Hustler v. Falwell.pdf - Mark Roesler

1ST CASE of Level 1 printed in FULL format.
Hustler Magazine and Larry C. Flynt, Petitioners v. Jerry
Falwell
No. 86-1278
SUPREME COURT OF THE UNITED STATES
485 U.S. 46; 108 S. Ct. 876; 1988 U.S. LEXIS 941; 99 L. Ed.
2d 41; 56 U.S.L.W. 4180; 14 Media L. Rep. 2281
December 2, 1987, Argued
February 24, 1988, Decided
PRIOR HISTORY: ON WRIT OF CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR
THE FOURTH CIRCUIT.
DISPOSITION: 797 F. 2d 1270, reversed.
SYLLABUS: [***1]
Respondent, a nationally known minister and commentator on politics and
public
affairs, filed a diversity action in Federal District Court against petitioners, a
nationally circulated magazine and its publisher, to recover damages for, inter
alia,
libel and intentional infliction of emotional distress arising from the publication
of
an advertisement "parody" which, among other things, portrayed respondent as
having engaged in a drunken incestuous rendezvous with his mother in an
outhouse. The jury found against respondent on the libel claim, specifically
finding
that the parody could not "reasonably be understood as describing actual facts . .
. or events," but ruled in his favor on the emotional distress claim, stating that
he
should be awarded compensatory and punitive damages. The Court of Appeals
affirmed, rejecting petitioners' contention that the "actual malice" standard of
New
York Times Co. v. Sullivan, 376 U. S. 254, must be met before respondent can
recover for emotional distress.
Rejecting as irrelevant the contention that, because the jury found that the
parody
did not describe actual facts, the ad was an opinion protected by the First
Amendment to the Federal Constitution, [***2] the court ruled that the issue
was whether the ad's publication was sufficiently outrageous to constitute
intentional infliction of emotional distress.
Held: In order to protect the free flow of ideas and opinions on matters of
public
interest and concern, the First and Fourteenth Amendments prohibit public

figures
and public officials from recovering damages for the tort of intentional infliction
of emotional distress by reason of the publication of a caricature such as the ad
parody at issue without showing in addition that the publication contains a false
statement of fact which was made with "actual malice," i.e., with knowledge that
the statement was false or with reckless disregard as to whether or not it was
true.
The State's interest in protecting public figures from emotional distress is not
sufficient to deny First Amendment protection to speech that is patently
offensive
and is intended to inflict emotional injury when that speech could not reasonably
have been interpreted as stating actual facts about the public figure involved.
Here,
respondent is clearly a "public figure" for First Amendment purposes, and the
lower
courts' finding that the ad parody was not reasonably [***3] believable must
be accepted. "Outrageousness" in the area of political and social discourse has
PAGE 3
485 U.S. 46, *; 108 S. Ct. 876, **;
1988 U.S. LEXIS 941, ***3; 99 L. Ed. 2d 41
an inherent subjectiveness about it which would allow a jury to impose liability
on
the basis of the jurors' tastes or views, or perhaps on the basis of their dislike of
a particular expression, and cannot, consistently with the First Amendment, form
a basis for the award of damages for conduct such as that involved here. Pp.
50-57.
COUNSEL: Alan L. Isaacman argued the cause for petitioners. With him on the
briefs was David O. Carson.
Norman Roy Grutman argued the cause for respondent. With him on the brief
were Jeffrey H. Daichman and Thomas V. Marino.*
* Briefs of amici curiae urging reversal were filed for the American Civil
Liberties Union Foundation et al. by Harriette K. Dorsen, John A. Powell, and
Steven R. Shapiro; for the Association of American Editorial Cartoonists et al.
by
Roslyn A. Mazer and George Kaufmann; for the Association of American
Publishers, Inc., by R. Bruce Rich; for Home Box Office, Inc., by P. Cameron
DeVore and Daniel M. Waggoner; for the Law & Humanities Institute by
Edward
de Grazia; for the Reporters Committee for Freedom of the Press et al. by Jane
E.
Kirtley, Richard M. Schmidt, David Barr, and J. Laurent Scharff; for Richmond
Newspapers, Inc., et al. by Alexander Wellford, David C. Kohler, Rodney A.
Smolla, William A. Niese, Jeffrey S. Klein, W. Terry Maguire, and Slade R.
Metcalf; and for Volunteer Lawyers for the Arts, Inc., by Irwin Karp and I. Fred
Koenigsberg.
JUDGES: REHNQUIST, C. J., delivered the opinion of the Court, in which
BRENNAN,
MARSHALL, BLACKMUN, STEVENS, O'CONNOR, and SCALIA, JJ., joined.

WHITE, J., filed
an opinion concurring in the judgment, post, p. 57. KENNEDY, J., took no part
in
the consideration or decision of the case.
OPINIONBY: REHNQUIST
OPINION: [*47]
opinion of
the Court.
[**877] CHIEF JUSTICE REHNQUIST delivered the
Petitioner Hustler Magazine, Inc., is a magazine of nationwide circulation.
Respondent Jerry Falwell, a nationally known minister who has been active as a
commentator on politics and public affairs, sued petitioner and its publisher,
petitioner Larry Flynt, [***4] to recover damages for invasion of [*48]
privacy, libel, and intentional infliction of emotional distress. The District
Court [**878] directed a verdict against respondent on the privacy claim,
and submitted the other two claims to a jury. The jury found for petitioners on
the defamation claim, but found for respondent on the claim for intentional
infliction of emotional distress and awarded damages. We now consider whether
this award is consistent with the First and Fourteenth Amendments of the United
States Constitution.
The inside front cover of the November 1983 issue of Hustler Magazine
featured a " parody" of an advertisement for Campari Liqueur that contained
the
name and picture of respondent and was entitled "Jerry Falwell talks about his
first time." This parody was modeled after actual Campari ads that included
interviews with various celebrities about their "first times." Although it was
apparent by the end of each interview that this meant the first time they
sampled Campari, the ads clearly played on the sexual double entendre of the
PAGE 4
485 U.S. 46, *48; 108 S. Ct. 876, **878;
1988 U.S. LEXIS 941, ***4; 99 L. Ed. 2d 41
general subject of "first times." Copying the form and layout of these Campari
ads, Hustler's editors chose respondent as the featured celebrity and drafted
[***5] an alleged "interview" with him in which he states that his "first
time" was during a drunken incestuous rendezvous with his mother in an
outhouse.
The Hustler parody portrays respondent and his mother as drunk and immoral,
and suggests that respondent is a hypocrite who preaches only when he is drunk.
In small print at the bottom of the page, the ad contains the disclaimer, "ad
parody -- not to be taken seriously." The magazine's table of contents also
lists the ad as "Fiction; Ad and Personality Parody. "
Soon after the November issue of Hustler became available to the public,
respondent brought this diversity action in the United States District Court for
the Western District of Virginia against Hustler Magazine, Inc., Larry C. Flynt,
and Flynt Distributing Co. Respondent stated in his complaint that publication
of the ad parody in Hustler entitled [*49] him to recover damages for
libel, invasion of privacy, and intentional infliction of emotional distress.
The case proceeded to trial. n1 At the close of the evidence, the District Court
granted a directed verdict for petitioners on the invasion of privacy claim. The
jury then found against respondent on the libel claim, specifically finding

[***6] that the ad parody could not "reasonably be understood as describing
actual facts about [respondent] or actual events in which [he] participated."
App. to Pet. for Cert. C1. The jury ruled for respondent on the intentional
infliction of emotional distress claim, however and stated that he should be
awarded $ 100,000 in compensatory damages, as well as $ 50,000 each in
punitive
damages from petitioners. n2 Petitioners' motion for judgment notwithstanding
the verdict was denied.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 While the case was pending, the ad parody was published in Hustler
magazine a second time.
n2 The jury found no liability on the part of Flynt Distributing Co., Inc. It
is consequently not a party to this appeal.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
On appeal, the United States Court of Appeals for the Fourth Circuit affirmed
the judgment against petitioners. Falwell v. Flynt, 797 F. 2d 1270 (CA4 1986).
The court rejected petitioners' argument that the "actual malice" standard of
New York Times Co. v. Sullivan, 376 U. S. 254 (1964), must be met before
respondent can recover for emotional distress. The court agreed that because
respondent is concededly a public figure, petitioners are "entitled to the same
level of first amendment protection [***7] in the claim for intentional
infliction of emotional distress that they received in [respondent's] claim for
libel." 797 F. 2d, at 1274. But this does not mean that a literal application of
the actual malice rule is appropriate in the context of an emotional distress
claim. In the court's view, the New York Times decision emphasized the
constitutional importance not of the falsity of the statement or the defendant's
disregard for the truth, but of the heightened level of culpability embodied
[**879] in the requirement of "knowing . . . or reckless" conduct. Here, the
New York [*50] Times standard is satisfied by the state-law requirement, and
the jury's finding, that the defendants have acted intentionally or recklessly.
n3 The Court of Appeals then went on to reject the contention that because the
PAGE 5
485 U.S. 46, *50; 108 S. Ct. 876, **879;
1988 U.S. LEXIS 941, ***7; 99 L. Ed. 2d 41
jury found that the ad parody did not describe actual facts about respondent,
the ad was an opinion that is protected by the First Amendment. As the court
put
it, this was "irrelevant," as the issue is "whether [the ad's] publication was
sufficiently outrageous to constitute intentional infliction of emotional
distress." Id., at 1276. n4 Petitioners then filed a petition for rehearing en
banc, but [***8] this was denied by a divided court. Given the importance of
the constitutional issues involved, we granted certiorari. 480 U.S. 945 (1987).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n3 Under Virginia law, in an action for intentional infliction of emotional
distress a plaintiff must show that the defendant's conduct (1) is intentional
or reckless; (2) offends generally accepted standards of decency or morality;
(3) is causally connected with the plaintiff's emotional distress; and (4)

caused emotional distress that was severe. 797 F. 2d, at 1275, n. 4 (citing
Womack v. Eldridge, 215 Va. 338, 210 S. E. 2d 145 (1974)).
n4 The court below also rejected several other contentions that petitioners
do not raise in this appeal.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
This case presents us with a novel question involving First Amendment
limitations upon a State's authority to protect its citizens from the
intentional infliction of emotional distress. We must decide whether a public
figure may recover damages for emotional harm caused by the publication of an
ad
parody offensive to him, and doubtless gross and repugnant in the eyes of
most. Respondent would have us find that a State's interest in protecting public
figures from emotional distress is sufficient to deny First Amendment [***9]
protection to speech that is patently offensive and is intended to inflict
emotional injury, even when that speech could not reasonably have been
interpreted as stating actual facts about the public figure involved. This we
decline to do.
At the heart of the First Amendment is the recognition of the fundamental
importance of the free flow of ideas and opinions on matters of public interest
and concern. "The [*51] freedom to speak one's mind is not only an aspect
of
individual liberty -- and thus a good unto itself -- but also is essential to
the common quest for truth and the vitality of society as a whole." Bose Corp.
v. Consumers Union of United States, Inc., 466 U. S. 485, 503-504 (1984). We
have therefore been particularly vigilant to ensure that individual expressions
of ideas remain free from governmentally imposed sanctions. The First
Amendment
recognizes no such thing as a "false" idea. Gertz v. Robert Welch, Inc., 418 U.
S. 323, 339 (1974). As Justice Holmes wrote, "When men have realized that
time
has upset many fighting faiths, they may come to believe even more than they
believe the very foundations of their own conduct that the ultimate good desired
is better reached by [***10] free trade in ideas -- that the best test of
truth is the power of the thought to get itself accepted in the competition of
the market . . . ." Abrams v. United States, 250 U. S. 616, 630 (1919)
(dissenting opinion).
The sort of robust political debate encouraged by the First Amendment is
bound to produce speech that is critical of those who hold public office or
those public figures who are "intimately involved in the resolution of
PAGE 6
485 U.S. 46, *51; 108 S. Ct. 876, **879;
1988 U.S. LEXIS 941, ***10; 99 L. Ed. 2d 41
important public questions or, by reason of their fame, shape events in areas of
concern to society at large." Associated Press v. Walker decided with Curtis
Publishing Co. v. Butts, 388 U. S. 130, 164 (1967) (Warren, C.J., concurring in
result). Justice Frankfurter put it succinctly in Baumgartner v. United States,
322 U. S. 665, 673-674 (1944), when he said that [**880] "one of the
prerogatives of American citizenship is the right to criticize public men and
measures." Such criticism, inevitably, will not always be reasoned or moderate;

public figures as well as public officials will be subject to "vehement,
caustic, and sometimes unpleasantly sharp attacks," New York Times, supra, at
270. "The candidate who vaunts his spotless record and sterling integrity
[***11] cannot convincingly cry 'Foul!' when an opponent or an industrious
reporter attempts [*52] to demonstrate the contrary." Monitor Patriot Co. v.
Roy, 401 U. S. 265, 274 (1971).
Of course, this does not mean that any speech about a public figure is
immune
from sanction in the form of damages. Since New York Times Co. v. Sullivan,
supra, we have consistently ruled that a public figure may hold a speaker liable
for the damage to reputation caused by publication of a defamatory falsehood,
but only if the statement was made "with knowledge that it was false or with
reckless disregard of whether it was false or not." Id., at 279-280. False
statements of fact are particularly valueless; they interfere with the
truth-seeking function of the marketplace of ideas, and they cause damage to an
individual's reputation that cannot easily be repaired by counterspeech, however
persuasive or effective. See Gertz, 418 U. S., at 340, 344, n. 9. But even
though falsehoods have little value in and of themselves, they are "nevertheless
inevitable in free debate," id., at 340, and a rule that would impose strict
liability on a publisher for false factual assertions would have an undoubted
"chilling" effect on speech [***12] relating to public figures that does have
constitutional value. "Freedoms of expression require " breathing space.'"
Philadelphia Newspapers, Inc. v. Hepps, 475 U. S. 767, 772 (1986) (quoting
New
York Times, 376 U. S., at 272). This breathing space is provided by a
constitutional rule that allows public figures to recover for libel or
defamation only when they can prove both that the statement was false and that
the statement was made with the requisite level of culpability.
Respondent argues, however, that a different standard should apply in this
case because here the State seeks to prevent not reputational damage, but the
severe emotional distress suffered by the person who is the subject of an
offensive publication. Cf. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.
S. 562 (1977) (ruling that the "actual malice" standard does not apply to the
tort of appropriation of a right of publicity) . In respondent's view, and in
the view of the [*53] Court of Appeals, so long as the utterance was
intended to inflict emotional distress, was outrageous, and did in fact inflict
serious emotional distress, it is of no constitutional import whether the
statement was a fact or an opinion, or whether [***13] it was true or false.
It is the intent to cause injury that is the gravamen of the tort, and the
State's interest in preventing emotional harm simply outweighs whatever interest
a speaker may have in speech of this type.
Generally speaking the law does not regard the intent to inflict emotional
distress as one which should receive much solicitude, and it is quite
understandable that most if not all jurisdictions have chosen to make it civilly
culpable where the conduct in question is sufficiently "outrageous." But in the
world of debate about public affairs, many things done with motives that are
PAGE 7
485 U.S. 46, *53; 108 S. Ct. 876, **880;
1988 U.S. LEXIS 941, ***13; 99 L. Ed. 2d 41
less than admirable are protected by the First Amendment. In Garrison v.
Louisiana, 379 U. S. 64 (1964), we held that even when a speaker or writer is

motivated by hatred or ill-will his expression was protected by the First
Amendment:
"Debate on public issues will not be uninhibited if the speaker must run the
risk that it will be proved in court that he spoke out of hatred; even if he did
speak [**881] out of hatred, utterances honestly believed contribute to the
free interchange of ideas and the ascertainment of truth." Id., at 73.
Thus while such a bad motive may be deemed controlling for [***14]
purposes
of tort liability in other areas of the law, we think the First Amendment
prohibits such a result in the area of public debate about public figures.
Were we to hold otherwise, there can be little doubt that political
cartoonists and satirists would be subjected to damages awards without any
showing that their work falsely defamed its subject. Webster's defines a
caricature as "the deliberately distorted picturing or imitating of a person,
literary style, etc. by exaggerating features or mannerisms for satirical
effect." Webster's New Unabridged Twentieth [*54] Century Dictionary of
the
English Language 275 (2d ed. 1979). The appeal of the political cartoon or
caricature is often based on exploration of unfortunate physical traits or
politically embarrassing events -- an exploration often calculated to injure the
feelings of the subject of the portrayal. The art of the cartoonist is often not
reasoned or evenhanded, but slashing and one-sided. One cartoonist expressed
the
nature of the art in these words:
"The political cartoon is a weapon of attack, of scorn and ridicule and
satire; it is least effective when it tries to pat some politician on the back.
It is usually as welcome [***15] as a bee sting and is always controversial
in some quarters." Long, The Political Cartoon: Journalism's Strongest Weapon,
The Quill, 56, 57 (Nov. 1962).
Several famous examples of this type of intentionally injurious speech were
drawn by Thomas Nast, probably the greatest American cartoonist to date, who
was
associated for many years during the post-Civil War era with Harper's Weekly.
In
the pages of that publication Nast conducted a graphic vendetta against William
M. "Boss" Tweed and his corrupt associates in New York City's "Tweed Ring."
It
has been described by one historian of the subject as "a sustained attack which
in its passion and effectiveness stands alone in the history of American graphic
art." M. Keller, The Art and Politics of Thomas Nast 177 (1968). Another writer
explains that the success of the Nast cartoon was achieved "because of the
emotional impact of its presentation. It continuously goes beyond the bounds of
good taste and conventional manners." C. Press, The Political Cartoon 251
(1981).
Despite their sometimes caustic nature, from the early cartoon portraying
George Washington as an ass down to the present day, graphic depictions and
satirical cartoons [***16] have played a prominent role in public and

political debate. Nast's castigation of the Tweed Ring, Walt McDougall's
characterization of presidential candidate James G. Blaine's banquet with the
millionaires at Delmonico's as "The Royal [*55] Feast of Belshazzar," and
PAGE 8
485 U.S. 46, *55; 108 S. Ct. 876, **881;
1988 U.S. LEXIS 941, ***16; 99 L. Ed. 2d 41
numerous other efforts have undoubtedly had an effect on the course and
outcome
of contemporaneous debate. Lincoln's tall, gangling posture, Teddy Roosevelt's
glasses and teeth, and Franklin D. Roosevelt's jutting jaw and cigarette holder
have been memorialized by political cartoons with an effect that could not have
been obtained by the photographer or the portrait artist. From the viewpoint of
history it is clear that our political discourse would have been considerably
poorer without them.
Respondent contends, however, that the caricature in question here was so
"outrageous" as to distinguish it from more traditional political cartoons.
There is no doubt that the caricature of respondent and his mother published
in Hustler is at best a distant cousin of the political cartoons described
above, and a rather poor relation at that. If it were possible by laying down a
principled standard to separate the one from the other, public [***17]
discourse would probably suffer little or no harm. But we doubt that there is
any such standard, and we are quite sure that the pejorative description "
[**882] outrageous" does not supply one. "Outrageousness" in the area of
political and social discourse has an inherent subjectiveness about it which
would allow a jury to impose liability on the basis of the jurors' tastes or
views, or perhaps on the basis of their dislike of a particular expression. An
"outrageousness" standard thus runs afoul of our longstanding refusal to allow
damages to be awarded because the speech in question may have an adverse
emotional impact on the audience. See NAACP v. Claiborne Hardware Co., 458
U. S.
886, 910 (1982) ("Speech does not lose its protected character . . . simply
because it may embarrass others or coerce them into action"). And, as we stated
in FCC v. Pacifica Foundation, 438 U. S. 726 (1978):
"The fact that society may find speech offensive is not a sufficient reason for
suppressing it. Indeed, if it is the speaker's opinion that gives offense, that
consequence is a reason for according it constitutional protection. [*56]
For it is a central tenet of the First Amendment that the government must
remain
[***18] neutral in the marketplace of ideas." Id., at 745-746.
See also Street v. New York, 394 U. S. 576, 592 (1969) ("It is firmly settled
that . . . the public expression of ideas may not be prohibited merely because
the ideas are themselves offensive to some of their hearers").
Admittedly, these oft-repeated First Amendment principles, like other
principles, are subject to limitations. We recognized in Pacifica Foundation,
that speech that is " vulgar,' offensive,' and shocking'" is "not entitled to
absolute constitutional protection under all circumstances." 438 U. S., at 747.
In Chaplinsky v. New Hampshire, 315 U. S. 568 (1942), we held that a state
could

lawfully punish an individual for the use of insulting " fighting' words --
those which by their very utterance inflict injury or tend to incite an
immediate breach of the peace." Id., at 571-572. These limitations are but
recognition of the observation in Dun & Bradstreet, Inc. v. Greenmoss Builders,
Inc., 472 U. S. 749, 758 (1985), that this Court has "long recognized that not
all speech is of equal First Amendment importance." But the sort of expression
involved in this case does not seem to us to be governed by any exception
[***19] to the general First Amendment principles stated above.
PAGE 9
485 U.S. 46, *56; 108 S. Ct. 876, **882;
1988 U.S. LEXIS 941, ***19; 99 L. Ed. 2d 41
We conclude that public figures and public officials may not recover for the
tort of intentional infliction of emotional distress by reason of publications
such as the one here at issue without showing in addition that the publication
contains a false statement of fact which was made with "actual malice," i.e.,
with knowledge that the statement was false or with reckless disregard as to
whether or not it was true. This is not merely a "blind application" of the New
York Times standard, see Time, Inc. v. Hill, 385 U. S. 374, 390 (1967), it
reflects our considered judgment that such a standard is necessary to give
adequate "breathing space" to the freedoms protected by the First Amendment.
[*57] Here it is clear that respondent Falwell is a "public figure" for
purposes of First Amendment law. n5 The jury found against respondent on his
libel claim when it decided that the Hustler ad parody could not "reasonably
be understood as describing actual facts about [respondent] or actual events in
which [he] participated." App. to Pet. for Cert. C1. The Court of Appeals
interpreted the jury's finding to be that the [**883] ad parody "was not
reasonably [***20] believable," 797 F. 2d, at 1278, and in accordance with
our custom we accept this finding. Respondent is thus relegated to his claim for
damages awarded by the jury for the intentional infliction of emotional distress
by "outrageous" conduct. But for reasons heretofore stated this claim cannot,
consistently with the First Amendment, form a basis for the award of damages
when the conduct in question is the publication of a caricature such as the ad
parody involved here. The judgment of the Court of Appeals is accordingly
Reversed.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n5 Neither party disputes this conclusion. Respondent is the host of a
nationally syndicated television show and was the founder and president of a
political organization formerly known as the Moral Majority. He is also the
founder of Liberty University in Lynchburg, Virginia, and is the author of
several books and publications. Who's Who in America 849 (44th ed.
1986-1987).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
JUSTICE KENNEDY took no part in the consideration or decision of this
case.
CONCURBY: WHITE
CONCUR: JUSTICE WHITE, concurring in the judgment.

As I see it, the decision in New York Times v. Sullivan, 376 U. S. 254
(1964), has little to do with this case, for here the jury found that the ad
contained [***21] no assertion of fact. But I agree with the Court that the
judgment below, which penalized the publication of the parody, cannot be
squared with the First Amendment.
PAGE 10
4TH CASE of Level 1 printed in FULL format.
ANDREA DWORKIN; PRISCILLA MOREE; JUDITH FOUTS,
Plaintiffs-Appellants, v. HUSTLER MAGAZINE INC., et al.,
Defendant-Appellee
No. 87-6393
UNITED STATES COURT OF APPEALS FOR THE NINTH
CIRCUIT
867 F.2d 1188; 1989 U.S. App. LEXIS 565; 16 Media L. Rep.
1113
PRIOR HISTORY:
[**1]
August 5, 1988, Argued and Submitted
January 24, 1989, Filed
Appeal from the United States District Court for the Central District of
California, D.C. No. CV-86-7786-AWT, A. Wallace Tashima, District Judge,
Presiding.
COUNSEL: Gary L. Schockey, Spence, Moriarity & Shuster, Jackson,
Wyoming, for
the plaintiffs-appellants.
David O. Carson, Cooper, Epstein & Hurewitz, Beverly Hills, California, for
the defendants-appellees.
JUDGES: Cynthia Holcomb Hall and Edward Leavy, Circuit Judges, and Philip
M.
Pro, * District Judge.
* Honorable Philip M. Pro, United States District Judge for the District of
Nevada, sitting by designation.
OPINIONBY: HALL
OPINION: [*1190]
OPINION
HALL. Circuit Judge:
Andrea Dworkin is a prominent and outspoken feminist author and activist.
She

is a vocal advocate for the prohibition of pornography, and was one of the
principal drafters of the ordinance against pornography enacted by the city of
Indianapolis and struck down as unconstitutional. See American Booksellers
Assn,
Inc. v. Hudnut, 771 F.2d 323 (7th Cir. 1985), aff'd mem., 475 U.S. 1001, 106 S.
Ct. 1172, 89 L. Ed. 2d 291 (1986). By her own admission, she is a public figure
in this case. Hustler Magazine is a pornographic periodical. Much of its content
consists of what we have recently described as "disgusting and distasteful
[**2] abuse." See Ault v. Hustler Magazine, Inc., 860 F.2d 877, 884 (9th Cir.
1988). It is frequently named as a defendant in lawsuits such as this. See
generally, e.g., Hustler Magazine v. Falwell, 485 U.S. 46, 108 S. Ct. 876, 99 L.
Ed. 2d 41 (1988); Leidholdt v L.F.P. Inc., 860 F.2d 890, 892 (9th Cir. 1988)
(citing cases); Ault, 860 F.2d at 877.
PAGE 11
867 F.2d 1188, *1190; 1989 U.S. App. LEXIS 565, **2;
16 Media L. Rep. 1113
Predictably, Dworkin's beliefs and Hustler's editorial viewpoint are inimical
to one another, and each party regards the other with hostility. In February,
March, and December of 1984, Hustler published features [*1191]
mentioning
Dworkin's name in a derogatory fashion. These features (the "Features") are the
basis for the claims asserted in this case.
The February Feature is a cartoon, which, as described in the plaintiffs'
complaint, "depicts two women engaged in a lesbian act of oral sex with the
caption, 'You remind me so much of Andrea Dworkin, Edna. It's a dog-eat-dog
world.'" The March Feature is a ten page pictorial consisting of photographs of
women engaged in, among other things, acts of lesbianism or masturbation.
Some
of the photographs depict obviously staged scenes that include posed violence
and phony blood. One photograph, supposedly of a Jewish male, [**3] has a
caption stating: "While I'm teaching this little shiksa the joys of Yiddish, the
Andrea Dworkin Fan Club begins some really serious suck-'n'-squat. Ready to
give
up the holy wafers for matzoh, yet, guys?" The December Feature was included
in
the "Porn from the Past" section of the magazine. It shows a man performing
oral
sex on an obese woman while he masturbates. A portion of the caption states:
"We
don't believe it for a minute, but one of our editors swears that this woman in
the throes of ecstacy is the mother of radical feminist Andrea Dworkin."
Dworkin originally filed her complaint in Wyoming state court. With her as
plaintiffs were Judith Fouts and Priscilla Moree, in their individual capacities
and, respectively, as representatives of the Wyoming and the Jackson, Wyoming
Chapters of the National Organization for Women ("NOW"). Fouts and Moree
are
also appellants here. The complaint named as defendants Hustler, Larry Flynt
(Hustler's publisher), Inland Empire Periodicals, and Park Place Market.
Appellants later amended their complaint to add as a defendant Flynt
Distributing Company, Inc. (We will refer to Hustler, Flynt, and Flynt
Distributing as the "Hustler defendants.") [**4] Inland Empire distributes
Hustler in Wyoming and Park Place is a Wyoming retailer of the magazine.

Moree,
Fouts, Inland Empire, and Park Place are Wyoming citizens. The defendants
filed
a timely petition for removal to the District Court for the District of Wyoming,
asserting both federal question and diversity jurisdiction. The removal petition
asserted that all four Wyoming residents were fraudulently joined and should not
be considered for purposes of determining diversity jurisdiction.
The Wyoming district court found "that removal was proper, based upon both
federal question and diversity jurisdiction." Dworkin v. Hustler Magazine, Inc.,
611 F. Supp. 781, 788 (D. Wyo. 1985). "Although the [Wyoming district court
was]
not totally convinced that plaintiffs Moree and Fouts [were] properly joined in
th[e] action," it did not disregard their claims in finding that diversity
jurisdiction existed. Id. at 785. Instead, the Wyoming district court found that
Park Place was fraudulently joined, ignored its presence, and therefore found
complete diversity. Id. at 787 (the court did not discuss Inland Empire, an
unexplained omission).
The complaint contains Dworkin's claims of [**5] libel, invasion of
privacy, intentional infliction of emotional injury, "outrage," and joint and
several liability, as well as a less typical civil rights claim that Hustler and
Flynt deprived her of her constitutional rights. On these claims Dworkin seeks
recovery of $ 50 million in actual damages and $ 100 million in punitive
damages. Moree and Fouts claim that publication of the Features: "is tantamount
to a direct assault upon the rights and interests" of Moree, Fouts, and the
PAGE 12
867 F.2d 1188, *1191; 1989 U.S. App. LEXIS 565, **5;
16 Media L. Rep. 1113
relevant chapters of NOW: "has caused actual damages" to those persons and
their
associational rights, and causes irreparable harm to those persons; and "makes
other women afraid to exercise [political freedoms on behalf of women] for fear
of an ugly, pornographic representation of them appearing in such a magazine."
Moree and Fouts seek pursuant to this claim damages in an unspecified amount
and
an injunction preventing Hustler "from using the name or likeness of any
member
of [the Wyoming or Jackson NOW] or any other woman in any article which is
false, known to be false, or, if true, not published with good [*1192]
intent and for justifiable ends." Finally, all three plaintiffs seek recovery
pursuant to an implied [**6] private cause of action based on a Wyoming
criminal obscenity statute.
Inland Empire and Park Place filed a motion to dismiss for failure to state a
claim upon which relief could be granted. The Hustler defendants filed a Rule
12(c) motion for judgment on the pleadings as to Dworkin's constitutional rights
count, Moree and Fouts' count, and the obscenity count, also on the ground that
the complaint failed to state a claim. The Wyoming district court granted both
motions, dismissing the claims against Inland Empire and Park Place, and the
three counts attacked by the Hustler defendants' Rule 12(c) motion. Dworkin v.
Hustler Magazine, Inc., 634 F. Supp. 727, 731 (D. Wyo. 1986).
The Hustler defendants also sought a change of venue from the District of

Wyoming to the Central District of California, which the Wyoming district court
granted. Dworkin v. Hustler Magazine, Inc., 647 F. Supp. 1278, 1283 (D. Wyo.
1986). Prior to the change of venue, the Hustler defendants had filed a motion
for summary judgment. This motion had been fully briefed, but was still
pending
at the time of the transfer. The California district court subsequently granted
the motion in a Memorandum Opinion and [**7] Order and entered judgment
in
defendants' favor on all remaining claims. Dworkin v. Hustler Magazine Inc.,
668
F. Supp. 1408 (C.D. Cal. 1987).
Appellants filed a notice of appeal taking their appeal from a number of the
district court's procedural and substantive rulings. In their brief, however,
appellants have abandoned most of their grounds for appeal. At this stage,
appellants no longer contest any of the procedural orders. Moreover, appellants
no longer contest the dismissal of Inland Empire or Park Place. n1 Accordingly,
the only matters before us relate to the substantive merits of the Rule 12(c)
dismissal and the summary judgment in favor of the Hustler defendants. Two
amicus briefs have been filed in support of appellants, one by Citizens for
Decency Through Law, Inc., the other by Gloria Steinem and Susan
Brownmiller.
The amicus briefs also raise the merits of the district court's substantive
decisions.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 The district court held that the Wyoming defendants were improperly
joined
and should not be considered for diversity purposes. See, e.g., Pullman Co. v.
Jenkins, 305 U.S. 534, 541, 83 L. Ed. 334, 59 S. Ct. 347 (1939). We construe
appellants' failure to contest this point as acquiescence in the district
court's decision, which we do not disturb.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**8]
PAGE 13
867 F.2d 1188, *1192; 1989 U.S. App. LEXIS 565, **8;
16 Media L. Rep. 1113
I
We review a summary judgment de novo. E.g., Webb Co. v. First City Bank
(In
re Softalk Publishing Co.), 856 F.2d 1328, 1330 (9th Cir. 1988). We also review
the district court's decision to grant the Hustler defendants' Rule 12(c) motion
de novo. The principal difference between motions filed pursuant to Rule 12(b)
and Rule 12(c) is the time of filing. Because the motions are functionally
identical, the same standard of review applicable to a Rule 12(b) motion applies
to its Rule 12(c) analog. In this case, the Hustler defendants' Rule 12(c)
motion was equivalent to a Rule 12(b)(6) motion to dismiss for failure to state
a claim upon which relief could be granted, and de novo review is therefore
appropriate. See, e.g., Cadillac Fairview/California, Inc. v. Dow Chemical Co.,

840 F.2d 691, 693 (9th Cir. 1988) (observing that dismissal "for failure to
state a claim upon which relief could be granted" is reviewed de novo, without
mentioning Rule 12(b)(6)).
II
The district court granted summary judgment on Dworkin's libel claims on
two
independent grounds. First, the court found that the Features could not
reasonably be understood as expressing statements of fact about Dworkin,
[**9] and therefore could not provide a basis for defamation liability.
Second, the court found that even if the Features did contain false statements
of fact, Dworkin had presented no evidence of malice as required by New York
Times v. Sullivan, 376 U.S. 254, 11 L. Ed. 2d 686, 84 S. Ct. 710 [*1193]
(1964) ("New York Times malice"), and therefore had failed to establish a
genuine issue of material fact with respect to an issue on which she bore the
burden of proof. If upheld, either of these conclusions would also dispose of
Dworkin's intentional infliction of emotional distress n2 and false light
privacy n3 claims.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n2 Leidholdt, 860 F.2d at 893; Ault, 860 F.2d at 880; see Falwell, 108 S. Ct.
at 882. the district court, which rendered its decision before the Supreme Court
handed down Falwell, properly granted summary judgment on Dworkin's
emotional
distress claims on a different ground. The district court reasoned, "whatever
the label, Dworkin cannot maintain a separate cause of action for mental and
emotional distress where the gravamen is defamation." Dworkin, 668 F. Supp. at
1420. As we recently noted, "an emotional distress claim based on the same
facts
as an unsuccessful libel claim cannot survive as an independent cause of
action." Leidholdt, 860 F.2d at 893 n. 4.
Although the complaint sets forth separate counts for emotional distress and
outrage, appellants have not differentiated these claims before us or the
district court. The district court correctly held that these counts assert the
same claim. "The tort of outrage is not spearable from intentional infliction of
emotional distress." Id. at 892 n.2. [**10]
n3 Leidholt, 860 F.2d at 893; Ault, 860 F.2d at 880; see Time, Inc. v. Hill,
385 U.S. 374, 390, 394, 17 L. Ed. 2d 456, 87 S. Ct. 534 (1967). Furthermore, as
with the emotional distress claim. Dworkin's false light privacy claim is
"sufficiently duplicative of libel" as to be subsumed within it. Leidholdt, 860
F.2d at 893 n.4. In order to survive as a separate cause of action, a false
PAGE 14
867 F.2d 1188, *1193; 1989 U.S. App. LEXIS 565, **10;
16 Media L. Rep. 1113
light claim must allege a nondefamatory statement. If the statements alleged are
defamatory, the claim would be for defamation only, not false light privacy. See
Time, 385 U.S. at 390-91. In this case, Dworkin has strenuously argued that
Hustler's statements are defamatory. Consequently, she has failed to state a
false light claim; the false light aspects of her privacy claim are subsumed in
her libel claims.

Finally, we note that New York has explicitly refused to adopt or to reject
the tort of false light invasion of privacy. E.g. Arrington v. New York Times
Co., 55 N.Y.2d 433, 437, 449 N.Y.S.2d 941, 945, 434 N.E.2d 1319, 1323
(1982). We
hold that they would not adopt the tort in this case, either.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
A
In our leading case on the fact-opinion distinction, Koch v. Goldway, 817
F.2d 507 (9th Cir. 1987), we [**11] observed that "[s]tatements not
themselves factual, and which do not suggest that a conclusion is being drawn
from facts not disclosed in the statement, are commonly statements of opinion,
not fact." Id. at 509. We have formulated a three-part test to guide our
inquiry. See Lewis v. Time, Inc., 710 F.2d 549, 553 (9th Cir. 1983). The parties
have also asked us to consider a Tenth Circuit case, which framed the question
as "whether the [Features] could be reasonably understood as describing actual
facts about the plaintiff or actual events in which she participated." Pring v.
Penthouse Int'l, Ltd., 695 F.2d 438, 442 (10th Cir. 1982), cert. denied, 462
U.S. 1132, 103 S. Ct. 3112, 77 L. Ed. 2d 1367 (1983).
This case does not require a close inquiry on our part. Ault and Leidholdt
are squarely in point, and lead to the conclusion that the Features consist of
privileged opinion. Ault and Leidholdt point out that Koch directs us to examine
the facts surrounding the publication, the context in which the statements were
made, and the nature of the language used. As was the case in Ault, "[w]e think
it clear that there is a heated and spirited debate on pornography," the extreme
language to which [**12] Dworkin objects is "representative of the type of
language generated in a dispute over such a subject," and the appearance of the
language in a magazine known for its pornographic content "robs the statements
of defamatory meaning." Ault, 860 F.2d at 881. Accordingly, as in Ault and
Leidholdt, Hustler's statements in this case are privileged opinion.
An examination of a Hustler feature filed by appellants and amici Steinem
and
Brownmiller helps to illustrate this point. The work is entitled, "Hustler
Interview: Gloria Steinem's Clit." This work contains a number of statements
that by their terms can be read as statements of fact. Nevertheless, the article
purports to be an interview of a body part, and therefore cannot be reasonably
understood as making assertions of fact. By the same token, such [*1194]
phrases as "pus bloated walking sphincter", "wacko", or bizarre paranoia" were
not reasonably understood as attributions of physical or mental disease to the
plaintiff in Leidholdt. See 860 F.2d at 894. The statements about Dworkin
contained in the Features are of the same ilk, and are not reasonably understood
as statements of fact. Instead, they are privileged opinion.
PAGE 15
867 F.2d 1188, *1194; 1989 U.S. App. LEXIS 565, **12;
16 Media L. Rep. 1113
Dworkin [**13] errs by limiting "opinion" to high-minded discourse. In
this context, the word "opinion" is a label differentiating statements

containing assertions of fact from those that do not. To differentiate among
statements not of a factual nature would be at odds with fundamental principles
of first amendment law, which seeks to facilitate the "search for truth" by
encouraging "uninhibited, robust, and wide open" public debate, New York
Times,
376 U.S. at 270, and is informed by the notion that "there is no such thing as a
false idea." Gertz v. Robert Welch, Inc., 418 U.S. 323, 339, 41 L. Ed. 2d 789,
94 S. Ct. 2997 (1971). We agree with counsel for Dworkin that this means that
outrageous and outlandish statements are sometimes protected, but do not share
their alarm over this prospect. See Cohen v. California, 403 U.S. 15, 25-26, 29
L. Ed. 2d 284, 91 S. Ct. 1780 (1971) (first amendment protects the emotive
content and function of expression, which "may often be the more important
element of the overall message sought to be communicated"). Ludicrous
statements
are much less insidious and debilitating than falsities that bear the ring of
truth. We have little doubt that the outrageous and the outlandish will be
recognized for what they are.
Dworkin's [**14] suggestion that this issue is unsuitable for summary
judgment lacks merit. We have held that '"the distinction between alleged fact
or opinion is a question of federal law." Leidholdt, 860 F.2d at 893; accord
Ault, 860 F.2d at 880; Koch, 817 F.2d at 509; see In re Yagman (Brown v.
Baden),
796 F.2d 1165, 1172 (9th Cir. 1986) (affirming directed verdict), cert. denied,
484 U.S. 963, 108 S. Ct. 450, 98 L. Ed. 2d 390 (1987). the district court
properly granted summary judgment on this ground.
B
The district court relied on its finding that Dworkin had failed to introduce
evidence of New York Times malice as an alternate ground for summary
judgment.
Initially, it might seem that inquiring into the existence of New York Times
malice is inconsistent with the conclusion that the Features contain no
statements of fact. As the Supreme Court has noted, "before the test of reckless
or knowing falsity can be met, there must be a false statement of fact." Old
Dominion Branch No. 496, Nat'l Ass'n of Letter Carriers v. Austin, 418 U.S.
264,
284, 41 L. Ed. 2d 745, 94 S. Ct. 2770 (1974); n4 see Falwell, 108 S. Ct. at 883
(White, J., concurring in the judgment). The apparent inconsistency can be
reconciled where the speaker intends his [**15] statements as outrageous
parodies or caricatures expressing an opinion rather than making factual
assertions. In that case, as counsel for Hustler points out, "there is no
consciousness that [the speaker] is publishing something false, because [the
speaker doesn't] think [he's] publishing a statement of fact." New York Times
malice exists only if the defendant knowingly falsifies or "in fact entertained
serious doubts as to the truth of his publication." St. Amant v. Thompson, 390
U.S. 727, 731, 20 L. Ed. 2d 262, 88 S. Ct. 1323 (1968), see Gertz, 418 U.S. at
335 n. 6 (New York Times requires "subjective awareness of probable falsity").
Therefore, if a speaker knowingly publishes a [*1195] literally untrue
statement without holding the statement out as true, he may still lack
subjective knowledge or recklessness as to the falsification of a statement of
fact required by New York Times.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -

PAGE 16
867 F.2d 1188, *1195; 1989 U.S. App. LEXIS 565, **15;
16 Media L. Rep. 1113
n4 Letter Carriers was primarily based not on the first amendment, but on
federal labor statutes. See id. at 283 n. 15. Nevertheless, the case explicitly
applied first amendment principles. Gertz contains the leading expression in an
exclusive first amendment context of the requirement that the statement must be
of untrue fact:
Under the First Amendment there is no such thing as a false idea. However
pernicious an opinion may seem, we depend for its correction not on the
conscience of judges and juries but on the completion of other ideas. But there
is no constitutional value in false statements of fact.
Id. 418 U.S. at 339-340.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**16]
Turning to the present case, we agree with the district court s conclusion
that "Dworkin persists in using the term 'malice' in its colloquial sense of
'spite' or 'ill-will.' " Even on appeal, the difference between New York Times
malice and the lay meaning of the word "malice" eludes appellants. The
Supreme
Court has explicitly held that when a plaintiff must prove New York Times
malice, "impos[ing] liability on the basis of the defendant's hatred, spite, ill
will, or desire to injure [is] 'clearly impermissible.' 'Ill will toward the
plaintiff, or bad motives, are not elements of the New York Times standard.' "
Letter Carriers, 418 U.S. at 281 (citations omitted). Because of Dworkin's
faulty notion of New York Times malice, appellants have pointed to no
evidence
probative of New York Times malice, and there exists no genuine issue of fact.
Appellants' suggestion that the malice issue cannot be disposed on summary
judgment lacks merit. The Supreme Court has held that the lack of New York
Times
malice is a proper ground for summary judgment. Anderson v. Liberty Lobby,
Inc.,
477 U.S. 242, 254, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).
As a fallback position, Dworkin argues that "the three [**17] publications
about Andrea Dworkin make absolutely no comment on an issue of public
concern."
Dworkin then observes that the Supreme Court has not decided the degree of
first
amendment protection afforded to a defamatory statement of fact about a public
figure but "involv[ing] no issue of public concern." Dworkin concludes that
"defamatory comments made [about a public figure but] on issues not of public
concern" disseminated in a "pornographic" publication should receive no first
amendment protection. We disagree with both the characterization of the
Features
as "not of public concern" and the conclusion that public figure/private concern
speech is completely unprotected by the first amendment.

I
Dworkin's own characterization of the Features belies the contention that
they are "not of public concern." Dworkin is an influential and successful
antipornography activist. Her activities have taken the form of advocacy and
more direct political involvement. Dworkin participated in the drafting of the
Indianapolis antipornography ordinance that was enacted and struck down as
unconstitutional. See generally Hudnut, 771 F.2d 323. Dworkin herself points
out: "Flynt also admitted that the [**18] work done on the Minneapolis
PAGE 17
867 F.2d 1188, *1195; 1989 U.S. App. LEXIS 565, **18;
16 Media L. Rep. 1113
Ordinance by Andrea Dworkin caused a great deal of problems for the
pornography
industry. Part of the reason that he attacked Andrea Dworkin was as a part of
his campaign to fight the Minneapolis Ordinance against pornography."
As we noted above, the conflict about pornography is a matter of public
concern, and the Features are a part of that conflict. The Features are attacks,
ad hominem, to be sure, against an advocate of a political, social, and moral
viewpoint contrary to Hustler's. They were uttered in the context of an ongoing
political debate in which Dworkin was an active participant in efforts to outlaw
the industry of which Hustler is a part. They seek to belittle Dworkin's
viewpoint by vilifying its advocate. We have recently considered similar
remarks
contained in Hustler, and had no difficulty concluding "that there is a heated
and spirited debate on pornography of which this [Hustler] article is a part,
and in which epithets, fiery rhetoric and hyperbole are expected." Ault, 860
F.2d at 881: accord Leidholdt, 860 F.2d at 894.
To the same effect is the Supreme Court's recent decision in Falwell. In
Falwell, Hustler had run [**19] a bogus "interview" with the prominent
minister Falwell. in which Falwell had supposedly admitted to drunken
incestuous
intercourse with his mother in an outhouse, and which portrayed Falwell as an
immoral hypocrite who preaches only when he is drunk. 108 S. Ct. at 878.
[*1196] The Court observed that vehement, and even "outrageous," criticism
of
public figures is a component of the "robust political debate encouraged by the
First Amendment." Id. at 879. The Court then adopted the decisions of the
courts
below that the supposed interview contained no assertions of fact and concluded
that the first amendment therefore prevented Falwell from recovering on his
claim for intentional infliction of emotional distress as well as his claim for
libel. 108 S. Ct. at 882-83.
Fallwell makes clear that the Features do address matters of public concern.
Accordingly, Dworkin's claims in this case are squarely within the rule of New
York Times, which requires her to establish a question of fact as to malice on
the part of Hustler. As we indicated above, this she has failed to do.
2

We also find fault with the second prong of Dworkin's argument that the first
amendment does not protect appellees [**20] from defamation liability for
publishing or distributing the Features. The Supreme Court has considered two
distinctions in determining the extent to which the first amendment protects
allegedly defamatory speech. These distinctions are (1) whether the allegedly
defamed plaintiff is a public (or official) figure or is instead a private
figure, and (2) whether the subject matter of the allegedly defamatory speech is
a matter of public or of private concern.
A large body of case law establishes that the first amendment prohibits
defamation liability n5 for otherwise protected speech, unless the speech
contains a defamatory statement of untrue fact. Letter Carriers, 418 U.S. at
284. In New York Times, the Supreme Court held that in order to be actionable
in
a public figure/public concern case, the false statement of fact must have been
uttered either with knowledge of its falsity or with reckless disregard of
whether it was false or not. 376 U.S. at 279-80. The Court addressed a private
figure/public concern claim in Gertz, holding that in such a case the first
amendment prevents the imposition of liability "without fault," id. at 347,
PAGE 18
867 F.2d 1188, *1196; 1989 U.S. App. LEXIS 565, **20;
16 Media L. Rep. 1113
and also requires proof of New York [**21] Times malice before the
plaintiff
may recover presumed or punitive damages. Id. at 349. More recently, in Dun &
Bradstreet, Inc., v. Greenmoss Builders, Inc., 472 U.S. 749, 86 L. Ed. 2d 593,
105 S. Ct. 2939 (1985), a majority of the Justices opined that defamatory
statements of untrue fact contained in private figure/private concern speech are
unprotected by the first amendment.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n5 Especially after Falwell, it seems likely that the requirement that the
speech contain a false statement of fact applies not just to defamation claims,
but to all claims seeking to impose civil liability for speech not otherwise
outside the protection of the first amendment. See Gertz v. Robert Welch, Inc.,
418 U.S. 323, 348, 41 L. Ed. 2d 789, 94 S. Ct. 2997 (1974) (the first
amendment
limits the state's ability to impose "civil liability" for speech).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Dworkin asks us to extend Greenmoss to public figure/private concern cases.
This request rests on analytically faulty reasoning. Justice Powell's
three-Justice opinion in Greenmoss framed the issue in terms of whether Gertz,
a
private figure/public concern case, should apply to a private figure/private
concern statement. 472 U.S. at 757. Like Gert, Justice Powell's Greenmoss
opinion emphasized the differences [**22] between public and private figures.
Id. at 756. Similarly, Justice White's opinion concurring in the judgment also
emphasized the nature of the plaintiff rather than the subject matter of the
speech. Id. at 772 (White, J., concurring in the judgment). Only Chief Justice
Burger emphasized the distinction between matters of public and private

concern,
and even he framed the question as "whether Gertz applies." Id. at 764 (Burger,
C.J., concurring in the judgment).
Because the Features were about a public figure, the point of departure in
this case is not Gertz, but New York Times; Greenmoss is simply inapposite.
The
shield provided by New York Times wards the Features, and provides much
heftier
[*1197] safeguards than the Gertz standards the Supreme Court rejected in
Greenmoss. Viewing the case in this light reveals another fundamental problem
with appellants' logic; we doubt that it is possible to have speech about a
public figure but not of public concern.
In Gertz, the Supreme Court stated that a plaintiff may become a public
figure through "either of two alternative [means]."
In some instances an individual may achieve such pervasive fame or notoriety
that [**23] he becomes a public figure for all purposes and in all contexts.
More commonly, an individual voluntarily injects himself or is drawn into a
particular public controversy and thereby becomes a public' figure for a limited
range of issues. In either case such persons assume special prominence in the
resolution of public questions.
418 U.S. at 351.
Thus, Dworkin may be one of two types of public figures. First, she could be
"a public personality for all aspects of [her] life." Id. at 352. If this were
PAGE 19
867 F.2d 1188, *1197; 1989 U.S. App. LEXIS 565, **23;
16 Media L. Rep. 1113
so, all speech about her would be of public concern. Second, she could be a
public figure to an extent defined by "the nature and extent of [her]
participation in the particular controversy giving rise to the defamation." Id.
"Public controversies" within the meaning of Gertz are distinct from
"controversies of interest to the public." Time, Inc. v. Firestone, 424 U.S.
448, 454, 47 L. Ed. 2d 154, 96 S. Ct. 958 (1976). An individual is a public
figure not through involvement in mere "controversies of interest to the
public," but only through participation in "public controversies" -- i.e.,
matters of public concern. Therefore, if Dworkin is a public figure in this case
it is only because the Features were [**24] of public concern.
Finally, even if we assume that Dworkin attacks statements in the Features
that are not of public concern, Falwell indicates that they receive fullfledged
New York Times protection. Falwell forecloses Dworkin's argument on the facts
of
this case.
III
Although they have taken a variety of inconsistent positions through the
course of this litigation, at oral argument counsel for Dworkin conceded that
New York law governed her state law claims, including her invasion of privacy
claims. In New York, Civil Rights Law @ 51 is the exclusive private cause of

action for invasion of privacy. Other than as provided in the Civil Rights Law,
the courts of New York have "refus[ed] to countenance an action for invasion of
privacy." Arrington v. New York Times Co., 55 N.Y.2d 433, 435, 449 N.Y.S.2d
941,
943, 434 N.E.2d 1319, 1321 (1982). The statute was "drafted narrowly to
encompass only the commercial use of an individual's name or likeness and no
more," id., 449 N.Y.S.2d at 943, 434 N.E.2d at 1321, and has been narrowly
construed by the courts of New York to protect only those commercial uses. Id.
at 436, 449 N.Y.S.2d at 944, 434 N.E.2d at 1322. Accord, e.g., Freihofer
[**25] v. Hearst Corp., 65 N.Y.2d 135, 490 N.Y.S.2d 735, 739, 480 N.E.2d
349,
353 (1985) (section 51 "grant[s] protection only to the extent of affording a
remedy for commercial exploitation of an individual's name, portrait or picture,
without written consent"); see Leidholdt, 860 F.2d at 895.
By its terms, section 51 prohibits appropriation only "for advertising
purposes or for the purposes of trade." N.Y. Civil Rights Law @ 51. Appellants
cite a lower court case noting that "the term 'purposes of trade' is 'not
susceptible to ready definition.'" Marcinkus v. NAL Pub. Inc., 138 Misc. 2d 256,
522 N.Y.S.2d 1009, 1011 (N.Y. Sup. Ct. 1987). Contrary to the position taken
by
appellants, however, that the defendant may have included the Features "solely
or primarily to increase the circulation of its magazine and therefore its
profits" does not mean that the defendant[s] ha[ve] used [Dworkin's identity]
for trade purposes within the meaning of the statute." Stephano v. News Group
Pubs., Inc., 64 N.Y.2d 174, 179, 485 N.Y.S.2d 220, 225, 474 N.E.2d 580, 585
(1984). Instead, it seems that two distinct types of [*1198] claims fit
within the "purposes of trade" requirement of New York law.
The first type of [**26] claim is essentially identical to the common law
" right of publicity, " which protects proprietary interests in a manner
analogous to copyright or patent law. Zacchini v. Scripps-Howard Broadcasting
Co., 433 U.S. 562 573, 53 L. Ed. 2d 965, 97 S. Ct. 2849 (1977). New York has
recently acknowledged this branch of section 51 in Stephano. There, the New
York
Court of Appeals noted that section 51 applies "in cases where the plaintiff
PAGE 20
867 F.2d 1188, *1198; 1989 U.S. App. LEXIS 565, **26;
16 Media L. Rep. 1113
generally seeks publicity, or uses his name, portrait, or picture, for
commercial purposes." 64 N.Y.2d at 179, 485 N.Y.S.2d at 225, 474 N.E.2d at
585.
Zacchini, which the Stephano court cited with approval, explained:
the State's interest in permitting a " right of publicity" is in protecting the
proprietary interest of the individual in his act in part to encourage such
entertainment. . . . The State's interest is closely analogous to the goals of
patent and copyright law, focusing on the right of the individual to reap the
reward of his endeavors. . . . In " right of publicity" cases the only question
is who gets to do the publishing. An entertainer . . . usually has no objection
to the widespread publication of his act as long as he gets the commercial
benefit of. such publication.
[**27] 433 U.S. at 573.

The second branch of section 51 is a trademark analogy that has been
identified by the lower courts of New York. See also Spahn v. Julian Messner,
Inc., 21 N.Y.2d 124, 286 N.Y.S.2d 832, 233 N.E.2d 840 (1967), vacating 18
N.Y.
2d 324, 274 N.Y.S.2d 877, 221 N.E.2d 543, 545 (1966) (possibly applying this
line of reasoning). This type of claim permits recovery for a use of the
plaintiff's identity in a manner that "conveys or reasonably suggests the
subject's endorsement of the publication in question." Velez v. VV Pub. Corp.,
135 A.D.2d 47, 50, 524 N.Y.S.2d 186, 189 (N.Y. App. Div. 1988) (citing Booth
v.
Curtis Pub. Co., 15 A.D.2d 343, 223 N.Y.S.2d 737 (N.Y. App. Div.), affd, 11
N.Y.2d 907, 228 N.Y.S.2d 468, 182 N.E.2d 812 (1962)). Marcinkus, heavily
relied
upon by appellants, was this sort of case.
Dworkin does not and cannot plausibly argue that the cartoons constitute an
appropriation by Hustler of the commercial benefit of a performance in which
Dworkin has a proprietary interest or that the cartoons indicate her endorsement
of Hustler. Therefore, we hold that Dworkin can not recover on any privacy
theory recognized by New York. n6 Accord Leidholdt, [**28] 860 F.2d at
895
(Hustler's use of plaintiff's photograph was not "exclusively for Hustler's
commercial gain," and plaintiff therefore failed to state a claim under New York
Civil Rights Law section 51).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n6 Dworkin also asserts a true light privacy, or public disclosure of private
facts," theory. This claims fails under Leidholdt, in which we observed that New
York does not permit true light privacy claims. 860 F.2d at 895.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
IV
[11] We next turn to appellants' claim of an implied private cause of action
based on a Wyoming criminal obscenity statute. Normally, we would address
the
statutory question of whether appellants may assert such a cause of action
before turning to the constitutional question of whether the first amendment
permits a finding that the Features are obscene. We need not do so in this case
because our earlier holdings have effectively answered that question.
PAGE 21
867 F.2d 1188, *1198; 1989 U.S. App. LEXIS 565, **28;
16 Media L. Rep. 1113
Under the three-part test for obscenity of Miller v. California, 413 U.S. 15,
37 L. Ed. 2d 419, 93 S. Ct. 2607 (1973), a publication maybe obscene only if it
appeals to the prurient interest, it depicts specifically defined sexual conduct
in a patently offensive way, and, taken as a whole, it "lacks serious literary,
artistic, political, [**29] or scientific value." Id. at 24. Because the
Features expressed opinions about matters of public concern, they did not lack
"serious literary, artistic, political, or scientific value." It follows that

they are not obscene. Cf Falwell, 108 S. Ct. at 882 ("the sort of expression
involved in this case does not seem to us to be governed by [*1199] any
exception to the general First Amendment principles").
Here, we also decline the invitation of appellants and amici to create a new
category of expressive activity -- non-obscene "pornography" -- that is "not
entitled to constitutional protection." Appellants and amici press this point by
citing a number of cases holding that certain utterances are unprotected by the
first amendment. In conjunction with these citations, they point out the harms
that they believe pornography causes, equate the expressive activity of
pornographers with "rape, batter[y], torture, brutaliz[ation] and sometimes
kill[ing]" allegedly perpetrated by pornographers, and remark that pornographic
expression is unworthy of protection. The view urged by appellants and amici
runs contrary to fundamental first amendment principles, and we refuse to adopt
it.
The Miller element [**30] requiring obscenity to lack "serious literary,
artistic, political, or scientific value" focuses on the "worth" of allegedly
obscene speech to determine whether it is protected by the first amendment. n7
By asking us to apply a less restrictive standard than Miller, appellants and
amici ask us to permit the suppression of speech that does possess "serious
literary, artistic, political, or scientific value." To do so would require us
to flout the fundamental principle that the first amendment is designed to
foster robust public debate on such matters. We refuse to do so.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n7 Roth v. United States, 354 U.S. 476, 1 L. Ed. 2d 1498, 77 S. Ct. 1304
(1957), the Court observed that obscenity is "utterly without redeeming social
importance." Id. at 484. The plurality in A Book Named "John Cleland's
Memoirs
of a Woman of Pleasure" v. Massachusetts, 383 U.S. 413, 16 L. Ed. 2d 1, 86 S.
Ct. 975 (1966), incorporated this element into the definition of obscenity. Id.
at 419. In Miller, a majority of the Court adopted this approach, albeit in a
modified form, and included as a part of the definition of obscenity the
requirement that "the work, taken as a whole, [must] lack[] serious literary,
artistic, political, or scientific value." 413 U.S. at 24. The focus on "social
importance" or "value" indicates a concern with the "worth" of the speech.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**31]
By citing such cases as Chaplinsky v. New Hampshire, 315 U.S. 568, 86 L.
Ed.
1031, 62 S. Ct. 766 (1942), and Near v. Minnesota, 283 U.S. 697, 75 L. Ed.
1357,
51 S. Ct. 625 (1931), appellants and amici also seek to invoke the doctrines
identifying categories of expression that may be regulated because of their
tendency to cause others to engage in undesirable acts. As we noted in Ault
PAGE 22
867 F.2d 1188, *1199; 1989 U.S. App. LEXIS 565, **31;
16 Media L. Rep. 1113
and Leidholdt, Hustler's speech is not actionable simply because it is "base and

malignant." Leidholdt, 860 F.2d at 894; Ault, 860 F.2d at 881. Numerous cases
establish that speech may not be suppressed simply because it is offensive.
E.g., Falwell, 485 U.S. 46, 108 S. Ct. 876, 99 L. Ed. 2d 41 ; Erznoznik v. City
of Jacksonville, 422 U.S. 205, 21 1-12, 45 L. Ed. 2d 125, 95 S. Ct. 2268 & n. 6
(1975) (absent captive audience, speech may not be regulated simply because it
is offensive); Cohen, 403 U.S. at 16 ("Fuck the Draft" is protected); Hess v.
Indiana, 414 U.S. 105, 107, 38 L. Ed. 2d 303, 94 S. Ct. 326 (1973) (per curiam)
("We'll take the fucking street later," or "We'll take the fucking street again"
is protected); see Brandenburg v. Ohio, 395 U.S. 444, 23 L. Ed. 2d 430, 89 S.
Ct. 1827 (1969) (per curiam) (racist advocacy by Ku Klux Klan); Collin v.
Smith,
578 F.2d 1197 (7th Cir.) (Nazi march in Jewish community), cert. denied, 439
U.S. 916, 58 L. Ed. 2d 264, 99 S. Ct. 291 (1978). [**32] Instead, a large
body of case law sharply limits the reach of these categories by requiring that
the speech be directed toward and likely to incite imminent unlawful action.
See, e.g., Hess, 414 U.S. at 108; Brandenburg, 395 U.S. at 447. Appellants
introduced no material evidence that Hustler is likely to cause imminent
unlawful action n8 or, perhaps even more importantly, [*1200] that Hustler
is directed to producing or inciting such action. Accordingly, we reject this
argument, as well.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n8 As we have noted above, a heated public debate currently rages about
pornography. Some partisans in that debate contend that pornographic
publications such as Hustler are likely to cause imminent unlawful action. Other
partisans claim, with equal vigor, that pornographic publications do no such
thing. At best, the scientific evidence concerning the causal relationship
between pornographic materials and violent actions is ambiguous and
unvalidated.
Such equivocal evidence is insufficient to establish the "clear and present
danger" required in order for any of the exceptions to general first amendment
principles to apply.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
V
As described by appellants, their civil its claims assert that "the
[**33] persistent attacks on Andrea Dworkin and other feminist
anti-pornography leaders, such as Gloria Steinem, intimidated [appellants] and
chilled their exercise of their own free speech rights. The crux of these claims
was that these women were afraid to exercise their rights to speak out against
pornography because if they did so they risked such vile and cruel portrayals of
themselves as were levied against Andrea Dworkin and Gloria Steinem." In
effect,
appellants argue that Hustler and Flynt are subject to first amendment
constraints in the same manner and to the same extent that state actors are.
Appellants' argument in support of this claim is virtually incoherent. It
consists of little more than the unsupported assertion that a private actor
violates the first amendment if he utters unprotected speech that has an adverse
effect on the expressive activity of another. Nevertheless, we consider their
argument as best we can.

PAGE 23
867 F.2d 1188, *1200; 1989 U.S. App. LEXIS 565, **33;
16 Media L. Rep. 1113
Initially, we note that the claim of Moree and Fouts amounts to a group libel
claim. The Supreme Court opinion in Beauharnais v. Illinois, 343 U.S. 250, 96
L.
Ed. 919, 72 S. Ct. 725 (1952), is generally regarded as providing some support
for group libel claims. The cases decided since [**34] Beauharnais, however,
have substantially undercut this support. To the extent that Beauharnais can be
read as endorsing group libel claims, it has been so weakened by subsequent
cases such as New York Times that the Seventh Circuit has stated that these
cases "had so washed away the foundations of Beauharnais that it cannot be
considered authoritative." Hudnut, 771 F.2d at 331 n. 3; see Collin, 578 F.2d at
1205 (citing cases and expressing "doubt . . . that Beauharnais remains good law
at all after the constitutional libel cases"). We agree with the Seventh Circuit
that the permissibility of group libel claims is highly questionable at best.
Accordingly, we share the district court's skepticism that Moree and Fouts were
properly joined in this action, see 611 F.2d at 785.
Nevertheless, we affirm the district court's dismissal on another ground. The
district court dismissed Dworkin's civil rights claim because "Hustler Magazine
and Larry Flynt are simply not state actors, and a plaintiff must plead state
action in order to pursue a constitutional claim." 634 F. Supp. at 729. We agree
with the district court, and affirm the dismissal of both Dworkin's claim and
[**35] Moree and Fouts' claim on this ground. Appellants give no persuasive
reason for taking the drastic step of abandoning the well-established state
action doctrine. Rather than suppressing certain private viewpoints by treating
them as if they were governmental, the first amendment requires other ideas to
compete with those view-points, e.g., Gertz, 418 U.S. at 340, in "uninhibited,
robust, and wide-open" public debate, New York Times, 376 U.S. at 270.
VI
Appellees have requested double costs and attorneys' fees pursuant to Federal
Rule of Appellate Procedure 38 and 28 U.S.C. @ 1912. We have "discretion to
award attorney's fees and costs as a sanction against a frivolous appeal. An
appeal is frivolous if the result is obvious, or the arguments of error are
wholly without merit." DeWitt v. Western Pac. R.R. Co., 719 F.2d 1448, 1451
(9th
Cir. 1983).
We denied a similar request made by Hustler in Leidholdt, 860 F.2d at
895-86.
Consequently, sanctions would be inappropriate in this appeal, which was filed
under circumstances substantially similar to those of Leidholdt. However, the
arguments made in this case have now been rejected [*1201] by this court in
Liedholdt, Ault, [**36] and in this case. Should litigants raise similar
contentions in subsequent cases, the courts hearing those cases may consider in
the first instance whether sanctions are appropriate.
VII
The judgment of the district court is AFFIRMED. The request for double
costs

and attorneys' fees on appeal is DENIED.
PAGE 24
5TH CASE of Level 1 printed in FULL format.
GINGER ROGERS, Plaintiff, v. ALBERTO GRIMALDI and
MGM/UA
ENTERTAINMENT CO., Defendants; GINGER ROGERS, Plaintiff, v.
PEA PRODUZIONI EUROPEE ASSOCIATE, S.R.L., Defendant
Nos. 86 Civ. 1851 (RWS), 86 Civ. 7481 (RWS)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN
DISTRICT OF
NEW YORK
695 F. Supp. 112; 1988 U.S. Dist. LEXIS 8694; 8 U.S.P.Q.2D
(BNA) 1562; 15 Media L. Rep. 2097
COUNSEL: [**1]
August 5, 1988, Decided
August 8, 1988, Filed
BOWER & GARDNER, ESQS., By: BARRY G. SARETSKY, ESQ., ALAN
G. KATZ, ESQ. Of
Counsel, New York, New York, Attorneys for Plaintiff.
PRYOR, CASHMAN, SHERMAN & FLYNN, ESQS., By: STEPHEN F.
HUFF, ESQ., TOM J.
FERBER, ESQ., CHARLES B. McKENNA, ESQ., Of Counsel, New York, New
York,
Attorneys for Defendants.
JUDGES: Robert W. Sweet, United States District Judge.
OPINIONBY: SWEET
OPINION: [*113] OPINION
ROBERT W. SWEET, UNITED STATES DISTRICT JUDGE
Defendants Alberto Grimaldi ("Grimaldi"), MGM/UA Entertainment Co.
("MGM")
and PEA Produzioni Europee Associate, s.r.l. ("PEA") (collectively,
"Defendants") have moved pursuant to Fed.R.Civ.P. 56 for summary judgment
dismissing the complaints of plaintiff Ginger Rogers ("Rogers") in their
entirety. Upon the findings and conclusions set forth below, the motion is
granted.
What must be determined here is the boundary between commercial and
artistic
speech and the extent of the protection given under the First Amendment to the
expression of an idea in a commercial film "Federico Fellini's 'Ginger and
Fred'" (the "Film"), as opposed to the protection of a famous actress' name,

Ginger Rogers, under the Lanham Act and the common law. The conflict is
direct
and significant and was presented with skill and strength by able advocates. In
this contest artistic expression [**2] has prevailed, indeed, at least in
part as a consequence of the symbolic fame of Ginger Rogers.
Facts
Ginger Rogers is well-known, a celebrity who enjoys a world-wide reputation.
She has been performing in one entertainment medium or another for over 50
years, most prominently in motion pictures, having played major roles in some
73
films over a 35 year period and having won an Academy Award for her
PAGE 25
695 F. Supp. 112, *113; 1988 U.S. Dist. LEXIS 8694, **2;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
performance of the title role in "Kitty Foyle" in 1940. Rogers' greatest impact
as far as this fact-finder is concerned, however, is attributable to the ten
musical films in which she co-starred with Fred Astaire. These films, beginning
with "Flying Down to Rio" in 1933 and concluding with "The Barkleys of
Broadway"
in 1949, established Fred Astaire and Ginger Rogers as the icons of elegant
ballroom dancing during Hollywood's Golden Age. This famous pair became so
well
known that the term "Fred and Ginger" has come to be a metaphorical symbol
for
fine ballroom dancers and is frequently used in the press as a shorthand term
for elegant dancers and dancing. n1
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 The following are excerpts from some of the newspaper and magazine
articles submitted by Defendants in which dancers are referred to as "Fred and
Ginger" and dance numbers as "Fred and Ginger" routines:
(a) "Sashaying into Ballroom Dancing," by Dorothy MacKinnon. The
Washington
Post, August 27, 1982. Reference: "For the real aficionados, dancing becomes a
way of life. Washington's serious Freds and Gingers do most of their dancing at
the social dances held by area studios."
(b) "Music and Dance Star in Film Maker's Short," by Jennifer Dunning. The
New York Times, August 30, 1983. Reference: ". . . the film's dance styles
range
from disco and 1920's jazz to a final 'Fred and Ginger' filmed on the esplanade
. . ."
(c) "And Now For The Samurai Flamenco, By A Japanese Isadora," by
Barbara
Rowes. People, June 14, 1982. Reference: "She began working with Miguel in
1967,
and they became the Fred and Ginger of flamenco."
(d) "Foxtrotting Without Fear," by Faye Rice. Fortune, March 17, 1986.

Reference: "Other aspiring Freds and Gingers remain more footloose."
(e) "Affairs of the Hearts," by Jamie Gold. The Washington Post, December
2,
1981. Reference: "This Valentine's Day it's easy to become entangled in an
affair. For instance, Georgetown Park is having a free one Sunday, with a
big-band jazz 1 to 3 and a professional ballroom dance couple offering
instruction in dancing a la Fred and Ginger."
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**3]
[*114] During her career, Rogers has maintained a high standard of taste,
avoiding that which she considers seedy, ugly, or profane. During her lifetime,
while she has lent her name to certain enterprises, such as J.C. Penney, Rogers
has been highly selective with respect to such endorsements.
The subject of this action is "Federico Fellini's 'Ginger and Fred,'" a
motion picture that began a relatively brief U.S. theatrical distribution in
March 1986. MGM distributed the Film in the U.S. All the advertising and
posters
for the Film entitled it as it is in the defined term. PEA produced the Film,
and Grimaldi acted as its individual producer. Federico Fellini ("Fellini"), who
conceived, co-wrote and directed the Film, is widely regarded as one of the
world's greatest film-makers. Over the last 34 years he has brought 17 full
PAGE 26
695 F. Supp. 112, *114; 1988 U.S. Dist. LEXIS 8694, **3;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
length films to the motion picture screen, four of which--"La Strada," "The
Nights of Cabiria," "8 1/2" and "Amarcord"--have garnered the Academy Award
for
Best Foreign Film.
The Film, which was advertised in promotional posters as "[t]he movie that
looks at television through the eyes of Fellini," is a fictional work that
depicts the bittersweet reunion of two retired [**4] dancers. Decades
earlier, as the Film's story goes, these two dancers had made a living in
Italian cabarets imitating Fred Astaire and Ginger Rogers, thus earning the
nickname "Ginger and Fred." The Film satirizes the world of television by
presenting the central characters' reunion against the background of an Italian
television special for which they are called upon to reprise the routine that
they have not performed in 30 years. Marcello Mastroianni and Giulietta Masina
play the roles of Pippo and Amelia, the aging Italian "hoofers" who try to defy
time by reviving their imitation of two legendary dancers of a bygone era. n2
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n2 Although the Film received mixed reviews in the United States, the
following excerpts evince the reviewers' recognition of the Film's characters as
imitators of Rogers and Astaire and of the tribute that the Film intended to
make:
(a) "Last Waltz in Roma," by Jack Kroll. Newsweek, March 31, 1986:

. . . Fellini's film is an act of homage to [Astaire and Rogers]. By casting
Giuletta Masina and Marcello Mastroianni as two retired old hoofers who used
to
bill themselves as Ginger and Fred, Fellini acknowledges the mythic status of
the great American dance team.
(b) "Film: Lost Souls and Soulful Strangers," by Julie Salamon. The Wall Street
Journal, April 3, 1986:
The press materials for Federico Fellini's new movie, 'Ginger and Fred,' firmly
state that the movie has nothing to do with Fred Astaire and Ginger Rogers.
This
is more or less true . . . . All references to the real Fred and Ginger are
entirely respectful and almost beside the point, since the purpose of the
picture seems to be to satirize television, and more obliquely, life itself.
(c) "Roman Holiday" by Stanley Kauffman. The New Republic, April 14, 1986:
[The Film's couple] was professionally known as Ginger and Fred. Played by
[Masina and Mastroianni], they haven't the slightest resemblance to their
namesakes; but they did wear similar clothes, tried to dance like the famous
pair, used the same tunes, and cashed in, as they imitatively could -- in music
halls, not in films -- on the Italian passion for Hollywood.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**5]
In an affidavit submitted in support of Defendants' motion, Fellini, who is
not a party but who took part in writing both the story treatment and the actual
screenplay for the Film, explained his reasons for utilizing Astaire and Rogers
as the subject of the Film's imitation:
PAGE 27
695 F. Supp. 112, *114; 1988 U.S. Dist. LEXIS 8694, **5;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
[M]y reason for using this nickname for my characters is that Fred Astaire and
Ginger Rogers were a glamorous and care-free symbol of what American
cinema
represented during the harsh times [*115] which Italy experienced in the
1930's and 1940's. It comforted us to know that a different kind of life
existed. In those grey and difficult times, the films of Ginger Rogers, Clark
Gable, Fred Astaire and Greta Garbo consoled us with thoughts of a better
world.
That is why in my film I have created central characters who, the story goes,
had become popular in Italy by performing their "Ginger and Fred" routine.
With respect to the Film's central characters, Fellini stated:
The characters of Amelia and Pippo in [the Film] do not in any way resemble
Fred
Astaire and Ginger Rogers, nor were they ever intended to portray them. Rather,
Amelia and Pippo are two aging and retired dancers who were Italian cabaret
performers, [**6] whose "act" consisted of an imitation of the American
legends whose name they borrowed for their routines.

As opposed to portraying Rogers and Astaire in any representative form, Fellini
claims that he invoked Rogers and Astaire "only as a reference in the film based
on their well-deserved reputation as paragons of style and excellence in
dancing."
Rogers' commenced this action in March 1986, at or about the time the Film
began its theatrical distribution in the U.S. She seeks permanent injunctive
relief and money damages "arising from defendants' impermissible and unlawful
misappropriation and infringement of Ginger Rogers' public personality."
(Compl.
para. 1). Rogers' first claim for relief is premised on the common law right
of publicity. Her second claim alleges that the Film constitutes a false light
invasion of privacy because it allegedly "depicts the Film's dance team, Fred
and Ginger, as having been lovers and depicts them in a seedy manner."
(Compl.
para. 18). Her third claim is based upon Section 43(a) of the Lanham Act and
alleges that the Film creates the false impression that Rogers endorsed or was
involved in it. (Compl. para. 23).
After two years of discovery, Defendants [**7] moved for summary
judgment
dismissing the complaint. In opposition to the motion, Rogers has submitted a
market research survey dated July 1986 which reports that based on
approximately
200 interviews in Boston and New York (Staten Island) 43% of those exposed
to
the Film's title only connected the Film with Rogers and that 27% of those
exposed to the Film's advertisement connected the Film with Rogers. Rogers
also
learned during discovery that MGM had devised several promotional ideas for
marketing the Film on the strength of the public's familiarity with Ginger
Rogers and Fred Astaire. These ideas included using still photographs of Ginger
Rogers and Fred Astaire, requesting that guests invited to the New York
premiere
of the Film "Dress: Ginger or Fred," and using a "Ginger and Fred" dance cane,
an item associated with Fred Astaire, despite the fact that the male lead in the
Film does not use a cane during dance routines. Only the latter suggestion was
ultimately implemented.
Oral argument on Defendants' motion for summary judgment was held on
April
22, 1988.
Summary Judgment
PAGE 28
695 F. Supp. 112, *115; 1988 U.S. Dist. LEXIS 8694, **7;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
Fed.R.Civ.P. 56 provides that "a court shall grant a motion for summary
judgment if it determines that [**8] 'there is no genuine issue as to any
material fact and that the moving party is entitled to judgment as a matter of
law.'" Knight v. U.S. Fire Ins. Co., 804 F.2d 9, 11 (2d Cir. 1986), cert.
denied, 480 U.S. 932, 107 S. Ct. 1570, 94 L. Ed. 2d 762 (1987). If the evidence
is such that a reasonable finder of fact could return a verdict for the

non-moving party, summary judgment should not be granted. Anderson v.
Liberty
Lobby. Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). After
adequate time for discovery, if the non-moving party fails to make a showing
sufficient to establish the existence of an element essential to its case, and
on which it will bear the burden of proof at trial, summary judgment is
appropriate. In such a situation, there can be no "genuine issue as to any
material fact," since a failure of proof on an essential element of the case of
the non-moving party "necessarily renders all other facts [*116]
immaterial." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106
S. Ct. 2548 (1986).
Here, Defendants contend that Rogers' claims are precluded by the protections
afforded Defendants pursuant to the First Amendment. The Defendants argue
that
the references to Rogers are entirely permissible and are part and parcel of
Fellini's [**9] film, which is protected artistic expression. Rogers contends
that the protections afforded by the First Amendment are not absolute and do
not
shield the Defendants' unauthorized appropriation, use and commercial
exploitation of her name. Invoking the limited First Amendment protection that
is afforded to "commercial speech," Rogers argues that her proprietary rights
and the right of the public to be free from deception outweigh the Defendants'
free speech claim because there were alternate ways for Defendants to
communicate the message they claim the Film conveys.
Motion Pictures Are Protected By The First Amendment's Guarantees of
Freedom of
Speech and of the Pest
The proposition "that motion pictures are a form of expression protected by
the First Amendment," Natco Theatres, Inc. v. Ratner, 463 F. Supp. 1124, 1128
(S.D.N.Y. 1979), has been settled for more than three decades, since the
Supreme
Court's decision in Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 96 L. Ed.
1098, 72 S. Ct. 777 (1952). In Burstyn, the Court addressed the
constitutionality of a New York statute that gave the New York State Board of
Regents licensing authority over the exhibition of motion pictures, and which
permitted [**10] the banning of films on the grounds that they were
"sacrilegious." Burstyn, 343 U.S. at 497. Following a determination that a film
by Roberto Rossellini entitled "The Miracle" was sacrilegious, the Board of
Regents had rescinded the license for its exhibition. The New York Court of
Appeals rejected constitutional challenges to the licensing statute, but the
Supreme Court reversed on appeal. The Court stated:
It cannot be doubted that motion pictures are a significant medium for the
communication of ideas. They may affect public attitudes and behavior in a
variety of ways, ranging from direct espousal of a political or social doctrine
to the subtle shaping of thought which characterizes all artistic expression.
The importance of motion pictures as an organ of public opinion is not lessened
by the fact that they are designed to entertain as well as to inform.
Id., at 501 (footnote omitted). Thus, the Court concluded that "expression by
PAGE 29
695 F. Supp. 112, *116; 1988 U.S. Dist. LEXIS 8694, **10;

8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
means of motion pictures is included within the free speech and free press
guaranty of the First and Fourteenth Amendments." Id. at 502. The Court
reaffirmed this principle with respect to all works of entertainment in Schad v.
Borough [**11] of Mount Ephraim, 452 U.S. 61, 68 L. Ed. 2d 671, 101 S.
Ct.
2176 (1981):
Entertainment, as well as political and ideological speech, is protected; motion
pictures, programs broadcast by radio and television and live entertainment,
such as musical and dramatic works fall within the First Amendment guarantee.
Schad, 452 U.S. at 65 (citations omitted).
The New York courts, mindful of the importance of the First Amendment's
protect ions and of the potential danger of levying civil sanctions which might
inhibit artistic expression, have carefully guarded against imposing liability
in connection with motion pictures. Thus, in the leading New York case of
University of Notre Dame Du Lac v. Twentieth Century-Fox Corp., 22 A.D.2d
452,
256 N.Y.S.2d 301 (1st Dep't), aff'd, 15 N.Y.2d 940, 259 N.Y.S.2d 832, 207
N.E.2d
508 (1965), the Court stated:
It is at once apparent, when we deal with the content of a book or motion
picture, that we deal with no ordinary subject of commerce. Motion pictures, as
well as books, are "a significant medium for the communication of ideas"; their
importance "as an organ of public opinion is not lessened by the fact that they
are designed to entertain as well as to inform", and like books, they [**12]
are a constitutionally [*117] protected form of expression notwithstanding
that "their production, distribution, and exhibition is a large-scale business
conducted for private profit" (Joseph Burstyn v. Wilson, 343 U.S. 495, [96 L.
Ed. 1098, 72 S. Ct. 777] . . .; Jacobellis v. State of Ohio, 378 U.S. 184, [12
L. Ed. 2d 793, 84 S. Ct. 1676 (1964)] . . .).
Notre Dame, 256 N.Y.S.2d at 306. Accordingly, the courts in New York are
cautious not to construe the First Amendment's scope too narrowly and have
recognized its applicability to all legitimate forms of entertainment. As the
court stated in Paulsen v. Personality Posters, Inc., 59 Misc. 2d 444, 299
N.Y.S.2d 501 (N.Y. Co. 1968):
The scope of the subject matter which may be considered of "public interest" or
"newsworthy" has been defined in most liberal and far reaching terms. The
privilege of enlightening the public is by no means limited to dissemination of
news in the sense of current events but extends far beyond to include all types
of factual, educational and historical data, or even entertainment and
amusement, concerning interesting phases of human activity in general.
Paulsen, 299 N.Y.S.2d at 506. The courts of this Circuit have been equally
vigilant in recognizing the protection [**13] afforded artistic expression.
See, e.g., United States v. A Motion Picture Film Entitled "I Am Curious --
Yellow", 404 F.2d 196, 199 (2d Cir. 1968); Natco Theatres v. Ratner, 463 F.
Supp. at 1128; Man v. Warner Bros. Inc. 317 F. Supp. 50, 52 (S.D.N.Y. 1970);
but

cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp.
366
(S.D.N.Y.), aff'd, 604 F.2d 200 (2d Cir. 1979).
Rogers maintains that there are countervailing legal and policy reasons why
Defendants' unauthorized use of her name should not receive First Amendment
PAGE 30
695 F. Supp. 112, *117; 1988 U.S. Dist. LEXIS 8694, **13;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
protection. First, she contends that such use violates Section 43(a) of the
Lanham Act. Second, Rogers contends that such use violates her rights to
publicity and constitutes an invasion of privacy. Rogers contends that the
First Amendment does not bar either claim because Defendants had alternate
ways
to convey the Film's message.
The Lanham Act Claim
Section 43(a) of the Lanham Act imposes civil liability on "[a]ny person who
shall . . . use in connection with any goods or services . . . a false
designation of origin, or any false description or representation, including
words or other symbols tending falsely to describe [**14] or represent same,
and shall cause such goods to enter into commerce . . ." 15 U.S.C. @ 1125(a).
In
support of her claim that Defendants' unauthorized use of her name in the screen
play and title of the film constitutes a false designation of origin, Rogers
relies on Allen v. National Video Inc., 610 F. Supp. 612 (S.D.N.Y. 1985) and
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366
(S.D.N.Y.), aff'd, 604 F.2d 200 (2d Cir. 1979).
Allen involved an advertisement for a video rental chain that used a picture
of a Woody Allen double. Discussing the applicability of the Lanham Act to
acts
that confuse the public with respect to a celebrity's endorsement of, or
involvement with goods or services, the court stated:
A celebrity has a . . . commercial investment in the "drawing power" of his or
her name and face in endorsing products and in marketing a career. The
celebrity's investment depends upon the good will of the public, and
infringement of the celebrity's rights also implicates the public's interests in
being free from deception when it relies on a public figure's endorsement in an
advertisement. The underlying purposes, of the Lanham Act [**15] therefore
[are] implicated in cases of misrepresentations regarding the endorsement of
goods and services.
Allen, 610 F. Supp. at 625-26. In Allen, however, there was no dispute that the
advertisement at issue was purely commercial speech, Allen 610 F. Supp. at
618,
622, and, therefore, was entitled to less protection than other constitutionally
safeguarded forms of speech. See Bolger v. Youngs Drug Products Corp., 463
U.S.
60, 77 L. Ed. 2d 469, 103 S. Ct. 2875 (1983); Ohralik v. Ohio State Bar Ass'n,
436 U.S. 447, 56 L. Ed. 2d 444, 98 S. Ct. 1912 (1978). Because the defendant's
sole purpose in using a [*118] Woody Allen look alike in its advertising was

to capitalize on Allen's familiar name, face and "reputation for artistic
integrity" in order to boost sales of its movie rentals, the court found that
such use violated the Lanham Act's prohibition against misleading advertising.
Dallas Cowboys, which involved the pornographic film "Debbie Does Dallas,"
in
which the central character participates in sexual escapades wearing some but
not always all the distinctive trademarked costume of the Dallas Cowboy
Cheerleaders, presents a closer question concerning the unauthorized use of a
celebrity's notoriety. On plaintiff's motion for [**16] a preliminary
injunction, the court was asked to decide whether the film "Debbie Does
Dallas,"
its promotion, and its advertising violated Section 43(a). In addition to
finding that the movie depicted the film's lead, Debbie, engaging in sexually
explicit conduct wearing a uniform resembling the Dallas Cowboy Cheerleaders
uniform, the court found that the defendants had advertised the film with a
PAGE 31
695 F. Supp. 112, *118; 1988 U.S. Dist. LEXIS 8694, **16;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
large marquee containing a picture of Debbie wearing the uniform and that print
advertisements for the film falsely represented that the woman playing the role
of Debbie was an ex-Dallas Cowboy Cheerleader. Stating that "[i]t would appear
obvious that Section 43(a) of the Lanham Act applies to a motion picture,"
Dallas Cowboys, 467 F. Supp. at 375, the court next considered whether the
First
Amendment afforded any protection to the defendants.
The film's promoter argued that the film was a parody or satire on female
cheerleaders. Addressing this argument, the court stated:
It has been long settled in our jurisprudence that the rights of free
expression, embodied in the First Amendment and other legal doctrines are
subject to rights under the copyright and trademark laws. In the copyright
[**17] area, one means of accommodation between the conflicting interests is
the "fair use" doctrine, which permits certain use of copyrighted material to be
made for purposes such as news reporting, criticism, scholarship -- and parody
and satire.
Id. (citing Second Circuit copyright "fair use" cases). After discussing the
meaning of the terms parody and satire, the court strongly rejected the
defendant's claim that "Debbie Does Dallas" fell within that definition:
In the present case, there is no content, by way of story line or otherwise,
which could conceivably place the movie Debbie Does Dallas within any
definition
of parody and satire. The purpose of the movie has nothing to do with humor;
it has nothing to do with a commentary, either by ridicule or otherwise, upon
the Dallas Cowboys Cheerleaders. There is basically nothing to the movie
Debbie
Does Dallas, except a series of depictions of sex acts.
Dallas Cowboys, 467 F. Supp. at 376. The court concluded that the plaintiff's
service marks and trademarks had been misappropriated for commercial
purposes:

The use of the associations with the Dallas Cheerleaders both in the film and in
the advertising, all have the single [**18] purpose of exploiting the Dallas
Cheerleaders' popularity in order to attract customers to view the sex acts in
the movie.
Id. (emphasis added).
Affirming the district court's issuance of a preliminary injunction against
the film's distribution and exhibition, the Second Circuit did not reach the
question whether the "fair use" doctrine is applicable to trademark
infringements, although it agreed with the district court that the film's use of
the Dallas Cheerleaders' uniform "hardly qualifies as parody or any other form
of fair use." Dallas Cowboys, 604 F.2d at 206. n3 Instead, the Court of Appeals
appears to have rejected the defendants' claim of First Amendment protection on
other grounds:
[*119] That defendants' movie may convey a barely discernible message does
not
entitle them to appropriate plaintiff's trademark in the process of conveying
that message. Plaintiff's trademark is in the nature of a property right, . . .,
and as such it need not "yield to the exercise of First Amendment rights under
circumstances where adequate alternative avenues of communication exist."
Lloyd
Corp. v. Tanner, 407 U.S. 551, 567, [33 L. Ed. 2d 131, 92 S. Ct. 2219] (1972).
PAGE 32
695 F. Supp. 112, *119; 1988 U.S. Dist. LEXIS 8694, **18;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
Because there are numerous ways in which defendants [**19] may comment
on
"sexuality in athletics" without infringing plaintiff's trademark, the district
court did not encroach upon their first amendment rights in granting a
preliminary injunction.
Id. The Circuit's decision in Dallas Cowboys thus permitted the Lanham Act to
override First Amendment concerns, noting that the defendant had alternate
ways
of communicating his message without infringing upon the protected mark.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n3 The Second Circuit stated that it was "unlikely that the fair use doctrine
is applicable to trademark infringements," noting in a footnote that since "the
primary purpose of the trademark laws is to protect the public from confusion, .
. ., it would be somewhat anomalous to hold that the confusing use of another's
trademark is 'fair use.'" Dallas Cowboys, 604 F.2d at 206 & n.9.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Construed narrowly, in light of the district court's express finding that the
sole purpose of defendants' appropriation of the mark was "simply to use the
attracting power and fame of the Dallas Cowboy Cheerleaders to draw
customers
for the sexual 'performances' in the film," Dallas Cowboys, 467 F. Supp. at 376,

the Second Circuit's opinion is consistent with Supreme Court [**20]
decisions holding that the "Constitution . . . accords a lesser protection to
commercial speech than to other constitutionally guaranteed expression." Central
Hudson Gas & Elec. Corp. v. Public Service Comm'n of New York, 447 U.S.
557,
563, 65 L. Ed. 2d 341, 100 S. Ct. 2343 (1980) (citing Ohralik v. Ohio State Bar
Ass'n, 436 U.S. at 456, 457). Among the reasons why 'commercial speech
receives
limited First Amendment protection is 'the legitimate public interest in
suppressing "commercial messages that do not accurately inform the public
about
lawful activity." Id. n4
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n4 In Central Hudson Gas & Elec. Corp., the Supreme Court also suggested
that
a restriction on non-misleading commercial speech may be justified if the
government's interest in the restriction is substantial and if the restriction
directly advances the government's asserted interest and is no more extensive
than necessary to serve the interest. Central Hudson Gas & Elec., 447 U.S. at
566. In San Francisco Arts & Athletics, Inc. [SFAA] v. United States Olympic
Committee [USOC], 483 U.S. 522, 107 S. Ct. 2971, 97 L. Ed. 2d 427 (1987),
the
Court recently relied on the government's assertion of a strong interest in
promoting, through the USOC's activities, the participation of amateur athletes
from the United States in the Olympic Games to uphold against a First
Amendment
challenge a statute that granted the USOC the exclusive use of the word
"Olympic." There, the Court found that the USOC's use of trademark remedies
to
prohibit the SFAA's use of the word to promote the "Gay Olympic Games" was
not
barred by the First Amendment even though the SFAA claimed to have used the
word
for both commercial and political purposes. SFAA v. USOC, 107 S. Ct. at 2983.
The Court based its holding, in part, on a finding that the SFAA's use of the
word could not be divorced from the commercial value the USOC's efforts had
given to it and was "a clear attempt to exploit the imagery and goodwill created
by the USOC." Id. & n.19.
PAGE 33
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8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**21]
In addition, the Supreme Court has held that where a company "enjoy[s] the
full panoply of First Amendment protect ions for [its] direct comments on public
issues, [t]here is no reason for providing similar constitutional protection
when such statements are made only in the context of commercial transactions."
Id. 447 U.S. at 563 n.5. Therefore, "advertising which 'links a product to a
current public debate' is not thereby entitled to the constitutional protection
afforded noncommercial speech." Bolger v. Youngs Drug Prod., 463 U.S. [60] at

68
(quoting Central Hudson Gas & Elec., 447 U.S. 557, 563 n.5, 65 L. Ed. 2d 341,
100 S. Ct. 2343 (1980)). Although the language of the opinions of both the
district court and the Court of Appeals in Dallas Cowboys do not contain any
express limitation of the Lanham Act's override of the First Amendment to cases
involving speech that is primarily commercial, such a narrowing is implicit in
subsequent decisions of the Second Circuit in which the Court has held that
"[m]isleading commercial speech" regulated by the Lanham Act "is beyond the
protective reach of the First Amendment." Vidal Sassoon, Inc. v. Bristol-Myers
Co., [*120] 661 F.2d 272, 276 n.8 (2d Cir. 1981); see also Consumers
[**22] Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044,
1052 (2d Cir. 1983).
How to identify the line between commercial and artistic speech, however,
constitutes the difficulty presented in the instant case. In an era where
artistic expression is often intertwined with the use of well-known symbols,
which because of their familiarity may have commercial value, to real Dallas
Cowboys as Rogers suggests to require courts to decide whether an artistic
message could have been conveyed in some other manner would have a chilling
effect on the free expression of creative ideas.
As the late Andy Warhol is reported to have stated, "Being good in business
is the most fascinating kind of art." With annual sales in the international
auction market exceeding one billion dollars, see Kernan, "The Great Debate
Over
Artists' Rights," The Washington Post, May 22, 1988, at F1, it is hardly
surprising that for some artists, like Warhol, the distinction between art and
commerce has blurred beyond recognition. The staggering box office receipts of
smash hit movies and the burgeoning video rental market may have a similar
effect on the hearts and minds of those in the film industry. [**23] More
than three decades ago, however, the Supreme Court rejected the contention that
simply because the "production, distribution, and exhibition [of motion
pictures] is a large-scale business conducted for private profit," expression by
means of films should not be protected by the First Amendment. Joseph
Burstyn,
Inc. v. Wilson, 343 U.S. at 501-02. Therefore, before expression through film
can be curtailed by the Lanham Act, the party seeking relief bears the heavy
burden of establishing that the challenged speech is intended primarily to serve
a commercial function.
In the instant case, Defendants contend that the use of Rogers' first name in
the title and screenplay of the Film constitutes an exercise of artistic
expression rather than commercial speech. On the basis of viewing the Film and
the undisputed facts in the record, it is so found.
PAGE 34
695 F. Supp. 112, *120; 1988 U.S. Dist. LEXIS 8694, **23;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
In the commercial speech cases discussed above, the defendants' use of the
plaintiffs' celebrated image or symbol was intended primarily to persuade the
public to consume something that either had no connection to the plaintiff,
Allen, or to convey the false impression that plaintiff was somehow involved
with or had endorsed the product, [**24] Dallas Cowboys. Here, by contrast,
the relevance of "Ginger" in both the Film's title and screenplay is apparent at
two levels. First, the title accurately refers to the fictionalized nicknames of

the Film's two central characters. Second, the screenplay establishes the
reference to Rogers and Astaire as the basis for the Film's characters'
livelihood and thereby recognizes the Rogers and Astaire phenomenon as a
known
element of modern culture.
In addition, the record here establishes that the Film's satirical vision of
television entertainment in the 1980's rests in part on the contrast provided by
the old hoofers' imitation of Hollywood entertainment in a bygone era. The
director's affidavit evinces Fellini's intent to evoke an American cultural
symbol the existence of which Rogers concedes in her complaint. There is
nothing
in the record to suggest that Fellini intended to use Rogers' name to deceive
the public into flocking to his movie under the mistaken belief that the Film
was about the true Rogers and Astaire. Moreover, the critics' reviews uniformly
acknowledge the Film's artistic tribute to Rogers and Astaire. Against the
overwhelming evidence squarely placing the Film's [**25] title and screenplay
within the realm of artistic expression, the fact that the Film's distributors
may have conceived of and even executed a few schemes to exploit
commercially
the public's familiarity with Rogers' name does not turn either the film or its
title into commercial speech. See Bolger v. Young Drug Prod., 463 U.S. at 67.
Having determined that the speech in question is artistic expression, whether
there were alternate avenues open to Fellini to convey his film's message is not
subject to examination by this court. Because [*121] the speech at issue
here is not primarily intended to serve a commercial purpose, the prohibitions
of the Lanham Act do not apply, and the Film is entitled to the full scope of
protection under the First Amendment.
The State Law Claims
Rogers' right of publicity claim rests on allegations of Defendants'
unauthorized use of her name and public personality for advertising purposes or
purposes of trade. See, e.g., Estate of Presley v. Russen, 513 F. Supp. 1339,
1353 (D.N.J. 1981); Ali v. Playgirl, Inc., 447 F. Supp. 723, 728-29 (S.D.N.Y.
1978). Defendants contend that this claim and Rogers' false light invasion of
privacy claim are [**26] precluded by overriding constitutional concerns
raised by the First Amendment's protection of artistic speech. n5
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n5 Since, as discussed below, broad constitutional concerns, not narrow
distinctions based on different states' laws, require dismissal of Rogers'
claims, her attempt to raise a choice of law issue by arguing that the law of
Oregon, her state of residence, rather than that of New York or California,
governs her state law claims need not be addressed.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
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695 F. Supp. 112, *121; 1988 U.S. Dist. LEXIS 8694, **26;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
Courts have been consistently unwilling to recognize the right of publicity
cause of action where the plaintiff's name or picture was used in connection

with a matter of public interest, be it news or entertainment. In Paulsen v.
Personality Posters. Inc., 59 Misc. 2d 444, 299 N.Y.S.2d 501 (N.Y. Co. 1968),
the court denied comedian Pat Paulsen's motion for a preliminary injunction
preventing the defendant from marketing posters bearing his photograph and the
words "For President," in connection with Paulsen's mock run for the White
House
in 1968. The court noted that matters of public interest -- from newspapers to
motion pictures -- are not to be considered as distributed for purposes of
trade, "notwithstanding that [**27] they are also carried on for a profit."
Paulsen, 299 N.Y.S.2d at 506. The court observed that Paulsen, like Rogers in
the present case, "is concededly a well-known public personality by professional
choice" and "indeed, as an entertainer he actively seeks to promote and
stimulate such public attention to enhance his professional standing." Id. at
507. The court rejected Paulsen's claim, concluding:
[E]ven where the " right of publicity" is recognized, it does not invest a
prominent Person with the right to exploit financially every public use of his
name or picture. What is made actionable is the unauthorized use for advertising
purposes in connection with the sale of a commodity. . . . . The " right of
publicity, " therefore, like that of "privacy" is at best a limited one, within
the context of an advertising use, and would be held to have no application
where the use of name or picture, as is here the case, as [sic] in connection
with a matter of public interest.
Id. at 508-09 (citations omitted).
The court in Frosch v. Grosset & Dunlap, Inc., 75 A.D.2d 768, 427 N.Y.S.2d
828 (1st Dep't 1980), used a similar analysis in affirming summary judgment
against the plaintiff, [**28] the executor of Marilyn Monroe's estate, who
had brought suit on a book entitled "Marilyn." While noting that the New York
courts did not recognize a descendible right of publicity, the court held:
Special Term held that the book here involved is what it purports to be, a
biography, and as such did not give rise to a cause of action in favor of the
estate for violation of a right to publicity. Plaintiff disputes the
characterization of the book as a biography. We think it does not matter whether
the book is probably described as a biography, a fictional biography, or any
other kind of literary work. It is not for a court to pass on literary
categories, or literary judgment. It is enough that the book is a literary work
and not simply a disguised commercial advertisement for the sale of goods or
services.
Frosch, 427 N.Y.S.2d at 829. In Ann-Margret v. High Society Magazine, Inc.,
498
F. Supp. 401 (S.D.N.Y. 1980), in which the plaintiff-actress brought right of
privacy and publicity claims against a "soft-porn" magazine that had published
several photographs of her from a film in which she had appeared partially
nude,
the Honorable Gerard L. Goettel also weighed the protections [**29] of the
First Amendment against a public figure's right to publicity. Discussing the
limitations that the First Amendment [*122] imposes on New York's
statutory
right to publicity, the court stated:
This provision, which, if read literally, would provide an extremely broad cause

of action applicable to virtually all uses of a person's name or picture,
PAGE 36
695 F. Supp. 112, *122; 1988 U.S. Dist. LEXIS 8694, **29;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
including the use of the new media, has been narrowly construed by the courts,
especially in the context of persons denominated "public figures," so as "to
avoid any conflict with the free dissemination of thoughts, ideas, newsworthy
events, and matters of public interest" guaranteed by the First Amendment. . . .
Thus, as has been noted by the New York courts, "freedom of speech and the
press
under the First Amendment transcends the right to privacy." Namath v. Sports
Illustrated, 80 Misc. 2d 531, 535, 363 N.Y.S.2d 276, 280 (N.Y. Co. 1975), aff'd,
48 A.D.2d 487, 371 N.Y.S.2d 10 (1st Dep't 1975), aff'd mem., 39 N.Y.2d 897,
352
N.E.2d 584, 386 N.Y.S.2d 397 (1976).
Ann-Margret, 498 F. Supp. at 404 (other citations omitted). The court also nod
"there is little doubt that the plaintiff, who has starred in numerous movies
and television [**30] programs . . . is, as the term has come to be
understood, a 'public figure.'" Id. Accordingly, the court granted summary
judgment dismissing the complaint, stating:
Plaintiff's claim fares no better when considered as one for violation of the
common law " right to publicity. " As has been noted, . . . [the right to
publicity] "does not invest a prominent person with the right to exploit
financially every public use of name or picture." . . . It is only when such use
is made "for advertising purposes, or for the purposes of trade," . . . that a
cause of action arises. And it is well settled that simple use in a magazine
that is published and sold for profit does not constitute a use for advertising
or trade sufficient to make out an actionable claim, even if its "manner of use
and placement was designed to sell the article so that it might be paid for and
read." Oma v. Hillman Periodicals, Inc., 281 A.D. 240, 244, 118 N.Y.S.2d 720,
724 (1st Dep't 1953).
Ann-Margret, 498 F. Supp. at 406 (other citations omitted).
In Hicks v. Casablanca Records, 464 F. Supp. 426 (S.D.N.Y. 1978), the
Honorable Lawrence W. Pierce addressed another factual situation similar to
that
presented [**31] here. Plaintiffs, the heir and assignees of the late mystery
writer Agatha Christie, sued regarding the distribution of a movie and book
entitled "Agatha," a fictional work about what might have transpired during an
actual eleven day disappearance by Ms. Christie during her life. The court noted
that Ms. Christie had been "one of the best-known mystery writers in modern
times" and that she had cultivated her name "in such a way as to make it almost
synonymous with mystery novels." Hicks, 464 F. Supp. at 428. The plaintiffs
sought to enjoin distribution of the film and book, alleging unfair competition
and infringement of the right of publicity, and the defendants moved to
dismiss the complaint on First Amendment grounds. In considering the First
Amendment's applicability, the court stated:
. . . more so than posters, bubble gum cards, or some other "merchandise,"
books
and movies are vehicles through which ideas and opinions are disseminated and,

as such, have enjoyed certain constitutional protections, not generally accorded
"merchandise."
Id. at 430. After concluding that "there are no countervailing legal or policy
grounds against" extending First Amendment protection [**32] to the book
and
film, the court dismissed the right of publicity claim. Id. at 431. Like the
film and book "Agatha," "Federico Fellini's 'Ginger and Fred'" is not a piece of
"merchandise" like a perfume or line of apparel, whose name would likely bear
PAGE 37
695 F. Supp. 112, *122; 1988 U.S. Dist. LEXIS 8694, **32;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
no relation to the product. To the contrary, the Film is a protected work of
artistic expression, the product of one of the world's great cinematic artists,
clearly labeled as such in every poster and advertisement.
In addition to the cases discussed above, perhaps the most compelling opinion
counselling that Rogers' claims are precluded as a matter of law by the First
Amendment is that of the alternate majority of the California Supreme Court in
Guglielmi v. Spelling-Goldberg Productions, 25 Cal. 3d 860, 160 Cal. Rptr. 352,
603 P.2d 454 (1979) [*123] (Bird, C.J., concurring). n6 Guglielmi concerned
an unauthorized and fictionalized television film entitled "Legend of Valentino:
A Romantic Fiction" on the life of actor Rudolph Valentino. Like Rogers here,
the plaintiff (as putative assignee of Valentino's rights) complained that the
defendants "used Valentino's name, likeness and personality in a fictionalized
film which did not accurately portray [**33] his life." Guglielmi, 160 Cal.
Rptr. at 354. Observing that "this is not a case in which a celebrity's name is
used to promote or endorse a collateral commercial product or is otherwise
associated with a product or service in an advertisement," Guglielmi, 160 Cal.
Rptr. at 355 n.6, the opinion discussed the important role played by fictional
works as a form of social commentary:
It is clear that works of fiction are constitutionally protected in the same
manner as political treatises and topical news stories. Using fiction as a
vehicle, commentaries on our values, habits, customs, laws prejudices, justice,
heritage and future are frequently expressed. What may be difficult to
communicate or understand when factually reported may be poignant and
powerful
if offered in satire, science fiction or parable.
Id. at 357. The majority rejected the plaintiff's claim that the use of
Valentino's name and likeness in the film was impermissible and unnecessary
and
that it was done solely to increase the film's value, stating:
If this analysis were used to determine whether an expression is entitled to
constitutional protection, grave harm would result. Courts would be required not
[**34] merely to determine whether there is some minimal relationship
between
the expression and the celebrity . . . but to compel the author to justify the
use of the celebrity's identity. . . . Such a course would inevitably chill the
exercise of free speech--limiting not only the manner and form of expression but
the interchange of ideas as well.

Contemporary events, symbols and people are regularly use in fictional works.
Fiction writers may be able to more persuasively, more accurately express
themselves by weaving into the take persons or events familiar to their readers.
The choice is theirs. No author should be forced into creating mythological
worlds or characters wholly divorced from reality. The right of publicity
derived from public promienence does not confer a shield to ward off
caricature, parody and satire. Rather, prominence invites creative comment.
Id. 160 Cal. Rptr. at 358. As the court concluded with respect to Valentino,
since Rogers and Astaire are similarly "part of the cultural history of an era,"
their fame is an equally "apt topic" for Fellini's fictional work. See id.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
PAGE 38
695 F. Supp. 112, *123; 1988 U.S. Dist. LEXIS 8694, **34;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
n6 The holding in Guglielmi is set forth in a brief per curiam opinion
stating that in accordance with Lugosi v. Universal Pictures, 25 Cal. 3d 813,
160 Cal. Rptr. 323, 603 P.2d 425 (1979), decided the same day, since California
did not recognize a descendible right of publicity, the complaint was properly
dismissed. Chief Justice Bird addressed the First Amendment concerns raised by
the plaintiffs' claims in the concurring opinion, discussed below, which she
authored for an alternate majority of the court.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**35]
Finally, Chief Justice Bird's opinion explained why the use of Valentino's
name in advertising the film was equally protected and permissible:
A similar result is called for the use of Valentino's name and likeness in
advertisements for the film. That use was merely an adjunct to the exhibition of
the film. It was not alleged that the advertisements promoted anything but the
film. Having established that any interest in financial gain in producing the
film did not affect the constitutional stature of respondents' undertaking, it
is of no moment that the advertising may have increased the profitability of the
film. It would be illogical to allow respondents to exhibit the film but
effectively preclude any advance discussion or promotion of their lawful
enterprise. Since the use of Valentino's name and likeness in the film was not
actionable infringement of Valentino's right of publicity, the use of his
identity in advertisements for the film is similarly not actionable. [*124]
Id. at 360. This rationale applies with equal force to Rogers' claims concerning
promotion of the Film in the United States. Since Fellini's right to use Rogers
and Astaire as a cultural reference point in this [**36] film is protected,
the related advertising cannot be actionable.
The cases on which Rogers primarily relies to support her right of
publicity claim can be distinguished from the instant case. In Zacchini v.
Scripps-Howard Broadcasting Co., 433 U.S. 562, 53 L. Ed. 2d 965, 97 S. Ct.
2849
(1977), the plaintiff performed a "human cannonball" act which the defendant
broadcast on a news program. In a narrowly drawn opinion effectively limited to
its facts, the Supreme Court held that the First Amendment did not bar the

plaintiff's claim because Zacchini's "entire act" had been appropriated by the
broadcast on television without his permission, thereby seriously interfering
with the public's desire to pay to see him and destroying the economic viability
of plaintiff's act. Zacchini, 433 U.S. at 575. By contrast, here the Film does
not interfere with Rogers' economic viability, there having been no showing that
her reputation has suffered in any way from the Film. Indeed, one might assume
that the reverse may be true, given the critical acclaim achieved by the Film
and the resulting enhancement of Astaire and Rogers' fame. In Estate of Presley
v. Russen, 513 F. Supp. 1339 (D.N.J. 1981), which involved a concert [**37]
featuring an Elvis Presley imitator, the court concluded that the imitator's
concert was not protected since it "serves primarily to commercially exploit the
likeness of Elvis Presley without contributing anything of substantial value to
society" and that it "does not really have its own creative component and does
not have a significant value as pure entertainment." Estate of Presley, 513 F.
Supp. at 1359. Here, Rogers does not contend that the Film does not have its
own
creative component and, as discussed above, the Film's use of Rogers' name is
not primarily for a commercial purpose.
PAGE 39
695 F. Supp. 112, *124; 1988 U.S. Dist. LEXIS 8694, **37;
8 U.S.P.Q.2D (BNA) 1562; 15 Media L. Rep. 2097
Conclusion
Under the authorities discussed above, Rogers' claims, which are all premised
on the same subject matter, fail as a matter of law because the Film is a work
of protected artistic expression. It is not an "ordinary subject of commerce," a
simple "commodity" or a piece of "merchandise." Under the cited authorities,
the
Film does not meet the requirements for "trade or advertising" or an
"advertisement in disguise" for a "collateral commercial product." Thus, the
Film enjoys the full protection of the First Amendment. Fellini was entitled to
create a satire of modern television built [**38] around the bittersweet
reunion of two somewhat tattered, retired hoofers who once earned the
nicknames
"Ginger and Fred" by imitating America's dancing legends, one of whom is the
plaintiff here. Equally protected is the title of the Film, an integral part of
the work's artistic expression, which is a reference to its central characters.
Upon the findings and conclusions set forth above, the motion for summary
judgment dismissing the complaint with costs is granted. Enter judgment on
notice.
It is so ordered.
DATE: SEPTEMBER 30, 1993
PAGE 40
CLIENT: CAREER
LIBRARY: MEGA
FILE: MEGA
YOUR SEARCH REQUEST IS:

((PARODY OR PARODIES AND CARICATURE) AND (RIGHT OF
PUBLICITY))
YOUR FOCUS SEARCH REQUEST IS:
PARODY
NUMBER OF CASES FOUND WITH YOUR FOCUS REQUEST:
7
PAGE 41
7TH CASE of Focus printed in FULL format.
JEAN GUGLIELMI, Plaintiff and Appellant, v.
SPELLING-GOLDBERG PRODUCTIONS et al., Defendants and
Respondents
L.A. No. 30872
Supreme Court of California
25 Cal. 3d 860; 603 P.2d 454; 160 Cal. Rptr. 352; 5 Media L.
Rep. 2208; 205 U.S.P.Q. (BNA) 1116
December 5, 1979
PRIOR HISTORY:
Superior Court of Los Angeles County, No. C147905, August J. Goebel, Judge.
DISPOSITION: The judgment is affirmed.
COUNSEL: Rudin & Perlstein and Vincent H. Chieffo for Plaintiff and
Appellant.
Lillick, McHose & Charles, Kenneth E. Kulzick, Lawrence W. Dam and
Kathleen
Hallberg for Defendants and Respondents.
Selvin & Weiner and Paul P. Selvin as Amici Curiae on behalf of Defendants
and Respondents.
JUDGES: Opinion by The Court. Separate concurring opinion by Bird, C. J.,
with
Tobriner and Manuel, JJ., concurring. Separate concurring opinion by Newman,
J.
OPINIONBY: THE COURT
OPINION: [*861] [**455] [***353] Appellant allegedly is the nephew
of the actor Rudolph Valentino, who died in 1926. According to the complaint
herein, in 1975, respondents exhibited on television a "fictionalized version"
of Valentino's life, depicting the actor's name, likeness and personality
without obtaining the prior consent of either Valentino or appellant. In the
present action, appellant seeks damages and injunctive relief on the theory that
respondents have misappropriated Valentino's "right of publicity," and that
appellant as Valentino's legal heir is the present owner of that right.
Respondents' demurrer to the complaint was sustained and, upon appellant's

efusal to amend, the complaint was ordered dismissed. This appeal followed.
In Lugosi v. Universal Pictures, ante, page 813 [160 Cal.Rptr. 323, 603 P.2d
425], we hold that the right of publicity protects against the unauthorized use
of one's name, likeness or personality, but that the right is not descendible
and expires upon the death of the person so protected. Lugosi controls the
disposition of the present case and makes it unnecessary to discuss any further
issues raised by the parties.
The judgment is affirmed.
CONCURBY: BIRD; NEWMAN
CONCUR: [*862] BIRD, C.J., Concurring. This court must decide whether
the
use of a deceased celebrity's name and likeness in a fictional film exhibited
PAGE 42
25 Cal. 3d 860, *862; 603 P.2d 454, **455;
160 Cal. Rptr. 352, ***353; 5 Media L. Rep. 2208 FOCUS
on television constitutes an actionable infringement of that person's right of
publicity. It is clear that appellant's action cannot be maintained.
Therefore, the trial court properly dismissed his complaint.
I
In his complaint, appellant alleges that Rudolpho Guglielmi, also known as
Rudolph Valentino, was his paternal uncle. Valentino was a world-renowned
silent motion picture actor who created substantial commercial value in his
identity through his motion picture performances. Appellant contends that
Valentino had a protectible proprietary interest in the commercial uses of his
name, likeness and personality. Appellant alleges that he inherited this right
of publicity under Valentino's will, following Valentino's death in 1926.
On November 23, 1975, respondents exhibited on the television network
owned
by American Broadcasting Companies, Inc., a film entitled Legend of Valentino:
A
Romantic Fiction. Appellant alleges that "[said] film purports to represent a
portion of the life of Rudolph Valentino and employs the name, likeness and
personality of [**456] Rudolph Valentino." However, appellant [***354]
asserts that while the principal character is identified as Valentino, the film
is "a work of fiction about the life and loves of an Italian actor who became
Hollywood's first romantic screen star and who died at the height of his fame."
Hence, the film is a "fictionalized version of Rudolph Valentino's life."
Appellant alleges that respondents knew that the film did not truthfully portray
Valentino's life, and that the film was made without Valentino's or appellant's
consent. Appellant contends that respondents also used Valentino's name,
likeness and personality in advertising the film "to solicit and to sell
commercial sponsorship exhibited in conjunction with the exhibition of said film
and to solicit viewers for the exhibition of said film."
Appellant argues that by incorporating Valentino's identity in the film and
related advertisements, respondents "were able to derive greater income from
their film by attracting more viewers and sponsors than they would have . . ."

if Valentino's name had not been used. This unauthorized use in a "work of
fiction" which respondents knew was not an accurate portrayal of Valentino's
life allegedly constituted a misappropriation [*863] of Valentino's right of
publicity. n1 For this allegedly tortious conduct, appellant seeks damages and
injunctive relief. n2
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 In his petition for hearing, appellant summarized his claim: "In essence,
Petitioner alleges that defendants have created a 'product,' a fictionalized
photoplay, into which, for their own gain, they appropriated the name, likeness,
and identity of Rudolph Valentino in order to make their product commercially
viable and to ensure a 'sale' of their product."
n2 Specifically, appellant prayed for a permanent injunction restraining
respondents from "commercially exhibiting . . . any false, untrue, fictionalized
or fabricated film which purports to depict a portion of the life of Rudolph
Valentino and/or which embodies the use of the name, likeness, and reputation
of
Rudolph Valentino," and "from using the name, likeness or reputation of
Rudolph
Valentino in any manner for the purposes of advertising any film, product, or
services or for the purposes of solicitation of commercial advertising for any
PAGE 43
25 Cal. 3d 860, *863; 603 P.2d 454, **456;
160 Cal. Rptr. 352, ***354; 5 Media L. Rep. 2208 FOCUS
film, product, or services . . . ."
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Respondents demurred to appellant's complaint, asserting that it failed to
state facts sufficient to constitute a cause of action. The trial court
sustained the demurrer with leave to amend. However, the court offered to
sustain the demurrer without leave to amend and dismiss the complaint if
appellant wished to challenge the court's ruling. Appellant elected to stand on
the unamended complaint and his complaint was dismissed. This appeal
followed.
II
In reviewing the sufficiency of a complaint following a trial court's
sustaining of a general demurrer, the allegations in the complaint are assumed
to be true. (Gill v. Curtis Publishing Co. (1952) 38 Cal.2d 273, 275 [239 P.2d
630]; Hendrickson v. California Newspapers, Inc. (1975) 48 Cal.App.3d 59, 61
[121 Cal.Rptr. 429].) If the allegations so construed state any cause of action,
then a trial court commits error when it sustains a demurrer and dismisses the
complaint. n3
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n3 The description of respondents' conduct and state of mind set forth in
section I, ante, was drawn from appellant's complaint and subsequent
submissions
in this action. While the sufficiency of the complaint must be judged on the

allegations therein, this court may consider admissions in appellant's
subsequent submissions in determining the factual basis of his contentions.
(Zumbrun v. University of Southern California (1972) 25 Cal.App.3d 1, 7 [101
Cal.Rptr. 499, 51 A.L.R.3d 991]; Hospelhorn v. Newhoff (1941) 43 Cal.App.2d
678,
679-680 [111 P.2d 688]. Cf. Browne v. Superior Court (1940) 16 Cal.2d 593,
598-599 [107 P.2d 1, 131 A.L.R. 276]; Clyne v. Clyne (1964) 228 Cal.App.2d
597,
598, fn. 1 [39 Cal.Rptr. 677].)
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The gravamen of appellant's complaint is that respondents used Valentino's
name, likeness and personality in a fictionalized film which [*864] did not
accurately portray his life. They thereby infringed on appellant's inherited
interest in Valentino's right of publicity. Appellant seeks recovery of the
amounts respondents were unjustly enriched by the unauthorized use of
Valentino's right of publicity and damages for diminishing its value. No claim
was made that respondents' fictional work defamed or invaded the privacy of
either Valentino or [**457] [***355] appellant. n4 Therefore,
appellant's complaint states a cause of action if two conditions are satisfied:
(1) Rudolph Valentino had a right of publicity in the commercial uses of his
name, likeness and personality, a right which could be transferred to his heirs,
and (2) respondents' conduct constituted an impermissible infringement on that
right.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n4 There was no allegation that appellant's name or likeness was used in
respondents' film. Appellant recognizes that any injury to Valentino's
PAGE 44
25 Cal. 3d 860, *864; 603 P.2d 454, **457;
160 Cal. Rptr. 352, ***355; 5 Media L. Rep. 2208 FOCUS
personal rights, such as his right to privacy, would not be actionable after his
death. (See, e.g., Hendrickson v. California Newspapers, Inc., supra, 48
Cal.App.3d at p. 62.)
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
In light of my conclusions in Lugosi v. Universal Pictures, ante, page 813
[160 Cal.Rptr. 323, 603 P.2d 425] (dis. opn.), I believe that plaintiff's
complaint satisfies the first condition. In Lugosi, I examined the nature of an
individual's interest in controlling commercial uses of his name and likeness.
A prominent person has a substantial economic interest in the commercial use of
his name and likeness. This is entitled to protection under the common law and
should be inheritable by an individual's heirs and protected for 50 years after
the individual's death. Valentino was a world-renowned silent screen star who
expended considerable effort in developing his career. Unquestionably he
enjoyed the protection afforded by the common law right of publicity. n5 Since
the complaint alleges that appellant inherited Valentino's interest in his name
and likeness and that the appropriation of Valentino's right of publicity
occurred within 50 years of Valentino's death, the initial elements of a cause
of action have been adequately alleged.

- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n5 Valentino had a right of publicity in his name and likeness. In light of
the disposition of this appeal, I need not decide whether any right of publicity
would attach to Valentino's "personality." It is interesting to note, however,
that appellant has not provided -- and I find it difficult to discern -- any
easily applied definition for this amorphous term.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
It must therefore be determined whether respondents' conduct constituted an
infringement of Valentino's right of publicity. In resolving that question, the
context and nature of the use is of preeminent concern. Valentino's name and
likeness were allegedly used in a work of fiction [*865] broadcast on
television. Appellant characterized respondents' film as "a work of fiction
about the life and loves of an Italian actor who became Hollywood's first
romantic screen star and who died at the height of his fame." Valentino was
identified as that character. n6
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n6 Such statements establish that this is not a case in which the use is
wholly unrelated to the individual. A different result may follow if, for
example, respondents had published Rudolph Valentino's Cookbook and neither
the
recipes nor the menus described in the book were in any fashion related to
Rudolph Valentino. (Cf. Grant v. Esquire (S.D.N.Y. 1973) 367 F.Supp. 876;
Gill
v. Hearst Publishing Co. (1953) 40 Cal.2d 224 [253 P.2d 441]; Leverton v.
Curtis
Pub. Co. (3d Cir. 1951) 192 F.2d 974.)
While Valentino's name was allegedly used to advertise this particular film,
this is not a case in which a celebrity's name is used to promote or endorse a
collateral commercial product or is otherwise associated with a product or
service in an advertisement. (See, e.g., Stilson v. Reader's Digest Assn.
PAGE 45
25 Cal. 3d 860, *865; 603 P.2d 454, **457;
160 Cal. Rptr. 352, ***355; 5 Media L. Rep. 2208 FOCUS
Inc. (1972) 28 Cal.App.3d 270 [104 Cal.Rptr. 581]; Motschenbacher v. R. J.
Reynolds Tobacco Company (9th Cir. 1974) 498 F.2d 821; Lombardo v. Doyle,
Dane &
Bernbach, Inc. (1977) 58 App.Div.2d 620 [396 N.Y.S.2d 661].)
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Film is a "significant medium for the communication of ideas." (Joseph
Burstyn, Inc. v. Wilson (1952) 343 U.S. 495, 501 [96 L.Ed. 1098, 1105, 72
S.Ct.
777].) Whether exhibited in theaters or on television, a film is a medium which
is protected by the constitutional guarantees of free expression. (U.S. Const.,
1st and 14th Amends.; Cal. Const., art. I, @ 2; Joseph Burstyn, Inc. v. Wilson,
supra, 343 U.S. at pp. 501-502 [96 L.Ed. at pp. 1105-1106]; Red Lion
Broadcasting Co. v. FCC (1969) 395 U.S. 367, 386-390 [23 L.Ed.2d 371,

386-389,
89 S.Ct. 1794]; Weaver v. Jordan (1966) 64 Cal.2d 235, 242 [49 Cal.Rptr. 537,
411 P.2d 289].) A film is presumptively protected (People v. Superior Court
(Freeman) (1975) 14 Cal.3d 82, 88 [120 Cal.Rptr. 697, 534 P.2d 393]), and will
forfeit that protection only if it falls within "narrowly limited classes" of
cases (Chaplinsky v. New [**458] [***356] Hampshire (1942) 315 U.S.
568,
571 [86 L.Ed. 1031, 1035, 62 S.Ct. 766]).
Appellant contends that the Valentino film is not entitled to the cloak of
constitutional protection because respondents incorporated Valentino's name and
likeness in: (1) a work of fiction, (2) for financial gain, (3) knowing that
such film falsely portrayed Valentino's life. The critical issue is whether the
presence of these factors, individually or collectively, sufficiently outweighs
any protection this expression would otherwise enjoy under the United States
and
California Constitutions.
In emphasizing the fictional nature of the film, appellant's argument reveals
a fundamental misconception of the nature of the constitutional [*866]
guarantees of free expression. "The constitutional right of free expression . .
. is designed and intended to remove governmental restraints from the arena of
public discussion, putting the decision as to what views shall be voiced largely
into the hands of each of us, in the hope that use of such freedom will
ultimately produce a more capable citizenry and more perfect polity and in the
belief that no other approach would comport with the premise of individual
dignity and choice upon which our political system rests." (Cohen v. California
(1971) 403 U.S. 15, 24 [29 L.Ed.2d 284, 293, 91 S.Ct. 1780].)
The First Amendment and article I, section 2 of the California Constitution
serve "to preserve an uninhibited marketplace of ideas" and to repel efforts to
limit the "'uninhibited, robust and wide-open' debate on public issues." (Red
Lion Broadcasting Co. v. FCC, supra, 395 U.S. at p. 390 [23 L.Ed.2d at p. 389];
Gertz v. Robert Welch, Inc. (1974) 418 U.S. 323, 340 [41 L.Ed.2d 789, 805, 94
S.Ct. 2997].) These rights are essential in a democratic system of government.
Free speech is also guaranteed because of our fundamental respect for individual
development and self-realization. The right to self-expression is inherent in
any political system which respects individual dignity. n7 Each speaker must be
free of government restraint regardless of the nature or manner of the views
expressed unless there is a compelling reason to the contrary. (See Hill,
Defamation and Privacy Under the First Amendment (1976) 76 Colum.L.Rev.
1205,
1208-1210.)
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - -
PAGE 46
25 Cal. 3d 860, *866; 603 P.2d 454, **458;
160 Cal. Rptr. 352, ***356; 5 Media L. Rep. 2208 FOCUS
-
n7 See Cohen v. California, supra, 403 U.S. at pages 24-26 [29 L.Ed.2d at
pages 293-295]; Whitney v. California (1927) 274 U.S. 357, 375-376 [71 L.Ed.
1095, 1105-1106, 47 S.Ct. 641] (conc. opn. of Brandeis, J.). See generally,
Tribe, American Constitutional Law (1978) pages 578-579; Nimmer, The Right

to
Speak From Times to Time: First Amendment Theory Applied to Libel and
Misapplied
to Privacy (1968) 56 Cal.L.Rev. 935, 949; Emerson, Toward A General Theory
of
The First Amendment (1963) 72 Yale L.J. 877, 878-881.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Free speech encompasses the discussion of "all issues about which
information
is needed or appropriate to enable the members of society to cope with with the
exigencies of their period." (Thornhill v. Alabama (1940) 310 U.S. 88, 102 [84
L.Ed. 1093, 1102, 60 S.Ct. 736].) Participation in the process of
self-government requires knowledge of more than current events and political
candidates. The information required to establish basic values and to order
political priorities is essential.
[*867] Freedom of expression also encompasses the manner in which the
ideas, thoughts and beliefs are expressed. n8 The epigram as well as the
philosophical treatise, the dispassionate analysis as well as the
emotion-charged tirade, may be communicated. (See Cohen v. California, supra,
403 U.S. 15; Good Government Group of Seal Beach, Inc. v. Superior Court
(1978)
22 Cal.3d 672, 689-690 [150 Cal.Rptr. 258, 586 P.2d 572] (dis. opn. of Bird,
C.J.).) To limit how one speaks not only impedes self-expression but diminishes
the public dialogue so essential to a free people.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n8 It is noteworthy that the California Constitution provides that "[every]
person may freely speak, write and publish his or her sentiments on all subjects
. . . . ." (Art. I, @ 2.) As Webster confirms, "sentiments" encompasses not only
thoughts but the attendant emotions. (Webster's New Internat. Dict. (2d ed.
1941) p. 2280.)
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Our courts have often observed that entertainment is entitled to the same
constitutional [**459] [***357] protection as the exposition of ideas.
n9 That conclusion rests on two propositions. First, "[the] line between the
informing and the entertaining is too elusive for the protection of the basic
right. Everyone is familiar with instances of propaganda through fiction. What
is one man's amusement, teaches another doctrine." (Winters v. New York
(1948)
333 U.S. 507, 510 [92 L.Ed. 840, 847, 68 S.Ct. 665].) Second, entertainment, as
a mode of self-expression, is entitled to constitutional protection irrespective
of its contribution to the market-place of ideas. "For expression is an
integral part of the development of ideas, of mental exploration and of the
affirmation of self. The power to realize his potentiality as a human being
begins at this point and must extend at least this far if the whole nature of
man is not to be thwarted. [ para. ] Hence suppression of belief, opinion and
expression is an affront to the dignity of man, a negation of man's essential
nature." (Emerson, supra, 72 Yale L.J. at p. 879.)
PAGE 47

25 Cal. 3d 860, *867; 603 P.2d 454, **459;
160 Cal. Rptr. 352, ***357; 5 Media L. Rep. 2208 FOCUS
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n9 See, e.g., Zacchini v. Scripps-Howard Broadcasting Co. (1977) 433 U.S.
562, 578 [53 L.Ed.2d 965, 978, 97 S.Ct. 2849]; Briscoe v. Reader's Digest
Association, Inc. (1971) 4 Cal.3d 529, 535, footnote 6 [93 Cal.Rptr. 866, 483
P.2d 34, 57 A.L.R.3d 1]; Weaver v. Jordan, supra, 64 Cal.2d at page 242; Gill
v.
Hearst Publishing Co., supra, 40 Cal.2d at page 229.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
It is clear that works of fiction are constitutionally protected in the same
manner as political treatises and topical news stories. n10 Using fiction as a
vehicle, commentaries on our values, habits, customs, laws, prejudices, justice,
heritage and future are frequently expressed. What [*868] may be difficult
to communicate or understand when factually reported may be poignant and
powerful if offered in satire, science fiction or parable. Indeed, Dickens and
Dostoevski may well have written more trenchant and comprehensive
commentaries
on their times than any factual recitation could ever yield. Such authors are
no less entitled to express their views than the town crier with the daily news
or the philosopher with his discourse on the nature of justice. Even the author
who creates distracting tales for amusement is entitled to constitutional
protection. (See Berlin v. E.C. Publications, Inc. (2d Cir. 1964) 329 F.2d 541,
545; Hill, supra, 76 Colum.L.Rev. at p. 1308.)
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n10 See Cohen v. California, supra, 403 U.S. at pages 25 [29 L.Ed.2d at
pages
293-294]; Katzev v. County of Los Angeles, (1959) 52 Cal.2d 360, 365 [341
P.2d
310]; University of Notre Dame v. Twentieth Century-Fox (1965) 22
App.Div.2d 452
[256 N.Y.S.2d 301, 307], affirmed 15 N.Y.2d 940 [259 N.Y.S.2d 832, 207
N.E.2d
508]. Cf. Minarcini v. Strongsville City School Dist. (6th Cir. 1976) 541 F.2d
577 (removal of novels by Joseph Heller and Kurt Vonnegut from school library
unconstitutional); Right to Read Defense Com. v. School Com., Etc. (D.Mass.
1978) 454 F.Supp. 703 (removal of anthology of prose and poems from school
library unconstitutional).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Thus, no distinction may be drawn in this context between fictional and
factual accounts of Valentino's life. Respondents' election of the former as
the mode for their views does not diminish the constitutional protection
afforded speech. If respondents are to be held liable for their expression, a
more persuasive basis must be established.
Next, appellant contends that Valentino's name and likeness were used

ecause
they increased the value or marketability of the film. It is argued that such
motivation diminishes the constitutional protection otherwise mandated. This
contention appears to encompass three distinct bases of liability. First, the
film was produced and broadcast for profit. Second, respondents could have
expressed themselves without using Valentino's name and likeness. To permit
such unauthorized use allows them to benefit unjustifiably from Valentino's
prominence. Third, the use of Valentino's name and likeness in a fictional
account poses a unique threat to the value of Valentino's right of publicity.
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160 Cal. Rptr. 352, ***357; 5 Media L. Rep. 2208 FOCUS
The first argument can be readily dismissed. The First Amendment is not
limited to those who publish without charge. Whether the activity involves
newspaper publication or motion picture production, it does not lose its
constitutional protection because it is undertaken for profit. (Time,
[**460] [***358] Inc. v. Hill (1967) 385 U.S. 374, 397 [17 L.Ed.2d 456,
472, 87 S.Ct. 534]; Joseph Burstyn, Inc. v. Wilson, supra, 343 U.S. at p. 502
[96 L.Ed. at p. 1106].) The fact that respondents sought to profit from
[*869] the production and exhibition of a film utilizing Valentino's name and
likeness is not constitutionally significant.
The second prong of appellant's argument is more subtle. In essence, it is
that the use of Valentino's name and likeness in the film was unnecessary, that
Valentino's identity was incorporated in the film solely to increase the film's
value. If this analysis were used to determine whether an expression is
entitled to constitutional protection, grave harm would result. Courts would be
required not merely to determine whether there is some minimal relationship
between the expression and the celebrity (see fn. 6, ante), but to compel the
author to justify the use of the celebrity's identity. Only upon satisfying a
court of the necessity of weaving the celebrity's identity into a particular
publication would the shadow of liability and censorship fade. Such a course
would inevitably chill the exercise of free speech -- limiting not only the
manner and form of expression but the interchange of ideas as well.
Contemporary events, symbols and people are regularly used in fictional
works. n11 Fiction writers may be able to more persuasively, or more
accurately,
express themselves by weaving into the tale persons or events familiar to their
readers. The choice is theirs. No author should be forced into creating
mythological worlds or characters wholly divorced from reality. The right of
publicity derived from public prominence does not confer a shield to ward off
caricature, parody and satire. Rather, prominence invites creative comment.
Surely, the range of free expression would be meaningfully reduced if prominent
persons in the present and recent past were forbidden topics for the
imaginations of authors of fiction. n12
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n11 See Middlebrooks v. Curtis Publishing Co. (4th Cir. 1969) 413 F.2d 141.
Cf. Leopold v. Levin (1970) 45 Ill.2d 434 [259 N.E.2d 250] (fictional book,
play
and motion picture based on Leopold-Loeb case); Wojtowicz v. Delacorte Press
(1977) 58 App.Div.2d 45 [395 N.Y.S.2d 205], affirmed 43 N.Y.2d 858 [403

N.Y.S.2d
218, 374 N.E.2d 129] (fictional motion picture Dog Day Afternoon based on
real
incident.)
n12 For example, Garry Trudeau, creator of the satiric cartoon strip
"Doonesbury," regularly fictionalizes events and dialogue involving prominent
political figures. It cannot be seriously maintained that one such satirized
notable could successfully pursue an action for an infringement on his right of
publicity based on such use.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The facts of the present case are strikingly illustrative. Valentino was a
Hollywood star. His life and career are part of the cultural history of an era.
As the title of respondents' film suggests, Valentino became a [*870]
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25 Cal. 3d 860, *870; 603 P.2d 454, **460;
160 Cal. Rptr. 352, ***358; 5 Media L. Rep. 2208 FOCUS
"legend," a symbol of the romantic screen idol and lover. His lingering persona
is an apt topic for poetry or song, biography or fiction. n13 Whether
respondents' work constitutes a serious appraisal of Valentino's stature or mere
fantasy is a judgment left to the reader or viewer, not the courts. n14
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n13 Amicus curiae informs the court that, in addition to the film at issue,
at least five biographies and three motion pictures concerning Valentino have
been produced.
n14 "Whether [works of fiction] are creations of merit, whether they have
value only as entertainment and no value whatever as opinion, information or
education, pose questions which would require us to stake out those elusive
lines . . ." inconsistent with the constitutional protections accorded
expression. "It is fundamental that courts may not muffle expression by passing
judgment on its skill or clumsiness, its sensitivity or coarseness; nor on
whether it pains or pleases. It is enough that the work is a form of expression
'deserving of substantial freedom -- both as entertainment and as a form of
social and literary criticism' [citation] . . . ." (University of Notre Dame v.
Twentieth Century-Fox, supra, 256 N.Y.S.2d at p. 307. Accord Cohen v.
California, supra, 403 U.S. at p. 25 [29 L.Ed.2d at pp. 293-294].)
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The third strand in appellant's argument is that the incorporation of a
prominent person's identity in a fictional work poses a threat to the value of
his right of publicity not found in truthful accounts. Yet truthful accounts,
no less than fictional ones, may trade upon the publicity value in Valentino's
identity and thereby diminish its [**461] [***359] value. The author of
an unauthorized truthful publication may be inspired by, and seek to profit
from, the public's interest in Valentino's career or legend. The truthful
account may sate the public's desire for "contact" with Valentino, making any
other plan for exploitation or revelation a profitless venture. Conversely, the

false report, no less than the truthful, may stimulate interest and infuse great
value in the previously insignificant publicity value in a celebrity's identity.
A fictional account is as likely to laud as to denigrate. It may either augment
or diminish the value of a celebrity's right of publicity. Therefore, any
assertion that fictional accounts pose a unique threat to the right of publicity
not found in truthful reports is simply not justified. n15 (See Treece,
Commercial Exploitation of Names, Likenesses, and Personal Histories (1973)
51
Texas L.Rev. 637, 660.)
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n15 False or fictional accounts may pose a unique danger to the subject's
reputation. However, appellant has expressly disavowed any intention of
pursuing a claim that respondents' film defamed Valentino.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Finally, appellant claims that the film is not entitled to constitutional
protection because respondents acted with "knowledge or reckless disregard of
the falsity" of their broadcast concerning Valentino. However, [*871]
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160 Cal. Rptr. 352, ***359; 5 Media L. Rep. 2208 FOCUS
appellant's effort to import the "actual malice" standard of liability in
defamation actions of New York Times Co. v. Sullivan (1964) 376 U.S. 254 [11
L.Ed.2d 686, 84 S.Ct. 710, 95 A.L.R.2d 1412] is misguided.
That standard reflects the Supreme Court's recognition that while defamatory
false statements of fact have no constitutional value, n16 such statements are
inevitable in the continuing debate on public issues. Accordingly, to provide
adequate protection to "speech that matters," the court held that even false
statements of fact concerning public figures and officials are not actionable
unless they are published with knowledge of their falsity or reckless disregard
for the truth. (Gertz v. Robert Welch, Inc., supra, 418 U.S. at pp. 339-343 [41
L.Ed.2d at pp. 805-807]; New York Times Co. v. Sullivan, supra, 376 U.S. at
pp.
279-280 [11 L.Ed.2d at pp. 706-707].)
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n16 Gertz v. Robert Welch, Inc., supra, 418 U.S. at page 340 [41 L.Ed.2d at
page 805]. But see New York Times Co. v. Sullivan, supra, 376 U.S. at page
279,
footnote 19 [11 L.Ed.2d at page 706.]
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
No such constitutional dichotomy exists in this area between truthful and
fictional accounts. They have equal constitutional stature and each is as
likely to fulfill the objectives underlying the constitutional guarantees of
free expression. (See, ante, pp. 865-868.) Moreover, in defamation cases, the
concern is with defamatory lies masquerading as truth. In contrast, the author
who denotes his work as fiction proclaims his literary license and indifference

to "the facts." There is no pretense. All fiction, by definition, eschews an
obligation to be faithful to historical truth. Every fiction writer knows his
creation is in some sense "false." That is the nature of the art. Therefore,
where fiction is the medium -- as alleged by appellant in this case and as
evident in the film's title, A Romantic Fiction -- it is meaningless to charge
that the author "knew" his work was false.
Clearly, appellant's basis for distinguishing respondents' film from other
expressive works, whether factual or fictional, is unpersuasive. Appellant has
not established any analytic framework which logically differentiates
respondents' film from other expressions. Hence, an action for infringement of
the right of publicity can be maintained only if the proprietary interests at
issue clearly outweigh the value of free expression in this context.
While few courts have addressed the question of the parameters of the right
of publicity in the context of expressive activities, their response [*872]
has been consistent. Whether the publication involved was factual and
biographical n17 or fictional, n18 the [**462] [***360] right of
publicity has not been held to outweigh the value of free expression. Any other
conclusion would allow reports and commentaries on the thoughts and conduct
of
public and prominent persons to be subject to censorship under the guise of
preventing the dissipation of the publicity value of a person's identity.
Moreover, the creation of historical novels and other works inspired by actual
events and people would be off limits to the fictional author. An important
avenue of self-expression would be blocked and the marketplace of ideas would
be
diminished. As one commentator recently observed, "it is difficult to imagine
PAGE 51
25 Cal. 3d 860, *872; 603 P.2d 454, **462;
160 Cal. Rptr. 352, ***360; 5 Media L. Rep. 2208 FOCUS
anything more unsuitable, or more vulnerable under the First Amendment, than
compulsory payment, under a theory of appropriation, for the use made of [an
individual's identity in a work of fiction]." (fn. omitted.) (Hill, supra, 76
Colum.L.Rev. at p. 1305.)
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n17 See, e.g., Frosch v. Grossett & Dunlap, Inc. (N.Y.Sup.Ct.Jan. 9, 1979) 4
Med.L.Rep. 2307; Factors Etc., Inc. v. Creative Card Co. (S.D.N.Y. 1977) 444
F.Supp. 279, 284; Rosemont Enterprises, Inc. v. Random House, Inc. (1968) 58
Misc.2d 1 [294 N.Y.S.2d 122, 129], affirmed 32 App.Div.2d 892 [301 N.Y.S.2d
948]. Cf. Current Audio, Inc. v. RCA Corporation (1972) 71 Misc.2d 831 [337
N.Y.S.2d 949, 954]; Paulsen v. Personality Posters, Inc. (1968) 59 Misc.2d 444
[299 N.Y.S.2d 501, 508-509]. See generally, Nimmer, The Right of Publicity
(1954) 19 Law & Contemp. Prob. 203, 216-217.
n18 See, e.g., Hicks v. Casablanca Records (S.D.N.Y. 1978) 464 F.Supp. 426,
433; Rosemont Enterprises, Inc. v. McGraw-Hill Book (1975) 85 Misc.2d 583
[380
N.Y.S.2d 839, 844]; Donahue v. Warner Bros. Pictures Distributing Corp.
((1954)
2 Utah 2d 256 [272 P.2d 177, 183]. See generally, Hill, supra., 76
Column.L.Rev.

at pages 1304-1306.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
A cause of action for the appropriation of Valentino's right of publicity
through the use of his name and likeness in respondents' film may not be
maintained. The trial court properly sustained the demurrer and dismissed the
complaint. n19
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n19 The use of a person's name or likeness in a fictional work may constitute
an invasion of privacy or defamation. (See Cordell v. Detective Publications,
Inc. (E.D.Tenn. 1968) 307 F.Supp. 1212, 1217-1218, affd. (6th Cir. 1969) 419
F.2d 989; Hill, supra, 76 Column.L.Rev. at pp. 1304-1306. Cf. Middlebrooks v.
Curtis Publishing Company, supra, 413 F.2d 141.) Appellant did not seek
recovery
under either theory.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
A similar result is compelled for the use of Valentino's name and likeness in
advertisements for the film. That use was merely an adjunct to the exhibition
of the film. It was not alleged that the advertisements [*873] promoted
anything but the film. Having established that any interest in financial gain
in producing the film did not affect the constitutional stature of respondents'
undertaking, it is of no moment that the advertisements may have increased the
profitability of the film. It would be illogical to allow respondents to
exhibit the film but effectively preclude any advance discussion or promotion of
their lawful enterprise. Since the use of Valentino's name and likeness in the
film was not an actionable infringement of Valentino's right of publicity, the
use of his identity in advertisements for the film is similarly not actionable.
(Cf. Leopold v. Levin, supra, 259 N.E.2d at p. 256; Koussevitzky v. Allen,
Towne
& Health (1947) 188 Misc. 479 [68 N.Y.S.2d 779, 784], affd. 272 App.Div. 759
[69
N.Y.S.2d 432].)
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25 Cal. 3d 860, *873; 603 P.2d 454, **462;
160 Cal. Rptr. 352, ***360; 5 Media L. Rep. 2208 FOCUS
The refusal to permit a cause of action based on the right of publicity for
the use of a deceased celebrity's identity in a film is consistent with the
result in two analogous cases. In Donahue v. Warner Bros. Pictures Distributing
Corp., supra, 272 P.2d 177, plaintiffs were the widow and daughters of Jack
Donahue, a famous singer, dancer and comedian in the first part of this century.
Plaintiffs brought suit based on the portrayal of Jack Donahue's life in a
motion picture. The suit was grounded on a statute which prohibited the use of
any person's name or likeness "for purposes of trade." The court recognized the
serious constitutional problems inherent in permitting such an action to be
maintained, and it regarded a proffered distinction "between educational and
informative as compared with fictional publications" to be "unsatisfactory."
(Id., at p. 182.) In light of the "important interest to be served in free and
uninhibited expression in all channels of public information, of which the
movies are an effective medium," the Utah Supreme Court held that whether the

film was factual or fictional, no action could be maintained [**463] for the
use of Donahue's identity in the film. (Id., at p. 183.)
[***361] In Hicks v. Casablanca Records, supra, 464 F.Supp. 426, the heir
and assignees of the late Agatha Christie, mystery writer extraordinaire,
brought suit to enjoin the distribution of the book and motion picture Agatha,
which presented a fictionalized account of an incident in Agatha Christie's
life. The action was based on an infringement of Mrs. Christie's common law
right of publicity, which had been transferred to plaintiffs. (Id., at pp.
429-430.) Although the works in issue were found to be fictional and not
biographical, the court recognized that the movie and book enjoyed
constitutional protections not accorded general commercial merchandise. (Id.,
at pp. 430-431.) Finding the [*874] speech interests paramount, the court
held "the right of publicity does not attach . . . where a fictionalized account
of an event in the life of a public figure is depicted in a novel or a movie,
and in such novel or movie it is evident to the public that the events so
depicted are fictitious." (Id., at p. 433.) Defendants' motions to dismiss the
complaint were granted. (Accord Rosemont Enterprises, Inc. v. McGraw-Hill
Book,
supra, 85 Misc.2d 583 [380 N.Y.S.2d 839].) n20
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n20 Appellant relies on certain New York cases which hold that the use of an
individual's name in connection with a work which is substantially fictionalized
is actionable. (See, e.g., Binns v. Vitagraph Co. (1913) 210 N.Y. 51 [103 N.E.
1108]; Spahn v. Julian Messner, Inc. (1967) 21 N.Y.2d 124 [286 N.Y.S.2d 832,
233
N.E.2d 840], app. dism. 393 U.S. 1046 [21 L.Ed.2d 600, 89 S.Ct. 676];
Koussevitzky v. Allen, Towne & Health, supra, 188 Misc. 479 [68 N.Y.S.2d
779],
affd. 272 App.Div. 759 [69 N.Y.S.2d 432].) These decisions are inapplicable to
the issue raised in the present case. Those actions were commenced under a
statute which specifically prohibited the use of a living person's name or
picture "for the purposes of trade." Unlike the common law right of publicity,
the "statutory right is deemed a 'right of privacy' and is based upon the
classic right of privacy's theoretical basis, which is to prevent injury to
feelings. (Lombardo v. Doyle, Dane & Bernbach, Inc., supra, 396 N.Y.S.2d at
p.
664. Accord Price v. Hal Roach Studios, Inc. (S.D.N.Y. 1975) 400 F.Supp. 836,
843.) Hence, the feelings of the living person portrayed in a challenged
fictional work would appear to be of paramount concern. The harm inflicted
would be akin to the injury alleged in a "false light" privacy or defamation
case. (See Time, Inc. v. Hill, supra, 385 U.S. at p. 384, fn. 9 [17 L.Ed.2d
PAGE 53
25 Cal. 3d 860, *874; 603 P.2d 454, **463;
160 Cal. Rptr. 352, ***361; 5 Media L. Rep. 2208 FOCUS
at p. 465].) This interest is distinct from the economic interest underlying the
right of publicity. Indeed, the inapplicability of New York's law to this
jurisdiction has already been noted. (Stryker v. Republic Pictures Corp. (1951)
108 Cal.App.2d 191, 196 [238 P.2d 670]. Cf. Gill v. Curtis Publishing Co.,
supra, 38 Cal.App.2d at p. 281.) Finally, I disagree with those decisions to the
extent they suggest the fictionalization of a portion of an individual's life is
actionable in the absence of any invasion of privacy or defamation. I find the

interest in free expression paramount and overrides a plaintiff's ability to
control the publicity values in his name. (See Hill, supra, 76 Colum.L.Rev. at
pp. 1304-1306; Treece, supra, 51 TexasL.Rev. at pp. 655-660. Cf. Carlisle v.
Fawcett Publications, Inc. (1962) 201 Cal.App.2d 733, 748 [20 Cal.Rptr. 405].)
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
In contrast, the facts underlying Lugosi v. Universal Pictures, supra, ante,
page 813 are substantially different than those in the present case. Lugosi
involved the use of Bela Lugosi's likeness in connection with the sale of such
commercial products "as plastic toy pencil sharpeners, soap products, target
games, candy dispensers and beverage stirring rods." (Id., at p. 851 (dis.
opn.).) These objects, unlike motion pictures, are not vehicles through which
ideas and opinions are regularly disseminated. n21 (See Hicks v. Casablanca
Records, supra, 464 F.Supp. at [*875] p. 430.) This case involves the use of
a celebrity's identity in a constitutionally protected medium of expression,
[**464] a work of fiction on film. Lugosi simply did not address the
viability of a cause of action for appropriation [***362] of the right of
publicity under these circumstances.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n21 This is not to suggest that the incorporation of a prominent person's
name or likeness in a commercial product could never be considered an
expression
entitled to constitutional protection. (See Smith & Sobel, The Mickey Mouse
Watch Goes to Washington: Would the Law Stop the Clock? (1972) 62
Trademark
Rep. 334. But see Rosemont Enterprises, Inc. v. Urban Systems, Inc. (1973) 72
Misc.2d 788 [340 N.Y.S.2d 144], affd. as mod. 42 App.Div.2d 544 [345
N.Y.S.2d
17]; Rosemont Enterprises v. Choppy Productions (1972) 74 Misc.2d 1003 [347
N.Y.S.2d 83]. Compare Comment, Privacy, Appropriation, and the First
Amendment:
A Human Cannonball's Rather Rough Landing (1977) B.Y.U.L.Rev. 579,
595-596, and
Note, The Right of Publicity -- Protection For Public Figures and Celebrities
(1976) 42 Brooklyn L.Rev. 572, 550-556 with Treece, supra, 51 Texas L.Rev. at
pp. 665-668.)
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Finally, Zacchini v. Scripps-Howard Broadcasting Co., supra, 433 U.S. 562,
does not require that appellant be accorded protection. In Zacchini, respondent
filmed petitioner's "entire act" in a human cannonball performance and broadcast
his performance on television. (Id., at p. 564 [53 L.Ed.2d at p. 969].) Under
state law, petitioner had the "right to the publicity value of his performance,"
the right to control its commercial display and exploitation. (Id., at p. 565
[53 L.Ed.2d at p. 970].) The Supreme Court found that the broadcast went "to
the
heart of petitioner's ability to earn a living as an entertainer" and posed a
"substantial threat to the economic value of [petitioner's] performance." (Id.,
at pp. 575-576 [53 L.Ed.2d at pp. 975-977].) In light of the nature of this
PAGE 54
25 Cal. 3d 860, *875; 603 P.2d 454, **464;

160 Cal. Rptr. 352, ***362; 5 Media L. Rep. 2208 FOCUS
interest, the court held that a suit for damages based on respondent's broadcast
of petitioner's "entire act" was not precluded by the First Amendment. (Id., at
pp. 574-575 [53 L.Ed.2d at pp. 975-976 [].) n22
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n22 The court noted that permitting petitioner to maintain an action would
not diminish the dissemination of information, as petitioner only sought
compensation for the broadcast. (Id., at pp. 573-574 [53 L.Ed.2d at pp.
974-975].) In this case, appellant asked the trial court to enjoin exhibition of
respondents' film.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
In the present case, respondents did not surreptitiously film a performance
by Valentino and incorporate that film in a motion picture. They did not
appropriate "an entire act for which the performer ordinarily gets paid,"
thereby undercutting his ability to earn a living. (Id., at p. 574 [53 L.Ed.2d
at p. 975].) Rather, respondents produced a fictional film about the legend of
Valentino. Respondents' conduct was thus much more akin to commenting upon
or
reporting the facts of Zacchini's performance, which the Supreme Court regarded
as entirely permissible. (Id., at pp. 569, 574 [53 L.Ed.2d at p. 975].)
Further, in balancing the interests at stake, the Supreme Court observed that
respondents had not merely made some use of Zacchini's name and likeness, but
had usurped Zacchini's entire act. The court suggested that the latter is
entitled to greater protection. (Id., at p. 573, fn. 10 [53 [*876] L.Ed.2d
at p. 974].) Finally, the Supreme Court recognized each state's authority to
prescribe the contours of its right of publicity. (Id., at pp. 578-579 [53
L.Ed.2d at p. 978].) In this opinion, I do no more than accept the Supreme
Court's invitation to define one boundary of this state's common law right of
publicity.
NEWMAN, J. I concur in the court's opinion. Further, I concur in the
discussion in the Chief Justice's opinion that sets forth principles for
determining whether an action based on the invasion of an individual's right of
publicity may be maintained in the face of a claim that the challenged use is an
exercise of freedom of expression. While the Chief Justice applies those
principles under the facts of this case to a suit by the heir of a prominent
person, it seems clear that the principles similarly would apply to a suit
brought by that person.
DATE: SEPTEMBER 30, 1993
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ANHEUSER-BUSCH, INCORPORATED, Plaintiff-Appellee, v. L&L
WINGS, INCORPORATED, Defendant-Appellant, and VENTURE
MARKETING, INCORPORATED; SUNBURST SCREEN
PRINTING,
Defendants. ANHEUSER-BUSCH, INCORPORATED,
Plaintiff-Appellee, v. VENTURE MARKETING, INCORPORATED,
Defendant-Appellant, and L&L WINGS, INCORPORATED;
SUNBURST
SCREEN PRINTING, Defendants.
No. 91-3039, No. 91-3043
UNITED STATES COURT OF APPEALS FOR THE FOURTH
CIRCUIT
962 F.2d 316; 1992 U.S. App. LEXIS 6621; 22 U.S.P.Q.2D (BNA)
1502; 22 Fed. R. Serv. 3d (Callaghan) 575
December 2, 1991, Argued
April 10, 1992, Decided
PRIOR HISTORY: [**1] Appeals from the United States District Court for
the
District of South Carolina, at Florence. C. Weston Houck, District Judge.
(CA-89-2247-4-2)
DISPOSITION: REVERSED
COUNSEL: ARGUED: Cort Flint, Jr., CORT FLINT, P.A., Greenville, South
Carolina,
for Appellants.
Floyd A. Gibson, BELL, SELTZER, PARK & GIBSON, Charlotte, North
Carolina, for
Appellee.
ON BRIEF: Peter D. Hyman, THE HYMAN LAW FIRM, Florence, South
Carolina, for
Appellant L&L Wings; Robert J. Reeves, COLLINS & LACY, Columbia, South
Carolina,
for Appellant Venture Marketing.
John H. Thomas, William M. Atkinson, BELL, SELTZER, PARK & GIBSON,
Charlotte,
North Carolina; John E. Cuttino, TURNER, PADGET, GRAHAM & LANEY,
Columbia, South
Carolina; Richard W. Renner, ANHEUSER-BUSCH, INCORPORATED, St.
Louis, Missouri,
for Appellee.

JUDGES: Before POWELL, Associate Justice (Retired), United States Supreme
Court,
sitting by designation, and WILKINSON and LUTTIG, Circuit Judges. Judge
Wilkinson wrote the majority opinion, in which Judge Luttig joined. Justice
Powell wrote a dissenting opinion.
OPINIONBY: WILKINSON
OPINION: [*317] OPINION
WILKINSON, Circuit Judge:
In this case, plaintiff Anheuser-Busch sued defendants for selling souvenir
T-shirts that plaintiff claimed infringed [**2] its Budweiser beer
trademarks. The jury returned a verdict in favor of defendants, finding that
defendants' T-shirt design did not create a likelihood of consumer confusion,
PAGE 57
962 F.2d 316, *317; 1992 U.S. App. LEXIS 6621, **2;
22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
but the district judge granted plaintiff's motion for judgment notwithstanding
the verdict. We reverse. The record reveals sufficient differences between the
T-shirt design and plaintiff's trademarks to permit the jury to conclude that
consumer confusion was unlikely. Accordingly, we think the district judge
improperly substituted his judgment as to likelihood of confusion for that of
the jury, and we remand with instructions to reinstate the jury verdict in favor
of defendants.
I.
In 1987, Michael Berard was a student at the University of North Carolina at
Chapel Hill. In order to supplement his income, Berard decided to go into the
business of designing and selling T-shirts. During 1987, Berard devised a
T-shirt design that he planned to sell as a souvenir of Myrtle Beach. That
design depicted a beer can with a red, white and blue label. The words on the
can did not refer to beer, however, but only to Myrtle Beach.
In 1988, Berard incorporated Venture Marketing, Inc., (Venture) in order to
manufacture and [**3] wholesale his T-shirts. Venture marketed the Myrtle
Beach T-shirts through L & L Wings, Inc., (Wings) which operates a number of
retail beach stores at Myrtle Beach, South Carolina and at other beaches. Wings
purchased over 20,000 shirts from Venture. n1
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 Venture subsequently marketed a series of T-shirts that incorporated the
same beer can design as the Myrtle Beach T-shirts, but that substituted the
names of other beaches for Myrtle Beach. Those T-shirts are at issue in this
case as well, but for the sake of simplicity we refer here only to the Myrtle
Beach T-shirt.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -

In 1989 Anheuser-Busch, Inc., brought this trademark infringement action
against
Venture and Wings. Anheuser-Busch alleged that the T-shirt design was
confusingly similar to the Budweiser beer label, a [*318] registered
trademark which Anheuser-Busch had used on its own line of T-shirts and other
apparel. Anheuser-Busch complained that the Myrtle Beach T-shirt infringed its
trademarks because consumers were likely to believe the T-shirt was sold or
sponsored [**4] by Anheuser-Busch. The case was tried before a jury for
three
days, and the jury returned a verdict in favor of the defendants. Anheuser-Busch
filed a motion for j.n.o.v. or, in the alternative, for a new trial. After
briefing and argument, the district judge granted the j.n.o.v. motion, holding
that the evidence before the jury permitted only one reasonable conclusion: that
the T-shirt created a likelihood of confusion and thus infringed
Anheuser-Busch's trademarks. Accordingly, the district court entered judgment
on
the question of liability in favor of Anheuser-Busch, and took the motion for a
new trial under advisement pending appeal. Venture and Wings then brought
this
appeal.
II.
Under the Lanham Act, a registered trademark holder has a right to prevent
another's use of a trademark that is "likely to cause confusion, or to cause
PAGE 58
962 F.2d 316, *318; 1992 U.S. App. LEXIS 6621, **4;
22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
mistake, or to deceive." 15 U.S.C. @ 1114(1)(a). See Shell Oil Co. v.
Commercial
Petroleum, Inc., 928 F.2d 104, 108 (4th Cir. 1991). In other words, an
unauthorized use of a trademark infringes the trademark holder's rights if it is
likely to confuse an "ordinary consumer" as to the source or sponsorship of the
goods. Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 293 (3d
Cir.
1991); [**5] 2 J. McCarthy, Trademarks and Unfair Competition @ 23:28
(1984).
This pivotal trademark issue is particularly amenable to resolution by a jury
for two reasons. First, the jury, which represents a cross-section of consumers,
is well-suited to evaluating whether an "ordinary consumer" would likely be
confused. Second, the likelihood of consumer confusion is an "inherently
factual" issue that depends on the unique facts and circumstances of each case.
Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 n.5 (9th Cir. 1985).
Likelihood of confusion is "frequently a fairly disputed issue of fact on which
reasonable minds may differ," Warner Bros., Inc. v. American Broadcasting
Cos.,
720 F.2d 231, 246 (2d Cir. 1983), and has long been recognized to be "a matter
of varying human reactions to situations incapable of exact appraisement."
Colburn v. Puritan Mills, Inc., 108 F.2d 377, 378 (7th Cir. 1939).
A district judge may overturn a jury verdict on a motion for j.n.o.v. only if
"there is no legally sufficient evidentiary basis for a reasonable jury to have
found for [the prevailing] party." Fed. R. Civ. P. 50(a)(1). [**6] In making

this determination, the judge is not to weigh the evidence or appraise the
credibility of witnesses, but must view the evidence in the light most favorable
to the non-moving party and draw legitimate inferences in its favor. Mays v.
Pioneer Lumber Corp., 502 F.2d 106, 107 (4th Cir. 1974). Our review of the
district court's action is de novo. Here we believe the district judge
improperly assumed the jury's role of determining whether an ordinary consumer
would likely be confused by the T-shirt, and we reverse the court's entry of
j.n.o.v.
The jury was entitled to conclude that consumer confusion was unlikely based
on
a number of conspicuous differences between the T-shirt design and the
Budweiser
label. First, the T-shirt design makes no reference of any sort to
Anheuser-Busch or Budweiser. By contrast, the Budweiser label displays a
number
of prominent indications of the product's source or sponsor: the name
"Budweiser" flanked on either side by the word "genuine"; the geographic
designation "Anheuser-Busch, Inc., St. Louis, Mo."; the letters "AB" for
Anheuser-Busch; and the Anheuser-Busch trademark depicting an eagle in the
middle of the letter "A." [**7] With respect to all of these, the T-shirt
design either omits them entirely or replaces them with references to the beach.
The T-shirt design replaces the Budweiser name with the words "Myrtle Beach";
substitutes the words "Myrtle Beach, S.C." for "Anheuser-Busch, Inc., St. Louis,
Mo."; and replaces the letters "AB" with "SC." In addition, the T-shirt
eliminates the Anheuser-Busch [*319] trademark "A" and omits the word
"genuine."
Second, the T-shirt replaces the Budweiser label's descriptions of the beer with
analogous language descriptive of the beach. The Budweiser label reads as
follows:
This is the famous Budweiser beer. We know of no brand produced by any
other
brewer which costs so much to brew and age. Our exclusive Beechwood Aging
produces a taste, a smoothness, and a drinkability you will find in no other
beer at any price.
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962 F.2d 316, *319; 1992 U.S. App. LEXIS 6621, **7;
22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
On the Venture Marketing T-shirt design, these sentences are replaced with a
description of the beach:
This is the famous beach of Myrtle Beach, S.C. We know of no other resort in
any
state which lays claim to such a rich history. The unspoiled beaches, natural
beauty, and southern hospitality compose a mixture you will find on no other
beach in any [**8] state.
Similarly, the descriptive words at the bottom of the Budweiser label --
announcing that the beer is "Brewed by our original process from the Choicest
Hops, Rice and Best Barley Malt"-- are replaced in the T-shirt design with

words
proclaiming that "Myrtle Beach contains the Choicest Surf, Sun, and Sand."
Third, the T-shirt design incorporates its own beach slogans in place of the
Budweiser beer slogans. The Budweiser label includes the slogan "King of
Beers"
under the Budweiser name. On the T-shirt, this is replaced with the words "King
of Beaches." In addition, the T-shirt mimics another Budweiser slogan, "This
Bud's for You," with its own slogan, "This Beach is for You."
Together, we think these differences are sufficient at least to create a
reasonable jury question on the issue of likelihood of confusion. The jury had
the opportunity to visually examine the T-shirt and to compare it with the
Anheuser-Busch trademarks. We cannot say that the jury's conclusion was the
only
one it could have reached, but neither are we able to say that its verdict was
unreasonable. In this regard, our dissenting brother faithfully presents
Anheuser-Busch's side of the jury argument. [**9] To believe that the jury
should have heard this argument is not to say that the jury was required to
accept it.
III.
Anheuser-Busch suggests two reasons why we should disregard the jury verdict
in
this case. First, it contends that a judgment in its favor was compelled because
the T-shirt incorporated a beer label design that intentionally imitated the
non-verbal portion of the Budweiser label. At trial, Michael Berard admitted
that he had patterned the T-shirt's beer label after the basic Budweiser format,
and it is undisputed that he was successful in that endeavor. In
Anheuser-Busch's view, this similarity of format by itself infringes its
registered trademark in the Budweiser beer label design.
We disagree. Anheuser-Busch would have us isolate the non-verbal portion of
the
T-shirt design, while ignoring the substantial verbal differences that set it
apart from the Budweiser label. Under the Lanham Act, however, a holder of a
registered trademark is entitled to protection only from uses of the mark that
create a likelihood of consumer confusion. 15 U.S.C. @ 1114(1)(a). The
statutory
standard for infringement does not depend on how closely a fragment of a given
use duplicates [**10] the trademark, but on whether the use in its entirety
creates a likelihood of confusion. In making that determination, we must
examine
the allegedly infringing use in the context in which it is seen by the ordinary
consumer; we must look not only at the portion of the T-shirt that duplicates
the Budweiser label design, but at the T-shirt as a whole as sold in the
marketplace. See Homeowners Group, Inc. v. Home Marketing Specialists, Inc.,
931
F.2d 1100, 1109 (6th Cir. 1991); Franklin Mint Corp. v. Master Mfg. Co., 667
PAGE 60
962 F.2d 316, *319; 1992 U.S. App. LEXIS 6621, **10;
22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575

F.2d 1005, 1007 (C.C.P.A. 1981). The jury examined the T-shirt as a whole and
reasonably concluded that consumer confusion was unlikely.
[*320] Second, Anheuser-Busch argues that the jury verdict must be
overturned
because there was insufficient evidence to support it under the factors
announced in Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.
1984).
In that case, this court identified seven factors that have been considered in
determining whether there is a likelihood of confusion: the strength of the
plaintiff's mark, the degree of similarity between the two marks, the similarity
of the goods they [**11] identify, the similarity of the facilities used in
the businesses, the similarity of the advertising, the defendant's intent, and
the presence of actual confusion. Id. The district judge evaluated the evidence
presented to the jury under these seven factors, and found that although there
was no evidence of actual confusion, other factors favored the plaintiff:
plaintiff's trademarks were unquestionably strong, the T-shirt design was
similar to the Budweiser label, the goods the marks identify were identical, and
the facilities and advertising used by the parties were similar.
We believe, however, that the district judge misconstrued the nature of the
Pizzeria Uno factors in overturning the jury's verdict. The "factors" announced
in Pizzeria Uno are not meant to be a "rigid formula" for infringement. Murphy
v. Provident Mut. Life Ins. Co., 923 F.2d 923, 928 (2d Cir. 1990). See also Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir.
1986). Rather, the Pizzeria Uno factors are only a guide-- a catalog of various
considerations that may be relevant in determining the ultimate statutory
question of likelihood [**12] of confusion. As this circuit recognized in
Pizzeria Uno, not all of the factors are of equal importance, nor are they
always relevant in any given case. 747 F.2d at 1527.
In this case, we think the jury was entitled to give decisive weight to the
predominant differences between the T-shirt design and the Budweiser label.
Where there is no evidence of actual confusion and a jury reasonably concludes
that there is no likelihood of confusion because of the differences between the
marks, consideration of the remaining Pizzeria Uno factors is unnecessary. We
recognize, of course, that the likelihood of consumer confusion may be affected
not only by the intrinsic similarity of two trademarks, but also by certain
extrinsic factors such as the strength of the plaintiff's mark and the
similarity of the products, sales outlets, and advertising. At the same time,
however, these extrinsic factors are insufficient by themselves to establish
likelihood of confusion absent some threshold of intrinsic similarity between
the plaintiff's trademark and the defendant's alleged infringement. Sun-Fun
Products, Inc. v. Suntan Research & Development, Inc., 656 F.2d 186, 189 (5th
Cir. 1981). [**13] The Lanham Act was obviously not intended to create a
barrier to competition by preventing the use of distinguishable trademarks to
market similar goods through identical channels. See Anti-Monopoly, Inc. v.
General Mills Fun Group, 611 F.2d 296, 300-01 (9th Cir. 1979) (trademarks are
designed to protect consumers from being misled, not to "further or perpetuate
product monopolies"). Indeed, the marketing of commodities would be impaired
if
these external factors were assigned controlling weight in cases where the
subject trademarks are readily distinguishable. In this case, the extrinsic
factors-- including the fact that the T-shirt competed with Anheuser-Busch's own
product line -- were appropriate for the jury to consider. We think, however,

that there were sufficient intrinsic differences between the T-shirt and the
Anheuser-Busch trademarks to permit a reasonable jury to find that consumer
PAGE 61
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22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
confusion was unlikely irrespective of the evidence under those extrinsic
considerations.
In short, the most important factor in this particular case was whether
plaintiff's mark and defendant's T-shirt design looked alike in the eyes of the
ordinary consumer. We think [**14] the jury was uniquely positioned to make
the critical determination in that regard.
IV.
At trial, Michael Berard testified that his intent in creating the T-shirt
design was to parody the Budweiser beer label. [*321] The crux of his
defense was that the T-shirt -- as parody -- was especially unlikely to create
confusion in the minds of ordinary consumers. We think that a reasonable jury
could find that the T-shirt was readily recognizable as parody, and that such a
finding provides additional support for the jury's verdict.
Anheuser-Busch, however, insists that appellants' T-shirt design has no element
of parody because its purpose was to make money and not to make any
commentary
about Budweiser beer. We disagree. The T-shirt design fits a conventional
definition of trademark parody -- it is "a simple form of entertainment conveyed
by juxtaposing the irreverent representation of the trademark with the idealized
image created by the mark's owner." L.L. Bean, Inc. v. Drake Publishers, Inc.,
811 F.2d 26, 34 (1st Cir. 1987). The T-shirt design mimics the characteristic
turns of phrase on the Budweiser label by applying them to the beach: the
"taste," "smoothness," and [**15] "drinkability" found "in no other beer at
any price" become the"unspoiled beaches, natural beauty, and southern
hospitality" composing a "mixture you will find on no other beach in any state";
the beer's ingredients -- the "Choicest Hops, Rice and Best Barley Malt" -- are
imitated by the "Choicest Surf, Sun, and Sand"; "King of Beers" is changed to
"King of Beaches"; and "This Bud's For You" is mimicked by "This Beach is
For
You." Berard testified that this "irreverent representation" was calculated to
parody or satirize the Budweiser label, and we think the jury was entitled to
agree that it had that effect. n2
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n2 Some courts have held that trademark parody is entitled to First
Amendment
protection. See Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Group, Inc.,
886 F.2d 490, 493 (2d Cir. 1989); L.L. Bean, 811 F.2d at 33-34. Given our
decision to reinstate the jury verdict under the statutory standard, however, we
have no occasion to reach defendants' contention that the First Amendment
provides an independent basis for ruling in their favor.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -

[**16]
The district court unfortunately ignored the issue of parody in evaluating the
sufficiency of the evidence to support the jury's verdict. In so doing, the
judge failed to recognize that the multi-factored inquiry under Pizzeria Uno "is
at best awkward in the context of parody." Cliffs Notes, 886 F.2d at 495 n.3.
Outside the context of parody, for example, intentional similarities between
trademarks may lead to a presumption of a likelihood of confusion. Osem Food
Industries Ltd. v. Sherwood Foods, Inc., 917 F.2d 161, 164-65 (4th Cir. 1990).
In cases of parody, however, courts have concluded that intentional similarity
PAGE 62
962 F.2d 316, *321; 1992 U.S. App. LEXIS 6621, **16;
22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
is unavoidable: "The keystone of parody is imitation. It is hard to imagine, for
example, a successful parody of Time magazine that did not reproduce Time's
trademarked red border." Cliffs Notes, 886 F.2d at 494. See also Jordache
Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1485 (10th Cir. 1987).
Courts have further recognized that although parody necessarily evokes the
original trademark, effective parody also diminishes any risk of consumer
confusion. See Jordache, 828 F.2d at 1486; [**17] Universal City Studios,
Inc. v. Nintendo Co., 746 F.2d 112, 116 (2d Cir. 1984). Successful trademark
takeoffs dispel consumer confusion by conveying just enough of the original
design to allow the consumer to appreciate the point of the parody. Cliffs
Notes, 886 F.2d at 494. Here the T-shirt necessarily adopts the basic format of
the Budweiser label, but we think the similarities merely convey the message
that the T-shirt is a parody of the original, and are not indicative of consumer
confusion. The substantial differences detailed above would at least permit a
jury to conclude that the T-shirt design was nothing more than a commentary on
the pleasures of beach life that effectively parodied the Budweiser label but
could hardly be confused with it.
Anheuser-Busch would also have us give substantial weight to defendants' intent
to draw on the "commercial magnetism" of the Budweiser label. It is true that
appellants' primary motive in creating the T-shirt design was to make a profit,
but the relevant intent in trademark cases is not merely an intent to profit,
which would condemn all commercial parody, but an "intent to confuse the
buying
public." [**18] Pizzeria [*322] Uno, 747 F.2d at 1535. Ordinarily, an
intent to profit from the original is the same thing as an intent to confuse --
the infringer benefits only if consumers confuse his trademark with the
original. But that equation does not hold in the context of parody. An alleged
infringer may intend to benefit from the original trademark without ever
intending or causing consumer confusion:
In one sense, a parody is an attempt "to derive benefit from the reputation" of
the owner of the mark, if only because no parody could be made without the
initial mark. The benefit to the one making the parody, however, arises from the
humorous association, not from public confusion as to the source of the marks.
A
parody relies upon a difference from the original mark, presumably a humorous
difference, in order to produce its desired effect.
Jordache, 828 F.2d at 1486, quoting Sicilia Di R. Biebow & Co. v. Cox, 732

F.2d
417, 431 (5th Cir. 1984).
An intent to parody, then, is an intent to benefit from the original trademark,
but such an intent is not necessarily probative of a likelihood of consumer
confusion. We cannot assume that [**19] the commercial success of the
Myrtle
Beach T-shirt resulted from consumer confusion; consumers may have been
moved to
buy the T-shirt by the simple fact that they were amused by the cleverness of
its design.
Throughout this litigation, Anheuser-Busch has invited the court to place
dispositive weight upon factors which are at best proxies for the ultimate
statutory standard -- whether the T-shirt is "likely to cause confusion." 15
U.S.C. @ 1114(1)(a). Similarity of format and intent to profit, however, are not
precise equivalents of the dispositive statutory language. The jury was entitled
to find that the statutory standard did not condemn appellants' humorous
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22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
takeoff on the Budweiser label. The purpose of the Lanham Act is to eliminate
consumer confusion, not to banish all attempts at poking fun or eliciting
amusement. Elsmere Music, Inc. v. National Broadcasting Co., 623 F.2d 252,
253
(2d Cir. 1980). The statute is designed to protect consumers from product
misinformation, not to deprive the commercial world of all humor and levity. In
this case, the ordinary consumers who served as jurors reason ably concluded
that the T-shirt eliminated any risk of confusion, [**20] and we refuse to
interfere with that verdict.
V.
Our dissenting brother's standard is so broad that it would banish virtually all
attempts at humorous takeoffs on trademarks as a matter of law. The dissent
would establish a zone of immunity for any trademark that could lay claim to
strength and familiarity -- the very marks for which parody is most likely. Its
view is that almost any imitation of design, no matter how humorous or distinct
the accompanying lyrics or verbiage, will run afoul of the Lanham Act. We
think
the evident tensions in the trademark field between commercial piracy and
discouragement of competition, as well as between permissible parody and
impermissible imitation, are often best resolved by a jury on a case-by-case
basis. The balance established by the Lanham Act risks serious disturbance
when
courts too readily assume the roles of ordinary consumers and interpose
sweeping
pronouncements of law.
In sum, this was a jury verdict that should have been sustained. We thus reverse
the district court's entry of j.n.o.v. and instruct it to reinstate the jury
verdict. n3

- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n3 The district court held under advisement appellee's motion for a new
trial, and in so doing contravened the express mandate of Rule 50 of the Federal
Rules of Civil Procedure. When alternative motions for j.n.o.v. and for a new
trial are made, Rule 50(c)(1) requires that the district court rule on both of
them. The policy behind this directive is clear: "If the court grants judgment
notwithstanding the verdict and fails to act on the alternative motion for a new
trial, litigation will be needlessly protracted should the appellate court find
that the grant of judgment was erroneous." 9 C. Wright & A. Miller, Federal
Practice and Procedure @ 2539, at 610 (1971). In order to avoid such protracted
litigation, this circuit has permitted the appellate dismissal of new trial
motions in cases where the district judge failed to comply with the Rule 50(c)
requirement to rule on the motion. Mays v. Pioneer Lumber Corp., 502 F.2d
106,
110 (4th Cir. 1974). In Mays, this court reversed the district court's entry of
j.n.o.v. and instructed the district court to reinstate the jury verdict based
on its conclusion that "no useful purpose would be served by remanding." Id.
We think the course prescribed in Mays is appropriate here. We see no purpose
in
remanding where our grounds for reinstating the jury verdict necessarily
comprehend the essence of appellee's new trial motion. The evident thrust of
both parties' arguments is that either judgment is warranted for Anheuser-Busch
as a matter of law, or that the jury verdict should be upheld. For the reasons
noted above, the verdict of the jury was not contrary to the clear weight of the
evidence and the instructions under which the case was submitted were in their
totality unexceptionable. The trial ran for three days, and both parties had
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22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
every opportunity to place their case before the factfinder. A new trial here
would therefore not be warranted, and the case against defendants must be
dismissed.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**21]
REVERSED
APPENDIX
T-Shirt Design
(A photograph of the T-shirt will be included with these opinions in the Federal
Reporter.)
DISSENTBY: POWELL
DISSENT: POWELL, Associate Justice, dissenting:
The issue presented in this case is whether defendants' T-shirts infringe
federally registered trademarks owned by Anheuser-Busch. A jury found no
infringement. But the district court, finding insufficient evidence to support

the jury's decision, entered judgment notwithstanding the verdict. The court
today reverses, reinstating the jury verdict.
[*325] The court rests its decision on three related grounds: (i) the jury's
finding of no likelihood of confusion is supported by differences between
defendants' T-shirt design and the Budweiser label; (ii) defendants' T-shirt
design withstands scrutiny under Pizzeria Uno Corp. v. Temple, 747 F.2d 1522
(4th Cir. 1984); and (iii) defendants' parody defense also supports the verdict.
I disagree with this assessment of the evidence and in certain respects with the
characterization of the law that precedes it. n1
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 I doubt that the likelihood-of-confusion determination is any more
"amenable to resolution by a jury," as the court suggests, than other questions
of fact. It may be less so. Some courts of appeals have concluded that this
determination is a legal one. See Cliffs Notes, Inc. v. Bantam Doubleday Dell
Pub. Group, Inc., 886 F.2d 490, 495 (2d Cir. 1989); Wynn Oil Co. v. Thomas,
839
F.2d 1183, 1186 (6th Cir. 1988). Although this circuit has said that the
question is factual, see Duron Co. v. Duron Paint Mfg Co., 320 F.2d 882, 884
(4th Cir. 1963), there is no reason to conclude that the jury's resolution
deserves special deference.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**22]
I
Few can disclaim familiarity with the Budweiser label design. n2 It has been
used by Anheuser-Busch as a trademark on beer cans since 1876 and on
clothing
since 1967. It has been the subject of extensive advertising. And it has been
used to market several thousand prod cts, including T-shirts sold in seaside
stores. In short, it is, as the district court observed, "one of the strongest
PAGE 65
962 F.2d 316, *325; 1992 U.S. App. LEXIS 6621, **22;
22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
marks in this country, indeed in the world."
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n2 At issue primarily is defendants' use of the non-verbal Budweiser label
design, a separately registered trademark. Other protected marks also adorn
Anheuser-Busch products, such as the trade name itself, "Budweiser," which
defendants have not appropriated, and a variety of slogans (i.e., "This Bud's
For You," "The King of Beers"), which defendants allegedly also have
appropriated. My focus is on defendants' infringement of the label design.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Not surprisingly, defendants concede that the strength of the trademark, the
"paramount" consideration in the seven-factor analysis, Pizzeria Uno, 747 F.2d
at 1527, [**23] favors Anheuser-Busch. Defendants further admit that three

other factors support Anheuser-Busch's claim: (a) the similarity of the parties'
goods (T-shirts), n3 (b) the similarity of the outlets where such goods are sold
(beach-front stores), and (c) the similarity of the parties' advertising.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n3 This concession also is significant. The similarity of products suggests
not only that Anheuser-Busch may lose revenue for each sale by defendants but
also, and perhaps more importantly, that a likelihood of confusion is apt to
follow. Cf. Yale Electric Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir. 1928)
("unless the borrower's use is so foreign to the owner's as to insure against
any identification of the two, it is unlawful").
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
That leaves a trio of considerations to support the jury verdict in favor of
defendants--actual confusion, defendants' intent, and design similarities. I
will consider each in turn.
Agreeing with the district court, the court in this case finds no proof of
actual confusion between [**24] the Budweiser label design and defendants'
T-shirt. That is a mistaken view. Anheuser-Busch did present evidence of actual
confusion. Michael Kroshinsky, one of defendant Wings' wholesale purchasers,
testified that his initial reaction to the T-shirt was that it "was a copy of a
Budweiser shirt." Such proof is "substantial evidence" of likely confusion, Amp
Inc. v. Foy, 540 F.2d 1181, 1186 (4th Cir. 1976), particularly when it is a
professional buyer who has been confused. This consideration thus also helps
Anheuser-Busch. n4
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n4 The argument that Mr. Kroshinsky's testimony is not indicative of actual
confusion is unpersuasive. Moreover, this argument does not present an obstacle
to Anheuser-Busch's claim. The Lanham Act affords protection if confusion is
"likely." Trademark owners may invoke the statute--and prevail under it--without
establishing actual confusion. Shell Oil Co. v. Commercial Petroleum, Inc., 928
F.2d 104, 108 (4th Cir. 1991).
PAGE 66
962 F.2d 316, *325; 1992 U.S. App. LEXIS 6621, **24;
22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
There also was evidence of intentional [**25] copying. Michael Berard, the
founder of Venture Marketing and the designer of defendants' T-shirt, admitted
that he intended to copy the Budweiser label design. This evidence creates a
presumption of likelihood of confusion. Osem Food Indus., Ltd. v. Sherwood
Foods, Inc., 917 F.2d 161, 165 (4th Cir. 1990). The court does not discuss
[*326] this factor in its application of Pizzeria Uno. Instead, in Part IV of
the opinion, it suggests that an exception to the presumption should apply when
a defendant asserts that he intended to parody a particular trademark. I am not
persuaded that such an exception is applicable here. It is true that parody
requires a degree of imitation. But the burden of disproving infringement should

est on one who intentionally uses another's trademark-even as parody. If the
parody is strong, the burden will be light. If it is not, then a heavy burden is
appropriate since the junior user is likely to benefit from its continuing
affiliation with the "drawing power," Mishawaka Rubber & Woolen Mfg. Co. v.
S.S.
Kresge Co., 316 U.S. 203, 205, 86 L. Ed. 1381, 62 S. Ct. 1022 (1942), of the
senior user's mark. In short, I would not jettison this presumption in the
[**26] parody context, and would find that this consideration favors
Anheuser-Busch.
II
The court today relies, as it must, on the final factor--the similarity between
the senior user's mark and the junior user's design. It gives "decisive weight"
to the "predominant differences" between the T-shirt design and
Anheuser-Busch's
mark. In emphasizing this consideration, the court extends precedent and ignores
the facts of this case.
A
To be sure, the court is correct in the abstract: that is, design differences
can be determinative. "Some threshold of intrinsic similarity" between marks is
required before the "extrinsic" factors come into play. But I know of no
precedent that allows conclusive weight to be given to this factor when a party
has borrowed a distinctive mark, without making any discernible changes to it,
and placed that mark on identical products marketed through identical
commercial
channels.
B
Even if as a legal matter the Pizzeria Uno analysis could be configured in such
a manner, the evidentiary foundation for such an analysis is lacking here. n5 In
the court's view, what sustains the imitation are the words added to the
Budweiser design. These words dispel [**27] confusion, the court maintains,
in two ways: (i) the words are different from the language ordinarily appearing
on a Budweiser beer can (i.e., "Myrtle Beach" is substituted for "Budweiser")
and (ii) the words parody the Budweiser slogans and beer can (i.e., "This Beach
Is For You" is substituted for "This Bud Is For You"). Neither argument is
persuasive.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
PAGE 67
962 F.2d 316, *326; 1992 U.S. App. LEXIS 6621, **27;
22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
n5 Notably, Venture Marketing, the defendant responsible for producing the
T-shirt design, conceded that this factor favored Anheuser-Busch during oral
argument on the motion for judgment notwithstanding the verdict.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
1

The court begins its "different words" analysis by emphasizing that defendants'
T-shirt design makes "no reference of any sort to Anheuser-Busch or
Budweiser."
That by itself is of no importance. It is enough that the T-shirt adopts the
Budweiser label design. This symbol needs no verbal cue to call Budweiser to
mind. The symbol characterizes the name as much as the name does the symbol.
It
also is a separately registered trademark. For that reason, [**28] T-shirts
bearing the non-verbal Budweiser label design, and nothing more, would
infringe
Anheuser-Busch's trademark.
True, defendants did not simply refrain from mentioning Budweiser or
Anheuser-Busch by name; they also added language descriptive of the beach.
Putting aside consideration of this language as a matter of parody, I suggest
that the added words still fail to eliminate the connection to Anheuser-Busch
that follows from use of the Budweiser label. First, the subject matter of the
substituted words is not foreign to Anheuser-Busch, Budweiser, or even to
[*327] beer. To the contrary, the "beach" is a familiar theme in Budweiser
advertisements. Second, the substituted words do not rid the T-shirt of a
Budweiser connection. Neither "Myrtle Beach," which is a location not a
company
name, nor any of the other words establishes that a corporation other than
Anheuser-Busch sponsors the T-shirt. Anheuser-Busch in fact has used its label
frequently to endorse non-beer items. n6 Nor does the fine-print reference to
"Venture Marketing, Inc." tend to eliminate confusion. Anheuser-Busch requires
its licensees' names to appear on their products.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n6 For example, Anheuser-Busch has produced a T-shirt bearing the
Budweiser
label, the words "Trap Skeet," and a drawing of shotgun shells and skeet. It has
also used the label in promotions affiliated with various geographical sites.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**29]
2
That brings me to the question of parody. n7 Parody is not an affirmative
defense to an infringement claim.
Rather, it is merely a way of phrasing the argument that confusion is unlikely.
Because the purpose of trademark law is to protect the public from confusion, it
would make no sense to say that a "parody" which is likely to confuse is
permitted merely because it is a "parody."
2 McCarthy, Trademarks and Unfair Competition, @ 31:38, at 671 (2d ed.
1984). In
this instance, the "parody" does little to prevent consumer confusion as to the
sponsor of defendants' T-shirt. It does not ridicule Budweiser or offer social
commentary on the evils of alcohol. n8
PAGE 68
962 F.2d 316, *327; 1992 U.S. App. LEXIS 6621, **29;

22 U.S.P.Q.2D (BNA) 1502; 22 Fed. R. Serv. 3d (Callaghan) 575
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n7 Parody is (i) "[a] literary or artistic work that broadly mimics an
author's characteristic style and holds it up to ridicule" and (ii) "[a]
performance so bad as to be equivalent to intentional mockery." The American
Heritage Dictionary of the English Language, at 954 (1976).
n8 Only parody in this "editorial or artistic" sense serves sufficiently
strong First Amendment values to override government interests in trademark
protection. See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 32-33
(1st Cir. 1987). Such would be the case, for instance, if Mothers Against Drunk
Driving marketed T-shirts bearing a caricature of the Budweiser trademark.
(In that context, incidentally, consumers would purchase the T-shirts
precisely because they were not affiliated with Anheuser-Busch. That is not true
here.) I would conclude that defendants' commercial speech, whose avowed aim
was
to convey "how great Myrtle Beach is," is not protected by the First Amendment
from enforcement of the Lanham Act.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**30]
Nor could it be deemed "so obvious and heavy handed that a clear distinction
was
preserved in the viewer's mind between the source of the actual product and the
source of the parody." Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905,
910
(D. Neb. 1986), aff'd, 836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933,
102 L. Ed. 2d 344, 109 S. Ct. 326 (1988).
All that it does is play on the words of the Budweiser label, adopting a theme
(the beach) and a method (humor) that is fully consistent with Anheuser-Busch's
marketing efforts. See Cliffs Notes, 886 F.2d at 494 (requiring two marks to
send "contradictory" "messages"). Moreover, since the attempted parody does
not
dissociate defendants' T-shirt from Anheuser-Busch's products, consumers will
be
just as likely to buy the T-shirt because of its continuing affiliation with
Anheuser-Busch as because of its humor. That danger is particularly acute here
since Anheuser-Busch and defendants compete in the same market. The parody
here
thus amounts to nothing more than a "merchandising short-cut," S.S. Kresge
Co.,
316 U.S. at 205. I conclude that the parody defense falls [**31] far short of
supporting the verdict.
* * * * *
I agree with the district court that defendants' use of the Budweiser label
design in the manner depicted in the Appendix establishes infringement as a
matter of law.

I respectfully dissent.
PAGE 69
2ND CASE of Level 1 printed in FULL format.
Rod Gano, as Guardian Ad Litem for Rod Gano, a minor,
Plaintiff, v. School District No. 411, Twin Falls County,
State of Idaho; Board of Trustees for School District No.
411; