The "actions"
contemplated by this language pertain only to SFAA's equal protection claim:
USOC's alleged actions in selectively picking and choosing the parties it
intended to sue to enforce its exclusive right. As the Court pointed out,
even if USOC did this, it would not violate the equal protection clause
because USOC was not the government. Id. at 542 n.22. The mere fact that
the government had given USOC an exclusive right did not mean that there
was government action involved in USOC's decisions about when and whether
to enforce its right. In other words, the government was not choosing when
and whether to enforce the exclusive right. USOC, a private party, was making
these decisions and taking the "actions" contemplated by the Court's
statement that "[t]he actions of the trademark owners nevertheless
remain private . . . ." Id. at 547. The Court only meant that USOC,
a private party, was making the decisions regarding enforcement of its right.
Id. at 544. The SFAA Court did not suggest that rights granted trademark
owners under trademark law, whether by statute or by common law, are devoid
of potential first amendment implications when a court enforces those rights.
Indeed, such a suggestion by the Court would have been fundamentally at
odds with the first amendment discussion earlier in the case, not to mention
with first amendment aspects of previous Supreme Court decisions. See Hustler
Magazine Inc. v. Falwell, 485 U.S. 46 (1988); Zacchini v. Scripps-Howard
Broadcasting Co., 433 U.S. 562 (1977); New York Times Co. v. Sullivan, 376
U.S. 254 (1964).
383.
See, e.g., Cliffs Notes, Inc., v. Bantam Doubleday Dell Publishing Group,
Inc., 886 F.2d 490 (2d Cir. 1989); Jordache Enters. v. Hogg Wyld, Ltd.,
828 F.2d 1482 (10th Cir. 1987); L.L. Bean, Inc. v. Drake Publishers, Inc.,
811 F.2d 26 (1st Cir.), append dismissed, cert. denied, 483 U.S. 1013 (1987).
Even in the Mutual of Omaha decision, where the court adopted an incorrect
first amendment analysis, the court nonetheless implicitly recognized that
government action was present. See Mutual of Omaha Ins. Co. v. Novak, 836
F.2d 397, 402-03 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988).
384.
The "adequate alternative avenues of communication" approach to
first amendment considerations employed in the earlier trademark parody
cases should also be spurned. For a discussion of that approach and its
deficiencies, see supra notes 298-314 and accompanying text.
385.
For a discussion of the distinction between commercial and noncommercial
speech, see supra notes 250-94 and accompanying text.
386.
This course was seemingly begun by the Court's decision in Posadas de P.R.
Associates v. Tourism Co., 478 U.S. 328 (1986), and continued by its decision
in Board of Trustees of the State University of N.Y. v. Fox, 109 S. Ct.
3028 (1989). For a discussion of these cases, see supra notes 274-94 and
accompanying text.
387.
See Hustler Magazine v. Falwell, 485 U.S. 46 (1988); Friedman v. Rogers,
440 U.S. 1 (1979). For a prior discussion of these cases, see supra notes
232-37, 382 and accompanying text.
388.
440 U.S.C. 1 (1979).
389.
Id. at 15-16.
390.
Id. at 11.
391.
Id. at 15-16. As noted above, misleading commercial speech receives no first
amendment protection. See Virginia State Bd. of Pharmacy v. Virginia Citizens
Consumer Council, Inc., 425 U.S. 748, 771-72 (1976).
392.
See, e.g., Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198
(D. Md. 1988) ("McSleep" as name of motel chain); Grey v. Campbell
Soup Co., 650 F. Supp. 1166 (C.D. Cal. 1986) ("Dogiva" as name
of dog biscuits), aff'd, 830 F.2d 197 (9th Cir. 1987); Universal City Studios,
Inc. v. Montgomery Ward & Co., 207 U.S.P.Q. (BNA) 852 (N.D. Ill. 1980)
("jaws" as names of garbage disposals).
393.
483 U.S. 522 (1987).
394.
Id. at 528-41; see s 110 of the Amateur Sports Act of 1978, 36 U.S.C. s
380 (1988).
395.
483 U.S. at 539-41.
396.
Id. For further discussion of SFAA, see supra note 382 and accompanying
text.
397.
483 U.S. at 539-40.
398.
See id. at 535-41.
399.
See Falwell, 485 U.S. at 51-56.
400.
Id. For further discussion of Falwell and its recognition that the offensiveness
of speech does not deprive the speech of first amendment protection, see
supra notes 232-37 and accompanying text.
401.
Political speech equivalents include speech on social, artistic, philosophical,
scientific and ethical matters, as well as statements about miscellaneous
matters of public concern. Abood v. Detroit Bd. of Educ., 431 U.S. 209,
231 (1977). See supra notes 223-31 and accompanying text.
