Victor's Victory
Abstract for Victor's Victory
This paper covers the unanimous Supreme Court victory of "Victor's Little
Secret" over "Victoria's Secret." The bottom line is that unless the
plaintiff can prove damage, its trademark dilution case will fail.
This case continues the unthawing of puckish creativity of Campbell v.
Acuff-Rose. In exploring the changes Victor's victory makes, past cases
are covered, including ones that involve Gucci Goo diaper bags and Lardashe
jeans, and appropriation cases such as "Here's Johnny."
Sandra Davidson
115 Walter Williams
School of Journalism
University of Missouri
Columbia, Missouri 65211
phone: (573) 882-0676
e-mail: [log in to unmask]
Presented to Law Division
AEJMC Convention, 2003
Victor's Victory
Victor Moseley's victory over a challenge by Victoria's Secret[1] lets him
keep the name of his store, Victor's Little Secret, where one can purchase
lingerie, whips, and other exotica. More important, the unanimous victory
that came down on March 4, 2003, continues the Supreme Court's unthawing of
puckish creativity such as that displayed by 2 Live Crew in its rap version
of the song "Pretty Woman."[2] The high Court seems to be giving clear
signals that borrowing from others' names or works is acceptable so long as
the borrower's borrowing does not damage the borrowee.
This paper will cover Victor's victory and what it means. The paper will
discuss the freedom the Supreme Court appears to be granting to persons
such as store owners, manufacturers, and advertisers to express a puckish
wit. But it will also discuss the legal restraints that remain untouched
by Victor's case.
The Broad Picture
The bottom line for Victoria's Secret (pun intended) and similar
plaintiffs is this: Unless the plaintiff can prove damage, its trademark
dilution case will be a loser. This overturns the doctrine held in too
many cases that a plaintiff's showing of a mere likelihood of damage would
legally suffice in dilution cases. No more. A mere likelihood of damage
now spells a clear certainty of failure for a complaining plaintiff.
In more concrete terms, what does Victor's victory means for the
public? Will the average consumer notice any fallout from the Supreme
Court's decision? Hopefully, yes. While most consumers will not be
thinking "thank you, Victor," they may at least get a few more chuckles as
they shop—and promoting laughter is, to borrow Martha Stewart's phrase, "a
good thing."
So persons such as store owners, manufacturers, and advertisers should
have more freedom, the public should get more laughs, and suers should have
more difficulty.
Let's not overlook others who perhaps stand to win big: marketing
analysts (both survey takers and those who analyze the results). When the
Supreme Court says that plaintiffs must prove damage to win
trademark-dilution cases, what does the Court mean? How can one prove
damage? If the "senior" and "junior" are not identical, most likely by a
survey. Briefly, the Court addresses this problem of proof, but in a
rather cursory and dismissive fashion. The Supremes say this:
Noting that consumer surveys and other means of demonstrating actual
dilution are expensive and often unreliable, respondents (Victor's Secret)
and their amici argue that evidence of an actual "lessening of the capacity
of a famous mark to identify and distinguish goods or services," ... may be
difficult to obtain. It may well be, however, that direct evidence of
dilution such as consumer surveys will not be necessary if actual dilution
can reliably be proven through circumstantial evidence—the obvious case is
one where the junior and senior marks are identical. Whatever difficulties
of proof may be entailed, they are not an acceptable reason for dispensing
with proof of an essential element of a statutory violation.[3]
On the other hand, owners of valuable trademarks clearly will face greater
difficulty in trying to protect their interests. These owners will just
have to face the reality that the Supreme Court will allow some
lampooning. Still, owners of trademarks retain powerful protection tools
under federal laws such as the broader Lanham Act[4] and the more narrow
cyberpiracy laws that protect domain names.
To flesh out this broad picture, first, this paper will cover the Supreme
Court's decision in Victor's case. Second, the paper will look at some
changes Victor's case may make by reflecting on some past cases and
pointing out what ones might be decided differently if decided
today. Third, the paper will look at some legal freedoms and restraints
that remain the same after the victory for Victor.
I. Victor's case
The legal backdrop of Victor's victory is a 1995 amendment by Congress of
the Trademark Act of 1946.[5] The Trademark Act is also known as the
Lanham Act. The amendment to it is called the Federal Trademark Dilution
Act (FTDA). The FTDA has as its purpose the protection of famous marks
from "dilution," which the law defines as "the lessening of the capacity of
a famous mark to identify and distinguish goods or services, regardless of
the presence or absence of" the following two things: "(1) competition
between the owner of the famous mark and other parties, or (2) likelihood
of confusion, mistake, or deception."[6]
The precise question asked in Victor's case, according to the Supreme
Court, is this:
"whether objective proof of actual injury to the economic value of a famous
mark (as opposed to a presumption of harm arising from a subjective
`likelihood of dilution' standard) is a requisite for relief under the
FTDA."[7] The Court answered with one voice: Objective proof of actual
injury is necessary; "likelihood" will not suffice. The Court opined that
"...at least where the marks at issue are not identical, the mere fact that
consumers mentally associate the junior user's mark with a famous mark is
not sufficient to establish actionable dilution."[8]
The factual context for the Court's decision is sexy, literally, involving
seductive lingerie and sex toys. Victor's story started unfolding on
February 12, 1998, when an ad for "Victor's Secret" in a weekly publication
in Fort Knox, Kentucky, proclaimed: "GRAND OPENING Just in time for
Valentine's Day!" The ad told of such things as "Intimate Lingerie" and
"Adult Novelties/Gifts" that would await patrons.[9]
Now comes the military to the rescue of the pure name of Victoria's
Secret. An army colonel read the ad. The Court's opinion describes the
military man as "offended by what he perceived to be an attempt to use a
reputable company's trademark to promote the sale of 'unwholesome, tawdry
merchandise.'"[10] Taking the bull by the horns, so to speak, the colonel
wrote a letter to the dear folks at Victoria's Secret, who in turn trotted
out their own form of cavalry--their lawyer. The lawyer then wrote Victor,
telling him that use of the name "Victor's Secret" for a store that sold
lingerie was likely both to cause confusion with the "VICTORIA'S SECRET"
mark and to dilute the mark's distinctiveness. The lawyer wanted Victor to
stop using the name "Victor's Secret."[11]
Victor accommodated the lawyer--to some extent--by changing his store's
name to "Victor's Little Secret."[12]
Not satisfied, the folks at Victoria's Secret ordered their lawyer to
unleash the dogs of legal war, and the suit that traveled all the way to
the Supreme Court followed. The suit claimed that the use of "Victor's
Little Secret" constituted trademark infringement because it was "likely to
cause confusion and/or mistake."[13] The suit also claimed unfair
competition because of alleged misrepresentation,[14] and it claimed
"federal dilution" violating the FTDA. The dilution count claimed that
Victor's Little Secret was "`likely to blur and erode the distinctiveness'
and `tarnish the reputation' of the VICTORIA'S SECRET trademark."[15]
The district court, faced with competing requests for summary judgments,
threw out the confusion and misrepresentation claims because it found no
evidence there was actual confusion between the marks of Victor's Little
Secret and VICTORIA'S SECRET. The court therefore ruled that "no
likelihood of confusion exists as a matter of law." So defendant Victor
won those parts of the case,[16] and the plaintiffs did not appeal those
adverse rulings.[17] However, the plaintiffs won on the dilution
claim. In reviewing the trial judge's decision, which the Court of Appeals
for the Sixth Circuit affirmed, the Supreme Court described the trial
judge's ruling as follows:
Reasoning from the premise that dilution "corrodes" a trademark either by
"'blurring its product identification or by damaging positive associations
that have attached to it,'" the court first found the two marks to be
sufficiently similar to cause dilution, and then found "that Defendants'
mark dilutes Plaintiffs' mark because of its tarnishing effect upon the
Victoria's Secret mark." ... The court did not, however, find that any
"blurring" had occurred.[18]
The Supreme Court pointed out that several sections of the Lanham Act
refer to "likelihood" of harm instead of what the Court calls "completed"
harm. But the FTDA says that a famous mark's owner is only entitled to an
injunction if a commercial use of a trade mark or trade name "causes
dilution of the distinctive quality" of the mark.[19]
In a nutshell, the Supreme Court concluded that "actual dilution must be
established."[20] The Court also made clear that "'Blurring' is not a
necessary consequence of mental association. (Nor, for that matter, is
'tarnishing.')"[21] In the context of this case, the Court said:
The record in this case establishes that an army officer who saw the
advertisement of the opening of a store named "Victor's Secret" did make
the mental association with "Victoria's Secret," but it also shows that he
did not therefore form any different impression of the store that his wife
and daughter had patronized. There is a complete absence of evidence of
any lessening of the capacity of the VICTORIA'S SECRET mark to identify and
distinguish goods or services sold in Victoria's Secret stores or
advertised in its catalogs. The officer was offended by the ad, but it did
not change his conception of Victoria's Secret.[22]
The Court reversed and remanded Victor's case.
II. "Gucci Goo": Reflecting on What May Change after Victor's Case
What difference might Victor's Victory make to the public and to persons
suuch as store owners, manufactorers and advertisers? Reflecting on a few
past cases may give some indications of some possible concrete changes--but
also may give some pause at trying to paint with too broad a brush.
Prior to passage of the FTDA, advertisers with a sense of humor were being
struck down by courts, but somewhat randomly. Occasionally the judicial
lightning would miss a humorous advertiser, but no sure cover appeared
available to ward off the Zeus-like bolts from unappreciative courts. But
maybe Victor's case will provide the needed cover.
For example:
• May consumers now be able to buy "Gucci Goo" diaper bags? Gucci had
prevailed in a suit against "Gucci Goo."[23]
• For consumers who might actually shop at Victor's Secret, might
underwear with a "Genital Electric" monogram now be available? General
Electric had prevailed in an earlier case.[24]
• And might consumers who like to wear messages on their T-shirts be able
to augment their wardrobes with T-shirts that feature a "Mutant of Omaha"
caption under an emaciated Indian's head with a feather bonnet? Mutual of
Omaha insurance company had not been amused and successfully sued.[25]
On the other hand, "Lardashe" jeans had already prevailed in court over
Jordache's objections.[26] The Lardashe case involved a small New Mexico
enterprise, Hogg Wyld, Limited, which later changed its name to Oink,
Inc. Two women ran the home-based operation that made jeans for larger
women. They considered several names for their jeans, including "Calvin
Swine" and "Vidal Sowsoon," but then they settled on the name
"Lardashe." Jeans manufacturer Jordache filed suit for tradename
infringement under the Lanham Act, which prohibits unauthorized use of a
trademark in a manner which "is likely to cause confusion."[27] The Court
decided the name Lardashe was meant to amuse, not to confuse: "An intent
to parody is not an intent to confuse the public."[28] Nor did Lardashe
"dilute" or "tarnish" the trademark under New Mexico law.[29]
Why did courts strike down Gucci Goo, Genital Electric and Mutant of Omaha
and yet let Lardashe prevail? The primary difference in the cases that
concern accessories or wearing apparel arguably appears to be whether the
courts involved had a sense of humor. Jurisprudence based on judges'
proposensity to laugh or frown, however, creates a lot of uncertainty, and
uncertainty can surely cause a chilling effect.
With some of the chill of uncertainty gone, will chilled Michelob Oily now
be able to entice thirsty consumers? Anheuser Busch, maker of Michelob
Dry, had prevailed in a parody case.[30]
Courts decided these past losing cases--Gucci Goo, Genital Electric,
Mutant of Omaha, and Michelob Oily--prior to the passage of the
FTDA. Insofar as they depended on a "likelihood of dilution," they fail to
pass muster under Victor's victory. But just looking at one of the cases,
the Michelob Oily case, hopefully will serve to point out a difficulty when
trying to pronounce old judgments defunct: Courts sometimes decide cases
on multiple grounds. This is the situation for Michelob Oily.
The parody ad for "Michelob Oily" said, "One Taste and You'll Drink It
Oily."[31] The Eighth Circuit decided that the trial court erred in
concluding there was no likelihood of confusion. The appeals court used
the following language:
Many courts have applied, we believe correctly, an expansive
interpretation of likelihood of confusion, extending "protection against
use of [plaintiff's] mark on any product or service which would reasonably
be thought by the buying public to come from the same source, or thought to
be affiliated with, connected or sponsored by, the trademark owner."[32]
Note that the Michelob Oily case is speaking about "likelihood of
confusion," not "likelihood of dilution," which is the subject of Victor's
case.
Maybe more interesting is the fact that the plaintiff, Anheuser-Busch, had
conducted a survey, and the appeals court put great weight on the survey's
findings. The court said, "The survey evidence, whether considered as
direct or indirect evidence of actual confusion, tilts the analysis in
favor of Anheuser Busch."[33] The survey showed that of those who were
surveyed, more than half thought that the defendant had to get approval
from Anheuser-Busch to publish the ad, and "many" apparently thought the
defendant in fact had received Anheuser-Busch's approval. And, the court
said, "Six percent thought that the parody was an actual Anheuser-Busch
advertisement."[34]
In short, whether talking about the Michelob Oily case or other prior
cases, trying to make pronouncements that the courts would now definitely
make a different decision is rather slippery business.
Making categorical statements about how courts will decide cases is
perhaps equally slippery and dangerous when trying to apply law
prospectively instead of retrospectively. An example of potential dangers
may be illustrated by two parody cases, one involving a Roy Orbison parody
and the other a Dr. Seuss "parody."[35]
The Supreme Court case involving alleged copyright infringement by the
2 Live Crew parody of Roy Orbison's song "Oh Pretty Woman"[36] appears
pretty much to give a bright-green light for transformative
parody.[37] The rap lyrics of "Pretty Woman" certainly do transform Roy
Orbison's "Oh, Pretty Woman." The Supreme Court opinion included Appendix
A of Orbison's lyrics and Appendix B of 2 Live Crew's lyrics; simply
comparing the two leaves no doubt that 2 Live Crew's rap lyrics of "bald
headed woman" and "big hairy woman" fail to substitute for Orbison's
lyrics.[38] In its unanimous decision, the Supreme Court opined that "the
more transformative the new work, the less will be the significance of
other factors, like commercialism, that may weigh against a finding of fair
use."[39]
In the case involving a reworking of Dr. Seuss' "Cat in the Hat," a Dr.
Juice tells the tale of the O.J. Simpson double-murder trial in "A Cat Not
in the Hat."[40] This case involves both copyright and trademark
infringement, and the Ninth Circuit preliminarily enjoined publication and
distribution of the book on both grounds.[41] If one stopped analyzing the
"The Cat Not in the Hat" after concluding it was transformative and clearly
not a substitute for "The Cat in the Hat," one would have missed how the
appeals court might rule. The moral of the story is that not all alleged
parodies are really parodies, which must poke fun at the original
work.[42] The Ninth Circuit quoted the Supreme Court in the Orbison parody
case as saying, "The threshold question when fair use is raised in defense
of parody is whether a parodic character may reasonably be perceived."[43]
But even obvious "parodic character" has not been enough to ward off
litigation—especially not if one has big bucks, say, Starbucks. Artist
Kieron Dwyer featured a Starbuck's logo parody in Lowest Comic Denominator,
which he self-publishes—a mermaid, who held up a coffee cup in one hand a
cell phone in the other, and who proudly displayed her nipples and a navel
ring. Dwuer dropped the words "Starbucks coffee" and added "consumer
whore." Apparently trying to get Dwyer to wake up and smell the coffee,
Starbucks sued. Dwyer fought back, claiming his parody "clearly pokes fun
not just at Starbucks, but at consumerism in general." A year into the
litigation, Starbucks settled out of court with Dwyer, who will continue to
use the parody for some editorial purposes.[44]
It would be nice to be able to say that Victor's case gives bright lines,
unlike the way it used to be.[45] If that were true, the analysis would go
something like this: Under the old "likelihood of damage" standard in
dilution cases, the courts would apply their own judgments as to what was
likely to damage. If a court had a sense of humor, it would not see
damage. If a court did not have a sense of humor, it would see damage. In
short, there used to be an inverse relationship between a court's sense of
humor and a plaintiff's probability of success. But no more. A sense of
humor or its lack will no longer determine the outcomes of these
cases. The courts are now being forced into more quantitative decisions
based on such devices as surveys instead of qualitative decisions where the
likelihood of damage is in the eye (or funny bone) of the beholder.
