To dissenting opinion
WILKINSON, Circuit Judge:
In this case, plaintiff Anheuser-Busch sued defendants for selling souvenir
T-shirts that plaintiff claimed infringed its Budweiser beer trademarks.
The jury returned a verdict in favor of defendants, finding that defendants'
T-shirt design did not create a likelihood of consumer confusion, but the
district judge granted plaintiff's motion for judgment notwithstanding the
verdict. We reverse. The record reveals sufficient differences between
the T-shirt design and plaintiff's trademarks to permit the jury to conclude
that consumer confusion was unlikely. Accordingly, we think the district
judge improperly substituted his judgment as to likelihood of confusion
for that of the jury, and we remand with instructions to reinstate the jury
verdict in favor of defendants.
In 1987, Michael Berard was a student at the University of North Carolina
at Chapel Hill. In order to supplement his income, Berard decided to go
into the business of designing and selling T-shirts. During 1987, Berard
devised a T- shirt design that he planned to sell as a souvenir of Myrtle
Beach. That design depicted a beer can with a red, white and blue label.
The words on the can did not refer to beer, however, but only to Myrtle
Beach.
In 1988, Berard incorporated Venture Marketing, Inc., (Venture) in order
to manufacture and wholesale his T-shirts. Venture marketed the Myrtle
Beach T- shirts through L & L Wings, Inc., (Wings) which operates a
number of retail beach stores at Myrtle Beach, South Carolina and at other
beaches. Wings purchased over 20,000 shirts from Venture. [FN1]
In 1989 Anheuser-Busch, Inc., brought this trademark infringement action
against Venture and Wings. Anheuser-Busch alleged that the T-shirt design
was confusingly similar to the Budweiser beer label, a registered trademark
which Anheuser-Busch had used on its own line of T-shirts and other apparel.
Anheuser-Busch complained that the Myrtle Beach T-shirt infringed its trademarks
because consumers were likely to believe the T-shirt was sold or sponsored
by Anheuser-Busch. The case was tried before a jury for three days, and
the jury returned a verdict in favor of the defendants. Anheuser-Busch
filed a motion for j.n.o.v. or, in the alternative, for a new trial. After
briefing and argument, the district judge granted the j.n.o.v. motion, holding
that the evidence before the jury permitted only one reasonable conclusion:
that the T-shirt created a likelihood of confusion and thus infringed Anheuser-
Busch's trademarks. Accordingly, the district court entered judgment on
the question of liability in favor of Anheuser-Busch, and took the motion
for a new trial under advisement pending appeal. Venture and Wings then
brought this appeal.
Under the Lanham Act, a registered trademark holder has a right to
prevent another's use of a trademark that is "likely to cause confusion,
or to cause mistake, or to deceive." 15 U.S.C. s 1114(1)(a). See
Shell Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104, 108 (4th Cir.1991).
In other words, an unauthorized use of a trademark infringes the trademark
holder's rights if it is likely to confuse an "ordinary consumer"
as to the source or sponsorship of the goods. Ford Motor Co. v. Summit
Motor Products, Inc., 930 F.2d 277, 293 (3d Cir.1991); 2 J. McCarthy, Trademarks
and Unfair Competition s 23:28 (1984). This pivotal trademark issue is
particularly amenable to resolution by a jury for two reasons. First, the
jury, which represents a cross-section of consumers, is well-suited to evaluating
whether an "ordinary consumer" would likely be confused. Second,
the likelihood of consumer confusion is an "inherently factual"
issue that depends on the unique facts and circumstances of each case.
Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 n. 5 (9th
Cir.1985). Likelihood of confusion is "frequently a fairly disputed
issue of fact on which reasonable minds may differ," Warner Bros.,
Inc. v. American Broadcasting Cos., 720 F.2d 231, 246 (2d Cir.1983), and
has long been recognized to be "a matter of varying human reactions
to situations incapable of exact appraisement." Colburn v. Puritan
Mills, Inc., 108 F.2d 377, 378 (7th Cir.1939).
A district judge may overturn a jury verdict on a motion for j.n.o.v.
only if "there is no legally sufficient evidentiary basis for a reasonable
jury to have found for [the prevailing] party." Fed.R.Civ.P. 50(a)(1).