402.
See Falwell, 485 U.S. at 51.
403.
Id. at 56-57. For a discussion of full first amendment protection, see supra
notes 224-25, 243-44 and accompanying text.
404.
See Board of Trustees of the State Univ. of N.Y. v. Fox, 109 S. Ct. 3028
(1989); Posados de P.R. Assocs. v. Tourism Co., 478 U.S. 328 (1986). These
decisions seem calculated and likely to decrease the already less-than-
full first amendment protection given to commercial speech. For a discussion
of these decisions, see supra notes 274-94 and accompanying text.
405.
For cases expressly or impliedly noting that noncommercial and commercial
uses of trademarks should be distinguished, see Cliffs Notes, 886 F.2d at
495; Mutual of Omaha, 836 F.2d at 402-03; L.L. Bean, 811 F.2d at 31-32.
See also 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); Girl Scouts of United States v. Personality
Posters Mfg. Co., 304 F. Supp. 1228, 1235 (S.D.N.Y. 1969); University of
Notre Dame v. Twentieth Century-Fox Film Corp., 22 A.D.2d 452, 457, 256
N.Y.S.2d 301, 306-07, aff'd mem., 15 N.Y.2d 940, 207 N.E.2d 508, 259 N.Y.S.2d
832 (1965).
406.
For a discussion of the analyses to be applied to a parody once it is classified
as commercial or noncommercial, see infra notes 448-90 and accompanying
text.
407.
Such speech effectively would be speech proposing a commercial transaction
and would therefore fit within the definition of commercial speech. See
supra note 256 and accompanying text.
408.
See, e.g., Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198
(D. Md. 1988) ("McSleep Inn"); McDonald's Corp. v. McBagel's,
Inc., 649 F. Supp. 1268 (S.D.N.Y. 1986) ("McBagel's" restaurant).
409. For a discussion
of Supreme Court cases reaffirming this principle, see supra note 257 and
accompanying text.
410.
See Falwell, 485 U.S. at 51-56.
411.
See Denicola, supra note 27, at 205; cf. Zacchini v. Scripps- Howard Broadcasting
Co., 433 U.S. 562, 578 (1977) (speech falling in entertainment classification
entitled to significant first amendment protection).
412.
See, e.g., Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60 (1983) (advertisements
for contraceptives constituted commercial speech because commercial characteristics
predominated over arguably noncommercial discussion of issues of public
concern). For further discussion of this case, see supra notes 270-73 and
accompanying text.
413.
For a discussion of cases parodying Anheuser-Busch's slogan, see supra note
47 and accompanying text.
414.
For a discussion of the suit filed by Jordache Enterprises, Inc. over the
defendant's use of the "Lardashe" name, see supra note 65 and
accompanying text.
415.
See Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y.
1977).
416.
For a discussion of these commercial parodies of the McDonald's name, see
supra notes 89-91 and accompanying text. The court's discussion in McBagel's
of past uses of McDonald's marks mentioned a use that would clearly be noncommercial,
however: a political cartoon, published during the Reagan presidency, of
a Reagan-like figure who was dressed in a Ronald McDonald-like clown outfit
and was posting the number 10 on the "McRonald's" sign next to
the words "million unemployed." McBagel's, 649 F. Supp. at 1272.
417.
For a discussion of Stop the Olympic Prison, see supra notes 73-78 and accompanying
text.
418.
For a discussion of Reddy, see supra notes 69-72 and accompanying text.
419.
See Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931 (D.D.C. 1985).
420.
For a discussion of Notre Dame, see supra notes 317-19 and accompanying
text. Although it is less clearly noncommercial, the movie in Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979)
could occupy this classification. One factor in Dallas Cowboys that arguably
renders the use of the plaintiff's trademark commercial, however, is the
false advertising aspect of the case. For discussion of that aspect of Dallas
Cowboys, see supra note 330 and accompanying text. Even if the movie was
predominantly noncommercial, the false advertisements concerning it should
have been actionable under s 43(a) of the Lanham Act since they were explicitly
misleading. Cf. Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (artistic
work's title may violate s 43(a) if title is explicitly misleading).
421.
For a discussion of these cases, see supra notes 160-62, 174-78 & 321-
37 (L.L. Bean), 81-83 & 168-69 (Pillsbury) and accompanying text. In
Pillsbury, the court seemed to recognize that the parody was noncommercial.
See Pillsbury, 215 U.S.P.Q. (BNA) 124, 131 (N.D. Ga. 1981). The court effectively
treated the parody as if it were commercial, however, by uncritically granting
relief on the dilution by tarnishment claim. Id. at 135. For a discussion
of Pillsbury's failure to make proper allowance for the noncommercial nature
of the parody, see infra notes 486-90 and accompanying text.
422.
For a discussion of Cliffs Notes, see supra notes 82-86, 364-73 and accompanying
text.
423.
See Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986).
424.
Cf. Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 63-68 (1983) (speech
that is predominantly commercial and only secondarily noncommercial should
be classified as commercial). For further discussion of commercial classifications,
see supra notes 407-16 and accompanying text.
425.
See, e.g., Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397 (8th Cir. 1987),
cert. denied, 488 U.S. 933 (1988); Universal City Studios, Inc. v. T-Shirt
Gallery, Ltd., 634 F. Supp. 1468 (S.D.N.Y. 1986); University City Studios,
Inc. v. Casey & Casey, Inc., 622 F. Supp. 201 (S.D. Fla. 1985).
426.
The shirt of course would have usefulness as an item of clothing regardless
of whether the parody appeared on it, but the presence of the parody on
a given shirt is clearly the reason the buyer purchases that shirt. Thus,
in substance, the parody is the item sold even when it is on an item of
clothing.
427.
For a discussion of the first principle, see supra notes 407-08 and accompanying
text.
428.
836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988).
429.
Id. at 402.
430.
Id. at 398.
431.
See id.; see also Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 907-08
(D. Neb. 1986) (district court opinion noting that defendant had various
designs). Nothing in the district court or Eighth Circuit opinions indicates
that the defendant was using his profits for the promotion of ideological
concerns, as opposed to pocketing those profits in the usual business sense.
In addition, there was no showing that the defendant had employed his designs
in ideological pamphlets or similar publications designed to persuade others
to adopt his viewpoint--the sort of thing a person primarily motivated by
expressive concerns might do.
432.
For a discussion, however, of whether the court was correct in the result
it reached in the case, see infra notes 451-52 and accompanying text.
433.
See Universal City Studios, Inc. v. T-Shirt Gallery, Ltd., 634 F. Supp.
1468 (S.D.N.Y. 1986); Universal City Studios, Inc. v. Casey & Casey,
Inc., 622 F. Supp. 201 (S.D. Fla. 1985). The same commercial classification
should be given to the "Genital Electric" t-shirts because of
the minimal degree of expression in comparison to the obvious commercial
nature of the defendant's operation. See General Elec. Co. v. Alumpa Coal
Co., 205 U.S.P.Q. (BNA) 1036 (D. Mass. 1979).
434.
See Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F. Supp. 785 (E.D.N.Y.
1983) (Petley Flea Bags); Original Appalachian Artworks, Inc. v. Topps Chewing
Gum, Inc., 642 F. Supp. 1031 (N.D. Ga. 1986) (Garbage Pail Kids).
435.
There should be no liability unless the trademark rights theory at issue
is established. See, e.g., Tetley, 556 F. Supp. at 792-93 (no liability
for trademark infringement because no likelihood of confusion). First amendment
considerations may also dictate a finding that the use, though commercial,
does not give rise to liability. See infra notes 448-68 and accompanying
text.
436.
For a discussion of this case, see supra note 86 and accompanying text.
437.
See id. Unlike the defendant in Mutual of Omaha, DOC also carried out its
advocacy in ideological literature. See DOC News and Views, supra note 86.
438.
See DOC News and Views, supra note 86.
439.
See Paulsen v. Personality Posters, Inc., 59 Misc. 2d 444, 299 N.Y.S.2d
501 (1968) (extending first amendment protection to producer of poster of
comedian running tongue-in-cheek campaign for presidency, even though producer
of poster did not have comedian's consent).
440.
See Girl Scouts of United States v. Personality Posters Mfg. Co., 304 F.
Supp. 1228 (S.D.N.Y. 1969) ("Be Prepared" poster); Coca-Cola v.
Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972) ("Enjoy Cocaine"
poster).
441.
The distinction between commercial and noncommercial speech is often narrow
in parody cases. For first amendment reasons, courts must therefore restrict
the operation of certain trademark rights theories. See infra notes 448-90
and accompanying text.
442.
See Girl Scouts, 304 F. Supp. at 1234-35. The poster in Girl Scouts merits
different treatment from that given the t-shirts and other items in Mutual
of Omaha because in the latter case, the defendant effectively had a "line"
of Mutant of Omaha merchandise. See supra note 431 and accompanying text.
Although the poster company admittedly had a profit motive, the Girl Scouts
poster was more of a one-time artistic expression. Additionally, a producer
of posters is closer to a traditional purveyor of artistic expression than
was the defendant in Mutual of Omaha.