Balderdash. The decisions are still going to depend at least in part on a
court's sense of humor. But the Supreme Court has given us more room to
laugh with Victor's case, laugh with him and at his "Little Secret." The
Court has given the signal for lower courts to lighten up in dilution cases
unless the plaintiffs can prove damage. The plaintiff's light load of
"likelihood of damage" has been transformed by the high Court into the
heavy weight of showing damage. For that alone, would-be defendants should
rejoice.[46]
Part III: A Long History of Freedoms and Limits
While Victor's victory gives a little more breathing space to him and
others who like to express a little puckish wit in their business and
advertising adventures, these folks have long enjoyed quite a bit of
creative freedom. On the other hand, they have and still do face some real
restraints.
First Amendment protections under the FTDA
On the positive side, the First Amendment is the advertiser's friend[47]
and the Federal Trademark Dilution Act (FTDA) continues that
tradition. As the Supreme Court pointed out in Victor's case, the FTDA,
which is a 1995 amendment to the Lanham Act, included two exceptions to
address concerns expressed earlier by some members of Congress that the
FTDA would infringe on First Amendment rights. Those two exceptions
are: "(A) Fair use of a famous mark by another person in comparative
commercial advertising or promotion to identify the competing goods or
services of the owners of the famous mark" and (B) Noncommercial use of a
mark."[48] Use in comparative ads, obviously, is a necessity if
comparative ads are going to make any sense; noncommercial uses opens up
vistas for critique, news stories, parodies, and various others forms of
expressive mischief-making.
Commercial uses, however, have pitfalls, not the least of which involves
the use, not of a tradename, but of an individual's name. The problem is
"appropriation."
Appropriation restraints for commercial use
• "Here's Johnny"
One of the most famous or infamous cases involves a funny use of a name
for a commercial purpose involved Johnny Carson; unfortunately, the
Michigan court that heard the case was not amused. Carson sued because of
a portable toilet being marketed as "Here's Johnny"—"The World's Foremost
Commodian."[49] The Sixth Circuit said there was an even clearer
appropriation of Johnny Carson's persona than if his full proper name had
been used.[50] According to the court, "[A] celebrity's legal right of
publicity is invaded whenever his identity is intentionally appropriated
for commercial purposes."[51]
• "Here's Vanna?"
Appropriation of "identity" arguably reached absurd proportions in a case
involving Vanna White. Or did it really involve Vanna White? A Samsung
commercial showed a robot wearing a blonde wig and too much jewelry. The
robot in no way triggered a "Hey, that's Vanna" response. But the robot
was turning letters on a dead-ringer for the "Wheel of Fortune" set. A
series of ads for Samsung Electronics set an item from popular culture and
a Samsung product together in the twenty-first century to show the product
would still be used. An ad for its VCRs showed the robot.[52] The caption
said: "Longest-running game show, 2012 A.D." While the Ninth Circuit
stated that the "robot ... was not White's `likeness,'" the court concluded
that she could sue for appropriation of her "celebrity identity."[53]
• Woody?
Humor likewise did not prevail when Comedian Woody Allen got an injunction
against a clothing store, Men's Fashion World, that was using a Woody Allen
look-alike in an ad.[54] The caption said, "Men's Fashion World made me a
sex symbol." Even though the ad had a disclaimer which said that the man
pictured was a celebrity look-alike,[55] a New York federal trial court
thought consumers could be confused over whether Woody Allen endorsed the
fashions from Men's Fashion World.[56] Woody sued under the Lanham Act,
which provides protection from confusion.[57]
First Amendment protection from appropriation
• Rev. Jerry Falwell
Perhaps the most famous "parody" case the Supreme Court ever heard
involved an ad parody for Campari Liquer featuring a smiling Rev. Jerry
Falwell that ran in Hustler magazine.[58] Campari had been running ads
with celebrities talking about their "first time" (double entendre
intended) drinking the liqueur, and in the Hustler parody ad, Rev. Jerry
Falwell was talking about his "first time" with his mother in an outhouse
in Lynchburg, Virginia. Both were supposedly drunk at the time.[59] At
the bottom of the page, in fine print, appeared these words: "Ad
parody—not to be taken seriously."
Falwell sued Hustler magazine and its publisher, Larry Flynt, for libel,
appropriation, and intentional infliction of emotional distress.[60] The
trial judge dismissed Falwell's appropriation claim because Hustler had not
used Falwell's name or likeness for commercial purposes.[61] The jury
ruled against Falwell on libel, finding that the parody could not
"reasonably be understood as describing actual facts...." But the jury did
award Falwell $200,000 for intentional infliction of emotional
distress.[62] The Supreme Court, however, refused Falwell any recovery at
all.[63]
In a glowing endorsement of free speech, the Supreme Court unanimously
made clear its interest in preserving the "free trade of ideas"—even when
the speech is patently offensive and is intended to inflict emotional
distress. The High Court expressed concern over the chilling effect on
political cartoons if plaintiffs such as Falwell could collect for
emotional distress.[64] History is on the side of "caustic" cartoons, the
Court said: "[F]rom the early cartoon portraying George Washington as an
ass[65] down to the present day, graphical depictions and satirical
cartoons have played a prominent role in public and political debate."[66]
It's not at all surprising that the high Court is favorably predisposed to
parodies used for political commentary and to political cartoons; of
course, the Court wants to promote political speech instead of chilling it.[67]
As a general conclusion, if an article--or even trading cards--expresses
an opinion on a newsworthy topic, whether in a serious or satirical vein,
this fact will override any incidental commercial purposes. It is only the
exclusively commercial use of a person's name or likeness that constitutes
forbidden appropriation.
• Barry (Treasury) Bonds
The makers of "Cardtoons," trading cards that parodied baseball players,
sought a declaratory judgment saying that the cards did not violate the
players "right of publicity"[68] (the right against appropriation for the
rich and famous). As the Tenth Circuit said, "The trading cards ridicule
the players using a variety of themes." For example, Cardtoons featured
Barry Bonds, who had signed a $43.75 million six-year contract, as
"Treasury Bonds."[69] The court flatly rejected any argument by the Major
League Baseball Players Association (MLBPA) about "likelihood of
confusion," saying that "no one would mistake MLBPA and its members as
anything other than the targets of the parody cards."[70]
Of course, the card makers "knowingly" used the MLBPA members' names and
likenesses, but this did not infringe upon their right of publicity, the
court said, because the First Amendment shielded the card makers. In the
court's words:
Cardtoons' parody trading cards receive full protection under the First
Amendment. The cards provide social commentary on public figures, major
league baseball players, who are involved in a significant commercial
enterprise, major league baseball. While not core political speech...,
this type of commentary on an important social institution constitutes
protected expression.
The cards are no less protected because they provide humorous rather than
serious commentary.[71]
The court also pointed out that "Cardtoons' trading cards...are not
commercial speech--they do not merely advertise another unrelated product."[72]
• A**holes?