In making this determination, the judge is not to weigh the evidence or
appraise the credibility of witnesses, but must view the evidence in the
light most favorable to the non-moving party and draw legitimate inferences
in its favor. Mays v. Pioneer Lumber Corp., 502 F.2d 106, 107 (4th Cir.1974).
Our review of the district court's action is de novo. Here we believe the
district judge improperly assumed the jury's role of determining whether
an ordinary consumer would likely be confused by the T-shirt, and we reverse
the court's entry of j.n.o.v.
The jury was entitled to conclude that consumer confusion was unlikely
based on a number of conspicuous differences between the T-shirt design
and the Budweiser label. First, the T-shirt design makes no reference of
any sort to Anheuser-Busch or Budweiser. By contrast, the Budweiser label
displays a number of prominent indications of the product's source or sponsor:
the name "Budweiser" flanked on either side by the word "genuine";
the geographic designation "Anheuser-Busch, Inc., St. Louis, Mo.";
the letters "AB" for Anheuser-Busch; and the Anheuser-Busch
trademark depicting an eagle in the middle of the letter "A."
With respect to all of these, the T-shirt design either omits them entirely
or replaces them with references to the beach. The T-shirt design replaces
the Budweiser name with the words "Myrtle Beach"; substitutes
the words "Myrtle Beach, S.C." for "Anheuser-Busch, Inc.,
St. Louis, Mo."; and replaces the letters "AB" with "SC."
In addition, the T- shirt eliminates the Anheuser- Busch trademark "A"
and omits the word "genuine."
Second, the T-shirt replaces the Budweiser label's descriptions of the
beer with analogous language descriptive of the beach. The Budweiser label
reads as follows: This is the famous Budweiser beer. We know of no brand
produced by any other brewer which costs so much to brew and age. Our exclusive
Beechwood Aging produces a taste, a smoothness, and a drinkability you will
find in no other beer at any price. On the Venture Marketing T-shirt design,
these sentences are replaced with a description of the beach: This is the
famous beach of Myrtle Beach, S.C. We know of no other resort in any state
which lays claim to such a rich history. The unspoiled beaches, natural
beauty, and southern hospitality compose a mixture you will find on no other
beach in any state. Similarly, the descriptive words at the bottom of the
Budweiser label-- announcing that the beer is "Brewed by our original
process from the Choicest Hops, Rice and Best Barley Malt"--are replaced
in the T-shirt design with words proclaiming that "Myrtle Beach contains
the Choicest Surf, Sun, and Sand."
Third, the T-shirt design incorporates its own beach slogans in place of
the Budweiser beer slogans. The Budweiser label includes the slogan "King
of Beers" under the Budweiser name. On the T-shirt, this is replaced
with the words "King of Beaches." In addition, the T-shirt mimics
another Budweiser slogan, "This Bud's for You," with its own slogan,
"This Beach is for You."
Together, we think these differences are sufficient at least to create
a reasonable jury question on the issue of likelihood of confusion. The
jury had the opportunity to visually examine the T-shirt and to compare
it with the Anheuser-Busch trademarks. We cannot say that the jury's conclusion
was the only one it could have reached, but neither are we able to say that
its verdict was unreasonable. In this regard, our dissenting brother faithfully
presents Anheuser-Busch's side of the jury argument. To believe that the
jury should have heard this argument is not to say that the jury was required
to accept it.
Anheuser-Busch suggests two reasons why we should disregard the jury
verdict in this case. First, it contends that a judgment in its favor was
compelled because the T-shirt incorporated a beer label design that intentionally
imitated the non-verbal portion of the Budweiser label. At trial, Michael
Berard admitted that he had patterned the T-shirt's beer label after the
basic Budweiser format, and it is undisputed that he was successful in that
endeavor. In Anheuser-Busch's view, this similarity of format by itself
infringes its registered trademark in the Budweiser beer label design.
