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.