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Citation: 69 Geo. Wash. L. Rev. 425 2000-2001

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Note

Trademark Parody: A Conflict Between Constitutional andIntellectual Property Interests

Keren Levy*

Introduction

In a society driven by consumerism and material symbols, trademarkshave become important marketing and commercial tools that occupy a prom-inent place in the public mind. Consequently, companies and producers ofconsumer goods invest substantial sums of money to develop, publicize and

protect the distinctive nature of their trademarks; in the process, well-knowntrademarks become targets for parody. Parody is at once a derivative and acreative form of expression; its defining characteristic is that it incorporatessome recognizable features of its object while altering other features so as toridicule the object and achieve a humorous or provocative effect. 1 Parodistshave varying motivations for their artistic work; some hope to entertain,while others engage in social commentary, and finally, others may have uplicitous commercial aspirations.

The parodist's desire to ridicule the trademark often conflicts with thetrademark owner's interest in protecting the mark s public image. In recentyears, trademark owners have become increasingly inclined to initiate legalaction against such unconsented-to use. Trademark owners strive to mendthe trademark s tarnished image and protect their commercial investment byrestoring the favorable consumer image of the trademark. Moreover, trade-

J.D. 2001, The George Washington University Law School. I would like to thank my

family for their support and unconditional love, and the editors of The eorge Washington LawReview for their care and wisdom. Most of all, I am grateful to Greg Weiss for his encourage-ment, advice, friendship and compassion.

Robert J haughnessy Trademark Parody: A Fair Use and First Amendment Analysis

72 VA. L. REv. 1079, 1079 (1986).

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mark owners have enjoyed significant success in litigating such cases as courtsrecognize various trademark protection theories and the significance of ac-tive protection of creative output.

Courts grappling with trademark parody cases are presented with an un-

stable and muddled legal foundation, and conflicting commercial and consti-tutional principles. Trademark parodies create a tension between theprotection afforded by trademark law and the competing interest in the freeflow of ideas. Parody is a form of artistic expression protected by theFirst Amendment, '2 however, '[t]rademark protection is not lost simply be-cause the allegedly infringing use is in connection with a work of artistic ex-pression. ' 3 Because trademarks carry so much communicative value,allowing trademark holders to restrict their use can implicate society's inter-est in free and open communication. The grant to one person of the exclu-sive right to use a set of words or symbols in trade can collide with the freespeech rights of others. As J. Thomas McCarthy, a scholar of trademark law,points out, if the anti-dilution statute were construed as permitting a trade-mark owner to enjoin the use of his mark in a noncommercial context foundto be negative or offensive, then a corporation could shield itself from criti-cism by forbidding the use of its name in commentaries critical of itsconduct.

4

This Note examines the problem of trademark parody and discusses theproper role of the First Amendment in the resolution of trademark parodycases. It will focus on the tension between [a]n artist's freedom to use iconsagainst such legal protections tie[d] into First Amendment concerns. 5 Part Idiscusses the levels of First Amendment protection given to different formsof speech. Part II outlines the development of trademark protection law,with a specific focus on modem anti-dilution law. Part III analyzes the legalsystem's attempts to address the First Amendment arguments made by paro-dists. By closely analyzing past and modem interpretations of trademark di-lution, Part III will examine the inconsistent and incomplete judicialapproaches to resolving the ideological conflict embodied by trademark par-odies. Part IV will argue that the courts' misplaced emphasis on comm ercialuse versus non-commercial use is contrary to the purpose of dilution doctrineand is an ineffective way to resolve First Amendment concerns. This Noteconcludes by suggesting adjustments to the commercial use standard in par-

ody cases to provide a more dependable, realistic balance between freespeech and trademark rights when a parody is involved. Finally, legislativechanges to the trademark statute are proposed, in an effort to establish clearstatutory guidelines in this area.

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Group, Inc., 886 F.2d 490, 493 (2dCir. 1989) (holding that Spy Notes was a permissible parody of Cliffs Notes ).

Id (quoting Silverman v. CBS Inc., 870 F.2d 40, 49 (2d Cir. 1989)).4 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION

§ 24:16 (2) (4th ed. 1996). George Vetter & Christopher C. Roche, The First Amendment and the Artist Part 1 64

R.I.B.J. 7 (1996).

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rademark Parody

First Amendment

The First Amendment to the Constitution provides that Congress shallmake no law... abridging the freedom of speech. '6 Consequently, the First

Amendmentstands as the primary constitutional protection against govern-

ment censorship.7 While many have primarily valued the First Amend-ment's role in preserving democracy, its fundamental purpose is to protect allforms of peaceful expression in its myriad of manifestations.

The level of protection afforded by the First Amendment in trademarkcases largely depends upon the type of speech involved.9 Historically, speechrelating to philosophy, politics, art, literature, science, economics, or ethicswas entitled to full First Amendment protection.'0 In contrast, commercialspeech receives an intermediate level of First Amendment protection, butonly if it relates to a lawful activity. This standard was established in theSupreme Court's decision in Virginia State Board of Pharmacy v. VirginiaCitizens Consumer Council, nc. where the Court stated that because adver-tising is the sine qua non of commercial profits, there is little likelihood of itsbeing chilledby proper regulation and therefore, commercial speech maybe more durable than other forms of speech.'2 Consequently, commercialspeech is more objectiv[e] and hard[y] since it can be more easily verifiedbecause ordinarily the advertiser seeks to disseminate information... thathe himself provides and presumably knows more about.'

13

Unfortunately, the boundary between commercial and non-commercialspeech is unclear because a bright-line test identifying protected speech isdifficult to develop and apply. 14 This delineation becomes even more compli-

cated as society values and encourages the growth of cyberspace because theInternet blurs the line between commercial and cultural exchange as websitesprovide a medium for Internet users to exchange ideas and access informa-tion, while entrepreneurs and retailers offer and advertise their merchandise.Consequently, speech cannot be classified as commercial by the mere factthat it is an advertisement, refers to a specific product, or that an economic

6 U.S. CONST. amend. I. See New York Times Co. v. Sullivan, 376 U.S. 254, 270 (1964).8 Tara J. Goldsmith, Comment, What s Wrong with this Picture? When the Lanham Act

Clashes with Artistic Expression, 7 F o R n H A M INTELL. PROP. MEDIA & ENT J 821, 840-41(citing

Aboodv. Detroit Bd. of Educ., 431 U.S. 209, 231 (1977)) (footnote omitted).

9 See Arlen W. Langvardt, Protected Marks and Protected Speech: Establishing he FirstAmendment Boundaries n Trademark Parody Cases, 36 VILL L. REv. 1, 48-49 (1991).

1 See id. at 49 . Commercial speech has been defined to include speech that proposes commercial trans-

actions, advertises retail prices, or speech solely relating to the economic interest of the speakerand the audience. See Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm n, 447 U.S. 557,561-63 (1980); City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 421-22 (1993); 44Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 496-500 (1996) (summarizing the historical de-velopment of the commercial speech doctrine).

12 Va. State Bd f Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748,771-72n.24 (1976).

3 d

14 Langvardt, supra note 9, at 53. The Court in Discovery Network stated that [t]his verycase illustr tes the difficulty of drawing bright lines that will clearly cabin commercial speech indistinct category. Discovery Network, 507 U.S. at 419.

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motive is involved.15 Therefore, current judicial reliance on the distinctionbetween commercial and non-commercial use in determining whether atrademark parody is constitutionally protected is misplaced. This point willbe further elaborated in the final section of this Note.

Finally, it is important to remember that the First Amendment does notconstitute an absolute right of protection for parodists because other legalinterests must be considered. The First Amendment does not provide a li-cense to disregard legally recognized rights in intellectual property.'

16

Courts have recognized, however, that [p]arody does implicate the FirstAmendment's protection of artistic expression ' 17 and that denying parodiststhe opportunity to poke fun at symbols and names which have become wo-ven into the fabric of our daily life, would constitute a serious curtailment ofa protected form of expression. '18 Therefore, trademark parodies are notautomatically protected just because they are parodies. Thus, the challengeremains to balance the competing interests of free expression and intellectualproperty protection. Courts must decide which parodies to protect, therebyencouraging the free communication of entertainment and criticism, whilerespecting the commercial and property interests of trademark owners.

I. The Historical evelopment of Trademark Law

A. Setting the Stage efining r dem rks

Intellectual property law offers artists, authors, firms and inventors pro-tection for their intellectual creations.19 Patents, copyrights, and trademarksare the primary legal means by which inventors safeguard their intellectual

innovations.20 These legal instruments are similar in that they safeguard in-novation, but they differ in their purpose for protection. '2 For instance, pat-ent law protects functional and design inventions, while copyright law

15 Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 66-68 (1983).16 Anthony Pearson, Note, Commercial Trademark Parody The Federal Trademark Dilu-

tion Act and the First Amendment 32 VAL. U. L. REv. 973, 1001 (1998).17 Anheuser Busch, Inc. v. Balducci Publ'ns, 28 F.3d 769, 775 (8th Cir. 1994) (involving

litigation following defendant's 'Michelob Oily parody in a humor magazine, Snicker whichclosely mimicked Anheuser-Busch's famous 'Michelob' trademark).