We disagree. Anheuser-Busch would have us isolate the non-verbal portion
of the T-shirt design, while ignoring the substantial verbal differences
that set it apart from the Budweiser label. Under the Lanham Act, however,
a holder of a registered trademark is entitled to protection only from uses
of the mark that create a likelihood of consumer confusion. 15 U.S.C. s
1114(1)(a). The statutory standard for infringement does not depend on how
closely a fragment of a given use duplicates the trademark, but on whether
the use in its entirety creates a likelihood of confusion. In making that
determination, we must examine the allegedly infringing use in the context
in which it is seen by the ordinary consumer; we must look not only at
the portion of the T-shirt that duplicates the Budweiser label design, but
at the T-shirt as a whole as sold in the marketplace. See Homeowners Group,
Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1109 (6th Cir.1991);
Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007 (C.C.P.A.1981).
The jury examined the T-shirt as a whole and reasonably concluded that
consumer confusion was unlikely.
Second, Anheuser-Busch argues that the jury verdict must be overturned
because there was insufficient evidence to support it under the factors
announced in Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984).
In that case, this court identified seven factors that have been considered
in determining whether there is a likelihood of confusion: the strength
of the plaintiff's mark, the degree of similarity between the two marks,
the similarity of the goods they identify, the similarity of the facilities
used in the businesses, the similarity of the advertising, the defendant's
intent, and the presence of actual confusion. Id. The district judge evaluated
the evidence presented to the jury under these seven factors, and found
that although there was no evidence of actual confusion, other factors favored
the plaintiff: plaintiff's trademarks were unquestionably strong, the T-shirt
design was similar to the Budweiser label, the goods the marks identify
were identical, and the facilities and advertising used by the parties were
similar.
We believe, however, that the district judge misconstrued the nature of
the Pizzeria Uno factors in overturning the jury's verdict. The "factors"
announced in Pizzeria Uno are not meant to be a "rigid formula"
for infringement. Murphy v. Provident Mut. Life Ins. Co., 923 F.2d 923,
928 (2d Cir.1990). See also Lois Sportswear, U.S.A., Inc. v. Levi Strauss
& Co., 799 F.2d 867, 872 (2d Cir.1986). Rather, the Pizzeria Uno factors
are only a guide--a catalog of various considerations that may be relevant
in determining the ultimate statutory question of likelihood of confusion.
As this circuit recognized in Pizzeria Uno, not all of the factors are
of equal importance, nor are they always relevant in any given case. 747
F.2d at 1527.
In this case, we think the jury was entitled to give decisive weight to
the predominant differences between the T-shirt design and the Budweiser
label. Where there is no evidence of actual confusion and a jury reasonably
concludes that there is no likelihood of confusion because of the differences
between the marks, consideration of the remaining Pizzeria Uno factors is
unnecessary. We recognize, of course, that the likelihood of consumer confusion
may be affected not only by the intrinsic similarity of two trademarks,
but also by certain extrinsic factors such as the strength of the plaintiff's
mark and the similarity of the products, sales outlets, and advertising.
At the same time, however, these extrinsic factors are insufficient by
themselves to establish likelihood of confusion absent some threshold of
intrinsic similarity between the plaintiff's trademark and the defendant's
alleged infringement. Sun-Fun Products, Inc. v. Suntan Research & Development,
Inc., 656 F.2d 186, 189 (5th Cir.1981). The Lanham Act was obviously not
intended to create a barrier to competition by preventing the use of distinguishable
trademarks to market similar goods through identical channels. See Anti-Monopoly,
Inc. v. General Mills Fun Group, 611 F.2d 296, 300-01 (9th Cir.1979) (trademarks
are designed to protect consumers from being misled, not to "further
or perpetuate product monopolies"). Indeed, the marketing of commodities
would be impaired if these external factors were assigned controlling weight
in cases where the subject trademarks are readily distinguishable. In this
case, the extrinsic factors--including the fact that the T-shirt competed
with Anheuser-Busch's own product line--were appropriate for the jury to
consider. We think, however, that there were sufficient intrinsic differences
between the T-shirt and the Anheuser-Busch trademarks to permit a reasonable
jury to find that consumer confusion was unlikely irrespective of the evidence
under those extrinsic considerations.