For example, Peggy Ault, who founded an organization in Oregon to oppose
an adult videostore, and Dorchen Leidholdt, a New Yorker who founded Women
Against Pornography, were both recognized by Hustler as its "Asshole of the
Month," and then they sued.[73] Hustler superimposed their faces over the
naked rear end of a bent-over man and then called Ault a "tightassed
housewife"[74] and called Leidholdt a "pus bloated walking sphincter,"[75]
among other things. The Ninth Circuit Court of Appeals rejected their
claims of misappropriation of their images for a commercial purpose. The
court said of Ault, "While Hustler's objectives may well have commercial
undertones, the article, as an expression of constitutionally protected
opinion on a matter of public interest, is `newsworthy.'"[76] The court
also dashed Leidholdt's claim "because Leidholdt's image was not used
exclusively for Hustler's commercial gain." The purpose, as in Ault, was
"not simply commercial," because Hustler was expressing its opinion on the
pornography debate."[77]
• Gary Trudeau
In addition, fictional works, including parody, that include the names of
famous people have likewise received protection from courts. As the
Supreme Court of California said:
No author should be forced into creating mythological worlds or characters
wholly divorced from reality. The right of publicity derived from public
prominence does not confer a shield to ward off caricature, parody and
satire. Rather, prominence invites creative comment. Surely, the range of
free expression would be meaningfully reduced if prominent persons in the
present and recent past were forbidden topics for the imaginations of
authors of fiction.[78]
The Court then gave the example of cartoonist Gary Trudeau and his
"Doonesbury" strip, which satirizes famous people.[79]
An Exception to Appropriation Law Exists for Some Ads: "Incidental Use"
• Howard Stern's Private Parts
As an example, radio shock-jock Howard Stern lost to Delphi Internet
Services Corporation.[80] Delphi used a photo of Stern in leather pants
that showed his bare buttocks to advertise Delphi's bulletin board about
Stern's candidacy for governor of New York. The ad asked whether Stern
should be elected, and then it proclaimed: "You've seen him. You've been
exposed to his Private Parts. ... Maybe it's time to tell the world
exactly what you think. ..."[81]
Responsible for $1.7 million in fines for indecency against Infinity
Broadcasting, Inc.,[82] Stern did not complain about his back side being
displayed. He complained that Delphi appropriated his name and
likeness. But appropriation law's "incidental use" exception applies to
news vendors such as newspapers or broadcasters that may use a person's
name or photo in ads if they have already used the material for a news
purpose.[83] Delphi had first used Stern's name and likeness in an
Internet bulletin board discussing Stern's gubernatorial race, a
permissible use, so Delphi could then use Stern's name and photo in its ad
for its bulletin board. The court gave Delphi the "same protection" it
would give "a more traditional news disseminator engaged in the
advertisement of a newsworthy product."[84]
Delphi was promoting political speech, which is at the core of speech
protected by the First Amendment. Of course, lower courts, as well as the
Supreme Court, want to encourage political discourse.
The Internet--fertile ground for new laws and mischief
Domain names:
Anti-cybersquatting protection applies under the Lanham Act.[85] It
prohibits "bad faith intent to profit" by use of a domain name that in turn
uses a mark that is "identical or confusingly similar to a distinctive
mark."[86] If the mark is a "famous mark," the prohibition is against use
of a domain name that is "identical or confusingly similar to or dilutive
of the mark."[87] These provision also apply to a "personal name which is
protected as a mark."[88] But in 1999 Congress also enacted special
provisions to protect individuals from piracy, called, unsurprisingly,
"Cyberpiracy protections for individuals."[89] It says, in part:
Any person who registers a domain name that consists of the name of another
living person, or a name substantially and confusingly similar thereto,
without that person's consent, with the specific intent to profit from such
name by selling the domain name for financial gain to that person or any
third party, shall be liable in a civil action by such person.[90]
Many individuals have fallen victim to having their names registered as
domain names by others. Some end up settling their suits out of court, as
John Tesh did with the cyberpirate who registered
"johntesh.com."[91] Some, such as Mick Jagger, Brad Pitt, and Tina Turner,
have availed themselves of the dispute-resolution services of the World
Intellectual Property Organization.[92]
In many domain name cases, corporate plaintiffs have prevailed.[93] In
some early instances of domain name "mischief" involving corporate rivals,
out-of-court resolutions stopped the harm.[94]
Courts seem particularly reluctant to side with defendants who are not
only diluting a trade name but arguably tarnishing it as well with
sleaze. For example, in Hasbro, Inc. v. Internet Entertainment Group,[95]
a court ruled that a "sexually explicit" Internet site, "CANDYLAND.com,"
diluted Hasbro's "CANDY LAND" mark. Likewise, a court sided with "Toys `R'
Us" over "Adults `R' Us," which the defendant was using as its domain on
the Internet.[96] Even Playboy got tarnished--by Playmen.[97]
Tarnishing, apparently, can come in many forms. O.J. Simpson did not get
to register "O.J." or "The Juice" as a trademarks after a pitched battle
waged by a gentleman who persuaded the Court of Appeals for the Federal
Circuit that he had standing to sue because "O.J." as a trademark would
damage him.[98] William Ritchie's launching point was a section of the
Lanham Act that says a trademark may be refused if it "consists of or
comprises immoral, deceptive, or scandalous matter."[99] The determination
of what is "scandalous or immoral," the court pointed out, must be
determined "in the context of contemporary attitudes." The Patent and
Trade Office, the court said, should not assume that its officials know the
views of the public, and thus the court has encouraged allowing "opposition
proceedings."[100] In fact, the Lanham Act says: "Any person who believes
that he would be damaged by the registration of a mark ... may, upon
payment of the prescribed fee, file an opposition in the Patent and
Trademark Office, stating the grounds therefor."[101]
Ritchie had to establish two things--a "real interest" and a "reasonable"
basis for thinking he would be damaged by granting O.J. his
trademarks. The PTO Board, however, had interpreted "real interest" too
narrowly.[102] Taking a broad view, the court argued from assuming as the
truth:
Mr. Ritchie's belief in a loving and nurturing relationship between husband
and wife and the allegation that the marks are synonymous with wife-beater
and wife-murderer. Given those assumptions, the potential injury sustained
by Mr. Ritchie if the mark is registered is the disparagement of his
alleged belief in a loving and nurturing relationship between husband and
wife. Thus, Mr. Ritchie, himself, would suffer an injury—disparagement.[103]
Ritchie then persuaded the court of the reasonableness of his belief that
he would be damaged by gathering signed petitions from people all over the
country who agreed the proposed trademarks were scandalous and would
encourage spouse abuse. Thus, the court said, Ritchie had "objective
proof" that others believed as he did.[104]
Ritchie, who is a patent attorney, subsequently received a call from the
Patent and Trademark Office informing him that Simpson would not receive
his requested trademarks.[105]
One may only speculate whether the Patent and Trademark Office would have
granted Simpson a trademark for "O.J.'s Little Secret."
Conclusion
From one perspective, Victor's unanimous victory can be viewed as just
another example of the Supreme Court's telling people to "lighten up."
The Court sent a "lighten up" message to political types when it
unanimously shot down Rev. Jerry Falwell when he tried to collect for the
emotion pain a Hustler ad parody caused him. In effect the high Court
warned political figures that they would just have to develop a sense of
humor or get out of the game. No coddling of thin-skinned whiners allowed,
the Court in essence decreed.
Unanimously the Court told the music world to "lighten up" when it ruled
in favor of
2 Live Crew's rap-style parody of Roy Orbison's "Oh Pretty Woman." The
"transformative," bawdy lyrics could not substitute for the sugary
sweetness of Orbison's song from a perhaps sweeter time. If the pocketbook
isn't hurt, the Supreme Court seemed to be saying, forget about a
songster's sentimentality over the flaying of his brainchild.
And this past March, the high Court unanimously sent its "lighten up"
message to owners of trademarks. If you cannot show actual dilution,
forget that cause of action. "Likelihood" will not fly. Mental
association does not equate with blurring or tarnishing, said the high
Court. If you cannot prove damage, stay out of the courtroom, the Court is
saying. Get over it, Victoria's Secret! Live and let live!
Perhaps a refreshing sentiment from the Court in Victor's case would have
been, "For pity's sake, Victor is his NAME!" People need to be able to use
their own names, and the law should protect that use. The cyberpiracy law
protected John Tesh from an online business registered "JohnTesh.com" as a
domain name.[106] That seems fair. The law, on the other hand, shut out
O.J. Simpson from registering as a trademark the initials "O.J."[107] That
seems fair, too.
The law will have to continue to try to balance the scales of what is
fair. Clearly, there are limits. No domain name skullduggery will be
allowed. Forget misrepresentations and deception. Keep it clean--enough,
at least.[108] But now with Victor's victory, store owners, manufacturers
and advertisers should also experience a little more freedom to play around
with names--names to go alongside "Victor's Little Secret" on mall shops or
alongside "Lardashe" jeans on the shelves. Of course, the balancing of
interests by courts will continue, but the scales have now tipped in favor
of the Victors of this world and those who help them advertise.
Appendix A: Some Trademark Law Basics
Trademark Registration: 15 U.S.C. § 1051
Generic terms may not be registered. See, e.g., AOL, Inc. v. AT&T, 64 F.
Supp. 2d 549 (E.D. Va. 1999).