18 L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987). In his article,Protected Marks and Protected Speech Arlen Langvardt explains the limitations of intellectualproperty rights, with respect to the First Amendm ent. Although trademark owners acquire sig-nificant property rights upon registration of a mark, they are not absolute. Instead of givingtrademark owners monopoly protection and a legal authority to stop all uncontested uses oftheir trademarks, [trademark owners may only enjoin] those uses [that] contravene certain rec-ognized standards of recovery. Langvardt, supra note 9, at 8 (referring to 1 MCCARTHYsupra note 4, § 2:6). Thus, courts are forced to juggle diverging constitutional and intellectualproperty notions when addressing the question of trademark parodies.

19 David Friedman, Standards as Intellectual Property: An Economic Approach 19 DAY-TONA L. REv. 1109, 1109 (1994); see Justin Hughes, The Philosophy of Intellectual Property 77GEO. L.J. 287, 291 (1988).

20 See Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 974-76 (4th Cir. 1990) (discussingthe role of monopolies in patent and copyright law ; Shredded Wheat Co. v. Humphrey Cornell

Co., 250 F. 960, 963 (2d Cir. 1918) (explaining that trademarks are helpful in relaying a symbolicand informative message to consumers, thus stimulating future purchases).

21 Steven M. Cordero, Note, Cocaine-Cola the Velvet Elvis and Anti-Barbie: Defending

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protects the creative expression of ideas.22 In contrast to patent and copy-right law, the goal of trademark law is to protect trademark owners and thepublic from unfair competition and to prevent consumer confusion.23

In Mishawaka Rubber Justice Frankfurter wrote:

The protection of trade-marks is the law's recognition of the psy-chological function of symbols .... A trade-mark is a merchandis-ing short-cut which induces apurchaser to select what he wants, orwhat he has been led to believe he wants. The owner of a markexploits this human propensity by making every effort to impreg-nate the atmosphere of the market with the drawing power of acongenial symbol. Whatever the means employed, the aim is thesame-to convey through the mark, in the minds of potential cus-tomers, the desirability of the commodity upon which it appears.Once this is attained, the trade-mark owner has something of

value. 4

Trademark protection is rooted in economic principles. Strong protec-tion and regulation equips trademark holders with significant marketing con-trol because trademarks have become the primary means to identify thesources of goods and services 25 In competitive markets, customers are ableto differentiate between various products because of identifiable trademarksand continue to purchase those brands they recognize and enjoy. Conse-quently, trademarks encourage m anufacturers to create quality products andservices by enabling trademark owners to reap the benefits of a recognizablemark and a favorable reputation. 26

B. rademark Infringement. A Precursor o Trademark Dilution

Trademark dilution, developedout of and related to trademark infringe-ment, is a principle of intellectual property with a long history 27 Therefore,

the Trademark and Publicity Rights to Cultural cons 8 FORDHAM INTELL. PROP. MEDIA EW.L.J. 599, 609 (1998).

22 1 McCARTHY, supra note 4, § 6:7. A copyright, unlike a patent, gives no exclusiveright to the art disclosed; protection is given only to the expression of the idea not the ideaitself. Mazer v. Stein, 347 U.S. 201, 217 (1954).

23 United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97-98 (1918) (defining a trade-mark as a convenient means for facilitating the protection of one's good-will in trade by placinga distinguishing mark or symbol... upon the merchandise ). Please note, although the parodydefense has First Amendment implications throughout intellectual property, this Note win limitits discussion to trademark law exclusively.

24 Mishawaka Rubber Woolen Mfg. Co. v. S S Kresge Co., 316 U.S. 203, 205 (1942).25 RESTATEMENT (THmD) OF UNF MR COMP'ErmON § 9 cmt. c (1993); see William M.

Landes Richard A. Posner, Trademark Law: An Economic Perspective 30 J.L. ECON. 265,268-70 (1987) (asserting that trademarks reduce consumer searchcosts because information andreputation is conveyed by the trademark itself). The benefits of a trademark are analogized tothe usefulness of identifying an individual by first and last name. Instead of having to say, 'theGeoffrey who teaches constitutional law at the University of Chicago Law School-not the onewho teaches corporations,' youcan say 'Geoffrey Stone, not Geoffrey Miller. ' Id at 269.

26 See 1 MCCARTHY, supra note 4, §§ 2:5, 2:8.27 See generally Sidney A. Diamond, The Historical Development of Trademarks 65

TRADEMARK REP. 265, 266, 287-88 (1975).

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to fully understand and appreciate the issues associated with trademark paro-dies, a brief review of past and present protective theories is helpful.

Historically, infringement law is linked to the common law action fordeceit, where a consumer would claim he was deceived into buying a product

because a merchant misleadingly adopted a competitor's mark.8

Empow-ered by the Commerce Clause29 and influenced by this common law under-pinning, Congress enacted the Lanham Act 30 on July 5 1946 to providefederal protection for trademarks from infringement and unfair competition.

The Lanham Act defines a trademark as any word, name, symbol, ordevice, or any combination thereof dopted and used by a person toidentify and distinguish his or her goods... from those manufactured or soldby others. '31 The Act reflects the dual goals of shielding consumers fromconfusing product imitations, while defending trademark holders' invest-ments from misappropriation.32 Through expansive judicial interpretationand congressional amendments, section 43(a) of the Act has been significantin the development of effective trademark protection. This section addressestrademark infringement that occurs:

when one party (the junior user) uses a trademark (the junior mark)that is identical or substantially similar to the existing mark (thesenior mark) of another user (the senior user) on competing goods,such that prospective purchasers are likely to be confused, mis-taken, or deceived as to the identity or source of the goodsinvolved.

33

A key element in this cause of action is the likelihood-of-confusion,namely, whether a consumer

seeing the junior mark is likely to believe thatthe goods were produced by the senior user.34

28 See Cordero, supra note 21, at 610 (citing Daniel M. McClure, Trademarks and UnfairCompetition: A Critical History o Legal Thought, 69 TRADEMARK REP. 305 310-26 (1979)).

29 The Congress shall have the power to regulate Commerce among the several tates U.S. CONST. art. I, § 8, cl. 3.

30 Trademark Act of 1946, 60 Stat. 427 (codified as amended at 15 U.S.C. §§ 1051-1127(1994 Supp. II 1996)) ( Lanham Act ). The Lanham Act followed earlier statutory protec-tions, which were based on patent and copyright clauses, that were struck down as an unconstitu-tional extension of congressional power.

3 See 15 U.S.C. § 1127.32 See S. REP No. 79-1333, at 3 (1946). The stated intent of the Lanham Act, as expressed

in the text of the statute is to regulate commerce within the control of Congress by makingactionable the deceptive and misleading use of marks in such commerce; to protect registeredmarks used in such commerce from interference by State egislation; to protect personsengaged in such commerce against unfair competition. 15 U.S.C. § 1127.

33 Lynda J. Oswald, Tarnishment and Blurring Under the ederal rademark DilutionAct o 1995 36 AM. Bus. L.J. 255, 259 (1999) (discussing 15 U.S.C. § 1114(1)).

34 While this Note will not address the intricacies of likelihood-of-confusion, it is impor-tant to point out that the law on this issue is imprecise and in a constant state of evolution.Consequently, courts will often refer to varying factors known as the Polariod factors in theirassessment: (1) the strength of the plaintiff's mark; (2) the degree of similarity between the twomarks; (3) the proximity of the products; (4) the likelihood that the prior owner will bridge thegap; (5) actual confusion ; (6) the defendant's good faith; (7) the quality of defendant's product;and (8) the sophistication of the consumers. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d492, 495 (2d Cir. 1961). Courts, however, vary as to which factors they consider and how much

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C. The Definition of Dilution

[W]here the likelihood of confusion test leaves off, the dilution theorybegins. '35 Dilution, in contrast to trademark infringement, occurs when thedistinctive quality of a trademark is lessened by its use on a dissimilar prod-uct. 36 Dilution has been described as not public confusion caused by similarproducts or services sold by competitors, but a cancer-like growth of dissimi-lar products or services which feeds upon the business reputation of an estab-lished distinctive trade-mark or name. 37 Furthermore, dilution protectionappears to relate to an absolute property right in the trademark, whereastraditional trademark infringement law rests on the protection of consumersfrom mistake and deception.

3 8

Dilution has been categorized along two theories, tarnishment and blur-ring. Although tarnishment and blurring are distinct concepts, they both re-duce the value of the trademark by undermining its selling power and

distinctive quality, which should be within the exclusive control of the trade-mark holder. 39 A trademark is tarnished when it is linked to products ofshoddy quality, or is portrayed in an unwholesome or unsavory context,causing the public [to] associate the lack of quality or lack of prestige in thedefendant's goods with the plaintiff's unrelated goods. ' 40 To prove tarnish-ment, the trademark holder must demonstrate that the defendant's use is likely to come to the attention of the prior user's prospective purchasers andthat the use is likely to undermine or damage the positive associationsevoked by the mark. 4 1 Blurring relates to the notion that trademarks be-

weight these factors are given in their analysis. See Fsons Horticulture, Inc. v. Vigoro Indus., 30F 3d 466, 476 n.11 (3d Cir. 1994); Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984). Thus, these factors imply no mathematical precision,but are simply a guide to helpdetermine whether confusion is likely. Homeowners Group, Inc.v. Home Mktg. Specialists,Inc., 931 F.2d 1100, 1107 (6th Cir. 1991).

35 3 McCARThiy, supra note 4, § 24:70. 6 Frank I. Schechter, TheRational asis of Trademark Production, 0 HARv L. REv. 813,

825-26 (1927). As explained in Stem s Miracle-GroProds. v. Shark Prods., even if consumers donot consciously assume that the defendant's product is affiliated with the plaintiff's, there is alikelihood that consumers will be attracted to the defendant's productbased on the goodwill andpositive image established by the plaintiff. Stem's Miracle-Gro Prods. v. Shark Prods., 823 F.Supp. 1077, 1090 (S.D.N.Y. 1993).