In short, the most important factor in this particular case was whether
plaintiff's mark and defendant's T-shirt design looked alike in the eyes
of the ordinary consumer. We think the jury was uniquely positioned to
make the critical determination in that regard.
At trial, Michael Berard testified that his intent in creating the
T-shirt design was to parody the Budweiser beer label. The crux of his
defense was that the T-shirt--as parody--was especially unlikely to create
confusion in the minds of ordinary consumers. We think that a reasonable
jury could find that the T-shirt was readily recognizable as parody, and
that such a finding provides additional support for the jury's verdict.
Anheuser-Busch, however, insists that appellants' T-shirt design has no
element of parody because its purpose was to make money and not to make
any commentary about Budweiser beer. We disagree. The T-shirt design fits
a conventional definition of trademark parody--it is "a simple form
of entertainment conveyed by juxtaposing the irreverent representation of
the trademark with the idealized image created by the mark's owner."
L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir.1987).
The T-shirt design mimics the characteristic turns of phrase on the Budweiser
label by applying them to the beach: the "taste," "smoothness,"
and "drinkability" found "in no other beer at any price"
become the "unspoiled beaches, natural beauty, and southern hospitality"
composing a "mixture you will find on no other beach in any state";
the beer's ingredients--the "Choicest Hops, Rice and Best Barley Malt"--are
imitated by the "Choicest Surf, Sun, and Sand"; "King of
Beers" is changed to "King of Beaches"; and "This Bud's
For You" is mimicked by "This Beach is For You." Berard
testified that this "irreverent representation" was calculated
to parody or satirize the Budweiser label, and we think the jury was entitled
to agree that it had that effect. [FN2]
The district court unfortunately ignored the issue of parody in evaluating
the sufficiency of the evidence to support the jury's verdict. In so doing,
the judge failed to recognize that the multi-factored inquiry under Pizzeria
Uno "is at best awkward in the context of parody." Cliffs Notes,
886 F.2d at 495 n. 3. Outside the context of parody, for example, intentional
similarities between trademarks may lead to a presumption of a likelihood
of confusion. Osem Food Industries Ltd. v. Sherwood Foods, Inc., 917 F.2d
161, 164-65 (4th Cir.1990). In cases of parody, however, courts have concluded
that intentional similarity is unavoidable: "[T]he keystone of parody
is imitation. It is hard to imagine, for example, a successful parody of
Time magazine that did not reproduce Time's trademarked red border."
Cliffs Notes, 886 F.2d at 494. See also Jordache Enterprises, Inc. v.
Hogg Wyld, Ltd., 828 F.2d 1482, 1485 (10th Cir.1987).
Courts have further recognized that although parody necessarily evokes
the original trademark, effective parody also diminishes any risk of consumer
confusion. See Jordache, 828 F.2d at 1486; Universal City Studios, Inc.
v. Nintendo Co., 746 F.2d 112, 116 (2d Cir.1984). Successful trademark
takeoffs dispel consumer confusion by conveying just enough of the original
design to allow the consumer to appreciate the point of the parody. Cliffs
Notes, 886 F.2d at 494. Here the T-shirt necessarily adopts the basic format
of the Budweiser label, but we think the similarities merely convey the
message that the T-shirt is a parody of the original, and are not indicative
of consumer confusion. The substantial differences detailed above would
at least permit a jury to conclude that the T-shirt design was nothing more
than a commentary on the pleasures of beach life that effectively parodied
the Budweiser label but could hardly be confused with it.
Anheuser-Busch would also have us give substantial weight to defendants'
intent to draw on the "commercial magnetism" of the Budweiser
label. It is true that appellants' primary motive in creating the T-shirt
design was to make a profit, but the relevant intent in trademark cases
is not merely an intent to profit, which would condemn all commercial parody,
but an "intent to confuse the buying public." Pizzeria Uno, 747
F.2d at 1535. Ordinarily, an intent to profit from the original is the
same thing as an intent to confuse--the infringer benefits only if consumers
confuse his trademark with the original. But that equation does not hold
in the context of parody. An alleged infringer may intend to benefit from
the original trademark without ever intending or causing consumer confusion:
In one sense, a parody is an attempt "to derive benefit from the reputation"
of the owner of the mark, if only because no parody could be made without
the initial mark. The benefit to the one making the parody, however, arises
from the humorous association, not from public confusion as to the source
of the marks. A parody relies upon a difference from the original mark,
presumably a humorous difference, in order to produce its desired effect.
