Mirrored in Parody, Mired in Paradox, page
 
Mirrored in Parody, Mired in Paradox:
Trademark Dilution and An Ancient Art
 
 
AEJMC 1998 Convention Paper
 
 
 
 
 
 
 
 
submitted by:
 
Stephen J. Earley
Graduate Student
University of Denver
Department of Mass Communications and Journalism Studies
April 1, 1998
 
 
 
 
 
 
1614 Jackson Street
Denver, Colorado  80206
(303) 399-9393
[log in to unmask]
 
 
Abstract:
 
     The passage of the Federal Trademark Dilution Act (FTDA) in early 1996
opened up the latest battleground in the long tradition of litigation between
those who practice the ancient art of parody and those who feel its sting.  This
paper explores recent legal frameworks along with historical factors, changing
technologies, and aspects of politics and culture which make parody as a form of
commentary more controversial, and arguably more vital, than ever.
 
 
 
 
 The Controversy:
 
     If imitation is the most sincere form of flattery, as the familiar adage
claims, then perhaps the same logic would explain why criticism through
imitation stings so deeply. The ancient craft of social commentary through
parody is described with a mixture of fear and respect among the earliest
written works in Western history, an attitude still held by many people today.
Some pre-literate civilizations regarded the "magic" of humorous commentary to
have the same kind of mystical power as faith medicine.[1]  Poets, playwrights,
novelists, journalists, cartoonists, filmmakers, and many others have endured
substantial threat to their lives and livelihood so that they might contribute
to this grand tradition, which some have characterized as noble, and others as
parasitic.  The power to mock the mighty -- to steal the very words, symbols,
style or mannerisms that distinguish a person or institution for the purpose of
calling attention to its flaws rightly strikes fear into the hearts of the
ruling class, even as it inspires hope among the oppressed.  This is the power
of parody.
     The ideal of free speech, and uninhibited criticism in particular, lies at
the heart of the Enlightenment philosophies revered by the framers of the
American Constitution and expressed in the First Amendment. However, the
practice of criticism specifically through parody comes into conflict with
another sacred American tradition: free enterprise.  Because parodies are, by
definition, derivative works which imitate or copy their subjects, they must
appropriate or refer to ideas and symbols belonging to businesses or individuals
and vital to their ability to make a profit.  Legal scholar Richard Posner
actually characterizes this imitation or copying as "stealing,"[2] and many
businesses and individuals in modern America would agree, arguing that
expressions of parody violate their rights to property, privacy, or reputation.
     Historically, when such conflicts have ended up in the courts, most have
fallen in the area of copyright or trademark infringement.  To the frustration
of many business owners, modern laws and court rulings have generally recognized
parody as a form of protected speech, "deserving of substantial freedom."[3]
Few allegations of actual copyright or trademark infringement have been
successful against expressions of parody, particularly in recent years.  The
result has been an uneasy detente, in which the exact limits and nature of the
gains made in favor of parody remain, in the words of the eminent copyright
scholar Melville Nimmer, "mired in paradox."[4]  On the one hand, those who
practice the craft of parody fear expensive legal prosecution with no guarantees
of protection, while on the other, those who have felt the sting of parody
struggle to protect themselves against what they see as unfair and destructive
use of their intellectual property.
     A new weapon threatens to shift the balance of this detente, however.  In
response to the concerns of businesses, state legislators have developed, over
the last several decades, a new aspect of trademark law called trademark
dilution.  Unlike infringement, dilution refers to the potential negative effect
upon the value and reputation of a mark which may result from an unauthorized
use.  Ultimately, this raises the question most central to the practice of
parody in a modern, capitalist context: may parodists use or refer to images,
logos, slogans, and even the very corporate identity of their subjects,
regardless of whether their work tends to undermine profits or public
perception?  Or will this new branch of trademark law require that expressions
of parody be limited to opinions which do not undermine the carefully cultivated
images and reputations of all registered businesses?
 
 
History
 
     In the fourth century B.C., the work of poet and playwright Hegemon (lost
to scholars today) was described with the word parodia, a variety of satire
involving, "the comic imitation and transformation of an epic verse work."[5]
While scholars have debated the definition of the word parody ever since, it has
grown to include, "further forms of comic quotation or imitation in
literature."[6]  From the beginning, though, parody has referred to comedy or
satire which specifically mimics a published or performed work, a recognizable
artistic style, or a recognizable individual.
     Approaches to both the prosecution and defense of parody have changed
greatly over the centuries, as the officials adjudicating such cases have moved
from a scripture-based approach (which classified most biting social satire or
parody as blasphemy)[7] to a state-based approach (based on threats to the
state, called sedition), and finally to a capitalistic, business-oriented
approach today.  It was in the course of these two latter evolutions that a
distinction began to emerge between forms of critical speech which damage
someone's personal reputation (libel or defamation)[8] and that which parodies
published or broadcast works and/or business entities (copyright and
trademark).[9]  The process of discovering such legal frameworks has been a
painful one in the United States, where the interests of property rights and
free speech are both held as sacred.
     Copyright law became the first battleground for parody, where the limits of
protection were first carved out by the courts through precedent.  For this
reason, copyright cases are frequently cited in other areas of contested parody,
such as trademark law (which has usurped copyright in the sheer number of claims
related to parody) and even personal damages litigation.  And because it was
first and tested more thoroughly than any other area, copyright law has even
developed its own doctrine, Fair Use, which first emerged in the 1950's.[10]  In
1976, with the passage of 17 USC, the doctrine of Fair Use was codified into the
first revision to American copyright law in 67 years.[11]  Section 107 of 17 USC
allows for, "the fair use of a copyrighted work...for purposes such as criticism
[and] comment."[12]  Parody is one of several such forms of expression which are
explicitly mentioned as being exempt from the exclusive limits of use imposed by
copyright protection.
     Section 107 of the code grew from a number of court rulings this century
which gradually established a four-part test to determine whether an alleged
"fair use" of a copyrighted work is, in fact, permissible.  No single plank of
the test definitively establishes whether an unauthorized use of copyrighted
material is "fair" or not -- all four must be considered together.[13]  The Fair
Use test examines: (1) the purpose of the use (commercial or
nonprofit/educational), (2) the nature of the copyrighted work, (3) the amount
and relative importance of the portion which is copied from the original work,
and (4) the effect of the use upon the potential market for or value of the
copyrighted work.  Conspicuously absent from this list is the question of the
nature of the derivative work.  By concentrating on the purpose, target, scope
and effect of disputed works, the Fair Use Doctrine avoids the treacherous and
volatile territory of attempting to define parody on its own.
     In recent decades, it has become common for businesses to register their
names, logos, corporate slogans, and many other identifying features as
trademarks, rather than copyrights.  This is due, at least in part, to the fact
that the parody has won some significant victories under the Fair Use Doctrine,
to the point that parody usually prevails against claims of copyright
infringement. Trademark disputes, however, do not involve the Fair Use Doctrine
because the governing law for trademarks does not include a fair use
exemption.[14] After more than ten years of bitter and tiresome debate, the
passage of the first US law for the protection of trademark in 1891 ultimately
bypassed the question of fair use.[15]  Thus, modern US trademark law, also
known as 15 USC or the Lanham Act, states that no one may use a trademark which
has been registered to someone else (although some scholars argue that such
protection is implied within the law, as will be discussed below), or even to
create another mark which resembles it "when used on or in connection with the
goods of the applicant, to cause confusion, or to cause mistake, or to
deceive."[16]
     Confusion, therefore, has emerged as the central issue in cases of alleged
trademark infringement through parody.  The courts have ruled that if a
reasonable person might have been confused about whether the use of a trademark
in a parody was authorized by its owner, the trademark owner's rights have been
infringed.  By arguing that an expression of parody may confuse consumers,
businesses have been somewhat more successful in defending against unwanted use
of their names and identities than by claiming copyright infringement.  Even so,
confusion on the part of consumers is difficult to prove.  Out of the three best
known and most widely cited cases to be heard at the Federal level in this
decade, only one specific example of a case of consumer confusion was offered by
any of the plaintiffs.[17]  Meanwhile, several courts[18] have noted that cases
of parody do not really fit the seven-point test for confusion as a hinge factor
which has been developed through trademark precedent.  After all, the whole
point of parody is to invoke the subject recognizably, but also to modify it
enough to create comment upon the original.  Confusion with the original, then,
would tend to undermine the argument that an infringing work really is a parody,
while lack of confusion does not really address the question of whether a clear
case of parody may still infringe on a trademark owner's rights.
     Legal scholar Robert Denicola, along with several others, has suggested
that the Fair Use Doctrine developed within the tradition of copyright law may
offer the best guidance, even to disputes in the area of trademark
infringement.[19]  In fact, Denicola takes the relatively radical stance that a
kind of fair use protection is implied in Section 33(b)(4) the Lanham Act, which
allows that a registered name, term or device may be "used fairly and in good
faith" if it refers to a person's name, goods, or a geographical origin that are
common to both the registered owner and others.  Thus, for example, People
Magazine could not claim trademark infringement by any other business which
refers to their product as a magazine, in spite of the fact that the word
"magazine" is a part of that trademark.  Denicola further argues that this
well-established example of what he calls fair use in trademark, "should thus
include any use that does not create confusion of source or otherwise
misrepresent the characteristics of the user's goods or services."[20]  And with
this claim, Denicola begins to extend his defense of parody beyond the area of
simple trademark infringement and into the newest legal battleground sought out
by beleaguered intellectual property owners: trademark dilution.
 