7 Allied Maint. Corp. v. Allied Mech. Trades, Inc, 369 N.E.2d 1162, 1165 (N.Y. 1977).The dilution theory assumes that even nonconfusing unauthorized use of a mark may cause anactionable harm to the trademark owner by gradually whittlingaway the mark's distinctive-ness. Id t 1164.

8 See Mortellito v.Nina of Cal., Inc., 335 F. Supp. 1288,1296 (S.D.N.Y. 1972) ( Confusionleads to immediate injury, while dilution is an infection which, if allowed to spread, will inevita-bly destroy the advertising valueof the mark. ). See generally 3 McCARTHY, supra note 4.

39 Deere Co. v. MTD Prods., Inc., 41 F.3d 39, 43-44 (2d Cir. 1994) (finding dilutionbecause defendant's advertisement involved the alteration of the plaintiff's deer trademark intoa timid, confusedand weak deer); Jordache Enters. v. Hogg Wyld, Ltd., 625 F. Supp. 48, 56-57(D.N.M. 1985) (holding that a modification of the Jordache name and a horse's head trademarkinto Lardashe and a pig's face for large sized women's jeans found not to tarnish).

40 Deere 41 F.3d at 43.

41 RESTATEMENT (THIRD) OFUNFAIR COMPETITION

§ 25 cmt. g (1995). The Restatementprovides an illustration of tamishment: Bank A refers to its teller machines as Cookie Jars.then opens a topless bar in close proximity to the Bank and names it the Cookie Jar. The bar

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come so distinctive and well-knownthat it becomes an additional selling toolfor the product.42 Consequently, use of the mark by others dulls the impactand effectiveness of the trademark as a selling tool. Blurring results when the defendant uses or modifies the plaintiffs trademark o identify the defen-

dant s goods and services raising the possibility that the mark will lose itsability to serve as a unique identifier ofthe plaintiff's product. 43

D. The Historical Development of Anti-Dilution Laws

Frank Schechter is recognized for introducing the concept of dilution inhis 1927 article, The Rational Basis of Trademark Protection. 4 Schechter be-lieved that the preservation of the uniqueness of a trademark should consti-tute the only rational basis for its protection. ' 45 He argued that courts mustfocus on protecting the uniqueness ofthe mark, rather than emphasizing con-sumer confusion.

46

Following Schechter's article, several states enacted anti-dilution statutesthat provide injunctive relief to trademark holders, despite that the marksneither compete nor result in consumer confusion. 47 Most state laws werepatterned after the Model State Trademark Bill that provided: [L]ikelihood of dilution of the distinctive quality of a mark registeredunder this Act shall be a ground for injunctive relief notwithstanding theabsence of competition between the parties or the absence of confusion as tothe source of goods or services. 48 These state statutes, however, did noteffectively resolve the problem of trademark dilution. For instance, RichardM. Berman, President of the International Trademark Association, described

may be liable for dilution under the tarnishment theory if the Bank's clients are likely to associ-ate Bank A s Cookie Jar mark with the image created from B's use of the mark. Liability willnot depend on whether consumer confusion occurs. Id. § 25 cmt. g, illus. 3. These facts arebased on Community Federal Savings Loan Association v. Orondorff, 678 F.2d 1034 (11th Cir.1982).

42 RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 cmt. c.43 Deere, 41 F.3d at 43. The Deere court offered examples of blurring: DuPont shoes,

Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth. Id.44 Schechter, supra note 36. Schechter discussed case law from England, Germany and the

United States in which courts had granted relief to trademark owners against noncompetinguses. Id. at 831-33; see also Terry R. Bowen, Note, The Federal Trademark Dilution Act of1995-Does It Address the Dilution Doctrine s Most Serious Problems, 7 DEPAuL-LCA J A R T

ENT. L. POL Y 75, 76 (1996).45 Schechter, supra note 36, at 831.46 Id. at 830-31. Schechter argued that the real harm from concurrent uses of the mark on

different goods was not consumer deception or confusion, but the gradual whittling away ordispersion of the identity and hold upon the public mind of the mark or name by its use uponnon-competing goods. Id. at 825. Thus, Schechter argued for a new cause of action to protectsenior marks used on noncompeting goods, like the use of Rolls-Royce mark on automobileradio parts, restaurants, or bicycles. Id. at 825-30.

47 Massachusetts was the first state to adopt such a statute in 1947. See Robert N. Klieger,Trademark Dilution: The Whittling Away o the Rational Basis for Trademark Protection , 58 U.P r r L. REV. 789, 811-12 (1997). Illinois followed this initiative in 1953, while New York andGeorgia adopted similar statutes in 1955. Id. By 1996, when the Federal Trademark DilutionAct was enacted, twenty-eight states had adopted anti-dilution

laws.Id.

48 See JEROME GILSON, TRADEMARK DILUTION: NOW A FEDERAL WRONG (1996) (quot-ing Model State Trademark Bill § 12 (USTA 1964)).

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this patchwork system as unpredictable and unsatisfactory.49 In addition,courts were reluctant to grant nationwide injunctions because of the difficultyin granting injunctions in states that had not made dilution unlawful withintheir territories. 50 Finally, state courts interpreted dilution differently; somerequired confusion, while others had varying perceptions of use when con-sidering the distinction between commercial and non-commercial use.

5 1

E. The Federal Trademark Dilution Act o 1995

The reluctance of the courts to embrace state dilution laws and the in-consistent interpretation of these laws were the catalysts for the enactment offederal legislation. 52 The Federal Trademark Dilution Act of 1995 ( FTDA )was passed by the House of Representatives on December 12, 1995, and bythe Senate on December 29, 1995.53 T1he FPDA amends the Lanham Act

54

by adding a new subsection to section 43 of the Trademark Act of 1946.55

The purpose of the amendment, according to the House Report, is to affordfamous marks, whether registered or unregistered, protection against subse-quent uses that tarnish, disparage, or blur the distinctiveness of the mark.

56

In addition, the FTDA provides uniform remedies to trademark owners whoare the victims of dilution. 57 In essence, the FTDA grants injunctive relief tothe owner of a famous mark where another's commercial use of a mark di-lutes the distinctive quality of the famous mark.

5 8

49 Oversightof the Patent and Trademark Office: Hearing Before the Subcomm.on Patents,Copyrights and Trademarks of the Senate Comm. on the Judiciary 103d Cong. 58-59 (1994)(statement of Richard M. Berman, President, International Trademark Association).

50 See 3 McCARTHY, supra note 4, § 24:74.5 See id. § 24:72. In his review of twenty years of trademark parody cases, Siegrun ex-

plained: While the courts pay lip service to the usual trademark factors in judging likelihood ofconfusion, the results seem as unpredictable as the judicial sense of humor .... [I]s it just a caseof different facts, or different decades, or different judicial sensibilities? Siegrun D. Kane, De-velopments in the Law of Trademark Parody: If It's Funny, Does That Mean It's Fair?, in CuRRENT DEVELOPMENTS zN TRADEMARK LAw AND UNrnAm oMPETroN 263,265 (Practising LawInst. 1984).

5 See H.R. RaP. No. 104-374, at 3-4 (1995), reprinted n 1995 U.S.C.C.A.N. 1029, 1030-31.53 Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 985 (1996) (codi-

fied at 15 U.S.C. §§ 1125(c), 1127 (1994 Supp. 1995)).54 Trademark Act of 1946, 60 Stat. 427 (codified as amended at 15 U.S.C. §§ 1051-1127

(1994 Supp. II 1996)). Federal Trademark Dilution Act of 1995 § 3 (codified at 15 U.S.C. § 1125(c) (1994

Supp. 1995)). In addition, the FTDA amends section 45 of the Lanham Act to include the fol-lowing definition of dilution : [Tihe lessening of the capacity of a famous mark to identify anddistinguish goods or services, regardless of the presence or absence of (1) competition betweenthe owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, ordeception. Id. § 4 (codified at 15 U.S.C. § 1127 (1994 Supp. 1995)).

56 H.R. REP. No. 104-374, at 2-3 1995), reprinted n 1995 U.S.C.C.A.N. 1029, 1029-30.57 Federal Trademark Dilution Act of 1995 § 3 (codified at 15 U.S.C. § 1125(c)).5S Id. (codified at 15 U.S.C. § 1125(c)(1)). If the mark's owner establishes that dilution has

occurred, the court may grant injunctive relief. Id. However, if the trademark owner establishesthe defendant's willful intent to trade on the owner's reputation or to cause dilution of thefamous mark, then the owner may be entitled to damages. Id codified at 15 U.S.C.§ 1125(c)(2)). But, the FTDA only applies to famous marks. To define this legal term of art,Congress included in section 43(c) a nonexhaustivelist of factors courts may apply to determinewhich marks qualify as famous. The factors include:

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Patterned after state dilution laws, a plaintiff bears the burden of dem-onstrating that: 1) its mark is famous; (2) the defendant is making a com-

mercial use of the mark in commerce ; (3) the defendant adopted the juniormark after the plaintiff's senior mark had become famous; and (4) the defen-dant's use of the junior mark dilutes the plaintiff's senior mark by diminish-ing the capacity of the mark to identify and distinguish goods and services. '59

The Act also provides for several defenses against a claim of dilution. Theseinclude non-commercial use of the mark, fair use of the mark in comparativeadvertising, ownership of a valid registration under prior trademark acts, andall forms of news reporting and commentary.60

Furthermore, the Congressional Record reveals that Congress was con-cerned about the First Amendment implications of this protective statute.

For instance, Senator Hatch stated that the legislation adequately ad-dresse[d] legitimate first amendment concerns espoused by the broadcastingindustry and the media because the legislation does not prohibit orthreaten non commercial expression, such as parody, satire, editorial andother forms of expression that are not part of a commercial transaction. '6

1

It is important to remember that a parody exception is not expresslystated in the defenses for dilution. As courts grapple with trademark dilutioncases, however, freedom of expression is frequently raised as a defense be-

(A) the degree of inherent or acquired distinctiveness of the mark; (B) the durationand extent of use of the mark in connection with the goods or services with whichthe mark is used; (C) the duration and extent of advertising and publicity of themark; (D) the geographical extent of the trading area in which the mark is used;(E) the channels of trade for the goods or services with which the mark is used; (F)the degree of recognition of the mark in the trading areas and channels of tradeused by the marks' owner and the person against whom the injunction is sought;(G) the nature and extent of use of the same or similar marks by third parties; and(H) whether the mark was registered under the Act of March 3, 1881, or the Act ofFebruary 20, 1905, or on the principal register.

Id (codified at 15 U.S.C. § 1125(c)(1)). While these factors provide some guidance for thecourts, determining whether a mark is famous is a fact specific and subjective analysis. Conse-quently, a definitive test for famous is illusive as courts apply the factors selectively and givediffering weights to the factors in their analysis. See generally Am. Express Co. v. CFK, Inc., 947

F. Supp. 310, 314-19 (E.D. Mich. 1996). 9 Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998) (citing 15 U.S.C.

§ 1125(c)); Ringling Bros.-Barnum Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev.,955 F. Supp. 605, 613 (E.D. Va. 1997). Interestingly, proponents of the dilution doctrine calledfor a federal dilution statute for several years prior to the enactment of the FTDA. For examplea federal dilution statute was proposed in 1988 as part of the Trademark Revision Act of 1988See Trademark Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (1988). The dilutioisection, however, was removed from the final bill due to First Amendment concerns raised bmedia and advertising organizations. ee H.R. Rep. No. 100-1028, at 5-6 (1988).

60 Federal Trademark Dilution Act of 1995 § 3 (codified at 15 U.S.C. § 1125 (c)(3),(Supp. II 1996)).

6 141 CONG. Rac. 38,559 (1995) (statement of Sen. Hatch). In addition, Senator Lealstated, parody, satire, editorial, and other forms of expression will remain unaffected by tilegislation. 141 CoNG REc. S19,312 (daily ed. Dec. 29, 1995) (statement of Sen. Leah:Meanwhile, Congressman Moorhead commented that [t]he bill would not prohibit or threatnoncommercial expression, such as parody, satire, editorial, and other forms of expression tare not part of a commercial transaction. 141 CONG REc. H14,318 (daily ed. Dec. 12, 19'(statement of Rep. Moorhead).

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cause it is read into the non-commercial use defense.62 Unfortunately, be-cause courts are ill-equipped with a federal dilution statute that is unclear onFirst Amendment defenses, they are left to devise their own application offree speech rights to trademark law. 63 The result is an inconsistent body of

law that leaves parodists and trademark owners wondering when a parodybecomes actionable and when it serves as a defense. The question thus re-mains whether the FTDA provides a sound constitutional framework thatallows courts to deal effectively with First Amendment concerns. Becauseparody, commercial speech, and media coverage are within the protection ofthe First Amendment's Free Speech Clause, it is unclear whether the FTDAoversteps constitutional bounds in exchange for trademark protection.64 Byfocusing specifically on parody, this Note will address the First Amendmentimplications of trademark protection.

III. Trademark Parody: Free Speech or Dilution?

A. Defining Parody

Parody is defined as a writing in which the language and style of anauthor or work is closely imitated for comic effect or in ridicule often withcertain peculiarities greatly heightened or exaggerated. 65 Effective parodiesare described as convey[ing] two simultaneous-and contradictory-messages: that it is the original, but also that it is not the original and is in-stead a parody. 6

6

As the U.S. Court of Appeals for the First Circuit ( First Circuit ) ex-plained in L.L. Bean parodies serve an important role:

The central role which trademarks occupy in public discourse (arole eagerly encouraged by trademark owners), makes them a natu-ral target of parodists. Trademark parodies, even when offensive,do convey a message. The message may simply be that business andproduct images need not always be taken too seriously; a trademarkparody reminds us that we are free to laugh at the images and as-sociations linked with the mark .... Denying parodists the opportu-

6 See L.L. Bean, Inc. v. Drake Publishers, Inc, 625 F. Supp. 1531 D. Me. 1986) (involvinga trademark holder seeking to enjoin the defendants from publishing a magazine containing anon-commercial parody of its trademark, the L.L. Bean clothing catalog).

6 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 377(S.D.N.Y. 1979) (determining that dilution by loss of distinctiveness resulted by including theDallas Cheerleaders costume in a sexually explicit movie). But see L.L. Bean 811 F.2d at 34(focusing more on the First Amendment interests of the non-commercial parodist, rather thanthe sexual context of the parody).

6 See Pearson, supra note 16, at 1022-28.65 WEBSTER S THmD NEW INTERNATIONAL DICTIONARY 1643 (1993). Katherine Spelman

outlines the elements of a parody as: (1) an original host work; (2) the original host work mustbe famous or known to the target audience; (3) the creator of the parody must take as much asnecessary of the original work to bring the original host work to mind; and (4) the derivativework must result in a new, original work. Katherine C. Spelman, Trademark Parody-Tarnish-ment or Free Speech? in 2 PLI s SECOND ANNuAL INSarrUTE FOR INTELLECTUAL LAW 567, 570

(Practising Law Inst. 1996).66 Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ g Group, Inc, 886 F.2d 490, 494 (2dCir. 1989).

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nity to poke fun at symbols and names which have become woveninto the fabric of our daily life, would constitute a serious curtail-ment of a protected form of expression.

67

The problem is that trademark parodies can also tarnish or appropriate

the goodwill or reputation of the mark. This occurs when the parody is con-sidered offensive because it associates the mark with illegal activity, ob-scenity, or sexual activity.68 In addition, trademark parodies may blur thedistinctive identity of the original mark y 'whittling away' the public's asso-ciation of the mark with the goods or the goods' provider.

69

B. Legal Interpretation of Trademark Parodies

The courts have not always recognized the relevance of First Amend-ment considerations in trademark parody cases. Although some of themore recent decisions reflect attempts to deal seriously with parodists' consti-tutional arguments, most courts deciding trademark parody cases have eitherignored the possible First Amendment issues or dealt with them in an abbre-viated, unprincipled fashion. 70 Often, courts attempt to avoid resolvingthese complex constitutional questions y focusing exclusively on the ele-ments of anti-dilution statutes. Specifically, courts place a great emphasis onthe commercial/non-commercial use element rather than attempting to bal-ance a trademark owner's property interests with the parodist's and the pub-lic's need for unregulated expression. This section reviews historicaltrademark parody litigation, which has resulted in a jumbled amalgamationof current anti-dilution law.

1 Early Anti-Dilution Cases

The first trademark parody case occurred when the Anheuser-Buschcompany sought to enjoin a floor wax merchant from using the slogan

67 L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987) (finding that

trademark rights against infringement and dilution do not entitle the owner to extinguish the

unauthorized use of a mark by another in an editorial parody).68 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205-06 (2d

Cir. 1979) (plaintiff brought action contending its trademark on its cheerleading uniform wa sinfringed and diluted as a result of defendant's sexually explicit movie, DEBBIE oES DALLAS .Furthermore, in one of the earliest cases of trademark tarnishment, the U.S. District Court forthe Eastern District of New York enforced the Coca-Cola trademark against a poster imitatingits distinctive flowing cursive style and color scheme stating Enjoy Cocaine. Coca-Cola Co. v.Gemini Rising, Inc., 346 F. Supp. 1183, 1187, 1191 (E.D.N.Y. 1972).

69 See Anheuser-Busch, Inc. v. Andy's Sportswear, Inc., 40 U.S.P.Q.2d (BNA) 1542, 1543

(N.D. Cal. 1996) (issuing a temporary restraining order in favor of Anheuser-Busch Inc. againsta defendant who wanted to distribute T-shirts marked with the word Buttwiser ).

70 Langvardt, supra note 9, at 60. Langvardt argues that courts try to avoid the constitu-

tional thicket by finding a defendant not liable for nonconstitutional reasons. This includesJordache Enterprises nc. v Hogg Wyld Ltd. 828 F.2d 1482, 1490 n.7 (10th Cir. 1987), where thecourt noted the First Amendment issue in a footnote, but did not address it substantively be-cause the defendant was held not liable for dilution. Moreover, when the trademark owner

prevails, courts, at times, willomit discussion of the First Amendment or dismiss it with little

analysis. See Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124 (N.D. Ga. 1981);Coca-Cola 346 F. Supp. at 1192-93.

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Where there s life... there s bugs. ' 7' This slogan for a combined floor waxand insecticide mimicked a well-known Budweiser beer slogan Wherethere s life there s Bud. 72 Although Florida had not enacted an anti-dilution statute, the court implicitly recognized the dilution theory.73 Thus,

the appellate court upheld the lower court's finding that the value and effec-tiveness of plaintiff's prior advertising is impaired by the parodied use.74

Furthermore, the court recognized the tarnishing effect of the defendant'suse because the public long immersed in 'Where There's Life There's Bud'would understandably be put off by the unpalatable association of bugs andbeer. 75

Although the dilution doctrine gradually entered the legal arena, themajority of courts were initially reluctant to apply the dilution theory intrademark protection cases. The Pillsbury Doughboy v. Milky Way Produc-tions Inc. case marked the first decision where a court found no confusion,but

nevertheless enjoined the defendant's parody under the Georgia anti-dilution statute, in addition to other legal claims.76 The defendant had pub-lished, in a satirical magazine, aparody of the Pillsbury Doughboy participat-ing in sexually explicit Lovin' From The Oven. ' 77 The court held that thecartoon diluted the distinctive value of Pillsbury's all-American iconic valueand injured the Company's business reputation. 78 Consequently, while thedilution theory was beginning to gain legal authority and recognition, it ap-pears that the court's distaste for the pornographic material instigated thecourt's acceptance of the dilution doctrine.

79

Initially, the dilution doctrine received a lukewarm reception from thelegal system. Some courts did not fully comprehend the distinction betweentrademark dilution and infringement, while other courts interpreted and ap-plied the doctrine inconsistently. Gradually, dilution gained acceptance bythe courts and a more meaningful discussion of dilution and its First Amend-ment implications arose once courts began to understand this doctrinal inno-vation and dilution's legal foundation became more secure.

2. Early Anti-Dilution Cases and the First Amendment

L.L. Bean Inc. v. Drake Publishers Inc. 80 was one of the earliest caseswhere a court discussed the First Amendment implications in trademark dilu-tion litigation. In L.L. Bean the First Circuit examined the application of

7 Chemical Corp. of Am. v. Anheuser-Busch, Inc., 306 F.2d 433, 434 (5th Cir. 1962).72 Id. at 434-35.73 Id. at 436-38.74 Id. at 435.75 Id. at 437; see also Siegrun D. Kane, Trademark Parody: Then Now and Forever Shall

Be PAT-ENTs, COPYRIGHT TRADEMARK AND LrraiARY PORPERTY COURSE HANDBOOK 143,

145 (Practising Law Inst. 1990).76 Pillsbury Doughboy v. Milky Way Productions, Inc., 215 U.S.P.Q. (BNA) 124, 135-36

(N.D. Ga. 1981).77 Id at 125-26.

78 Id. at 135.79 See id.80 L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987).

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Maine's anti-dilution statute to a trademark parody.81 The court recognizedthat trademark parodies can be a protected form of expression and, as a con-sequence, greatly expanded parodists' free speech rights. The defendantpublished in an adult magazine a two page article entitled L.L. Bean s Back-

To-School-Sex-Catalog which closely resembled plaintiff's clothing cata-log.82 The district court had granted the plaintiff an injunction because thecourt found the parody likely to tarnish the L.L. Bean trademark by dispar-aging its goodwill.8 3 The First Circuit reversed, however, holding that thedistrict court's application of the Maine statute violated the parodist's FirstAmendment rights.84 The appellate court stated that the lower court's inter-pretation of the statute would improperly expand the scope of the anti-dilu-tion statute far beyond the frontiers of commerce and deep into the realm ofexpression. 85 Thus, the court's holding implies that the First Amendmentprevents any construction of an anti-dilution statute that would enjoin per-ceived tarnishment in a non-commercial context.

86

The appellate court focused heavily on the element of commercial use inits decision and concluded that the defendant's parody constitute[d] an edi-torial or artistic, rather than a commercial, use of plaintiff's mark. 87 In itscommercial use analysis, the court emphasized that the defendant did not usethe mark to identify or promote goods or services, the defendant never in-tended to market the goods published in the parody, and the two page article(of a one-hundred-page magazine) was not featured on the magazine cover.

88Once the court found the parody to be non-commercial, it applied a balanc-ing test, which provided greater constitutional protection for artistic or edito-rial statements, regardless of their offensive or bawdy context.89

While the court found the defendant's parody to be a non-commercialuse, it recognized the difficulty in distinguishing commercial usefrom artisticor editorial use and the constitutional implications of making the distinc-tion.90 For instance, the failure to distinguish between commercial and non-commercial speech 'could invite dilution, simply by a leveling process, of theforce of the' First 'Amendment's guaranteewith respect to the latter kind of

8 Id. at 27. The Maine statute read: 'Likelihood of injury to business reputation or ofdilution of a mark registered under this chapter... shall be a ground for injunctive relief not-withstanding the absence of competition between the parties or the absence of confusion as tothe source of the goods or services. ' Id. at 27 n.1 (quoting ME REV. STAT ANN tit. 10, § 1530(West 1981)).

82 Id at 27.83 L.L. Bean, Inc. v. Drake Publishers, Inc., 625 F. Supp. 1531, 1536-37, 1539 (D. Me.

1986). The plaintiff presented affidavits from company executives and marketing consultants.Those records stated that the parody was likely to hurt L.L. Bean's image and endanger themark's integrity and strength. Id at 1537.

84 L.L. Bean 811 F.2d at 32-34.85 Id. at 33.86 Anheuser-Busch, Inc. v. Balducci Publ'ns, 23 F.3d 769, 778 (8th Cir. 1994) (interpreting

L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987)).87 L.L. Bean 811 F.2d at 32 .88 Id

89 Id

90 Id

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speech. '91 Furthermore, if a trademark owner were allowed to enjoin use ofhis mark in a non-commercial context, he could try to shield himself or hisproduct from criticism by prohibiting use of the m rk 9

In contrast, the U.S. Court of Appeals for the Eighth Circuit held thatthe First Amendment did not protect the publication of a Michelob parodyfrom infringement and state dilution claims.93 In Anheuser-Busch Inc. v.Balducci Publications use of the phrase Michelob Oily in a mock adver-tisement on the back cover of a humor magazine was found to infringe thefamous Michelob trademark for beer because of the likelihood of con-sumer confusion.94 The defendant argued that the advertisement was pro-tected under the parody defense, claiming that the parody was aconstitutionally protected comment on environmental pollution, specifically,an oil spill near a source of Anheuser-Busch's water supply.95

The court rejected the defendant's constitutional argument, differentiat-

ing the case from L.L. Bean. The court stated that the Michelob Oily par-ody, unlike the L.L. Bean parody, made a derogatory comment bysuggesting that plaintiff's beer was contaminated.96 In addition, the L.L.Bean parody was located inside a magazine under the humor section.97 Incontrast, Balducci placed its parody on the back cover with a small disclosurewhere the casual viewer might fail to appreciate its editorial purpose. 98

The court further elaborated that [b]y using an obvious disclaimer, position-ing the parody in a less-confusing location, altering the protected marks in ameaningful way, or doing some collection of the above, [the defendant] couldhave conveyed its message with substantially less risk of consumerconfusion. 99

The legal determination and analysis in Balducci and L.L. Bean reflectsthe courts' inconsistent and confusing approach to trademark parody cases.Although the wording of the state anti-dilution statutes were very similar, thecourts in L.L. Bean and Balducci approached the legal question differentlyand emphasized different aspects of the law. For example, the Balducci courtfocused on evidence of consumer confusion and the parody's offensive innu-endo. 100 In contrast, the L.L. Bean court stated that the offensiveness of theparody should not be considered when analyzing a parodist's First Amend-

91 Id t 32-33 (quoting Cent. Hudson Gas Elec. Corp. v. Pub. Serv. Comm'n, 447 U.S.

557, 56 n.5 1980 .9 Id t 33.93 Anheuser-Busch, Inc. v. Balducci Publ'ns, 28 F.3d 769, 775-78 (8th Cir. 1994). The Mis-

souri anti-dilution statute provided: likelihood of injury to businessreputation or dilution of thedistinctive quality of a mark . shall be ground for injunctive relief. Mo. ANN STAT.§ 417.061(1) (West 1990).

94 Anheuser-Busch 28 F.3d at 774-75.95 d at 772-73.96 Id t 777-78.97 I t 778.98 Id.99 Id. t 776.

1 lt at 774. Plaintiff presented survey evidence to establish that the parody resulted in

consumer confusion: over half of those surveyed thought Balducci required plaintiff's approvalto publish the advertisement, and many presumed that such approval had been obtained. Id at774-75.

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ment rights. 10 1 The L.L. Bean court noted that although parody is oftenoffensive, it is nevertheless 'deserving of substantial freedom. ' ' 2 Finally,the Balducci decision reflects a fundamental misunderstanding by somecourts of dilution theory. In its discussion of the dilution claim, the Balducci

court relied heavily on the evidence of consumer confusion (an essential ele-ment for establishing trademark infringement, not trademark dilution) andmaintained that because it had previously found a likelihood of confusion,the parody had also created a likelihood of dilution. 10 3

3. Continuing Confusion of the Courts

As seen in the previous cases, Pillsbury Doughboy L.L. Bean andBalducci the early years of trademark dilution litigation were marked by in-consistent application and conflicting interpretations. Two additional casesfurther illustrate this point. In Deere Co. v. MTD Products Inc. one of

Deere's competitors, MTD products, used Deere's famous deer logo, a sil-houette of a leaping deer, in a television commercial for a tractor. 04 In theMTD version, however, the deer looks over its shoulder, jumps through thelogo frame,.., and, as a two-dimensional cartoon, runs, in apparent fear, as itis pursued by the Yard-Man lawn tractor. ' 1 5 Deere sought an injunctionagainst MTD's use alleging a violation of New York's anti-dilution statute.