Jordache, 828 F.2d at 1486, quoting Sicilia Di R. Biebow & Co. v. Cox,
732 F.2d 417, 431 (5th Cir.1984).
An intent to parody, then, is an intent to benefit from the original trademark,
but such an intent is not necessarily probative of a likelihood of consumer
confusion. We cannot assume that the commercial success of the Myrtle Beach
T-shirt resulted from consumer confusion; consumers may have been moved
to buy the T-shirt by the simple fact that they were amused by the cleverness
of its design.
Throughout this litigation, Anheuser-Busch has invited the court to place
dispositive weight upon factors which are at best proxies for the ultimate
statutory standard--whether the T-shirt is "likely to cause confusion."
15 U.S.C. s 1114(1)(a). Similarity of format and intent to profit, however,
are not precise equivalents of the dispositive statutory language. The
jury was entitled to find that the statutory standard did not condemn appellants'
humorous takeoff on the Budweiser label. The purpose of the Lanham Act
is to eliminate consumer confusion, not to banish all attempts at poking
fun or eliciting amusement. Elsmere Music, Inc. v. National Broadcasting
Co., 623 F.2d 252, 253 (2d Cir.1980). The statute is designed to protect
consumers from product misinformation, not to deprive the commercial world
of all humor and levity. In this case, the ordinary consumers who served
as jurors reasonably concluded that the T-shirt eliminated any risk of confusion,
and we refuse to interfere with that verdict.
Our dissenting brother's standard is so broad that it would banish virtually
all attempts at humorous takeoffs on trademarks as a matter of law. The
dissent would establish a zone of immunity for any trademark that could
lay claim to strength and familiarity--the very marks for which parody is
most likely. Its view is that almost any imitation of design, no matter
how humorous or distinct the accompanying lyrics or verbiage, will run afoul
of the Lanham Act. We think the evident tensions in the trademark field
between commercial piracy and discouragement of competition, as well as
between permissible parody and impermissible imitation, are often best resolved
by a jury on a case-by-case basis. The balance established by the Lanham
Act risks serious disturbance when courts too readily assume the roles of
ordinary consumers and interpose sweeping pronouncements of law.
In sum, this was a jury verdict that should have been sustained. We thus
reverse the district court's entry of j.n.o.v. and instruct it to reinstate
the jury verdict. [FN3]
REVERSED.
----------
POWELL, Associate Justice, dissenting:
The issue presented in this case is whether defendants' T-shirts infringe
federally registered trademarks owned by Anheuser-Busch. A jury found no
infringement. But the district court, finding insufficient evidence to
support the jury's decision, entered judgment notwithstanding the verdict.
The court today reverses, reinstating the jury verdict.
The court rests its decision on three related grounds: (i) the jury's
finding of no likelihood of confusion is supported by differences between
defendants' T-shirt design and the Budweiser label; (ii) defendants' T-shirt
design withstands scrutiny under Pizzeria Uno Corp. v. Temple, 747 F.2d
1522 (4th Cir.1984); and (iii) defendants' parody defense also supports
the verdict. I disagree with this assessment of the evidence and in certain
respects with the characterization of the law that precedes it. [FN1]
Few can disclaim familiarity with the Budweiser label design. [FN2] It has been used
by Anheuser-Busch as a trademark on beer cans since 1876 and on clothing
since 1967. It has been the subject of extensive advertising. And it has
been used to market several thousand products, including T-shirts sold in
seaside stores. In short, it is, as the district court observed, "one
of the strongest marks in this country, indeed in the world."
Not surprisingly, defendants concede that the strength of the trademark,
the "paramount" consideration in the seven-factor analysis, Pizzeria
Uno, 747 F.2d at 1527, favors Anheuser-Busch. Defendants further admit
that three other factors support Anheuser-Busch's claim: (a) the similarity
of the parties' goods (T-shirts), [FN3]
(b) the similarity of the outlets where such goods are sold (beach-front
stores), and (c) the similarity of the parties' advertising.