Imitation: Federal trademark law (which includes trade name) prohibits
"imitation of a registered mark in connection with the sale, offering for
sale, distribution, or advertising of any goods or services" when "such use
is likely to cause confusion, or to cause mistake, or to deceive." 15
U.S.C. § 1114(1)(a).
Dilution: But even when there is no possibility of confusion,
protection of trademarks may be granted to avoid "dilution" of the
trademarks. The statutory definition of dilution is the "lessening of the
capacity of a famous mark to identify and distinguish goods or services,
regardless of the presence or absence of--(1) competition between the owner
of the famous mark and other parties, or (2) likelihood of confusion,
mistake, or deception." 15 U.S.C. § 1127. (This is the Federal Trademark
Dilution Act, the provision covered by the Supreme Court in Moseley v. V
Secret Catalogue, Inc.,123 S.Ct. 1115, 155 L.Ed.2d 1 (2003).)
Innocent infringement: When innocent infringement occurs and causes
dilution, an injunction is the only remedy. 15 U.S.C. § 1125(c)(2).
Willful infringement: For willful infringement, owners of a registered
trademark may generally recover (1) any profits the willful violator
received, (2) damages the owner sustained, and (3) the costs of suing
(which means court costs, such as filing fees). Courts have broad
discretionary power to award the amount of money they deem "just,"
including treble damages. And "in exceptional cases," the court may award
attorney fees to the winning side. 15 U.S.C. § 1117 (1997).
Counterfeit trademarks: For counterfeit trademarks, treble damages is the
rule, plus "reasonable" attorney fees. 15 U.S.C. § 1117(b). A plaintiff
can elect to have the judge award "statutory damages"--the amount the judge
considers "just" and that fits within the statutory guidelines. In cases
of "willful" use of a counterfeit mark, the guidelines call for a judgment
amount of up to $1,000,000. 15 U.S.C. § 1117(c).
Seizure: A plaintiff can also ask the court for seizure of goods that
bear counterfeit marks and seizure of the means for making those marks. 15
U.S.C. § 1116(d). A plaintiff can also seek an injunction. 15 U.S.C. §
1116(a).
Protection for media, including the Internet: Trademark law also protects
"a newspaper, magazine or other similar periodical" or "an electronic
communication" carrying ads that infringe. An injunction can only apply to
"future issues," and an injunction is not available if it would "delay" the
normal delivery of the newspaper, magazine, or electronic communication. 15
U.S.C. § 1114(2)(B), (C).
[1] Moseley v. V Secret Catalogue, Inc., 123 S.Ct. 1115, 155
L.Ed.2d 1 (2003). Lawyer's Edition (L.Ed.) pagination will be used pending
pagination for S.Ct. or U.S. cites. Both Victor and his wife were parties
in this case, which has a full title of "Victor Moseley and Cathy Moseley,
DBA Victor's Little Secret, Petitioners v. V Secret Catalogue, Inc., et al.
[2] For coverage of the "Pretty Woman" parody, see infra. notes
35-38 and accompanying text.
[3] Moseley v. V Secret Catalogue, Inc., 155 L.Ed. at 15.
[4] 15 U.S.C. § 1051 et seq.
[5] 15 U.S.C. § 1125, et seq. (cited in Moseley v. V Secret
Catalogue, Inc., at 7).
[6] 15 U.S.C. 1127 (cited and quoted in Moseley v. V Secret
Catalogue, Inc., at 7, with the text given in n.1 of the decision).
[7] Moseley v. V Secret Catalogue, Inc., at 7.
[8] Id. at 15.
[9] Id. at 8.
[10] Id. (citation omitted).
[11] Id.
[12] Id.
[13] This allegedly violated 15 U.S.C. § 1114(1). Moseley v. V
Secret Catalogue, Inc., at 8.
Victoria's Secret has not only vigorously enforced its trademark rights
but also has mounted stiff counterattacks. For example, when Victoria's
Cyber Secret sought a declaratory judgment, trying to persuade a court that
the domain name was not a trademark infringement, Victoria's Secret
counterclaimed. Victoria's Secret maintained that Victoria's Cyber Secret
violated the Anticybersquatting Consumer Protection Act. The court granted
Victoria's Secret a summary judgment. Victoria's Cyber Secret v. V Secret
Catalogue, Inc., 161 F. Supp. 2d 1339 (S.D. Fla. 2001). For more
discussion of anticybersquatting laws, see supra notes 85-97 and
accompanying text.
Victoria's Secret can also vigorously defend trademark infringement
suits. When "Miraclesuit" swimwear said Victoria's Secret violated its
trademark with "The Miracle Bra," the court ruled in favor of Victoria's
Secret in all but the swimwear market. A & H Sportswear Co. v. Victoria's
Secret Stores, Inc., 926 F. Supp. 1233 (E.D. Pa. 1996).
[14] This allegedly violated 15 U.S.C. § 1125(a). Moseley v. V
Secret Catalogue, Inc., at 8. This is a Lanham Act claim.
[15] Moseley v. V Secret Catalogue, Inc., at 8 (quoting the
plaintiffs' complaint). The plaintiffs also alleged unfair competition
that violated Kentucky common law. Id.
[16] Id. at 9.
[17] Id. at 12.
[18] Id. at 9 (citations omitted).
[19] Id. at 14 (citing and quoting 15 U.S.C. § 1125(c)(1)).
[20] Id. at 14-15. But establishing dilution, the Court also says,
"does not mean that the consequences of dilution, such as an actual loss of
sales or profits, must also be proved." Id. at 15.
[21] Id. at 15.
[22] Id. at 15.
[23] Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838
(S.D.N.Y. 1977).
[24] General Electric Co. v. Alumpa Coal Co., 205 U.S.P.Q. 1036 (D.
Mass. 1979).
[25] Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397 (8th Cir.
1987) (the case also involved "Mutant of Omaha" cups).
[26] Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482
(10th Cir. 1987).
In another trademark infringement case involving jeans, "Guess?" jeans
prevailed over "Yield" jeans. In this case, the defendant had used the
plaintiff's logo—an inverted white triangle with a red edging—but
substituted the word "Yield" for "Guess?." Also, the defendant, like the
plaintiff, had placed the logo on the rear jeans pocket. Guess?, Inc. v.
Hermanos, 993 F. Supp. 1277 (C.D. Cal. 1997).
[27] 15 U.S.C. § 1141(1)(a).
[28] Id. at 1486.
[29] Id. at 1491.
[30] Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769
(8th Cir. 1994). Maybe the beer would go well with "A.2" meat sauce? See
Nabisco Brands, Inc. v. Kaye, 760 F. Supp. 25 (D. Conn. 1991) (prevailing
"A.1" sauce was not amused by the pun).
Here are some more winning defendants in parody cases involving trademark
infringement:
• A lampooning poster of a smiling, pregnant Girl Scout, captioned "BE
PREPARED," withstood a trademark infringement suit. Girl Scouts of the
U.S.A. v. Personality Posters Mfg. Co., 304 F. Supp. 1228 (S.D.N.Y. 1969).
• High Society won for its two-page article, "L.L. Beam's
Back-To-School-Sex-Catalog," in its October 1984 issue. The magazine's
contents page called the article "humor" and "parody." L.L. Bean, Inc. v.
Drake Publishers, Inc., 811 F.2d 26, 27 (1st Cir. 1987). On First
Amendment grounds, the Court rejected L.L. Bean's argument of trademark
infringement and dilution of trademark, saying that the "parody constitutes
an editorial or artistic, rather than a commercial, use of plaintiff's
mark." Id. at 32.
• A spoof on Cliff's Notes that used the words "a satire" five times on
its cover could not cause confusion with the real Cliff's notes. Cliff's
Notes v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d
Cir. 1989).