10 6

Although the court found a likelihood of dilution, it pointed out the difficultyin distinguishing between commercial and non-commercial use: Line-draw-ing [is] difficult when a mark is parodied for the dual purposes of making asatiric comment and selling a somewhat competing product. ' 1 7 Interest-ingly, the court summarized prior trademark dilution cases involving paro-dies' 08 and concluded that [s]uch uses risk some dilution of the identifying

1 1 L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 33-34 (1st Cir. 1987).102 Id. at 33 (quoting Berlin v. E.C. Publ'n, Inc., 329 F.2d 541 (2d Cir. 1964)).1 3 See Jonathan Roy Celniker, Trademark Parody Unplugged 14 SPG Er. SPORTS LAW

1 (1996). As discussed above in Part II, dilution is distinguished from trademark infringementlargely because it does not require consumer confusion for a successful cause of action. In theearly cases addressing trademark dilution, however, courts defined and applied state dilutionstatutes differently. This confusion spurred legislators to implement the Federal Trademark Di-lution Act of 1995 in an attempt to establish a consistent and uniform legal approach to trade-mark dilution. H.R. REP. No. 104-374, at 3-4 1995), reprinted n 1995 U.S.C.C.A.N. 1029, 1030-31.

104 Deere Co. v. MTD Prods., Inc., 41 F 3d 39, 41 (2d Cir. 1994).1 5 Id.

1 6 Id. at 40. New York's anti-dilution statute provides for injunctive relief where there is a [1]ikelihood of injury to business reputation or of dilution of the distinctive quality of a mark ortrade name.. notwithstanding the absence of competition between the parties or the absenceof confusion as to the source of goods or services. N.Y. GEN Bus. LAW §368-d (McKinney1984).

1 7 Deere 41 F.3d at 45 .108 This summary included Stop the Olympic Prison v. United States Olympic Committee

489 F. Supp. 1112, 1113 (S.D.N.Y. 1980) (denying injunction for parodist's use of defendant'strademark to protest a proposed prison), L.L. Bean v. Drake Publishers nc. 811 F.2d 26 (1stCir. 1987), and Girl Scouts o USA v. Personality Posters M anufacturing Co. 304 F. Supp. 1228,

1233 (S.D.N.Y. 1969) (involving a poster depicting a pregnant Girl Scout member and implyingthat the trademark owner's image of its members was unchaste and inaccurate). Deere 41 F.3dat 44 .

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or selling power of the mark, but that risk is generally tolerated in the inter-est of maintaining broad opportunities for expression. '10 9 Thus, the court'sstatement in dicta seems to imply that the First Amendment right of freeexpression will usually trump the possible commercial harm trademark own-ers may incur as a result of parodies. Nevertheless, in its dilution analysis,the court focused on the commercial impact parodies may have on a markbecause the scope of protection under a dilution statute must take into ac-count the degree to which the mark is altered and the nature of the altera-tion because some alterations [of a trademark] have the potential to solessen the selling power of a d istinctive mark that they are appropriately pro-scribed. 0 Thus, the Deere court's divergent statements reflect the difficultycourts have in applying a dilution test that is simultaneously sensitive to theparodist's free speech rights.

In contrast, in Hormel Foods Corp. v. Jim Henson Productions nc. the

court held that there was no likelihood of dilution following defendant's useof a wild boar Muppet characternamed Spa'am. ' l Defendant had createda Muppet named Spa'am, described as evil in porcine form for an up-coming movie. 2 Spa'am was intended to be the head of a motley group ofevil characters who terrorize the Muppets once they get lost on Spa'am'sisland. 3 At the conclusion of the film however, Spa'am redeems himself byhelping the lost Muppets find their way home. 4 Hormel contended that thecartoon character would call into question the purity and high quality of itsmeat product because of Spa'am's evil demeanor and unclean appear-ance. 5 The court rejected the plaintiff's dilution argument and distin-guished this case from Deere because defendant's product was not in directcompetition with plaintiff's food product. 6 Furthermore the court sug-gested that Hormel should be accustomed to this sort of parody by now andthat one might think Hormel would welcome the association with a genuinesource of pork. 1

7

Although Hormel was decided in the same circuit only two years afterDeere he court did not address the First Amendment concerns implicated insuch trademark litigation involving parodies, or explore the development ofdoctrinal thought on this topic. 8 Thus, there is a long legal history wherecourts, at best, have haphazardly attempted to balance constitutional rights

109Deere 41

F 3dat 44 .1 Id. at 45 .

Il Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 500 (2d Cir. 1996).112 Id. at 501. 3 Id. 4 Id. 5 Id.116 See id. at 507-08. 7 Id. at 501. The court continued: [a]lthough Spain is in fact made from pork shoulder

and ham meat... countless jokes have been played off the public's unfounded skepticism thatSpare is a product of less than savory ingredients. Id.

118 In Arlen Langvardt's article, Protected Marks and Protected Speech: Establishing theFirst Amendment Boundaries n Trademark Parody Cases he surmises that it is much simplerfor courts to resolve [trademark litigation] if the first amendment thicket is avoided yfinding a defendant not liable on other 'nonconstitutional' grounds. Langvardt, supra note 9, at60-61. The court's treatment of the Spa'arn litigation appears to confirm Langvardt's theory

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and property interests, and in other instances, skirted the complex issues im-plicated in trademark parody litigation.

C. The Legal Interpretation of the Federal Trademark Dilution Act

1 Dilution Cases under the FTDA

The Federal Trademark Dilution Act was enacted in 1995 to create afederal cause of action for trademark dilution. 119 This step by Congress fol-lowed years of inconsistent and ineffective statutory measures by state legis-lators. 20 As Mary Ann Alford, the International Trademark Association'sVice President, noted before the House Judiciary Committee in 1995, mean-ingful nationwide relief was difficult to obtain on the basis of state dilutionlaws.12 ' Some state anti-dilution laws required a showing of confusion, whileothers did not. In addition, state courts had differing views on what type of use was required for a dilution violation. 122 Thus, a federal anti-dilutionact was intended to provide courts with a comprehensible, consistent, andeffective approach to trademark dilution. Unfortunately, recent cases indi-cate that the FTDA has not been interpreted consistently and does not pro-vide the necessary protective foundation for constitutional and propertyinterests.

The first case to address the FTDA was Dr. Seuss Enterprises, L.P. vPenguin Books USA, Inc. 23 The defendants had published a short book ti-tle The Cat Not in the Hat: A Parody by Dr. Juice, which dealt with the O.J.Simpson trial.' 2 4 The plaintiff alleged a violation of the FTDA (in addition to

other legal claims) because the parody closely mimicked the Dr. Seuss booksin packaging, illustrations, and rhyme scheme. 2 5 Penguin Books argued thatthe FTDA did not apply because the non-commercial use exception was ap-plicable in this case. 126 The non-commercial use exception was defined by

because the court ignored any discussion of freedom of expression, despite earlier cases whichattempted to broach the topic e.g., Deere .

119 See H.R. REP. No. 104-364, at 2 1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1029.120 By the time Congress passed the FRDA, twenty-six states had anti-dilution statutes,

while Michigan, New Jersey, and Ohio had judicially-created dilution doctrines. See JEROMEGILSON TRADEMARK DILUTION Now A FEDERAL WRONG: AN ANALYSIS OF THE FEDERALTRADEMARK DILUTION AcT O 1995 3 1996).

121 See Testimony Before the Subcomm. on Courts and Intellectual Property o the Comm.on the Judiciary, 104th Cong., 1995 WL 435759 (statement of Mary Ann Alford, Executive VicePresident of the International Trademark Association). In addition, Thomas McCarthy wrotethat, prior to the enactment of the FTD A, state courts were reluctant to issue nationwide injunc-tions because they recognized the difficulty of injunctions in states that did not enact anti-dilu-tion statutes. 3 MCCARTHY, supra note 4, § 24:74.

122 3 MCCARTHY, supra note 4, § 24:72.123 Dr. Seuss Enterprises, L.P., v. Penguin Books USA, Inc., 924 F. Supp. 1559 (S.D. Cal.

1996).124 Id. at 1561.125 Id. at 1561 1573-74. 26 Id. Section three of the Federal Trademark Dilution Act, Pub. L. No. 104-98, 109 Stat.

985 1996) (codified at 15 U.S.C. §§ 1125 c), 1127 1994 Supp. 1995)), establishes three excep-tions to the act: (A) Fair use of a famous mark by another person in comparative commercialadvertising or promotion to identify the competing goods or services of the owner of the famous

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Senator Hatch to include parody, satire, editorial and other forms of expres-sion that are not a part of a commercial transaction. '127

In its holding, the court recognized that [t]he [U.S. Court of Appealsfor the] Ninth Circuit has not explicitly considered whether and how non-commercial speechmay be regulated by the Lanham Act. '28 Nevertheless,the court viewed the non-commercial exception broadly and rejected plain-tiff's contention that the defendant's use constituted commercial use because the marks were used 'to make their book more entertaining and to conse-quently, sell more books, 129 as too broad. Even though the Dr. Seussimages and rhymes would likely increase the sale of defendant's book, theuse remains non-commercial becausethe defendant's main purpose of theuse of the mark is to comment upon another issue.'