That leaves a trio of considerations to support the jury verdict in favor
of defendants--actual confusion, defendants' intent, and design similarities.
I will consider each in turn.
Agreeing with the district court, the court in this case finds no proof
of actual confusion between the Budweiser label design and defendants' T-shirt.
That is a mistaken view. Anheuser-Busch did present evidence of actual
confusion. Michael Kroshinsky, one of defendant Wings' wholesale purchasers,
testified that his initial reaction to the T-shirt was that it "was
a copy of a Budweiser shirt." Such proof is "substantial evidence"
of likely confusion, AMP Inc. v. Foy, 540 F.2d 1181, 1186 (4th Cir.1976),
particularly when it is a professional buyer who has been confused. This
consideration thus also helps Anheuser-Busch. [FN4]
There also was evidence of intentional copying. Michael Berard, the founder
of Venture Marketing and the designer of defendants' T-shirt, admitted that
he intended to copy the Budweiser label design. This evidence creates a
presumption of likelihood of confusion. Osem Food Indus., Ltd. v. Sherwood
Foods, Inc., 917 F.2d 161, 165 (4th Cir.1990). The court does not discuss
this factor in its application of Pizzeria Uno. Instead, in Part IV of
the opinion, it suggests that an exception to the presumption should apply
when a defendant asserts that he intended to parody a particular trademark.
I am not persuaded that such an exception is applicable here. It is true
that parody requires a degree of imitation. But the burden of disproving
infringement should rest on one who intentionally uses another's trademark--even
as parody. If the parody is strong, the burden will be light. If it is
not, then a heavy burden is appropriate since the junior user is likely
to benefit from its continuing affiliation with the "drawing power,"
Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203,
205, 62 S.Ct. 1022, 1024, 86 L.Ed. 1381 (1942), of the senior user's mark.
In short, I would not jettison this presumption in the parody context,
and would find that this consideration favors Anheuser-Busch.
The court today relies, as it must, on the final factor--the similarity between the senior user's mark and the junior user's design. It gives "decisive weight" to the "predominant differences" between the T-shirt design and Anheuser-Busch's mark. In emphasizing this consideration, the court extends precedent and ignores the facts of this case.
To be sure, the court is correct in the abstract: that is, design differences can be determinative. "[S]ome threshold of intrinsic similarity" between marks is required before the "extrinsic" factors come into play. But I know of no precedent that allows conclusive weight to be given to this factor when a party has borrowed a distinctive mark, without making any discernible changes to it, and placed that mark on identical products marketed through identical commercial channels.
Even if as a legal matter the Pizzeria Uno analysis could be configured
in such a manner, the evidentiary foundation for such an analysis is lacking
here. [FN5] In
the court's view, what sustains the imitation are the words added to the
Budweiser design. These words dispel confusion, the court maintains, in
two ways: (i) the words are different from the language ordinarily appearing
on a Budweiser beer can (i.e., "Myrtle Beach" is substituted for
"Budweiser") and (ii) the words parody the Budweiser slogans and
beer can (i.e., "This Beach Is For You" is substituted for "This
Bud Is For You"). Neither argument is persuasive.
The court begins its "different words" analysis by emphasizing
that defendants' T-shirt design makes "no reference of any sort to
Anheuser-Busch or Budweiser." That by itself is of no importance.
It is enough that the T-shirt adopts the Budweiser label design. This
symbol needs no verbal cue to call Budweiser to mind. The symbol characterizes
the name as much as the name does the symbol. It also is a separately registered
trademark. For that reason, T- shirts bearing the non-verbal Budweiser
label design, and nothing more, would infringe Anheuser-Busch's trademark.
True, defendants did not simply refrain from mentioning Budweiser or Anheuser-
Busch by name; they also added language descriptive of the beach. Putting
aside consideration of this language as a matter of parody, I suggest that
the added words still fail to eliminate the connection to Anheuser-Busch
that follows from use of the Budweiser label. First, the subject matter
of the substituted words is not foreign to Anheuser-Busch, Budweiser, or
even to beer. To the contrary, the "beach" is a familiar theme
in Budweiser advertisements. Second, the substituted words do not rid the
T-shirt of a Budweiser connection. Neither "Myrtle Beach," which
is a location not a company name, nor any of the other words establishes
that a corporation other than Anheuser-Busch sponsors the T-shirt. Anheuser-Busch
in fact has used its label frequently to endorse non-beer items. [FN6] Nor does the fine-print
reference to "Venture Marketing, Inc." tend to eliminate confusion.
Anheuser- Busch requires its licensees' names to appear on their products.
That brings me to the question of parody. [FN7]
Parody is not an affirmative defense to an infringement claim.
Rather, it is merely a way of phrasing the argument that confusion is unlikely.
Because the purpose of trademark law is to protect the public from confusion,
it would make no sense to say that a "parody" which is likely
to confuse is permitted merely because it is a "parody." 2 McCarthy,
Trademarks and Unfair Competition, s 31:38, at 671 (2d ed. 1984). In this
instance, the "parody" does little to prevent consumer confusion
as to the sponsor of defendants' T-shirt. It does not ridicule Budweiser
or offer social commentary on the evils of alcohol. [FN8]
Nor could it be deemed "so obvious and heavy handed that a clear distinction
was preserved in the viewer's mind between the source of the actual product
and the source of the parody." Mutual of Omaha Ins. Co. v. Novak, 648
F.Supp. 905, 910 (D.Neb.1986), aff'd, 836 F.2d 397 (8th Cir.1987), cert.
denied, 488 U.S. 933, 109 S.Ct. 326, 102 L.Ed.2d 344 (1988).
All that it does is play on the words of the Budweiser label, adopting
a theme (the beach) and a method (humor) that is fully consistent with Anheuser-
Busch's marketing efforts. See Cliffs Notes, 886 F.2d at 494 (requiring
two marks to send "contradictory" "messages"). Moreover,
since the attempted parody does not dissociate defendants' T-shirt from
Anheuser-Busch's products, consumers will be just as likely to buy the T-shirt
because of its continuing affiliation with Anheuser-Busch as because of
its humor. That danger is particularly acute here since Anheuser-Busch
and defendants compete in the same market. The parody here thus amounts
to nothing more than a "merchandising short-cut," S.S. Kresge
Co., 316 U.S. at 205, 62 S.Ct. at 1024. I conclude that the parody defense
falls far short of supporting the verdict.
* * * * * *
I agree with the district court that defendants' use of the Budweiser label
design in the manner depicted in the Appendix establishes infringement as
a matter of law.
I respectfully dissent.
FN1. Venture subsequently
marketed a series of T-shirts that incorporated the same beer can design
as the Myrtle Beach T-shirts, but that substituted the names of other beaches
for Myrtle Beach. Those T-shirts are at issue in this case as well, but
for the sake of simplicity we refer here only to the Myrtle Beach T-shirt.
FN2. Some courts
have held that trademark parody is entitled to First Amendment protection.
See Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Group, Inc., 886 F.2d
490, 493 (2d Cir.1989); L.L. Bean, 811 F.2d at 33-34. Given our decision
to reinstate the jury verdict under the statutory standard, however, we
have no occasion to reach defendants' contention that the First Amendment
provides an independent basis for ruling in their favor.
FN3. The district
court held under advisement appellee's motion for a new trial, and in so
doing contravened the express mandate of Rule 50 of the Federal Rules of
Civil Procedure. When alternative motions for j.n.o.v. and for a new trial
are made, Rule 50(c)(1) requires that the district court rule on both of
them. The policy behind this directive is clear: "If the court grants
judgment notwithstanding the verdict and fails to act on the alternative
motion for a new trial, litigation will be needlessly protracted should
the appellate court find that the grant of judgment was erroneous."
9 C. Wright & A. Miller, Federal Practice and Procedure s 2539, at
610 (1971). In order to avoid such protracted litigation, this circuit
has permitted the appellate dismissal of new trial motions in cases where
the district judge failed to comply with the Rule 50(c) requirement to rule
on the motion. Mays v. Pioneer Lumber Corp., 502 F.2d 106, 110 (4th Cir.1974).