443.
See Coca-Cola, 346 F. Supp. at 1189. In addition, the "Enjoy Cocaine"
poster reflected little use of the defendant's own artistry as it was an
almost exact reproduction of the trademark owner's script format for the
Coca-Cola name. See id.
444.
For discussion of the expressive value of trademark parodies, see supra
note 337 and accompanying text.
445.
The defendant in Coca-Cola had sold approximately 100,000 copies of the
poster, which was arguably in competition with Coca-Cola's attempts to "sell"
its trademark and image on clothing and various other items. Coca- Cola,
346 F. Supp. at 1189, 1190 & n.10.
446.
See L.L. Bean, 811 F.2d at 31-32.
447.
See Cliffs Notes, 886 F.2d at 493-97.
448.
For a discussion of misleading commercial speech and first amendment protection,
see supra notes 262, 265-66, 388-91 and accompanying text.
449.
When traditional trademark law imposes liability on a defendant whose commercial
use of the plaintiff's trademark has created a likelihood of confusion,
the result does not violate the first amendment. See San Francisco Arts
& Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 535
n.12 (1987); Denicola, supra note 27, at 159, 165-66.
450.
See supra notes 95-110 and accompanying text.
451.
For a discussion of Mutual of Omaha and Coca-Cola, see supra notes 92-94,
96-100, 312-32, 440-45 and accompanying text.
452.
See 2 J. MCCARTHY, supra note 1, s 23:1(C).
453.
For a discussion of the dilution theory, see supra notes 132-38 and accompanying
text.
454.
It should be noted here, however, that the misappropriation doctrine also
does not require proof of likelihood of confusion, and thus would seem an
additional threat to the first amendment rights of trademark parodists.
As previously noted, however, it is questionable whether the misappropriation
doctrine has a proper place in trademark law. See supra notes 189-97 and
accompanying text. Given the doctrine's already uncertain status in the
trademark realm, its nebulous nature and its potential for creating first
amendment difficulties in trademark rights litigation, this article urges
that courts refuse to allow trademark owners to assert misappropriation
as a separate and distinct theory. As for the small number of trademark
parody claims litigated on defamation and/or disparagement theories, the
first amendment interests of parodists (whether commercial or noncommercial)
are adequately protected by the existing constitutional treatment of those
torts. There is no need, therefore, to propose new requirements for such
causes of action. For a discussion of the constitutional aspects of defamation
and injurious falsehood law, see supra notes 203, 209 and accompanying text.
455. The absence of this "check" creates
a danger that nonmisleading speech will be subject to liability under a
dilution theory. Nonmisleading commercial speech, however, receives some
first amendment protection, and noncommercial speech, misleading or not,
receives full first amendment protection. See supra notes 223-30, 249-52,
262-66 and accompanying text.
456.
For discussion of the threat to first amendment rights in noncommercial
parody cases, see infra notes 472-73 and accompanying text.
457.
The parody challenged on dilution grounds is unlikely to cause confusion
because if it were likely to cause confusion, there would be liability on
an infringement theory and a dilution claim would be superfluous.
458.
For the formulation of this test, see Board of Trustees of the State University
of N.Y. v. Fox, 109 S. Ct. 3028, 3032-35 (1989) and Central Hudson Gas &
Electric Corp. v. Public Service Commissions, 447 U.S. 557, 566 (1980).
For a discussion of Fox and Central Hudson, see supra notes 263- 68, 282-94
and accompanying text.
459.
For a discussion of various trademark legislation, see supra notes 37- 183
and accompanying text.
460.
The relaxed approach employed by the Fox Court in evaluating commercial
speech restrictions would most likely result in a court sustaining the application
of an anti-dilution statute in this type of commercial parody case. Further,
in the commercial speech setting, the Supreme Court generally does not regard
injunctions against speech as raising prior restraint problems. See San
Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483
U.S. 522, 532-41 (1987).
461.
See Fox, 109 S. Ct. at 3035.
462.
For a discussion of isolated uses of trademarks and dilution by loss of
distinctiveness, see supra notes 154-63 and accompanying text.
463.
This "hypothetical" is hypothetical only in part. Kentucky Fried
Chicken advertisements of this sort were in fact televised, but there was
no legal action by McDonald's. See McCarthy, supra note 90.
464.
Hence, there would be no loss of distinctiveness, and, therefore, no dilution.
465.
For a discussion of how the presence of an unwholesome context is the key
factor for most courts finding dilution by tarnishment, see supra notes
166-79 and accompanying text.
466.
Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp.
1031 (N.D. Ga. 1986).
467.
See Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 55-56 (1988) (speech
does not lose protected character simply because offensive). Comparative
advertising is another example of commercial speech that may be offensive
to the party whose product is adversely compared by a competitor to the
competitor's product. The offensiveness is, however, likely to be unwelcome
because of ideas contained in the parody rather than because of an unwholesome
context. Dilution claims against such comparative advertising should thus
not be recognized even though the advertising may involve the use of a competitor's
trademark or a parodied version of the mark. See Denicola, supra note 27,
at 202.
468.
For a discussion of cases involving these unwholesome contexts, see supra
notes 168-77 and accompanying text.
469.
622 F. Supp. 931 (D.D.C. 1985).
470.
Id. at 933-36.
471.
For a discussion of these forms of noncommercial speech, see supra notes
226-30, 327-73, 405, 410-11 and accompanying text.
472.
See Cliffs Notes, 886 F.2d 490; Rogers, 875 F.2d 994. For a discussion of
Rogers and Cliffs Notes, see supra notes 338-73 and accompanying text.
473.
See, e.g., Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124
(N.D. Ga. 1981).
474.
See Friedman v. Rogers, 440 U.S. 1, 12-16 (1979).
475.
One would normally expect that the noncommercial context of the parody would
go a long way toward dispelling any likelihood of confusion. See Cliffs
Notes, 886 F.2d at 494-97.
476.
Rogers, 875 F.2d at 997, 1001 n.8.
477.
Id. at 999-1001.
478.
This uneven balancing requirement is necessary in light of the full first
amendment protection the noncommercial parodist is entitled to receive.
See id. at 999.
479.
See Cliffs Notes, 886 F.2d at 497 (reference to "strong" likelihood
of confusion). Although it appears that in using the word "strong,"
the Cliffs Notes court was not necessarily intending to adopt "strong
likelihood of confusion" as the governing standard, this article urges
that such a gloss be imposed on the ordinary trademark infringement and
s 43(a) standard when the defendant's speech is predominantly noncommercial.
Application of this proposed standard would help make proper allowance for
the longstanding notion that if speech is noncommercial, its possible misleading
character is not by itself a reason for the speaker to lose the first amendment
protection he or she would otherwise obtain.
480.
For a discussion of the constitutional scrutiny applied to restrictions
on noncommercial speech, see supra notes 243-44 and accompanying text.
481.
In Dallas Cowboys, the district court expressly found dilution by loss of
distinctiveness. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd.,
467 F. Supp. 366, 377 (S.D.N.Y.), aff'd, 604 F.2d 200 (2d Cir. 1979). The
Second Circuit also stated that the plaintiff was entitled to prevail under
the anti-dilution statute, but did not specify which type of dilution it
was applying. Dallas Cowboys, 604 F.2d at 205 n.8.
482.
See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 32-33, appeal
dismissed, cert. denied, 483 U.S. 1013 (1987).
483.
See Denicola, supra note 27, at 202-05.
484.
For a review of the basic facts of this case, see supra note 86.
485.
For a discussion of this and other first amendment requirements, see supra
notes 220-48, 263-94, 321-73 and accompanying text.
486.
For a discussion of these cases, see supra notes 168-69 (Pillsbury), 101-10,
302-10 (Dallas Cowboys) and accompanying text.
487.
this is not to say, however, that speech must be profound and full of meaningful
ideas in order to merit the first amendment protection accorded noncommercial
speech. (If that were a necessary criterion, much of what is uttered by
political candidates during the course of election campaigns would not qualify
for protection.) No such requirement exists, as sensibly recognized by the
L.L. Bean court. See L.L. Bean, 811 F.2d at 34. For a discussion of this
aspect of L.L. Bean, see supra note 330 and accompanying text. Nevertheless,
noncommercial speech expressing a minimal level of ideas may be somewhat
more vulnerable to a dilution by tarnishment claim if stated in an unwholesome
context, because the supposed tarnishment is less likely to result from
the minimal ideas contained in the expression.
488.
The Pillsbury and Dallas Cowboys cases are notable examples.
489.
Such a ruling is constitutionally inadequate because the noncommercial parodist
obtains substantial first amendment protection regardless of whether there
is a wealth of ideas expressed in the parody. See supra note 478 and accompanying
text.
490.
It would seem unlikely that most persons who choose to read adult magazines
would hold less respect for a company's trademark after it has appeared
without the trademark owner's consent in such a publication. If anything,
these readers' regard for the trademark might be increased. Courts, therefore,
should not ignore reality in deciding these cases when first amendment interests
are at stake.