30

The court's decision reflects a broad conception of the non-commercialuse exception and a legal decision that shields a parodist's use of a trademark

owner's mark from dilution litigation, despite ancillary commercial conse-quences.131 Thus, Dr. Seuss's right, whether rooted in property or the FirstAmendment right not to speak, would bow to the public's interest in freedissemination of ideas where a speaker sought to criticize the trademarkitself.' u3 2

This case is significant because it is one of the first cases where the courthas made a m eaningfulattempt to consider First Amendment interests along-side a trademark owner's protectionist interests. 33 What begins to emergefrom this case is a dilution theory that acknowledges the importance of un-hampered editorial and artistic speech.134 Unfortunately, the court does notclearly define the distinction between commercial and

non-commercialuse 35 As a result, other courts have little guidance as to how to assess theconflicting interests.

mark. (B) Noncommercial use of a mark. (C) All forms of news reporting and news commen-tary. d

127 Dr. Seuss 924 F. Supp. at 1574 (quoting 141 CONG REc. S19310 (daily ed. Dec. 29,1995) (statement of Sen. Hatch)).

128 Id. at 1571129 Id. at 1574 (quoting plaintiffs reply brief at 15).130 Id. at 1572. The court explained: Although Penguin's use of these marks is in part

designed to further the sales of its book, the use also has expressive content in that it attempts tocomment humorouslyupon the OJ Simpson trial through the disjunctive effect wrought by theuse of these obviously displaced symbols. I at 1572 n.20.

3 See hi at 1572-74.132 Id at 1573 n.21. Unlike earlier cases such as Pillsbury Doughboy where the sexual

nature of the parody seemed to have influenced the court's conclusion, the court in Dr. Seussnoted that the content and nature of the parody should not have any impact on the court whendetermining questions of dilution. Thus, on appeal, the U.S. Court of Appeals for the NinthCircuit noted that courts should not take into account whether [an alleged parody] is in good orbad taste. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394,1400 n.8 (9thCir. 1996).

133 See Dr. Seuss 924 F. Supp. at 1572.134 Id. at 1572-73 n.21.135 Id at 1573-74. The court provides a sparse analysis regarding the non-commercial use

exception, and simply concludes that the plaintiff's reading of commercial use is too narrow. Id.at 1574.

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Elvis Presley Enterprises Inc. v Capece 6 involved a nightclub called The Velvet Elvis which attempted to recreate the sensationalism and tran-sient desire for flashiness of the 1960s.137 The defendant decorated theproperty with velvet paintings of Elvis and referred to Elvis on the menu and

in advertisements toparody the Las Vegas lounge scene.1 38

The appellatecourt reversed the district court, which had held that The Velvet Elvis didnot infringe or dilute the trademark owner's right in Elvis Presley's name.

139

The appellate court's result was largely based on the finding that the defen-dant could express a similar parody of the sixties without targeting ElvisPresley's persona.140 [T]he necessity to use the marks significantly decreasesand does not justify the use, ' 4 1 and, therefore, the court found the parodydefense irrelevant.

The appellate court in Elvis Presley appears to apply a different ap-proach to dilution litigation, one that considers the availability of alternativemeans of expression. 1 42 The court stated: The Defendants' parody of thefaddish bars of the sixties does not require the use of [Elvis Presley Enter-prises, Inc.'s] marks herefore the necessity to use the marks significantlydecreases and does not justify the use. '1 43 Because the parodist does no tneed to use the protected trademark to capture the dazzle and flash of thesixties, the parody was deemed simply irrelevant. ' 44

The court's quick dismissal of the parody issue significantly hampers par-odists' freedom to determine how to express their social commentary andlimits the means available to make their declarations. The Elvis Presley deci-sion establishes a troubling precedent for courts in the future to subjectivelydetermine whether alternative avenues of expression exist. 145 If, in the fu-

ture a court determines that a parodist has different means of expressing astatement, including one without the use of a trademark, then, as a result, thecourt may exercise an intrusive role in the substance of the parody. Conse-

36 Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998). 37 Elvis Presley Enters., Inc. v. Capece, 95 F. Supp. 783, 788 (S.D. Tex. 1996). The defen-

dant decorated his nightclub with art and cultural paraphernalia to ridicule society's obsessionwith the fleeting and unimportant. Id.

38 Id. at 788-89. 39 Elvis Presley 141 F.3d at 191.140 Id. at 200. 4 Id

142 d

143 Id. The court further notes that the defendant conceded that he could have designed The Velvet Lounge and executed his parody without using Elvis' name or image. Id.

144 Id. The court continued: As an irrelevant factor, parody does not weigh against or infavor of a likelihood of confusion, and the district court erred in relying upon parody in itsdetermination. Id. With this decisive conclusion, the court did not further consider the parodyissue and the First Amendment interests that are implicated by parodies.

145 This notion of alternative avenues of expression has been the basis of prior dilutioncases. For example, in Mutual of Omaha the defendant was selling T-shirts and other parapher-nalia with the logo, Mutant of Omaha in an effort to draw attention to the dangers of thenuclear arms race. The court considered whether an injunction leaves open [alternative] ave-nues of expression, thus depriv[ing] neither [the defendant] nor the public of the benefit of his

ideas. Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402 (8th Cir. 1987). The court con-cluded that the narrowly drawn injunction was consistent with the First Amendment because thedefendant had alternative avenues available for expressing his public policy views. Id.

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quently, individuals may be foreclosed from making their satirical statementsand criticisms in the way they deem most effective.

In contrast, in Mattel Inc. v. MCA Records Inc. 46 the district court de-nied Mattel's request for a preliminary injunction against use of videos and

sound recordings featuring a pop song entitled Barbie Girl. In March 1997,Aqua, a Danish musical group, released a song that parodied Barbie and thevalues she represents by describing her as 'a blond bimbo girl' who loves toparty and whose 'life is plastic. 47 In response, plaintiff contended that thedefendant misappropriated the Barbie mark and violated state and federaltrademark infringement and dilution laws.

148

The court found that the defendant's song was a parody of Mattel'sBarbie doll and protected under the First Amendment.149 The court con-cluded that the parody fell within the non-commercialuse exception because the fact Barbie Girl s sold for money is not dispositive as to whether the use

of the mark is commercial. '50

Moreover, 'the fact that expressive materialsare sold neither renders the speech unprotected, nor alters the level of pro-tection under the First Amendment. 151 Thus, the court did not think thatdefendant's attempt to market their song through ads, videos, and promo-tional stickers affected their First Amendment protection because defend-ants' use of the term 'Barbie' is for the purposes of parody, rather than to sellknock-off Barbie products. '

15 2

In addition, the court maintained that the plaintiff failed to present ade-quate evidence of tarnishment or dilution. 5 3 While the plaintiff contendedthat Barbie represents the ideal woman and is associated with wholesome-ness, the court described the song lyrics as relatively innocuous and not lewd or lascivious. '5 4 Therefore, trademark owners should not trammelon free speech values by seeking to censor parodies like Aqua's commen-tary of Barbie because they are unhappy with the sexual content and itsconnotation.155

146 Mattel, Inc. v. MCA Records Inc., 28 F. Supp. 2d 1120, 1164 C.D. Cal 1998).147 Id. at 1125148 1d at 1126 n.1.149 Id. at 1144-45.15 Id. at 1155-56. The court referred to Virginia State Board of Pharmacy v. Virginia Citi-

zens ConsumerCounci Inc. which defined commercial speech in the First Amendment contextas speech which does no more than propose a commercial transaction. Id. at 1154 (quotingVa. State Bd. of Pharmacy v. Va. Citizens Consumer Council, 425 U.S. 748, 762 (1976)).

5 Id. (quoting Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 970(10th Cir. 1996)).

52 ld t 1155. The court rejected plaintiffs contention that Aqua's marketing schemequalified as commercial use because the fact that defendants' product makes a profit or is suc-cessful... does not affect the protections afforded y plaintiffs reasoning, any book, movie,or song that incorporates a product name in its title would receive less protection the moremoney that it makes. Id t 1154 n.54.

153 Id. at 56154 Id. at 1154-56. The court relied on reports that criticized Barbie as promoting unrealis-

tic and sexist stereotypes of womanhood. Id. In addition, the court was swayed by a book

copyrighted by Mattel that described Barbie as a buxom fashion queen, a sophisticatedgrown-up doll, and a dream goddess. Id.

155 Id. at 1144

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Finally, American Dairy Queen v New Line Productions Inc.1 6 is themost recent trademark dilution case to raise First Amendment considera-tions. In an action for trademark dilution and infringement, the trademarkowner of Dairy Queen, was granted a preliminary injunction against the

defendant's use of Dairy Queens for a movie title.157

The court maintainedthat a parodist s free speech interests were protected despite the injunctionbecause alternative non-problematic titles 158 were available to the defen-dant. 59 Because the defendant insisted that its choice in movie title was notintended to evoke or suggest a relationship with the plaintiff, the court con-cluded that no artistic concept inheres in the proposed title.' 160 As such,the argument that there is no other way to express the idea of the film's titlecarries much less weight, as the idea expressed is not a reference to plaintiff'smark.' 161 Therefore, restricting defendant's use of the trademark will onlyeffect a minute restriction on expression, but it will do much to avoid confu-sion and dilution.' 162

With the enactment of the Federal Trademark Dilution Act, legislators,jurists, and trademark owners hoped for increasing clarity in trademark dilu-tion law. As discussed above, courts have inconsistently interpreted and ap-plied the FTDA, resulting in continued uncertainty in this area. It becomes

156 American Dairy Queen v. New Line Prods., Inc., 35 F. Supp. 2d 727 (D. Minn. 1998). 57 Id. at 728. The defendant had produced a film titled Dairy Queens which satirized

beauty contests in rural Minnesota. No part of the film's content relates, depicts, or refers inany manner to plaintiff's popular restaurants. The film's script does not refer to any kind offrozen dairy treats. Id. at 728-29. In its analysis, the plaintiff and the court focused exclusivelyon the title of the movie and not its content. Id at 733.