In Mays, this court reversed the district court's entry of j.n.o.v. and
instructed the district court to reinstate the jury verdict based on its
conclusion that "no useful purpose would be served by remanding."
Id. We think the course prescribed in Mays is appropriate here. We see
no purpose in remanding where our grounds for reinstating the jury verdict
necessarily comprehend the essence of appellee's new trial motion. The
evident thrust of both parties' arguments is that either judgment is warranted
for Anheuser-Busch as a matter of law, or that the jury verdict should be
upheld. For the reasons noted above, the verdict of the jury was not contrary
to the clear weight of the evidence and the instructions under which the
case was submitted were in their totality unexceptionable. The trial ran
for three days and both parties had every opportunity to place their case
before the factfinder. A new trial here would therefore not be warranted,
and the case against defendants must be dismissed.
FN1. I doubt that
the likelihood-of-confusion determination is any more "amenable to
resolution by a jury," as the court suggests, than other questions
of fact. It may be less so. Some courts of appeals have concluded that
this determination is a legal one. See Cliffs Notes, Inc. v. Bantam Doubleday
Dell Pub. Group, Inc., 886 F.2d 490, 495 (2d Cir.1989); Wynn Oil Co. v.
Thomas, 839 F.2d 1183, 1186 (6th Cir.1988). Although this circuit has said
that the question is factual, see Durox Co. v. Duron Paint Mfg Co., 320
F.2d 882, 884 (4th Cir.1963), there is no reason to conclude that the jury's
resolution deserves special deference.
FN2. At issue
primarily is defendants' use of the non-verbal Budweiser label design, a
separately registered trademark. Other protected marks also adorn Anheuser-Busch
products, such as the trade name itself, "Budweiser," which defendants
have not appropriated, and a variety of slogans (i.e., "This Bud's
For You," "The King of Beers"), which defendants allegedly
also have appropriated. My focus is on defendants' infringement of the
label design.
FN3. This concession
also is significant. The similarity of products suggests not only that
Anheuser-Busch may lose revenue for each sale by defendants but also, and
perhaps more importantly, that a likelihood of confusion is apt to follow.
Cf. Yale Electric Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir.1928) ("unless
the borrower's use is so foreign to the owner's as to insure against any
identification of the two, it is unlawful").
FN4. The argument
that Mr. Kroshinsky's testimony is not indicative of actual confusion is
unpersuasive. Moreover, this argument does not present an obstacle to Anheuser-Busch's
claim. The Lanham Act affords protection if confusion is "likely."
Trademark owners may invoke the statute--and prevail under it--without
establishing actual confusion. Shell Oil Co. v. Commercial Petroleum, Inc.,
928 F.2d 104, 108 (4th Cir.1991).
FN5. Notably,
Venture Marketing, the defendant responsible for producing the T-shirt design,
conceded that this factor favored Anheuser-Busch during oral argument on
the motion for judgment notwithstanding the verdict.
FN6. For example,
Anheuser-Busch has produced a T-shirt bearing the Budweiser label, the words
"Trap Skeet," and a drawing of shotgun shells and skeet. It has
also used the label in promotions affiliated with various geographical sites.
FN7. Parody is
(i) "[a] literary or artistic work that broadly mimics an author's
characteristic style and holds it up to ridicule" and (ii) "[a]
performance so bad as to be equivalent to intentional mockery." The
American Heritage Dictionary of the English Language, at 954 (1976).
FN8. Only parody
in this "editorial or artistic" sense serves sufficiently strong
First Amendment values to override government interests in trademark protection.
See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 32-33 (1st
Cir.1987). Such would be the case, for instance, if Mothers Against Drunk
Driving marketed T-shirts bearing a caricature of the Budweiser trademark.
(In that context, incidentally, consumers would purchase the T-shirts precisely
because they were not affiliated with Anheuser-Busch. That is not true
here.) I would conclude that defendants' commercial speech, whose avowed
aim was to convey "how great Myrtle Beach is," is not protected
by the First Amendment from enforcement of the Lanham Act.