 
Dilution of a Trademark
 
     Trademark infringement litigation has not provided businesses with the
degree of protection from unwanted parody that some people had hoped.
Therefore, in 1995, the U.S. legislature attempted to strengthen protections
trademark owners with the Federal Trademark Dilution Act (FTDA),  which
President Clinton signed into law on January 16, 1996.  The bill added a new
portion to the Lanham Act, Section 43(c), which reads in part:
          The owner of a famous mark shall be entitled, subject to the
          principles of equity and upon such terms as the court deems
reasonable,
          to an injunction against another person's commercial use in commerce
of
          a mark or trade name, if such use begins after the mark has become
          famous and causes dilution of the distinctive quality of the mark[21]
 
Key terms in this short passage include "famous," "commercial use," "distinctive
quality," and of course, "dilution."  The law itself provides a definition of
dilution as "the lessening of the capacity of a famous mark to identify and
distinguish goods or services,"[22] but this description has been widely
regarded as so unclear that it has been restated in a variety of ways, ranging
from "the gradual 'whittling away' of the mark's distinctive quality," [23] to
"a kind of leeching of the good will of a famous mark," [24] to "a 'cancer-like
growth...which feeds upon the reputation of an established distinctive
trademark.'"[25]  As for the other terms, questions of what qualifies a
trademark as "famous" and what constitutes "commercial use" have already
launched several suits (as will be discussed further in the Court
Interpretations section, below) but none of these cases have reached the circuit
court level. [26]
     Arguably, the phrase in Section 43(c) which pertains most to issues of
parody is the one that protects the "distinctive quality" of marks.  Currently,
no one knows what the long-term effect of this language will be upon parodists
who use registered trademarks because no cases of this kind have (yet) been
filed.  Nevertheless, several critics of the legislation have issued some dark
predictions about what will happen if companies are able to obtain injunctions
against those whose expressions are expected to tarnish the "quality" of their
intellectual property.  Law professor Kenneth Port harshly criticized the FTDA
before its passage, claiming that it, "creates copyrights in the idea of the
trademark," or "super trademarks" which are "irrational" and "unnatural" in
expanding intellectual property rights. [27]  Port argued that the (then)
proposed amendment, "extends to the idea of the mark in the minds of the
consumer and other manufacturers even in abstract form.  Under dilution theory,
the trademark holder not only controls the expression of the mark, but also
attempts to control the manner in which consumers or other manufacturers
perceive of the mark."[28]
     On the other side of the debate, some advocates of the law might actually
agree with Port, such as Dale M. Cendali, a partner at O'Melveny & Myers LLP,
one of several attorneys practicing in the field of trademark litigation who
welcomed the FTDA.  ''It has chilled some infringement,'' Cendali says, praising
the way that the amendment effectively strengthens the existing rights of
trademark owners.  She adds that claiming dilution, ''used to be something at
the tail end of a complaint ...now it's at the front. It reflects the fact that
trademark is recognized increasingly as an important intellectual property
right.''[29]  Likewise, in an article for The Trademark Reporter written just
before the bill's introduction into congress, attorneys Bruce Keller and David
Bernstein extolled the potential of "bringing suit...to warn off other
parodists."[30] A similar sentiment seems to prevail at the US Patent and
Trademark Office, which announced the passage of the new law along with the
observation that, "the owners of famous marks have expended considerable
expense, time, and effort in familiarizing the public with their marks, and this
energy deserves to be rewarded." [31]
     But does this "reward" for giant corporations such as Dupont, Buick, and
Kodak (cited by name by Senator Carlos Moorhead, Chairman of the Subcommittee on
Courts and Intellectual Property, during legislative hearings[32]) come at the
expense of the First Amendment?  In the grand tradition of all politicians,
federal legislators have made several and contradictory promises on this point.
Moorhead's committee introducing the FTDA into the Senate claimed that it would
protect against, "all forms of dilution recognized by the courts, including
disparagement."[33]  Based on what they had heard from the bill's sponsors, the
International Trademark Association (ITA) published a glowing report to its
constituents, promising an end to:  "either the blurring of a trademark's
product identification or the tarnishment of the affirmative associations a
trademark comes to convey."  Furthermore, the ITA offered this definition:
"'Tarnishment' arises when a famous trademark is linked to products of shoddy
quality or portrayed in an unwholesome or unsavory context likely to evoke
unflattering beliefs about the owner or its products."[34]  Such an expectation
was not unreasonable at all, because protection from this kind of "tarnishment"
had been one of the primary goals of similar laws passed in 30 state
legislatures starting in the 1960's.[35]
     On the other hand, claims of tarnishment based on state trademark dilution
laws against expressions of parody have not succeeded very often in federal
courts, as discussed below.  In fact, a bill similar to the FTDA was proposed
and then dropped in 1988 when concerns about First Amendment rights were raised.
In the course of that debate, and in the years that followed, groups such as the
Trademark Review Commission and the American Bar Association studied the
problem[36] and recommended that a distinction be made between tarnishment
(including such slippery concepts as "unwholesome context" or "unsavory
beliefs") and blurring, which is limited to the "likelihood of confusion,
mistake, or deception."  Following this advice, sponsors of the 1995/1996 bill
incorporated only the blurring language into the FTDA, and also added a fair use
exemption, Section 43(c)(4):
          The following shall not be actionable under this section:
                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 owner of the famous mark.
                (B) Noncommercial use of a mark.
                (C) All forms of news reporting and news commentary.[37]
 
In addition to this exemption, federal legislators also imposed a heavy burden
of proof on trademark owners, by requiring that they must prove that the person
against whom the injunction is sought willfully intended to trade on the owner's
reputation or to cause dilution of the famous mark.  Practicing attorney Ethan
Horwitz points out that, "while disparagement is likely to be obvious, ''the
real tough one to prove is diluting the distinctive quality of the mark." [38]
If such intent can be demonstrated, however, the act also allows for monetary
relief along with injunctive relief. [39]
     In this way, the authors of the FTDA attempted to balance the interests of
both advocates of free speech and advocates of stronger trademark protections,
while promising the best of both worlds to everyone -- especially parodists --
as described by legal scholar Robert Denicola: "in virtually identical language,
sponsors in the House and Senate promised that the bill would 'not prohibit or
threaten noncommercial expression, such as parody, satire, editorial and other
forms of expression that are not a part of a noncommercial transaction.'"[40]
This has satisfied some critics of state dilution laws, such as Melanie Routh,
of Rutgers University, who concludes, "the First Amendment concerns were also
solved when the legislators added language exempting fair use of a famous mark
in a comparative commercial advertisement, non-commercial use of a mark, and all
forms of news reporting and news commentary from the reach of the dilution
statute." [41]  However, Routh may be overly optimistic about the application of
this section to all First Amendment concerns, such as that of parody, which
lawyers and literati alike might describe as commentary, but probably not as
news.  The question of commercial use may also return to haunt trademark
parodies in the future, although a recent Supreme Court ruling in the area of
copyright sent a clear signal that parody merits liberal protection, even in
commercial contexts (see Court Interpretations, below).
     Moreover, Routh herself casts some doubt on the validity of the distinction
between tarnishment and blurring attempted by federal legislators.  "It is
unlikely, however, that this semantic difference will have any effect on how
courts interpret the Act," [42] she writes.  If she is correct, parodists may
find little or no exemption for their work in the FTDA for reasons pointed out
by attorneys who specialize in representing companies against such use of their
trademarks: "it is the second branch of dilution law -- tarnishment -- on which
most parody victims rely.  By their very nature, parodies make fun of the
objects of their ridicule.  If done in a bawdy manner, the parody may run afoul
of dilution laws -- not because consumers would be confused into believing that
the victim was the source of the distasteful parody, but rather because the
parody erodes the value of the mark by associating it with sex, drugs or
violence."[43]
     Thus, with both sides proclaiming victory, what exactly does the new
federal against trademark dilution law accomplish?  Analysts on all sides seem
to agree that protection for trademark owners against infringement or deceptive
use of their intellectual property has been strengthened.  Kenneth Port argues
that the FTDA offers little real distinction between blurring and traditional
infringement beyond the fact that blurring now seems to carry heavier
consequences and apply to broader contexts.[44]  Denicola sums up the value of
the federal law in this way: "One thing is clear.  Under the amendment's
definition of 'dilution,' our corner of the world is now safe from DuPont shoes,
Buick aspirin, and Kodak pianos....The amendment is (and should be) limited to
DuPont Shoes -- to a loss of distinctiveness occasioned by a subsequent use of
the mark as a trademark to identify another's goods or services."[45]
     Ultimately, while the FTDA's passage has generated a great deal of pomp and
speculation, ("it may be said without fear of contradiction that the biggest
news in trademark law this year was the entry into force of the Federal
Trademark Dilution Act of 1995...[which] represents a high-water mark in federal
recognition of trademark rights..," gushed one attorney in the New York Law
Journal),[46] it does not yet provide much basis for either trademark owners or
parodists to feel completely protected from each other.  And so, the uneasy
detente continues with both sides looking to the courts for answers, and with
issues of free speech and fair use still hanging in the balance.
 