Losing defendants for trademark infringement include:
• A "Where there's life ... there's bugs" campaign for floor wax laced
with insecticide, parodying "Where there's life ... there's Bud" beer
campaign, lost. Chemical Corporation of America v. Anheuser-Busch, Inc.,
306 F.2d 433 (5th Cir. 1962).
• Screw magazine lost because it featured Pillsbury's "Poppin Fresh" and
"Poppie Fresh" dough people engaged in sexual acts. Pillsbury Co. v. Milky
Way Productions, Inc., 215 U.S.P.Q. (N.D. Ga. 1981)
Losing defendants for both trademark and copyright infringement claims
include:
• "Super Stud"—"faster than a speeding tortoise; more powerful than an
armpit; able to leap tall broads in a single bound; it's a nurd; it's
insane; it's Super Stud"—and "Wonder Wench," who donned costumes and
delivered telegrams. D.C. Comics, Inc. v. Unlimited Monkey Business, Inc.,
598 F. Supp. 110 (N.D. Ga. 1984)
[31] Anheuser-Busch, Inc., 28 F.3d at 772.
[32] Id. at 774.
[33] Id. at 775 (emphasis added).
[34] Id. The Eighth Circuit then lists some other courts that have
used survey findings.
[35] For journal articles on parody generally, see, e.g.: Matthew
D. Bunker, Eroding Fair Use: The "Transformative" Use Doctrine After
Campbell, 7 Comm. L. & Pol'y 1 (Winter, 2002); Note (Frank Mead), Cocaine,
Coffee Mugs, Sex, and Bug Killing Floor Wax: Welcome to the Realm of
Parody and the Likelihood of Confusion, 21 T. Jefferson L. Rev. 305 (Oct.
1999); Michael J. Lynch, A Theory of Pure Buffoonery: Fair Use and Humor,
24 Dayton L. Rev. 1 (Fall, 1998); Comment (Mel Marquis), Fair Use of the
First Amendment: Parody and Its Protections, 8 Seton Hall Const. L.J. 123
(Fall 1997); Comment (Steven M. Perez), Confronting Biased Treatment of
Trademark Parody Under the Lanham Act, 44 Emery L.J. 1451 (Fall 1995).
[36] Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994).
[37] Parody as a method to comment on society dates back to ancient
Greeks. "Chaucer, Shakespeare, Pope, Voltaire, Fielding, Hemingway and
Faulkner are among the myriad of authors who have written parodies. Since
parody seeks to ridicule sacred verities and prevailing mores, it
inevitably offends others, as evinced by the shock which Chaucer's
Canterbury Tales and Voltaire's Candide provoked among their
contemporaries." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26,
28 (1st Cir. 1987).
A work attracting a lot of attention is The Wind Done Gone, a parody of
the famous novel Gone with the Wind. The Eleventh Circuit found the work
clearly to be a parody that posed little risk of causing the original
market harm. Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th
Cir. 2001). This work has generated much scholarly ink. See, e.g.,
Comment (Jeffrey D. Grossett). The Wind Done Gone: Transforming Tara into
a Plantation Parody, 52 Case W. Res. 1113 (Summer 2002); Note (Carla D.
David), Does the Wind Blow Fair?: A Discussion and Critique of the
Suntrust v. Houghton-Mifflin Case, 10 Media L. & Pol'y 23 (Spring, 2002);
Note (Veronica Soto), The Scale Tips in Favor of Parodists and Freedom of
Speech Advocates, as "Other" Version of Gone with the Wind Held Fair Use
Under Copyright Law," 18 Computer & High Tech. L.J. 405 (May, 2002); Note,
Gone with the Wind Done Gone: "Re-writing" and Fair Use, 115 Harv. L. Rev.
1193 (Feb. 2002).
Another case that attracted a lot of attention featured a smiling,
"pregnant" Leslie Nielsen in a movie ad. The Second Circuit found the
picture to be a parody of Annie Leibovitz's famous, Botticelli-like picture
of Demi Moore and a fair use causing no market harm. Leibovitz v.
Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998). For some scholarly
comment on this case, see, e.g., Comment (Matthew A. Eisenstein), An
Economic Analysis of the Fair Use Defense in Leibovitz v. Paramount
Pictures Corporation, 148 U. Pa. L. Rev. 889 (2000); Miatta Tenneh Dabo,
Leibovitz v. Paramount Pictures Corp.: Fair Use Doctrine: When is
Copyright Infringement a Parody? 7 U. Balt. Intell. Prop. J. 155 (Spring,
1999).
[38] That someone wanting Roy Orbison's "Oh, Pretty Woman" would
not settle for a rapper's "Bald headed woman" would not appear to require a
survey.
[39] Id. at 579.
For journal articles on the 2 Live Crew case, see, e.g.: Kathryn D.
Piele, Three Years After Campbell v. Acuff-Rose Music, Inc.: What Is Fair
Game for Parodists? 18 Loy. L.A. Ent. L.J. 75 (1997); Anastasia P. Winslow,
Rapping on a Revolving Door: An Economic Analysis of Parody and Campbell
v. Acuff-Rose Music, Inc., 69 S. Cal. L. Rev. 767 (Jan. 1996).
[40] Dr. Seuss Enterprises v. Penguin Books USA, 109 F.3d 1394 (9th
Cir. 1997).
[41] The Ninth Circuit upheld the trial court's finding of a strong
likelihood that the plaintiff would prevail in copyright. Id. at 1403. And
on the trademark questions, the appeals court agreed that "serious
questions for litigation and a balance of hardships favoring Seuss are not
clearly erroneous." Id. at 1405.
For journal articles on the Dr. Seuss parody, see, e.g.: Note (Jason M.
Vogel), The Cat in the Hat's Latest Bad Trick: The Ninth Circuit's
Narrowing of the Parody Defense to Copyright Infringement in Dr. Seuss
Enterprises v. Penguin Books USA, Inc., 20 Cardozo L. Rev. 287 (Sep. 1998).
[42] Speaking of the Supreme Court in the Acuff-Rose case involving
the Orbison parody, the Ninth Circuit says, "The Court pointed out the
difference between parody (in which the copyrighted work is the target) and
satire (in which the copyrighted work is merely a vehicle to poke fun at
another target)..." Id. at 109 F.3d at 1400.
The Supreme Court has clearly wanted to protect parodies that poke fun at
those with whom one strongly disagrees. Would the Court perhaps not want
to throw cold water on songs with a political, satirical bite? As for
other examples of songs being used in satire, "Maria" became transformed
into "Scalia" (who is a Supreme Court justice), and "I Feel Pretty" became
transformed into satire about President Bill Clinton's infamous hair cut in
a plane on a Los Angeles runway.
In one famous parody music case, the Second Circuit spoke favorably of
both parody and satire. Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d
Cir. 1964). The court decided in favor of the defendant, which had
produced a parody issue of Mad magazine, whose cover said, "More Trash From
Mad—A Sickening Collection of Humor and Satire From Past Issues." It
included "parody lyrics" to be sung to the music of well-known songs, some
written by Irving Berlin. For example, "A Pretty Girl Is Like A Melody"
was parodied as "Louella Schwartz Describes Her Malady." Id. at
542-43. The Court concluded:
[A]s a general proposition, we believe that parody and satire are deserving
of substantial freedom—both as entertainment and as a form of social and
literary criticism. As the readers of Cervantes' "Don Quixote" and Swift's
"Gulliver's Travels," or the parodies of a modern master such as Max
Beerbohm well know, many a true word is indeed spoken in jest. At the very
least, where, as here, it is clear that the parody has neither the intent
nor the effect of fulfilling the demand for the original, and where the
parodist does not appropriate a greater amount of the original work than is
necessary to "recall or conjure up" the object of his satire, a finding of
infringement would be improper.
Id. at 545.
[43] Id. (quoting Acuff-Rose, 114 S. Ct. at 1173).
On the question of trademark infringement, the Ninth Circuit said, "...the
cry of `parody'! does not magically fend off otherwise legitimate claims of
trademark infringement or dilution." Id. at 1405. The court also pointed
out, concerning the trademark claims, that "there is no evidence of actual
confusion. Because The Cat NOT in the Hat! has been enjoined from
distribution, there has been no opportunity to prove confusion in the
market place." Id.
In trying to apply the "Pretty Woman" parody case retrospectively, one
could ask about the defendant's losing case concerning a parody of "Boogie
Woogie Bugle Boy of Company B" entitled "Cunnilingus Champion of Company
C." M.C.A. Inc. v. Wilson, 677 F.2d 180 (2d Cir. 1981) Perhaps the court
in the "Boogie Woogie" case simply hit its gag limit. The court said, "We
are not prepared to hold that a commercial composer can plagiarize a
competitor's copyright song, substitute dirty lyrics of his own, perform it
for commercial gain, and then escape liability by calling the end result a
parody or satire on the mores of society. Such a holding would be an
open-ended invitation to musical plagiarism." M.C.A. v. Wilson, 677 F.2d
at 180.