158

Id. at734 35.

It is important to note that the defendant's proposed film title w s notbeing used primarily as part of an expressive work, but instead it [was] to 'market, advertise, oridentify' the film. Id. at 732 (quoting Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 40 2(8th Cir. 1987)). Thus, the title selection was deemed to be commercial in nature and did not fallwithin the FrDA's non-commercial use exception. Id

159 Although the defendant complained that there were no other alternative titles whichadequately expressed the author's ideas, the court listed possible other titles that did not impli-cate the plaintiffs trademark. Possible options included Dairy Princesses and Milk Maids.Id at 734.

16 Id

161 Id. The court distinguished the facts at hand from those in Rogers v Grimaldi a caseinvolving Ginger Rogers, the famous actress and dancer, who claimed a film's title, Ginger andFred, infringed upon and diluted the trademarked Ginger Rogers Hosiery she was selling. Rog-ers v. Grimaldi, 875 F.2d 994, 996-97 (2d Cir. 1989). The U.S. Court of Appeals for the SecondCircuit concluded that the trademark was not infringed or diluted. The court applied a balancingtest where section 43(a) of the Lanham Act would apply to artistic works only where the publicinterest in avoiding consumer confusion outweighs the public interest in free expression. Id. at999. The court continued:

[I]n the context of allegedly misleading titles that balance will normally notsupport application of [section 43(a)] unless the title has no artistic relevance to theunderlying work whatsoever, or, if it has some artistic relevance, unless the titleexplicitly misleads as to the source or the content of the work.

Id. Consequently, the court determined that the title Ginger and Fred was intended to evokethe aura of the actress. Here, unlike in Rogers the movie title Dairy Queens was not selectedto evoke an artistic message relating to the trademark. Thus, the argument that there is noother way to express the idea of the film's title carries much

lessweight,

as the idea expressed isnot a reference to the plaintiffs mark. Am. Dairy Queen 35 F. Supp. 2d at 734.162 Am. Dairy Queen 35 F. Supp. 2d at 735.

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increasingly murkier when First Amendment interests enter the picture.Thus, the legal system is currently faced with the difficult task of bridging thegap between conflicting intellectual property interests and free expressionrights.

IV. Where Do We Go From Here? Suggestions or Change

The FrDA was enacted to clarify the confusion of the dilution doctrine.Courts, however, are still faced with complicated constitutional and intellec-tual property concerns as they assess the full spectrum of constitutional ques-tions. Although the FIDA creates a federal cause of action for trademarkdilution, it does not adequately address the constitutional concerns impli-cated in trademark regulation. Therefore, for the dilution doctrine to emergeas a significant factor in trademark protection, theFTDA must be amendedto address free speech concerns in a meaningful way. Two measures need tobe taken in an effort to demystify the dilution doctrine: 1) the FTDA shouldbe amended to explicitly address constitutional rights; and (2) the FTDAmust present a workable test for courts to follow in analyzing those rights.

First and foremost, the language of the Act must be amended to ex-pressly address constitutional rights. Congress thought they had addressedand resolved First Amendment concerns by including a non-com mercialexception to dilution liability. Case history, however, shows that this excep-tion inadequately protects free speech because it fails to provide courts withconcrete guidelines, especially when addressing trademark parodies. There-fore, it would be more effective if the FTDA included specific factors to de-

termine what is commercial use. Furthermore, the FrDA should beamended to include a specific defense for parody and satire.163 Such anamendment would be more effective than trying to read a defense within thenon-commercial use exception because trademark parody represents a con-fusing amalgamation of commercial and creative expression

64

In a society marked by consumerism, it is not uncommon that a parody,even done solely to make a critical statement, may have commercial aspects.For example, the parody of the L.L. Bean catalog was sold within High Society magazine.165 In its decision, the appellate court found the context of the

163 An amendment to 15 U.S.C. § 1125(c) (which lists the exceptions to the dilution causeof action) could read: (D) parodies which are expressive in nature and content, despite secon-dary commercial results. However, the parody must not serve as a label for a product orservice.

64 See Cordero, supra note 21, at 650. Cordero explains: Both artists and advertisers haveused the image or representation of cultural icons to comment on society, criticize the symbol, orsell merchandise. In our pop culture 'where salesmanship must be entertaining and entertain-ment must sell,' the line between commercial and non-commercial speech has disappeared. d

(quoting White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1519 (9th Cir.) (Kozinski, J. dissent-ing) (footnote omitted)). Judge Kozinski argued that the Samsung parody of Vanna White,which was the subject of the litigation, did not differ from a parody on Saturday Night Live or asatiric magazine like Spy Magazine. Both use a celebrity's identity to sell things-one to sellVCRs, the other to sell advertising. Both mock their subjects. Both try to make people laugh.

Both add something, perhaps something worthwhile and memorable, perhaps not, to our cul-ture. Id; see also supra notes 89 and 107 and accompanying text.

65 L.L. Bean v. Drake Publishers, Inc., 811 F.2d 26, 27 (1st Cir. 1987).

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parody to be a key element in its analysis. 166 The court felt that consumerswould know the advertisement was not an authentic trademark owner en-dorsed advertisement because itwas found within a satirical publication.167

Consequently, there would be a very slight risk of financial harm to the

trademark owner. In contrast, in scenarios where the context of the parody isnot as obvious, consumers maynot necessarily understand that the parody ismerely a humorous expression of the author's beliefs.168 The parody mayresult in disparagement and fiscal harm to the trademark owner because con-sumers may begin to associate the product's commercial image with the par-ody's message. Therefore, past judicial attempts to assess constitutionalconcerns by focusing on commercial use have been inefficient, inadequate,and shortsighted.

This issue becomes more complicated whenwe consider the presence oftrademark parodies on the Internet, a medium that blurs the line betweencommerce and expression. As some analystshave observed, [w]ith the ex-plosive growth of the Internet as a new medium of communication, the age-old dispute between free speech and dilution law is being fought on a newbattlefield. It remains to be seen how the tensions.., will be resolved on theInternet. ' 169 As a medium with little government regulation, itremains un-clear how the courts will reconcile free speech and intellectual property onthe Internet, which is largely used for both social communication and com-mercial transactions.170 Therefore, the need for clearer rules defining dilu-tion is even more pressing as more complicated trademark questions loom onthe horizon.

The second change to the FTD proposed by this Note is a new test that

would provide courts with the ability to uniformly apply the dilution doctrine

166 Id at 32-34.167 Id. at 32. The court points out that a parody which engenders consumer confusion

would be entitled to less protection than is granted by our decision... [a] parody which causesconfusion in the marketplace implicates the legitimate commercial and consumer protectionobjectives of trademark law. Id. at 32 n.3.

168 In Balducci, the U.S. Court of Appeals for the Eighth Circuit reversed the lower court's

dismissal of the plaintiff's dilution claim because it concluded that consumers could mistakenlyinfer from the disparaging parody that Anheuser-Busch participated in the creation of the adver-tisement. Anheuser-Busch v. Balducci Publc'ns, 28 F.3d 769, 775 778 (8th Cir. 1994). The de-fendant, Balducci placed its parody on the back cover of Snicker, a humor magazine, with a smalldisclosure. The court concluded that a casual reader might fail to appreciate its editorial pur-pose. Even the ean court felt it significant that 'neither the [catalog parody] nor appellant'strademark was featured on the front or back cover of the magazine. ' Id. at 778 (quoting L.L.Bean, 811 F.2d at 32) (alteration in original).

169 David H. Bernstein Sheri Lynn Rabiner, Dilution Rights vs The First Amendment.Resolving the Tension, INTELL. PROP. STRATEGIST, Mar. 1999, at 1, 1.

170 See generally Gregg Duffey, Note, Trademark Dilution Under the Federal TrademarkDilution Act of 1995: You ve Come a Long Way Baby-Too Far, Maybe?, 39 S. Tax. L. Rav. 133(1997); Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1239 (N.D. Ill. 1982) (concluding thatdefendant is a cybersquatter who earns a profit by establishing domain names and selling themback to trademark owners); Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430(S.D.N.Y. 1997) (holding that defendant's use of plaintiffs Planned Parenthood service mark

as part of a Internet domain name meets the commercial use requirement of the FTDA; on theweb site, defendant condemned abortions, posted photographs of aborted fetuses, and sold hisbook on this topic).

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without infringing constitutionally protected rights. Currently, differentcourts present contrasting judgments as to whether a certain parody is indeedcommercial, or whether it has what the court considers to be a message. 17 Without the guidance of specific legal rules, we rely on the court's subjective

determination of which parodies express a legitimate message and which in-trude on the trademark owner's goodwill. This is particularly troubling whenpast cases reflect courts' disapproval for sexually explicit, lewd, or graphicparodies. 172 It appears that parodists' constitutional protection is signifi-cantly curtailed when their parodies associate public trademarks with innu-endo or questionable behavior. 173 Furthermore, by relying on the haphazard,at-will determination of the court, the parodist is not provided with adequatenotice as to what is and is not actionable dilution. Trademark owners, paro-dists, and society deserve a clearer definition of protected trademarkparodies.

The focus on commercial use or a balancing approach should be re-placed with a test that protects the iconic associations of a trademark withoutstifling artistic or social commentary. To accomplish this, courts must f

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