 
Recent Social and Political Context
 
     In the United States, ongoing efforts  by the Supreme Court to map out and
stabilize the practical limits of the First Amendment have resulted in much
clearer and more specific legal boundaries of protection for parody than ever
before in Western history.  Nevertheless, dangerous ambiguities within both the
law and its judicial interpretation still exist, along with confusing
inconsistencies in the application of the law.[47]
     Several factors are unique to the question of parody in the late 20th
century.  New technologies for reproduction (film, video, sound recording,
lithography, digitization, and many others) have made the "appropriation" of
intellectual property easier than ever.  The gradual transformation of books,
paintings, films, and other representational media to digital information has
caused some artists and philosophers to question the true nature of art.
Modernists such as Andy Warhol and Roy Lichtenstein "transformed" soup can
labels and comic book panels into gallery paintings, while also challenging the
traditional legal definition of painting itself by issuing their work in large
series of prints, none of which may be identified as a single "original."  Rap
musicians have also used new technology to create new works from existing ones
by "sampling" famous songs and memorable sections from other musicians as a form
of either tribute or commentary.  And above all, the broadcast format of
television has provided the greatest source of legal disputes over expressions
of parody, both in the form of humorous spoofs of well known films and cultural
texts and in the form of well-known phrases, images and styles taken from other
media for use in a commercial context.  Thus, new technical capabilities in the
areas of print reproduction, broadcast, sound and video call into question the
nature of what is an original work and what is derivative, which lies at the
core of copyright law as it applies to fair use.
     Most recently, the personal computer has led to the new phenomena of
desktop publishing and the Internet which make it possible for people to
disseminate text and images to millions of readers around the world with very
little investment of time and money.  These new technologies call into question
the very definition of the term "publication," which once played a key role in
determining the amount and nature of damages appropriate in different cases.  As
one British activist who has been sued for libel by McDonald's put it, "the web
has given us a place where we can have a voice just as loud as McDonald's...on
the Internet, it doesn't matter how much money you've got."[48]
     As with all technologies, these new channels for expression offer the
opportunity for both constructive and destructive applications.  One might call
it the "Larry Flynt Syndrome" that those who make the most flamboyant and
controversial use of a medium of expression often do so with a sense of humor or
aesthetic that tends to offend even those who would defend them on principle.
Flynt himself was involved in one of the defining cases of parody and personal
libel heard at the Supreme Court level, and figures like him have been involved
in the establishment of sedition and obscenity common law.  Parody in its modern
context has resulted in many such ambiguous and painful cases which test not
only the letter of the law, but also the tolerance of the public.
     For example, the "Jihad to Destroy Barney"[49] web site has been
established by a group of passionate and confrontational critics of the highly
successful PBS children's television show Barney and Friends for the stated
purpose of destroying the show.  The Jihad mixes serious, literary criticism of
the show's themes and representations and harsh, emotional invective (including
allegations of mind control, social engineering, and many, even darker,
insinuations) along with parodied pictures and stories based on the real
television series.  It is the mixture of humorous exaggeration and serious
criticism which presents difficult legal questions for the Jihad, because it
cannot be described as having any one, single purpose -- whether that be serious
allegations of wrongdoing, parody, or nihilistic destruction of a popular
television show.  By modifying trademarked images of the smiling purple dinosaur
with pink eyes, bloody jaws, and children's limbs trailing from the mouth, the
Jihad might seem an ideal candidate for claims of trademark infringement and/or
dilution.
     Journalist Kathleen Murphy addresses some of these questions in the context
of a similar situation in her article outlining some of the risks to encountered
by big companies on the Internet.  Former K-Mart employee Rodney Fournier
decided to create a site which details his complaints against his former
employer.  He titled his site, "K-Mart Sucks."  The company was unsuccessful in
its efforts to stop him altogether. However, he was instructed to stop using the
trademarked logo.  Fournier's response was to simply change the giant "K" on his
site from red to blue.  The company claimed victory, but others, including
Murphy, cite the episode as an important cautionary tale for all businesses
today.[50]
     Indeed, the Internet has become one of the most fiercely contested arenas
of trademark dispute in the past several years, and was cited as a primary
motivation behind the passage of the FTDA.  In particular, federal legislators
had hoped to settle the question of whether domain names (also known as Internet
addresses, i.e. the string of letters and other characters which must be entered
into a web browser application in order to access a website) are subject to
existing trademark registrations.  As Senator Patrick J. Leahy (D-Vt.) said
during the debate at the time of the bill's passage, "it is my hope that this
anti-dilution statute can help stem the use of deceptive Internet addresses
taken by those who are choosing marks that are associated with the products and
reputations of others."[51]  Leahy's intentions for the FTDA were fulfilled
later that same year when the law was cited in a Federal District Court ruling
against a "cyber-squatter" named Dennis Toeppen who had made a successful small
business by registering for domain names such as "deltaairlines.com" or
"neiman-marcus.com" and then offering to sell them to the companies who would
logically want them for a profit.  Toeppen was ordered to relinquish the domain
name he had obtained for "intermatic.com" because his use of it was found to
dilute the value of an established trademark.  Interestingly, Magistrate Judge
Morton Denlow took care to point out that the court's decision was based only on
trademark dilution -- not infringement, and not on some other legal prohibition
against "cyber-squatting."[52]  Denlow also ruled that Intermatic's name
qualified as "famous" under the trademark dilution act, which some legal
analysts have disputed[53]
      Another element unique to the late 20th century context of parody is the
changing role and emerging significance of popular culture.  In compiling an
analysis of all the intellectual property litigation involving parody he could
find in American legal history, Richard Posner made an intriguing discovery:
every single case involved works of popular culture, rather than high culture
(also revealing was the fact that he could only find a total of 59 cases).[54]
Of course, such an extreme result immediately calls into question Posner's
definition of high versus popular culture. Still, Posner's research does
illustrate the changing and contested nature of expressions of parody in that
almost all of the legal disputes in the United States have taken place within
the past few decades and have been centered on untraditional forms of cultural
expression.
     Much of the expression which might be described as parody addresses the
inherent tensions between classes, although such conflict may not be immediately
visible on the surface.   The rich and powerful have been traditional targets
for humorous comment precisely because such expression represents a form of
resistance beyond the traditional instruments of power such as money or weapons.
However, artists who use parody to comment upon issues and ideas which may
arouse the wrath of large corporations must carefully weigh the legal risks they
may be taking, sometimes armed with only sketchy ideas of what may or may not be
safe.  Witness this typical discussion which was posted on an Internet newsgroup
by and for professional cartoonists: [55]
     Bob Staake:  [What is] acceptable in fine art, [is] verboten in commercial
      illustration. Frankly, I've viewed Warhol as a genius in his ability to
make the
      public redefine THEIR assessment of what art is and what isn't.
     Ted Goff - Let's see... if I drew a cartoon that appropriated Garfield and
      Blondie and a couple of James Thurber's characters it would probably be a
stupid
      cartoon and I'd be criticized for the theft of the drawings. But if I did
      something very clever with those characters then perhaps I'd be admired
for my
      creativity.
     Bob Staake  - Painting a box of Brillo can be viewed on the surface as the
      act of a madman, a joker, or both -- unless you fathom the implication of
      committing the object to artistic interpretation on a canvas for
(theoretically)
      all eternity. However, this is not to say that I don't agree that both
(primarily
      Warhol) didn't know how to "play the game" in a tongue and cheek manner
(you are
      correct on this point as he most certainly did). The fact that he
successfully
      "played the game" is in an of itself an artistic statement.
     Zach Trenholm, son of well-known collagist Buster Cleveland - As creative
      people, our work has been subtly or obviously influenced by others & this
process
      continues for life to some extent. Sampling or appropriation I think, is
just an
      extension of this, albeit in a more direct or tangible way.
 
     Artists and writers, whose work offers very little financial reward in the
first place, fear unpredictable and yet severe prosecution by cadres of
well-funded corporate lawyers.  The same group of cartoonists quoted above
referred to themselves as "dead meat" [56] if they cross vaguely drawn lines
regarding type and frequency of use.  Comments such as these are common:
"...never underestimate the possessiveness, greed and spitefulness of the
studios who own these trademarks. Disney, for example, absolutely destroyed a
couple in Massachusetts who dared to open a restaurant called "Pinocchio's", in
which they had a picture of the Disney character on the wall. They weren't
simply asked to cease and desist; they were sued into financial ruin!" [57]
Such a widespread perception of threat obviously creates a significant potential
for a chilling effect.
     Moreover, in her review of Jane Gaines' Contested Culture, Diane Waldman
points out that as the legal definition of intellectual property grows to
include more and more elements of culture, it, "increasingly places the signs of
our common cultural heritage under threat of commodification and
privatization."[58]  Waldman and Gaines both argue that the increasingly
economic framework within which expressions of social commentary are judged may
tend to affect the cultural significance, and thus the meaning, of those works.
     In the interest of social stability or protection of free trade, nations
such as England and the United States have created laws in an attempt to define
and regulate forms of speech which the majority or the ruling class perceived as
dangerous, hurtful, and even morally wrong.  However, as Leonard Feinberg points
out, in spite of such valid concerns, broad use of the law in an attempt to
censor writers of parody has proven not only ineffective, but counterproductive:
"what it finally comes down to is that censorship determines not whether satire
is written but the form of satire that is written, by requiring varying degrees
of subterfuge...[satirists] have had to choose different techniques to cope with
the restrictions of that society."[59]
     In fact, parodists today enjoy relatively liberal legal protection, though
they may fear unfair prosecution.  In addition to the special status granted to
parody by the Fair Use Doctrine in the area of copyright, libel laws (which vary
from state to state) "fundamentally protect criticism -- no matter how caustic
or incredible," although protected criticism must not allege unproven facts or
be "malicious,"[60] which does leave room for interpretation.  Likewise,
traditional trademark infringement and even trademark dilution actions have
ended up being actually counterproductive, as practicing attorneys Bruce Keller
and David Bernstein point out: "just as parodies are designed to attract
attention with their humor, lawsuits against parodies also can attract
attention, and that attention sometimes can backfire on the plaintiff."[61]
     Ultimately, entrepreneurs and public figures have found themselves often
powerless to defend their reputation and their intellectual property against
what they may experience as the most vicious kind of personal and derisive
portrayals.  They accurately perceive that damage to their personal or
professional reputations can seriously affect their ability to compete in an
unforgiving market.  Georgia Harper of the University of Texas describes the
sentiment among business owners at a recent fair use summit: "copyright owners
thought they were giving away too much _[cooperation between owners and those
who favor fair use] depends upon how soon copyright owners figure out how to
make a living in the electronic environment. They are really scared... It's
their livelihood after all."[62]
 
 
Court Interpretations
 
     Legally, the passage of the FTDA in 1996 represents a watershed event for
trademark dilution as a legal argument.  As mentioned earlier, some individual
states had begun to write dilution protections into their laws as early as the
1960's.  Very few claims made on the basis of such clauses were ever tested in
federal courts, however, with the most notable examples only occurring in the
1980's.  In fact, legal professor Kenneth Port reports that "only about two
percent of dilution cases brought to the federal circuit courts of appeal since
1977 have resulted in a sustained injunction based solely upon dilution."
Furthermore, Port (writing in 1994) claimed that most courts at that time
considered state trademark dilution statutes to be generally overbroad, which
resulted in an attitude which was "quite hostile to dilution," and tended to
ignore such laws.[63]  For this reason, it makes sense to divide the history of
trademark dilution litigation into that which came before the passage of the
federal law, and that which came after.
 
Before the FTDA
 
     Unfortunately, 1981 turned out to be a bad year for parodists, who found
themselves among the losing two percent of dilution defendants, as measured by
Port during that period.  In a span of just six months, expressions of parody
suffered two high-profile defeats in the courts, where they also encountered a
deep disdain for very idea of mocking well-known, respected corporate
trademarks.
     First, High Society magazine lost a claim of straightforward trademark
infringement brought by the estate of Edgar Rice Burroughs for a featured satire
depicting Tarzan and Jane discussing and engaging in erotic situations.[64]  The
US Southern District Court of New York required that the defendants post an
immediate $50,000 deposit on the day of judgment, to be applied toward a
court-supervised recall the more than 500,000 copies of the offending issue from
wholesalers, distributors and subdistributors.  "Plaintiff has during the many
years since the creation of the character successfully striven to maintain its
characters, Tarzan and Jane, as persons of high moral standards, admirable
traits of character, and clean and attractive appearances and portrayals," wrote
Justice Potlack in a brief, stinging opinion.[65]
     "The defendant's purported defense," as Justice Potlack referred to it,
hinged on the testimony of High Society's vice-president, Ira Kirschenbaum, who
argued, "that the plaintiff has created an erotic atmosphere of a virile male
living in an out-of-wedlock relationship and fathering an illegitimate
child...[and] that the article is a contemporary commentary based on a
newsworthy character...as the public might well perceive it in view of the
plaintiff's own erotic exploitation."[66] Kirschenbaum (the only witness
presented by the defense) also admitted that the magazine was currently and
would continue to be directed "to young children" as an audience.  An outraged
Justice Potlack called High Society as, "a sex magazine containing lewd, vulgar,
sexually explicit photographs and articles...[which] trespass on the plaintiff's
rights in a most distasteful and crude manner."[67]
     While the defendants may have failed to charm the judge, they were wise
enough to present their single best hope for protection under the First
Amendment by claiming, "a constitutionally protected right of social commentary,
and that the plaintiff is not free from criticism or ridicule."[68]  This was by
no means a guaranteed defense against alleged trademark infringement, however,
at a time when such cases tended to focus on the issue of whether consumers
would be confused by the unauthorized use of a registered mark, without
consideration of free expression or the Fair Use Doctrine found in copyright
law.
     In the end, Justice Potlack did fault the erotic Tarzan parody as confusing
to consumers, stating flatly, "everyone would believe that the mark owner
approved the use of the trademark."  But his ruling of trademark infringement
did not end with the classic issue of confusion.  He went on to find that the
"reputation and good will" of movie and TV producers, publishers, Burrough's
literary works, and even the general public, "have undoubtedly been besmirched,
tarnished, and debased by the defendants and their magazine."[69]  This not only
amounted to "blatant infringement" under the Lanham Act, but also "dilution and
unwholesome setting."  With these latter words, Justice Potlack became one of
the earliest and one of the most enthusiastic jurors ever to apply the concept
of dilution against an expression of parody, and he even did so in a case where
nothing but simple infringement had been charged.
     By contrast, Justice O'Kelly of the US Northern District Court of Georgia
scrupulously avoided any recriminatory language or liberal interpretation in a
very similar case later that year.  Justice O'Kelly's ruling, involving the
Pillsbury dough boy, was based on an explicit allegation of trademark dilution,
under the Georgia "anti-dilution" Statute.[70]  "All the plaintiff need show to
prevail is that the contested use is likely to injure its commercial reputation
or dilute the distinctive quality of its marks," the court wrote, in a
dispassionate ruling that upheld dilution as one of only two successful claims
out of a total of eight copyright, trademark and defamation charges.
     The case centered on a magazine called "Screw," which published a joke
advertisement depicting "Poppin' Fresh," Pillsbury's trademarked and copyrighted
mascot having sex with "Poppie Fresh," a female version of himself.  In
considering the motion filed by Pillsbury against the magazine's publisher,
Milky Way Productions, the court agreed that this case represented a question of
fair use, but also refused to consider whether the image in question in fact
qualified as satire or parody, noting that, "these two works of art do not have
a fixed definition even among accomplished literary critics."[71]  Without any
special consideration for parody, then, the Pillsbury court still ruled that
copyright infringement had not occurred because the plaintiff was unable to show
any significant evidence that the value of, or market for, the original had been
measurably affected by the parody.[72]
     In examining the trademark infringement claims, the court employed a very
systematic analysis, using the traditional seven-point test for confusion
outlined in the Lanham Act.  The court recognized that many of these factors
hold little meaning in the context of a parody which seeks to fool the audience
into believing that it is real, even as it includes elements which belie its
sincerity.  For this reason, the Pillsbury court concentrated on only two parts
of the seven-point test: the defendant's intent and evidence of actual
confusion.[73]  For the latter, as mentioned above, the court was not persuaded
that it had seen any substantial proof of widespread consumer confusion.  As for
the defendant's intent, the court cited the defendant's testimony that he was
trying to, "have a good time and make fun of," the dough boy rather than trying
to "confuse, mislead, or deceive the public," which is the real focus of the
Lanham Act proscriptions.  Based primarily on these factors, the court
determined that Pillsbury's trademark had not been infringed.[74]
     The ambitious assault waged by Pillsbury's legal team against the
publishers of Screw did not stop at copyright and trademark claims, however.
They went on to invoke what the court described as "a heretofore unheard of
common law tort" called tortious tarnishment.  According to the plaintiffs, this
kind of tarnishment extended beyond the scope of Georgia's dilution law, as
when, "the defendant has so altered the image of plaintiff's trade character
[sic] (one of which is Pillsbury's corporate spokesman) as to make them
distasteful or even repulsive to a significant segment of Pillsbury's
customers."[75]  Such fancy legal maneuvering did not impress the court however,
which was unable to find any precedent for such a claim, either in cases cited
by the Pillsbury team, or in a search of its own.  "Nor is the court inclined to
accept the plaintiff's invitation to plant this first seed," Justice O'Keefe
wrote, rejecting the claim on the grounds that, "in the court's judgment any
wrong done to the plaintiff's commercial reputation can be redressed adequately
by existing statutory and common law courses of action."  But O'Keefe's words
came too late; the seed had already been planted at least six months earlier, in
Justice Potlack's bombastic ruling against High Society.
     And that seed came to fruition within seven years, when tarnishment had
become such a familiar term among both lawyers and legislators that it was
included in the first, aborted attempt at an FTDA.  Meanwhile, legal protections
for parody in the context of trademark had suffered a serious blow through these
early cases.  This was balanced, however, by a general trend toward greater
protection of parody continued in the area of copyright litigation during this
time.
     By the late 1980's, the idea of trademark dilution was well-known, and had
been incorporated into the laws of more than half the states.[76]  Trademark
attorneys Bruce Keller and David Bernstein conducted a survey of nearly all
recent federal trademark cases involving expressions of parody and found that
the rate of cases increased steadily between 1969 and 1995, with only six of the
total thirty four filed before 1980.[77]  Keller and Bernstein identify three
branches of legal approach to the prosecution of parody through trademark law:
likelihood of confusion, trademark dilution (specifically tarnishment, rather
than blurring, which they argue does not apply to parody), and parody
advertising.  Justice Potlack's ruling that "everyone" would believe that the
Burroughs estate had consented to a pornographic depiction of Tarzan would fall
into the first category, and his finding that the characters were "besmirched,
tarnished and debased" would fall into the second category.  Of course, many
cases may involve more than one approach at a time.
     Interestingly, around the time that the first iteration of a federal
trademark statute was being attempted, the courts began to show greater leniency
toward expressions of parody in Keller and Bernstein's first category,
confusion, while remaining fairly protective of the second category, tarnishment
of famous marks.  As for the third category, parody in the context of
advertising, this aspect of contested parodies tended to raise the sticky issue
of whether the work in question counted as pure expression or whether it had a
commercial use which put it into some form of competition with the trademark
owner.  Thus, the results in the context of advertising were mixed, causing some
anxiety among plaintiffs, defendants, and the courts themselves.
     A typical example of the first category would be a 1989 action against a
parody version of the popular series of study guides called Cliffs Notes.[78]  A
parody book series, called Spy Notes, mimicked some of the graphic elements,
colors and front cover style of Cliffs Notes, but with some significant
alterations.  Each of the parody books was marked as "a satire" no less than
five times in bright red lettering on the front cover, and four times on the
back.  Furthermore, the parody books used more colorful language (promising to
be "even funnier than the originals"), a different overall structure, and were
intended to be sold in collections of ten volumes which were labeled with a
different name and logo than the originals.  Noting these (and more)
distinctions between the source and derivative works in detail,[79] the court
found that the parody, "raises only a slight risk of consumer confusion that is
outweighed by the public interest in free expression, especially in the form of
expression that must to some extent resemble the original."[80] Likewise, in
1992, a magazine which spoofed the Farmer's Almanac on its cover was found
innocent of both trademark infringement and trademark dilution claims.[81]
     The second category, tarnishment, continued to be the most unfriendly
terrain for parodists.  In 1989, Vibra Labs was sued for packaging condoms to
resemble American Express cards (complete with the trademarked slogan, "don't
leave home without it").[82]  Surprisingly, this relatively unaltered
appropriation of a very famous logo and accompanying slogan was not found to be
confusing as to source.  It was, however, found to compromise the
"distinctiveness" of the mark, and tarnish the "good will" of American Express,
and so was enjoined as trademark dilution.[83]
     Far more surprising, however, was a 1994 judgment against a humor magazine
called Snicker which used a parody of an Anheuser-Busch ad to comment upon a
recent oil spill on a tributary of the Mississippi River, upstream from the
plant which produces Michelob beer.[84]  Changing the trademarked name "Michelob
Dry" to "Michelob Oily," the fake ad ran with a disclaimer identifying it as a
"Snicker Magazine Editorial" on the right side of the page.[85]  The court
minimized the importance of the disclaimer by noting that it was written in
"extremely small text,"[86] and found that the publisher, Balducci Productions,
had, "if not an intent to confuse, at least an indifference to the possibility
that some consumers might be misled by the parody."[87]  To bolster this
argument, the plaintiffs provided a survey of 301 beer drinkers or purchasers
who claimed to look through magazines or newspapers periodically.  Of these,
fifty eight percent believed that the magazine "did have to get permission to
use the Michelob name," while fifty six percent thought that Michelob would have
to approve the use of its logo and other symbols.  By contrast, only three and a
half percent of the respondents reported that they noticed the editorial
disclaimer.[88]
     But confusion was not the real basis for the Eighth Circuit Court of
Appeals' decision against the magazine.  Citing Cliff Notes, the court called
for "balance" between the  interests of free speech and the public's right to
avoid being confused.  "...[C]onfusion might have been tolerated if even
plausibly necessary to achieve the desired commentary -- a question we need not
decide," wrote Justice Gibson for the court. "In this case, the confusion is
wholly unnecessary to Balducci's stated purpose."[89]  The publishers had
fatally wounded their own case on this point, when they admitted that their
primary goal was to comment upon "environmental pollution," and to a lesser
extent, the beer manufacturer's decision to close the plant for three days "as a
precaution" following the spill.  Last in priority, the only comment Balducci
intended upon Anheuser-Busch as a company was that its brands were
"proliferating."  Based on these priorities, the court determined that Balducci
had borrowed too much from the trademark owner because even the Fair Use
Doctrine in the copyright tradition, "does not entitle the parodist to copy
everything needed to create the 'best parody;' rather, the parodist may copy
only that portion of the protected work necessary to 'conjure up the
original.'"[90]
     Legal scholar Richard Posner offers a distinction which helps to shed some
light on the Eighth Circuit's ruling in Balducci.  Posner argues that parody
should be used only to comment directly upon its subject, not to appropriate the
style, structure or content of one work for use as a weapon in criticizing some
other subject. [91]  His argument was developed through an analysis of copyright
litigation, based on cases such as Elsmere Music v. N.B.C.,[92] in which the
television program Saturday Night Live substituted the words "I Love Sodom" for
the well-known "I Love New York" promotional jingle.  The television producers
prevailed in this case, but mainly because they were able to argue that they
only used as much of the original song as was necessary to conjure it up in the
minds of the audience.  Beyond that, substantial changes were made.  Posner
believes that any such use is unfair, but at the very least, he believes that a
minimum amount should be taken from one work to comment on another.  Justice
Gibson seemed to be using just such a test when he wrote, "Balducci's desired
message, or humor, presumably hinged on consumers' ultimate realization that
although this 'advertisement' was based on the painstaking duplication of
Anheuser-Busch's marks, it was in fact a parody or editorial parody."[93]  By
taking so much from the trademark owner's symbols, then, the magazine actually
fooled some consumers into missing the real joke (about pollution), and ended up
created an unintended impression that Michelob Beer is tainted with oil.
     And, in the process, the publishers and editors of Snicker diluted and
tarnished several of Anheuser-Busch's registered trademarks.  "Moreover," wrote
Justice Gibson, "the tarnishment results from a negative, although vague,
statement about the quality of the product represented by the trademark."[94]
In the end, Balducci appealed the injunction and symbolic damages of one dollar
to the Supreme Court, claiming the classic First Amendment guarantee against,
"the stifling of political cartooning in a nation bred to broad freedoms of
speech and the press." [95]
     "Strong words, but ultimately unpersuasive," wrote Lyle Denniston, who
cites Anheuser-Busch  in The Washington Journalism Review as a prime example of
the ongoing state of confusion regarding the use of trademarks in parodies.[96]
The Supreme Court declined to review the case.  Balducci may have been a victim
of bad luck, to some extent, because the if the case had been filed only
eighteen months later, after the passage of the FTDA, the omission of any
explicit reference to tarnishment in that law might have helped the publisher
succeed.
     On the other hand, the federal law may or may not have been much help in
dealing with the third and final aspect of trademarks in parody litigation --
the context of advertising.  Because the "Michelob Oily" ad appeared on
Snicker's back cover, Balducci raised the issues of commercial versus
non-commercial use.  And television advertisers, interestingly, have been among
the first to use parody as one of their tools of persuasion, even while the
nature of their craft means that they may have the most to lose when humor is
turned against them.
     Balancing the interests of free speech and intellectual property owners can
be difficult enough in a case of pure expression or commentary, but when that
expression seeks to make a profit of its own, possibly in competition with the
trademark owner, the stakes are raised to a new level.  This is, of course, the
fundamental reason why businesses fear an unreasonably permissive attitude
toward expressions of parody on the part of the courts.  Legislators promised
that the passage of the FTDA would insure a reasonable level of protection for
valuable corporate identities, such as Michelob's, or pop-culture icons, such as
Poppin' Fresh or Tarzan.  But has this promise been fulfilled?
 
After the FTDA
 
     As of the publication of this paper, no defendant has claimed exemption
under the FTDA, based on the argument that their work is a parody.  Closest in
spirit and approach to such a situation are two cases identified by law scholar
Melanie Routh in the Fall of 1997, as part of a review of seventeen trademark
dilution cases which have occurred at the federal level in the more than two
years since President Clinton signed the law into effect.[97]  Both of these
center on Internet web sites which exhibit and sell sexually explicit materials.
In one case, Hasbro, Inc.[98] alleged that a site named "Candyland" diluted and
tarnished the "innocence and wholesomeness"[99] of its children's board game
which bears the same name.  Toys 'R' Us v. Akkaoui  resulted from a very similar
situation, in which the giant retail chain of toy stores sought an injunction
against a site called "Adults 'R' Us."  Neither of the defendants in these cases
claimed that their names were expressions of parody, and both failed under the
FTDA.
     Beyond these two tarnishment disputes, the cases filed under the new law
have focused on fundamental issues such as whether state laws are usurped by the
federal law, retroactive applications, and conflicts over consumer confusion
among competitors.[100]  Routh reports that a total of six issues have been
raised by the cases she surveyed,[101] of which only one has much direct
relevance to parody: "whether an offending mark would need to be identical to a
famous mark to be actionable under the Act."  The case of Ringling
Brothers-Barnum & Bailey, Combined Shows, Inc. v. Utah Division. of Travel
Development[102] revolved around a tourist campaign advertising the "Best Snow
on Earth" which played upon the well known slogan of the famous circus.  The
court agreed that the Utah slogan did not have to be identical to the familiar
"Best Show on Earth," registered to the plaintiff, and so it qualified for
consideration as a possible dilution.  But the defense won the case anyway with
its argument that the products promoted by the two businesses involved were so
different that they could not possibly compete with each other.[103]  Thus, the
question of the commercial, competitive nature of the derivative use has already
begun to surface under the federal law, as it is likely to do again in the
context of commercial parodies.
     When such cases do arise, the courts will probably look to the history of
trademark dilution cases as discussed above, but also to the application of Fair
Use in the context of copyright because many of the most pertinent issues have
already been explored there.  In fact, the four planks of the Fair Use Doctrine
read like a list of unresolved questions associated with dilution, tarnishment,
and parody.  First, what is the purpose of the derivative work -- commercial
versus nonprofit, commentary or educational?  This very question was raised in
every one of the cases mentioned in the previous section.  Second, what is the
nature of the copyrighted work?  This plank recalls the word "famous" which is
used to qualify marks for dilution protection in the FTDA and has already been
considered several times, such as in the "cybersquatting" case of Intermatic v.
Toeppen, mentioned earlier.  Third, how much was taken from the original, and
what was the relative importance of the borrowed material?  The FTDA addresses
this concept as the "distinctive quality" of a trademark which must not be
harmed by an act of dilution.  Fourth, what effect will the parody have upon the
potential market for the original?  Once again, the commercial versus
noncommercial nature of trademark parodies is recalled here, but so is the
classic trademark infringement question of consumer confusion.
     In light of the similarities between the fundamental questions facing
parody in both the contexts of copyright and trademark, a look back at some
landmark cases in the copyright tradition can provide some of how future
trademark dilution litigation might look.
 
 
A Fair Use Dispute
 
     Legal scholar Alexander Alben describes a rift of opinion which developed
regarding the application of the fair use doctrine, among the Second Circuit
Court of Appeal, on one side, and the Eighth and Ninth Circuits, on the
other.[104]  The divergence of interpretation that Alben describes reached its
widest point in the early 1990's with two similar and contemporary cases that
yielded two contradictory verdicts: Tin Pan Apple, Inc. v. Miller Brewing Co.,
Inc., and Eveready Battery Co., Inc. v. Adolph Coors Co., Coors Brewing Co.[105]
The disagreement between these cases actually grew from several earlier rulings,
including Pillsbury, which is cited in both the Tin Pan and Eveready decisions.
Both cases share one other important characteristic:  they both refer to
trademark claims alongside the consideration of copyright and Fair Use, as had
become increasingly common by the late 1980's and early 1990's.
     In his 1992 article, Alben argued that these differing lines of
interpretation ultimately posed the threat of uneven application of the Fair Use
Doctrine.  This worked to the advantage of copyright and trademark holders in
the Second Circuit's Tin Pan Apple case, and to the advantage of those who might
use parody for editorial comment or even some forms of commercial exploitation
in the Eighth and Ninth Circuits, whose rulings were the basis of the Eveready
decision.[106]
     Tin Pan Apple involved a television commercial for Miller Beer which used
actors who looked and behaved like a well known rap group, the Fat Boys.  The
real Fat Boys had been asked to appear in the commercial and declined.  The
completed advertisement humorously exaggerates the real Fat Boys' physical
characteristic of fatness,  and concludes with a moment in which comedian Joe
Piscopo rolls across a soundstage, having become literally as fat as a bowling
ball.  Tin Pan Apple, Inc., which controlled the rights to all Fat Boys work and
merchandise, sued Miller, the ad agency, and Piscopo for infringement of
copyright, trademark, as well as invasion of privacy and libel.[107]
     The court rested its decision squarely on the first plank of the Fair Use
Doctrine (purpose of the derivative work, commercial, non-profit, or
educational).  "There is ample authority," stated Judge Haight for the U.S.
District Court, Southern district of New York (Second Circuit), "for the
proposition that appropriation of copyrighted material solely for personal
profit, unrelieved by any creative purpose, cannot constitute parody as matter
of law (emphasis added)."[108]  As evidence of such authority, Haight cited
another ruling from the Second Circuit in 1979, D.C. Comics v. Crazy
Eddie.[109]in which the court, "simply concluded that the television commercial
could not qualify as fair use parody because it was nothing more than an
unjustifiable appropriation of copyrighted material for personal profit."[110]
Primarily commercial ventures, the court ruled, simply do not qualify as fair
use.
     As for the basic claim of trademark infringement, Judge Haight did not even
invoke the Lanham Act's seven-point test for consumer confusion in reaching his
conclusion.  Rather, he founded his trademark ruling on many of the arguments
discussed above, stating, "for essentially the same reasons stated in connection
with the plaintiff's copyright claims, I decline to recognize defendants'
commercial as parody.  Accordingly, that defense fails again."[111]  Haight also
mentioned the fact that the Fat Boys were only "parodied" after they declined to
appear in the commercial themselves, thus lending strength to the argument that
the plaintiffs must have been aware of the potential for confusion, and indeed,
probably hoped to capitalize upon it.[112]
     Meanwhile, as the Second Circuit was developing its emphasis on the first
plank of the test, Alben traced the evolution of another approach which
emphasizes the fourth plank (effect on the potential market value of the
original work).  Alben cites the Eveready case as exemplary of this second
trend.[113]  In 1991, the Eveready Battery Company lost a claim of copyright and
trademark violation in the Eighth Circuit against the Adolph Coors Company over
a television commercial for a Coors product which parodied the style and
structure of a series of commercials for an Eveready product.  Dressed in floppy
bunny ears and carrying a bass drum, actor Leslie Nielsen walked onscreen in the
middle of a beer commercial in very much the same way that the trademark
Energizer bunny had been used to interrupt fake commercials for other products.
     Writing for the court, Judge Norgle specifically rejected the Second
Circuit's emphasis on the first plank of the test, and Judge Haight's use of the
phrase "solely for personal profit," in particular.  A television commercial,
Norgle argued, cannot be accurately described as having no other purpose than
creating personal profit, and, "it is also difficult for this court to conclude
that the Coors commercial is 'unrelieved by any creative purpose (as Haight had
described the Tin Pan Apple case)."[114]
     The fourth plank, not the first plank, according to Norgle, "has been
described as 'undoubtedly the single most important element of fair use.'"[115]
Moreover, the fourth plank does not refer to the effect of criticism upon the
market value of a work -- if a bad review or biting imitation of a work reduces
people's interest in seeing the original, this does not weigh against a finding
of fair use.  The only factor to be considered for the fourth plank, according
to Norgle, is whether the parody can be shown to have the effect of "usurping or
replacing the demand for the original."  Basing its judgment mainly on this
factor, the Eveready court characterized the Coors commercial as fair use
because "viewers will not stop watching the Eveready commercials in order to
watch the Coors commercial on another channel."[116]
     In support of this decision, Norgle cites several other trademark cases,
most notably Elsmere (the Saturday Night Live parody of "I Love New York"), and
Pillsbury (with its erotic depiction of the dough boy).[117]  The fourth plank
plays a key role in both of these cases, in a way that is similar to the
Eveready decision.  Elsmere essentially ignored the first two planks of the
test, and argued that the third plank (amount taken from the original work)
offers parody a special privilege of substantial use.  However, Elsmere also
picked up on the portion of the Berlin ruling which argued that parody, as a
new, different and original work, cannot fulfill demand for the original, and,
in the end, the Elsmere  court agreed.[118]
     The Pillsbury court chose to systematically consider all four factors of
the Fair Use test, starting with the fourth, which the court described as "often
determinative," because it has "traditionally" received the heaviest
emphasis.[119]  And, as in the Eveready case, the core of the Pillsbury court's
ruling against copyright infringement centered on the fact that the plaintiff
was unable to show any significant fourth plank evidence that the value of, or
market for, the original had been measurably affected by the parody.
     The issues and approaches undertaken as part of the Fair Use debate among
the circuits are likely to foreshadow some future battles awaiting parodies in
the area of trademark dilution.  Many of the strategies which were seen to
succeed or fail offer lessons for those who will engage in future litigation.
Perhaps the most valuable lesson to be found in all these cases, however, is the
potential for serious disagreement among federal courts.  Such widely divergent
interpretations offer little comfort to either parodists or trademark owners in
the long term.   It is a central purpose of the Supreme Court to provides some
direction in such disputes, however, and that is exactly what occurred in 1994.
     In 1989, one of the members of the rap group 2 Live Crew composed a parody
(with the same title as the original) of the well-known song, "Oh Pretty Woman,"
written by Roy Orbison and William Dees.  The band's manager contacted the
company to whom Orbison and Dees had assigned the rights of their song,
informing him of the parody, and offering to pay a license fee.  When the
company, Acuff-Rose Music, refused permission to parody the song, 2 Live Crew
proceeded nevertheless, releasing records, cassette tapes, and compact discs of
"Pretty Woman" in a collection of songs. Orbison and Dees are identified as the
authors of "Pretty Woman" on the packaging of 2 Live Crew's albums and compact
discs, and Acuff-Rose is listed as the publisher of the song.  The court notes,
"almost a year after the parody's release, at which point a quarter of a million
copies of the recording had been sold, Acuff-Rose sued 2 Live Crew and its
record company, Luke Skyywalker Records, for copyright infringement." [120]
     2 Live Crew was granted summary judgment at the district court level on the
basis that their version was a parody, which took no more than necessary to
"conjure up" the original (plank 3), and was "extremely unlikely" to adversely
affect the market for the Orbison and Dees version (plank 4).  This decision was
overturned by the Sixth Circuit Court of Appeals, which focused its judgment on
the commercial nature of rap parody version (plank 1).  Citing a 1984 case about
the potential infringement of motion picture copyrights by the manufacture of
VCR machines,[121] the Sixth Circuit ruled that, "every commercial use...is
presumptively...unfair."  This progression of rulings very much epitomizes the
dispute among the courts described above.
     The Supreme Court, however, overturned the Sixth Circuit ruling in 1994 by
correcting what it ruled to be the Sixth Circuit's overemphasis on the
commercial nature of the rap song parody.  Using the word "transformative" to
describe derivative works which alter the original with their own commentary,
the Supreme Court considered the amount of "new" expression against the
profit-making potential.  "The more transformative the new work," wrote the
court, "the less will be the significance of other factors, like commercialism,
that may weigh against a finding of fair use."  This factor essentially won the
case for Campbell, et al.  The Supreme Court's ruling shifted the balance of
factors within the Fair Use test away from the Sixth Circuit's emphasis on the
first factor (the intended purpose of the disputed work.).[122]
     However, the high court's ruling also did not fully espouse the Eighth and
Ninth Circuits' emphasis on the fourth plank.  Instead, the court rejected the
use of any one of the Fair Use planks as a threshold question before the others.
"The threshold question when fair use is raised in defense of parody is whether
a parodic character may reasonably be perceived," wrote Justice Souter for the
unanimous court.  If a derivative work transforms its subject into a
recognizable parody, then both the first and fourth factors weigh less heavily
against a finding of fair use, according to Acuff-Rose.
     Justice Souter also mitigated the importance of the fourth plank by noting
(as did Eveready) that "when a lethal parody, like a scathing theater review,
kills demand for the original, it does not produce a harm cognizable under the
Copyright Act...[b]ecause 'parody may quite legitimately aim at garroting the
original, destroying it commercially as well as artistically.'"[123]  In the
end, the fourth plank of the Acuff-Rose case was remanded to the lower courts
because 2 Live Crew had failed to show evidence of the potential effect of their
song on the copyright holder's legitimate right to authorize a non-parody, rap
version of the song in the future.  As a derivative parody, then, the Supreme
Court ruled that 2 Live Crew's version met the fourth plank of the fair use test
("since the two works usually serve different market functions,"[124]), although
it might still be an infringement as an unauthorized rap version of the song.
     With regard to the third factor (amount and relative importance of the
portion copied), the court echoed the widely accepted notion of special
privilege for parody which goes back to Berlin, affirming that its, "art lies in
the tension between a known original and its parodic twin...the heart is what
most readily conjures up the song for parody, and it is the heart at which
parody takes aim."  However, copyright scholar Melville Nimmer notes that the
high court's ruling on this factor remains "mired in paradox,"[125] perhaps
because it uses a subjective interpretation of how well a parody transforms its
subject to determine whether a particular instance of parody is valid.
     Thus, for all its flowery praise of the "art" of parody, Acuff-Rose still
places the burden of proving fair use on, "the parodist's justification for the
particular copying done."  And to underscore the fact that he does not mean to
let anyone off the hook, Souter specifically warns that, "this is not, of
course, to say that anyone who calls himself a parodist can skim the cream and
get away scot free,"  which leads back to the old, unresolved questions of
exactly what parody is, and who will be the judge.  The best guidance that
Acuff-Rose has to offer is that parody transforms its subject, and a reasonable
recognition of a work as parody provides a threshold for application of the Fair
Use Doctrine.  Beyond that, Souter acknowledges that a case-by-case approach
represents the only reliable approach, as, "the task is not to be simplified
with bright line rules."[126]
 
 
 
 
 
 
 
Conclusions:
 
     The role played by parodists in our society is vital but fragile, and
although this may be said of all forms of art, journalism and creative
expression, parody is special for at least two reasons.  First, works of parody
employ many layers of often contradictory meanings, rich with overtones,
intertextual references, and innuendo.  Second, historically, parodists have
tended to draw the ire of the wealthiest and most powerful members of society --
even more than other forms of art and criticism -- thus subjecting them to
greater danger of censorship and repression in general.
     American law does, in fact, allow special protection for parody.  The
copyright tradition has carved out a reliable and effective approach to the
slippery concept of this ancient art form by protecting it under the terms of
the Fair Use Doctrine.  The recent ruling by the Supreme Court in Campbell sends
a clear signal that cultural texts and images should be available for use in
comment or criticism, so long as the extent and intent of that use is judged to
be fair.  One of the most important aspects of Campbell is the clarity and
emphasis with which it recognizes the value of parody - in language that goes
beyond questions of copyright or trademark.  In the same spirit, the word "fair"
has been included in the exemptions section of the FTDA.  This is an example of
American law being used for its highest purpose: to safeguard the lone
dissenting voice even in the face of powerful opposition.  The Fair Use Doctrine
offers an excellent model for trademark cases in the context of parody because
at its core, it protects the concept of free expression which naturally belongs
in a system of free trade and democracy.
     Unfortunately, as the uneven history of parody's protection in both the
trademark and copyright traditions illustrates, the fate of parody may change
with the composition of the judiciary.  Despite the fact that many dedicated
artists have been willing to risk their lives to mock the mighty, chilling
effects do exist, and with good reason, as the conversation among the
cartoonists included in the third section of this paper demonstrates.
Political, social, and economic pressures may affect the courts' interpretations
as well.  The long tradition of battles over the rights of parodists continues
today in the area of trademark dilution, and it will face new challenges in the
future.  Fortunately, the world suffers no shortage of people willing to poke a
little fun, nor of subjects from which to choose.
     Nevertheless, a deeper problem does exist here, and it was explored very
thoughtfully by Jane Gaines in her book Contested Culture.  In reviewing this
book, Diane Waldman uses the term "commodification" to describe the process[127]
by which some important cultural texts and symbols come to be seen as objects
which are subject to sale and ownership in the legal discourse of intellectual
property.  Any law which allows someone to "own" popular phrases or images
carrying great power and meaning has a dramatic effect on the nature of
expression and dialogue in society.  This is especially true today, when social
dialogue takes place through so many new forms of media in which the
commodification of words, symbols, and ideas has been institutionalized as a
bonding of economic, cultural, and political forces called the Information Age.
The danger is that many of the rich and subtle ways in which culture affects our
lives will be inhibited through this process.  As Gaines herself puts it, "legal
discourse is designed to guard against ambiguity, and even the use of synonyms
is avoided because it produces unwanted ambiguity rather than clarity.  Meaning
is bound again and again to linguistic terms through the ritual of
citation."[128]  Parody's stock-in-trade is, of course, layered and often
contradictory meanings which revel in correspondences and ambiguities.  And the
long term effects of binding it to a legal framework, even one as accommodating
as the Fair Use Doctrine, remain to be seen.
     Humor, and specifically parody, continues to play a significant role in the
world today.  Parodists in the modern United States are very lucky by the
standards of just about any other nation or civilization in the past of present.
Not all those who have engaged in wit or ridicule directed against the powerful
have fared so well. This reality has given rise to jokes of its own, such as,
"is it true that Comrade Stalin collects political jokes?  Yes, but first he
collects the people who tell them."[129]
     Even so, this is a time when many corporations have become more powerful
than nations. Some people fear what may be the twilight of the nation-state as
the dominant political and social form in the world, while others see it as
nothing more than a reshuffling of power and money relationships which existed
long before nation-states were understood in the modern sense.  It would be
difficult to argue against the fact that corporations operate more like nations
now than ever before, often without effective governmental regulation.
     In this atmosphere, public figures such as Ted Turner. Rupert Murdock and
even Ross Perot have used their wealth and power as a new breed of
businessmen-turned-politicians.  Meanwhile, with the grassroots nature of the
Internet and other forms of communication, parodists and other commentators will
be to provide a kind of foil, or checking value, against this new kind of
aristocracy.  At its heart, parody has always provided a deep and yet stinging
form of ideological check in this same way.  Even today, even when thoughts and
images are commodified into intellectual property,  that checking value may turn
out to have more political significance than it ever did before. Bibliography:
 
Alben, Alexander. "The Man in the Pink Bunny Suit Battles the False Fat
     Boys -- Growing Confusion in the Application of Fair Use to Commercial
     Parodies in Eveready Battery Co. v. Adolph Coors Co. and Tin Pan Apple v.
     Miller Brewing Co.,"  Tort & Insurance Law Journal XXVII: 3, Spring, 1992.
 
"Appropriation of Images."  Ted Goff Website, 1997. Online.  Available:
     http://www.tedgoff.com/wwwboard/index/messages/swipingimages071297.html
     October 1997.
 
Bencivenga, Dominic. "Trademark Dilution: Attorneys Long for Guidance on
     Proving Erosion," The New York Law Journal, April 3, 1997, p.1
 
Benton, Gregor. "The Origins of the Political Joke," Humour in Society:
     Resistance and Control New York: St. Martin's Press, 1988.
 
Blanc, Williams, Johnston and Kronstadt, eds. "Domain Name Violates
     Trademark Dilution Act, District Court Rules," The Computer Lawyer 13 Nov.,
     1996.
 
Clark, Aubert J. The Movement for International Copyright in Nineteeth
     Century America Westport: Greenwood Press Publishers, 1960.
 
Bollinger, Lee C. "The Tolerant Society," The First Amendment: A Reader
     (class handout).
 
Denicola, Robert C. "Thoughts on Trademark," Law and Contemporary Problems
     59: Spring: 1996.
 
Denniston, Lyle. "This Slogan Isn't Necessarily For You." Washington
     Journalism Review 17, March, 1995.
 
Elliott, Robert C. "The Satirist and Society," Modern Satire, Alvin B.
     Kernan, ed. New York: Harcourt, Brace and World, 1962.
 
Feinberg, Leonard. The Satirist: His Temperament, Motivation, and Influence
     Ames: Iowa State University Press, 1963.
 
Field, Thomas G., Jr. "Avoiding Patent, Copyright & Trademark Problems:
     What You Don't Know Can Hurt You!" Franklin Pierce Law Center, 1996.
     Online.  Available:  http://www.fplc.edu/tfield/avoid.htm. October 1997.
 
Gaines, Jane Contested Culture: The Image, the Voice, and the Law Chapel
     Hill and London: University of North Carolina Press, 1991.
 
Harper, Georgia. "Fair Use Website." University of Texas, 1997 Online.
     Available:  http://www.utsystem.edu/OGC/IntellectualProperty/confu.htm
     October, 1997.
 
Kaplan B., An Unhurried View of Copyright 1967.
 
Keller, Bruce P. and Bernstein, David H. "As Satiric As They Wanna Be:
     Parody Lawsuits Under Copyright, Trademark, Dilution and Publicity Laws,"
     Trademark Reporter 85, May, 1995.
 
Kernan, Alvin B. Modern Satire New York: Harcourt, Brace and World, 1962.
 
Middleton, Kent R., Chamberlin, Bill F., and Bunker, Matthew D., The Law of
     Public Communication, 4th Edition.  Longman, 1997.
 
Murphy, Kathleen. "Risk of Having Site: Being Mocked: Big Firms Look to
     Protect Their Good Name." Web Week, July 8, 1996 vol. 2: Issue 9.  Online.
     Available:  http://www.webweek.com/96July8/comm/mocked.html October 1997.
 
Nimmer, Melville. International Copyright Law and Practice, Volume 2 New
     York: Matthew Bender and Co., Inc., 1996.
 
"Parodies"  Ted Goff Website, 1997. Online.  Available:
 
http://www.tedgoff.com/wwwboard/index/messages/copyrightissueoncomicparodies1.ht
ml
 
Patry, William F. The Fair Use Privilege in Copyright Law Washington, D.C.:
     The Bureau of National Affairs, Inc., 1985.
 
Port, Kenneth. "The 'Unnatural' Expansion of Trademark Rights: Is a Federal
     Dilution Statute Necessary?" Seton Hall Legislative Journal 18, 1993.
 
Posner, Richard.  "When is Parody Fair Use?" Journal of Legal Studies XXI,
     January 1992.
 
Rose Margaret A. Parody: Ancient, Modern And Post-Modern Cambridge:
     Cambridge University Press, 1993.
 
Routh, Melanie M. "Federal Trademark Dilution Act," Rutgers Law Review, 50:
     253, 1997.
 
Sanford, Bruce W. Sanford's Synopsis of Libel and Privacy, Fourth Edition
     New York: Pharos Books, 1991.
 
Scheinfeld, Robert C. and Bagley, Parker H. "Patent and Trademark Law:
     Dilution Update; Antitrust Reversal," New York Law Journal March 25, 1998.
 
Seltzer, Leon E. Exemptions and Fair Use in Copyright: The Exclusive Rights
     Tensions in the 1976 Copyright Act Cambridge: Harvard University Press,
     1978.
 
Shapiro, Steven E. "Use of 'Mead Data' Test Dilutes the Dilution Act:
     Despite Statute's Terms, Courts Inject 'Likelihood of Confusion' Into Their
     Analysis of 'Blurring.'" The National Law Journal, Monday, May 12, 1997.
 
Smith, Frances G. "The Federal Trademark Dilution Act of 1995," Journal of
     the Patent and TM Ofc. Society 78:6, 1996.
 
Tedford, Thomas L. Freedom of Speech in the United States (class handout)
     p. 4.
 
 "The Jihad to Destroy Barney."  Barney Jihad, 1997. Online.  Available:
     http://www.public.iastate.edu/~midnite/bharni/yermish.html  October, 1997.
 
Waldman, Diane. "Lawsuits of the Rich and Famous: Privacy, Property, and
     Popular Culture," Quarterly Review of Film and Video 14:4, 1993.
 
"What is the Governing Law for Copyright?" Oppedahl & Larson, 1995.
     Online.  Available: http://www.patents.com/  October, 1997.
 
"What Types of Work May Be Copyrighted?" The Reporters Committee for
     Freedom of the Press, 1995  Online.  Available:
     http://www.rcfp.org/1stamend/1a_c10p2.html October, 1997.
 
Wood, Marcus. Radical Satire and Print Culture, 1790-1822 Oxford: Clarendon
     Press, 1994
 
 
 
 
 
 
 Cases Cited:
 
 
 
American Express Co. v. Vibra Approved Laboratories Corp. 10 USPQ2d 2006
     (SDNY 1989)
 
Anheuser Busch Inc. v. Balducci Publications, 22 Med. L. Rptr. 2001-2008
 
Benny v. Loew's, Inc., 239 F. 2d 532 (9th Cir. 1956), aff'd 356 U.S. 43
     (1958)
 
Berlin v. E.C. Publications, Inc., 329 F.2d. 541 (2d Cir., 1964)
 
Bloom & Hamlin v. Nixon, 125 F. 997 (C.C.E.D. Pa. 1903)
 
Campbell v. Acuff-Rose Music, 114 S. Ct. 1164 (1994).
 
Cliff Notes, Inc. v. Bantam Doubleday Dell, 16 Med. L. Rptr. 2289.
 
Colombia Pictures Corp. v. National Broadcasting Co. 137 F. Supp. 348 (S.D.
     Cal 1955)
 
D.C. Comics v. Crazy Eddie, 205 USPQ 177 (S.D.N.Y. 1979), cited in Ibid.
 
Elsmere Music, Inc. v. National Broadcasting Co., 5 Med.L.Rptr. 2455
 
Eveready Battery Co., Inc. v. Adolph Coors Co., Coors Brewing Co., 765 F.
     Supp. 440 (N.D. Ill. 1991)
 
Green v. Luby 177 F. 287 (C.C.S.D.N.Y. 1909)
 
Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 566,
     105 S.Ct. 2218, 2230, 85 L.Ed.2d 588 (1985)
 
Hasbro, Inc. v. Internet Entertainment Group, No. c96-130WD, 1996 WL 84853,
     (W.D. Wash. Feb. 9, 1996)
 
Hill v. Whalen & Martell, Inc. 220 F. 359 (S.D.N.Y. 1914)
 
Loew's Inc. v. Colombia Broadcasting Systems, Inc. 131 F. Supp. 165 (S.D.
     Cal. 1955)
 
Ringling Brothers-Barnum & Bailey, Combined Shows, Inc. v. Utah Division.
     of Travel Development 955 F. Supp. 598 (E.D. Va 1997),
 
Tin Pan Apple, Inc. v. Miller Brewing Co., Inc., 17 Med.L.Rptr. 2273
 
 
 
 
 
Pillsbury v. Milky Way Productions, 8 Med.L.Rptr. 1016.
 
Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 451
     (1984)
 
Walt Disney Productions v. Air Pirates, 581 F.2d 751, 758 (9th Cir. 1978),
     cert. denied, 439 U.S. 1132 (1979)
 
 
 
 
 
 
 
[1]  Robert C. Elliott, "The Satirist and Society," Modern Satire, Alvin B.
Kernan, ed. (New York: Harcourt, Brace and World, 1962) p.148.
[2]  Richard Posner, "When is Parody Fair Use?" Journal of Legal Studies XXI
(January 1992): 72.
[3]  Berlin v. E.C. Publications, 329 F 2d 545 (2d Cir. 1964), cited in: Leon E.
Seltzer, Exemptions and Fair Use in Copyright: The Exclusive Rights Tensions in
the 1976 Copyright Act (Cambridge: Harvard University Press, 1978) p. 44.
[4]  Melville Nimmer, International Copyright Law and Practice, Volume 2 (New
York: Matthew Bender and Co., Inc., 1996) p. 150.
[5]  Margaret A. Rose, Parody: Ancient, Modern And Post-Modern (Cambridge:
Cambridge University Press, 1993) p. 280.
[6]  Ibid., 280.
[7]  Ibid., 105.
[8]  Bruce W. Sanford, Sanford's Synopsis of Libel and Privacy, Fourth Edition
(New York: Pharos Books, 1991) p. 26.
[9]  "What is the Governing Law for Copyright?" Oppedahl & Larson (1995): 1 par.
Online.  Available: http://www.patents.com/  October, 1997.
[10]  The Fair Use Doctrine was first applied to an expression of parody in
1958, in the copyright infringement case of Loew's Inc. v. Colombia Broadcasting
Systems, Inc 131 F. Supp. 165 (S.D. Cal. 1955), cited in: William F. Patry, The
Fair Use Privilege in Copyright Law (Washington, D.C.: The Bureau of National
Affairs, Inc., 1985) p. 153.. Legal historian William F. Patry calls it the
"premiere parody case," because it involved the first serious attempt at a
defense based on parody as a form of protected speech. Unfortunately, parody
lost this premiere case, but this decision, "raised a storm of protests,"
according to Patry, and the judge in the case handed down an almost
contradictory ruling the next year in a similar case (Colombia Pictures Corp. v.
National Broadcasting Co. 137 F. Supp. 348 (S.D. Cal 1955), also cited in
Patry., 158.)
[11]  Leon E. Seltzer, Exemptions and Fair Use Copyright: Exclusive Rights
Tensions in the 1976 Copyright Act (Cambridge: Harvard University Press, 1978)
p. 1.
[12]  "Title 15" Publisher unknown. (1997): Online.  Available:
gopher://hamilton1.house.gov/11d%3A/uscode/title17/sect10
[13]  Nimmer, 150.
[14]  "Title 15" Publisher unknown. (1997): Online.  Available:
gopher://hamilton1.house.gov/11d%3A/uscode/title15/sect22
[15]  Aubert J. Clark, The Movement for International Copyright in Nineteeth
Century America (Westport: Greenwood Press Publishers, 1960) pp. 118-181.
[16]  "Title 15" Publisher unknown. (1997): Online.  Available:
gopher://hamilton1.house.gov/11d%3A/uscode/title15/sect10
[17]  Confusion was demonstrated in the form of a letter, from Mr. Charles L.
Sipp to the Pillsbury Company, expressing outrage that the company would allow
its dough boy to be depicted in what he perceived as an obscene situation (how
Mr. Sipp happened to discover this depiction in the pages of "Screw" magazine is
not mentioned in the court record). Pillsbury v. Milky Way Productions, 8 Med.
L. Rptr. 1021-1022, based on Ga. Code Ann. _ 106-115..  The other two cases were
Tin Pan Apple, Inc. v. Miller Brewing Co., Inc., 737 F. Supp. 826 (S.D.N.Y.
1990), and Eveready Battery Co., Inc. v. Adolph Coors Co., Coors Brewing Co.,
765 F. Supp. 440 (N.D. Ill. 1991), cited in Alexander Alben, "The Man in the
Pink Bunny Suit Battles the False Fat  Boys -- Growing Confusion in the
Application of Fair Use to Commercial Parodies in Eveready Battery Co. v. Adolph
Coors Co. and Tin Pan Apple v. Miller Brewing Co.,"  Tort & Insurance Law
Journal XXVII: 3 (Spring, 1992): 555.
[18]  Eveready and Pillsbury.
[19]  Robert C. Denicola, "Thoughts on Trademark," Law and Contemporary Problems
59 (Spring: 1996) 75-92.
[20]  Denicola, 91.
[21]  15 USC Sec. 1125 (01/16/96)
[22]  15 USC Sec. 1127 (01/16/96)
[23]  Frances G. Smith, "The Federal Trademark Dilution Act of 1995," Journal of
the Patent and TM Ofc. Society 78 (no. 6: 1996) 420.
[24]  Jane C. Ginsburg, a professor at Columbia University School of Law, cited
in Dominic Bencivenga, "Trademark Dilution: Attorneys Long for Guidance on
Proving Erosion," The New York Law Journal, April 3, 1997, p.1.
[25]  quoted in Kenneth Port "The 'Unnatural' Expansion of Trademark Rights: Is
a Federal Dilution Statute Necessary?" Seton Hall Legislative Journal 18 (1993):
435.
[26]  Robert C. Scheinfeld and Parker H. Bagley, "Patent and Trademark Law:
Dilution Update; Antitrust Reversal," New York Law Journal (March 25, 1998): 1.
[27]  Port, 482.
[28]  Port, 485-486.
[29]  Bencivenga, 1.
[30]  Bruce P. Keller and David H. Bernstein, "As Satiric As They Wanna Be:
Parody Lawsuits Under Copyright, Trademark, Dilution and Publicity Laws,"
Trademark Reporter, 85 (May, 1995): 261.
[31]  Smith, 420.
[32]  Ibid.
[33]  Denicola, 88.
[34]  INTA Special Report 1 (Jan. 1996) cited in Ibid.
[35]  Early references date back to Frank Schechter in 1924, as mentioned in
Port pp. 437-438.  Massachusetts was first state to pass a dilution statute
(also in Port p. 439).
[36]  Denicola, 89.
[37]  15 USC Sec. 1125 (01/16/96)
[38]  Bencivenga, 1.
[39]  15 USC Sec. 1125 (01/16/96)
[40]  Denicola, 91.
[41]  Melanie M. Routh "Federal Trademark Dilution Act," Rutgers Law Review, 50
(no. 253, 1997): 282-283.
[42]  Ibid.
[43]  Keller and Bernstein, 252.
[44]  Port 456.
[45]  Denicola, 87-88.
[46]  Bencivenga, 1.
[47]  Georgia Harper, "Fair Use Website." University of Texas (1997): Online.
Available:  http://www.utsystem.edu/OGC/IntellectualProperty/confu.htm  October,
1997, par. 4.
[48]  Kathleen Murphy. "Risk of Having Site: Being Mocked: Big Firms Look to
Protect Their Good Name." Web Week, July 8, 1996 vol. 2: Issue 9.  Online.
Available:  http://www.webweek.com/96July8/comm/mocked.html October 1997.
[49]  "The Jihad to Destroy Barney."  Barney Jihad (1997): Online.  Available:
http://www.public.iastate.edu/~midnite/bharni/yermish.html  October, 1997.
[50]  Murphy, par. 9.
[51]  Blanc, Williams, Johnston and Kronstadt, eds., "Domain Name Violates
Trademark Dilution Act, District Court Rules," The Computer Lawyer, 13 (Nov.,
1996): 20.
[52]  Ibid.
[53]  Bencivenga, 1.
[54]  Posner, 76-77.
[55]  "Appropriation of Images."  Ted Goff Website (1997): Online.  Available:
http://www.tedgoff.com/wwwboard/index/messages/swipingimages071297.html  October
1997.
[56]  "Parodies"  Ted Goff Website (1997): Online.  Available:
http://www.tedgoff.com/wwwboard/index/messages/copyrightissueoncomicparodies1.ht
ml
[57]  Ibid.
[58]  Diane Waldman, "Lawsuits of the Rich and Famous: Privacy, Property, and
Popular Culture," Quarterly Review of Film and Video 14:4 (1993): 78.
[59]  Leonard Feinberg, The Satirist: His Temperament, Motivation, and Influence
(Ames: Iowa State University Press, 1963) pp. 308-309.
[60]  Sanford, 18.
[61]  Trademark Reporter, 260
[62]  In September, 1994, the Conference on Fair Use (CONFU) convened
negotiations among the Clinton Administration's National Information
Infrastructure Initiative, the Working Group on Intellectual Property Rights in
the Electronic Environment,  and copyright stakeholders to establish voluntary
guidelines for the fair use of electronic materials in a variety of nonprofit
educational contexts.  Harper, par. 3.
[63]  Port, 449.
[64]  Burroughs v. High Society, 7 Med. L Rptr. 1863-1864.
[65]  Ibid., 1863.
[66]  Ibid.
[67]  Ibid.
[68]  Ibid.
[69]  Ibid, 1864.
[70]  Pillsbury 1027.
[71]  Pillsbury 1021.
[72]  Interestingly, the court also foreshadowed later rulings in the area of
copyright by narrowly interpreting the commericial nature of Screw magazine.
The Pillsbury parody did not qualify as commercial, the court ruled, because
although the magazine is sold for profit, the fake ad was located inside as part
of the editorial content rather than on the front cover where it might have been
used to increase sales. Pillsbury 1022.
[73]  Ibid., 1024-1026.
[74]  Ibid.
[75]  Pillsbury, 1026-1027.
[76]  Keller and Bernstein, 251.
[77]  Ibid., 248-250.
[78]  Cliff Notes, Inc. v. Bantam Doubleday Dell, 16 Med. L. Rptr. 2289.  Note
that the spelling of Cliffs Notes without an apostrophe (as in Cliff's Notes) is
used here, in accordance with the practice of the court in this case, although
the court noted that both spellings are used by the plaintiffs.
[79]  Ibid., 2290.
[80]  Ibid., 2294.
[81]  Keller and Bernstein, 253
[82]  American Express Co. v. Vibra Approved Laboratories Corp. 10 USPQ2d 2006
(SDNY 1989), cited in Ibid., 252.
[83]  Keller and Bernstein, footnote #49, pp 249-250.
[84]  Lyle Denniston, "This Slogan Isn't Necessarily For You." Washington
Journalism Review, 17 (March, 1995): 54.
[85]  Anheuser Busch Inc. v. Balducci Publications, 22 Med. L. Rptr. 2001-2008.
[86]  Ibid., 2002.
[87]  Ibid., 2004
[88]  Ibid., 2002
[89]  Ibid., 2006
[90]  Ibid., 2004, citing Walt Disney Productions v. Air Pirates, 581 F.2d 751,
758 (9th Cir. 1978), cert. denied, 439 U.S. 1132 (1979)
[91]  Posner, 73-74.
[92]  Elsmere Music v. NBC, 5 Med.L.Rptr. 2455-2458.
[93]  Anheuser Busch, 2004
[94]  Ibid., 2007
[95]  Denniston, 54.
[96]  Ibid.
[97]  Routh, 282-290.
[98]  Hasbro, Inc. v. Internet Entertainment Group, No. c96-130WD, 1996 WL
84853, (W.D. Wash. Feb. 9, 1996), cited in Ibid., 288
[99]  Ibid.
[100]  Steven E. Shapiro, "Use of 'Mead Data' Test Dilutes the Dilution Act:
Despite Statute's Terms, Courts Inject 'Likelihood of Confusion' Into Their
Analysis of 'Blurring.'" The National Law Journal, (Monday, May 12, 1997) p.
C02.
[101]  Routh, 284.
[102]  955 F. Supp. 598 (E.D. Va 1997), cited in Ibid., 285
[103]  Shapiro, p. C02.
[104]  Alben, 562.
[105]  Tin Pan Apple, Inc. v. Miller Brewing Co., Inc., 737 F. Supp. 826
(S.D.N.Y. 1990), and Eveready Battery Co., Inc. v. Adolph Coors Co., Coors
Brewing Co., 765 F. Supp. 440 (N.D. Ill. 1991), cited in Ibid., 555.
[106]  Ibid., 556.
[107]  Tin Pan Apple, Inc. 2275.
[108]  Tin Pan Apple, Inc. 2276.
[109]  D.C. Comics v. Crazy Eddie, 205 USPQ 177 (S.D.N.Y. 1979), cited in Ibid.
[110]  Tin Pan Apple, Inc., 2278.
[111]  Ibid., 2279.
[112]  Ibid., 2280.
[113]  Alben, 555.
[114]  Eveready Battery Co., Inc. v. Adolph Coors Co., Coors Brewing Co., 765 F.
Supp. 446 (N.D. Ill. 1991).
[115]  Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 566,
105 S.Ct. 2218, 2230, 85 L.Ed.2d 588 (1985) quoted in Ibid., 448.
[116]  Eveready 448.
[117]  Elsmere Music v. NBC, 5 Med.L.Rptr. 2455, and Pillsbury v. Milky Way
Productions, 8 Med.L.Rptr. 1016.
[118]  Elsmere 2458.
[119]  Ibid.
[120]  Campbell v. Acuff-Rose Music, 114 S. Ct. 1164 (1994).
[121]  Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 451
(1984).
[122]  Campbell v. Acuff-Rose Music, 114 S. Ct. 1164 (1994).
[123]  Ibid., containing quotation cited only as, B. Kaplan, An Unhurried View
of Copyright 69 (1967).
[124]  Ibid.
[125]  Nimmer, 150.
[126]  Acuff-Rose, 1164.
[127]  Waldman, 78.
[128]  Jane Gaines, Contested Culture: The Image, the Voice, and the Law (Chapel
Hill and London: University of North Carolina Press, 1991) p. 2.
[129]  Gregor Benton, "The Origins of the Political Joke," Humour in Society:
Resistance and Control (New York: St. Martin's Press, 1988) p. 37.