Courts are not supposed to apply moral (aesthetic) judgments in parody
cases, as the Ninth Circuit reiterated in the Dr. Seuss case: "Our
analysis does not take into account whether The Cat NOT in the Hat! is in
good or bad taste. As Justice Holmes explained, "it would be a dangerous
undertaking for persons trained only to the law to constitute themselves
final judges of the worth of [a work], outside of the narrowest and most
obvious limits." Acuff-Rose, 114 S. Ct. at 1173 (quoting Bleistein v.
Donaldson, 188 U.S. 239 ... (1903)). Dr. Seuss Enterprises, 109 F.3d at 1401.
[44] See Alan Jenkins, "The Thurgood Marshalls of Comic Books, The
American Lawyer (August 2002)(Bartalk Section). For a pre-settlement
journal article, see Sarah Mayhen Schlosser, The High Price of
(Criticizing) Coffee: The Chilling Effect of the Federal Trademark
Dilution Act on Corporate Parody, 43 Ariz. L. Rev. 931 (Winter, 2001).
[45] The Eight Circuit admitted in the Michelob Oily case:
There is no simple, mechanical rule by which courts can determine when a
potentially confusing parody falls within the First Amendment's protective
reach. Thus, `in deciding the reach of the Lanham Act in any case where an
expressive work is alleged to infringe a trademark, it is appropriate to
weigh the public interest in free expression against the public interest in
avoiding consumer confusion. Cliffs Notes, 886 F.2d at 494. "This
approach takes into account the ultimate test in trademark law, namely, the
likelihood of confusion as to the source of the goods in question." Id. at 495.
Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d. at 775.
[46] While would-be defendants should rejoice, past defendants who
lost should beware. Even if a case has been decided wrongly, courts might
invoke res judicata—the doctrine that "a thing decided" should remain
undisturbed, and thus courts might not wish to reopen a matter after the
time for appropriate appeals has elapsed.
More dangerous would be the situation where a losing defendant, who was
enjoined by a court from infringing upon a trademark, first decided on his
or her own that the court's decision was wrong and then violated the
court-ordered injunction. One cannot violate an injunction and then defend
on the grounds that the injunction was invalid. The Supreme Court has
already decided that question in a 5-4 decision involving Dr. Martin Luther
King, who marched in a civil rights parade in Birmingham despite a court
order that told him not to do so. Walker v. Birmingham, 388 U.S. 307
(1967). The Court said:
... in the fair administration of justice no man can be judge in his own
case, however exalted his station, however righteous his motives, and
irrespective of his race, color, politics, or religion. ... This Court
cannot hold that the petitioners (Dr. King and some fellow marchers) were
constitutionally free to ignore all the procedures of the law and carry
their battle to the streets. One may sympathize with the petitioners'
impartient commitment to their cause. But respect for judicial process is
a small price to pay for the civilizing hand of law, which alone can give
abiding meaning to constitutional freedom. Id. at 320-321 (footnote omitted).
[47] In 1976, the Supreme Court extended constitutional protection
to purely commercial advertisement. In Virginia State Board of Pharmacy v.
Virginia Citizens Council, Inc., 425 U.S. 748 (1976), the Court struck down
a Virginia statute. This statute prohibited advertising prices of
prescription drugs.
In 1980, in Central Hudson Gas & Electric Corp. v. Public Service
Commission, 447 U.S. 557 (1980), the Supreme Court struck down a New York
regulation that barred all advertising promoting the use of electricity by
electric utilities, even promotion of energy-saving uses of
electricity. The Supreme Court said that for commercial speech to receive
First Amendment protection, it must meet a four-part test of whether: (1)
the ad is legal; (2) the ad is not misleading; (3) the regulation advances
a substantial governmental interest; and (4) the regulation is "not more
extensive than necessary." Id. at 566.
[48] Moseley v. V. Secret Catalogue, Inc., at 12 (citing 15 U.S.C.
§ 1125(c)(4) (emphasis added). The Court also quotes the FTDA's full
language. Id. at n.1.
[49] Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831,
832 (6th Cir. 1983).
[50] Carson, 698 F.2d at 837.
[51] Carson, 698 F.2d at 835.
[52] 1992 U.S. App. LEXIS 19253, *1-*2.
[53] The court said, "The law protects the celebrity's sole right
to exploit this [celebrity identity] value whether the celebrity has
achieved her fame out of rare ability, dumb luck, or a combination
thereof." Id. at *12-*13. Judge Alarcon wrote a blistering dissent.
White won $403,000. Stephen R. Barnett, "The Big Chill: Free Speech in
Advertising," Legal Times, Dec. 19, 1994, p. 21.
For a lengthy, informative, and heated dissent from an order rejecting a
rehearing en banc, see Judge Kozinski's dissent in White v. Samsung
Electronics America, 989 F.2d 1512 (9th Cir. 1993).
[54] Allen v. Men's World Outlet, Inc., 679 F. Supp. 360 (S.D.N.Y.
1988). See also an earlier case involving the same Woody Allen look-alike,
Phil Boroff, Allen v. National Video, Inc., 610 F. Supp. 612 (S.D.N.Y. 1985).
[55] 679 F. Supp. at 362, 367.
[56] Id. at 370. Allen used the Lanham Act, 15 U.S.C. Sec.
1125(a). Id. at 368.
[57] The Lanham Act, 15 U.S.C. § 1051, et. seq., prohibits:
...false designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which--
(A) is likely to cause confusion, or to cause mistake, or to deceive as to
the affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities.... 15 U.S.C. §
1125(a)(1) (emphasis added).
[58] See Hustler Magazine v. Falwell, 108 S. Ct. 876, 878 (1988).
For a book on the case, see R. Smolla, Jerry Falwell v. Larry Flynt (1988)
[59] The text of the ad is reprinted in G. Spence, "The Sale of the
First Amendment," ABA Journal 52, 52 (March 1989). Here is what the ad said:
JERRY FALWELL TALKS ABOUT HIS FIRST TIME
Falwell: My first time was in an outhouse in Lynchburg, Virginia.
Interviewer: Wasn't it a little cramped?
Falwell: Not after I cleaned the shit out.
Interviewer: I see; you must tell me all about it.
Falwell: I never really expected to make it with Mom, but then after she
showed all the other guys in town such a good time, I figured, `What the hell!'
Interviewer: But your Mom? Isn't that a little odd?
Falwell: I don't think so. Looks don't mean that much in a woman.
[60] During a pre-trial deposition, an attorney for Falwell asked Hustler
publisher Flynt if he was trying to damage Jerry Falwell's reputation for
integrity. Flynt answered that he was trying to "assassinate" Falwell's
reputation. Falwell v. Flynt, 797 F.2d 1270, 1273 (4th Cir. 1986). The
court opinion quotes excerpts from the deposition.
[61] Falwell, 797 F.2d at 1273. Falwell had attempted to invoke Va. Code
8.01-40 (1984). Id.
[62] Hustler, 108 S. Ct. at 878.
[63] Falwell's attorney had asked the Supreme Court, in effect, to hold
that even in cases involving a parody, the state's interest in protecting
public figures from emotional distress was sufficient to deny First
Amendment protection to that speech. The Court refused to do so. Hustler,
108 S. Ct. at 879.
[64] Hustler, 108 S. Ct. at 879-80.
[65] In 1789, a cartoonist depicted aide David Humphreys leading a donkey
that carried George Washington. The captain said, "The glorious time has
come to pass/When David shall conduct an ass." Falwell, 805 F2d. at 487
(citing S. Hess and M. Kaplan, The Ungentlemanly Art: A History of
American Political Cartoons 61 (1968)).
[66] Hustler, 108 S. Ct. at 881.
[67] The United States Supreme Court speaks of "a profound national
commitment to the principle that debate on public issues should be
uninhibited, robust, and wide-open...." New York Times Co. v. Sullivan,
376 U.S. 254, 270 (1964).
[68] Cardtoons, L.C. v. Major League Baseball Players Association, 95
F.3d 959 (10th Cir. 1996).
[69] Id. at 962.
[70] Id. at 966.
[71] Id. at 969.
[72] Id. See also, Note (Kym Carrier), Right of Publicity: Cardtoons,
L.C. v. Major League Baseball Players Association, 51 Okla. L. Rev. 159
(Spring 1998); Note (John Shahdanian), Parody Contained on Trading Cards
Does Not Violate an Athlete's Right of Publicity, 7 Seton Hall J. Sports L.
423 (1997).
[73] Ault v. Hustler Magazine, Inc., 860 F.2d 877 (9th Cir. 1988);
Leidholdt v. L.F.P. Inc., 869 F.2d 890 (9th Cir. 1988).
[74] Ault, 860 F.2d at 879.
[75] Leidholdt, 860 F.2d at 892, 894.
[76] Ault, 860 F.2d at 883.
[77] Leidholdt, 860 F.2d at 895.
[78] Guglielmi v. Spelling-Goldberg Productions, 603 P.2d 454, 460 (Cal.
In Bank 1979) Rudolpho Guglielmi's screen name was Rudolf Valentino.
[79] Id. at 460, n.12.
[80] Stern v. Delphi Internet Services Corp., 626 N.Y.S.2d 694 (1995).
[81] Id. at 695-96.
[82] Michelle Ballard and Milagros Riverz-Sanchez, "Settlement: FCC's
Newest Strategy to Address Indecency?" 18 Communications & the Law 1 (Dec.
1996).
[83] 626 N.Y.S.2d at 697-98.
[84] 626 N.Y.S.2d at 698.
[85] 15 U.S.C. § 1125(4)(d).
[86] 15 U.S.C. § 1125(4)(d)(1)(A)(ii)(I).
[87] 15 U.S.C. § 1125(4)(d)(1)(A)(ii)(II).
[88] 15 U.S.C. § 1125(4)(d)(1)(A).
[89] 15 U.S.C.§ 1129. This legislation was enacted into law on November
29, 1999.
[90] 15 U.S.C. §1129(1)(A).
[91] See Daniel C. Decarloa, The Name Game, American Journalism Rev.
(Sep., 2000), p. 62; Shauna Snow, Morning Report, Los Angeles Times (Home
Edition) (April 13, 2000), p. 58 (Jane Seymour also filed over registration
of "janeseymour.com").
[92] See, e.g., "Name game; Reining in the `cybersquatters," San Diego
Union-Tribune (Aug. 26, 2000), p. B-14.
USA Today reported about an enterprising gentleman who registered
"madonna.com" (Madonna's attorney used WIPO) and registered more than 500
domain names that used the names of large corporations followed by
"sucks.com." Jon Swartz, "Profiteers get squat for Web names;
Cybersquatters lose intellectual property rulings," USA Today (Final
Edition) (Aug. 25, 2000), p. 1B (other stars who prevailed include Jimi
Hendrix, Dan Marino, Ally McBeal, and Julia Roberts, along with companies
ESPN, the World Wrestling Federation, and Yahoo).
See generally, Steven W. Kopp and Tracy A. Suter, Trademark Strategies
Online: Implications for Intellectual Property Protection, 19 J. of Pub.
Pol'y & Marketing 119 (Spring, 2000).
[93] For example, plaintiffs have prevailed in these cases:
• Paccar Inc. v. Telescan Technologies, 2003 U.S. App. LEXIS 1926 (6th
Cir., filed Feb. 5, 2003) Court enjoined a web site from using the
defendant's trademarks of "Peterbilt" and "Kenworth" in its domain names.
• New York State Society of Certified Public Accountants v. Eric Louis
Associates, Inc., 79 F. Supp. 2d 331 (S.D.N.Y. 1999). The court
permanently enjoined the defendant from using as its URL the name NYSSCPA
or NYSSCPA.COM "or any similar designation."
• Online Partners.com Inc. v. Atlanticnet Media Corp., 2000 U.S. Dist LEXIS
783 (N.D. Cal. 2000). GAY.NET had a valid mark, and the court permanently
enjoined the defendants' use of the domain name "GAYNET.COM." Further, the
court enjoined the defendants from "doing any other act or thing likely to
dilute the distinctiveness of plaintiff's GAY.NET trademark." Id. at *30.
• Green Products Co. v. Independence Corn By-Products Co., 992 F. Supp.
1070 (N.D. Iowa 1997). Plaintiff Green Products Co. wanted the defendant
enjoined from using the domain name "greenproducts.com," and the court agreed.
• Maritz v. Cybergold, Inc., 947 F. Supp. 1338 (E.D. Mo. 1996). The court
ruled that "www.cybergold.com" could be confused with "www.goldmail.com."
• Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill 1996). In an
effort to extract money, Toeppen registered Intermatic's trade name as a
domain name. Intermatic won. Intermatic won on the grounds of dilution.
• Panavision International v. Toeppen, 945 F. Supp. 1296 (C.D. Cal.
1996). In an effort to extract money, Toeppen registered Panavision's
trade name as a domain name. Panavision International won on the grounds
of dilution.
[94] For example, Princeton Review, which is a company that helps
prepare college students to take standardized tests such as the MCAT, LSAT,
and GRE, registered the domain name of "kaplan.com." (Kaplan is Princeton
Review's rival.) An arbitration panel ruled in Kaplan's favor, and
Princeton yielded. Phone company Sprint likewise engaged in domain-name
mischief with "mci.com." See, e.g., "Firms Fight for Names on World Wide
Web," Indianapolis Business Journal, July 8, 1996.
[95] 40 U.S.P.Q.2d 1479 (S.D. Wa. 1996). See also Hasbro, Inc. v.
Internet Entertainment Group, Ltd., 1996 U.S. Dist. LEXIS 11627 (W.D. Wash.
Feb. 5, 1996).
[96] Toys "R" Us v. Akkaoui, 40 U.S.P.Q.2d 1836 (N.D. Cal. 1996).
[97] Playboy prevailed when a company displayed a "Playmen" Internet
site in two versions: (1) "Playmen Lite," which was available free and
offered only "moderately explicit images," according to the New York
federal trial court which heard the case, and (2) "Playmen Pro," which
required a paid subscription. The court slapped an injunction against the
Playmen Internet Service, which Playmen violated. The court then hit
Playmen with contempt of court. Playboy Enterprises, Inc. v. Chuckleberry
Publishing, Inc., 39 U.S.P.Q.2d (S.D.N.Y. 1996). The Second Circuit
affirmed a permanent injunction against the defendant and awarded attorney
fees to the plaintiff. Playboy Enterprises v. Chuckleberry Publishing,
Inc., 687 F.2d 563 (2d Cir. 1982).
[98] Ritchie v. Orenthal James Simpson, 170 F.3d 1092 (Fed. Cir. 1999).
[99] Id. at 1093 (quoting §2 of the Lanham Act, 15 U.S.C. § 1052(a))).
[100] Id. at 1093.
[101] Id. at 1094 (quoting § 13 of the Lanham Act, 15 U.S.C. §1063).
[102] Id. at 1095.
[103] Id. at 1097.
[104] Id. at 1098.
[105] "No Way, O.J.," The Nat'l L.J., May 1, 2000, p. A9.
[106] Tesh settled his case out of court. See, e.g., "Newsmakers,"
Dayton Daily News (Ohio), Feb. 5, 2000 (available on Lexis/Nexis).
Other stars who have either sued or threatened to sue for cybersquatting
include Brad Pitt, Sharon Stone, and Bruce Willis. See, e.g., Paul Bond,
"Lighting Strikes over URLs," The Hollywood Reporter, May 22, 2000
(available on Lexis/Nexis).
[107] See supra nn. 98-105 and accompanying text.
[108] Ironically, it was 2 Live Crew's "As Clean as They Wanna Be" album
that stirred all the controversy with "Pretty Woman," not its "As Nasty As
They Wanna Be," which sparked obscenity battles. But that's another
story.... Sometimes "clean" is not enough.
For 2 Live Crew obscenity victories, see Luke Records, Inc. v. Navarro,
960 F.2d 134 (11th Cir. 1992); Skyywalker Records, Inc. v. Navarro, 739 F.
Supp. 578 (S.D. Fla. 1990).
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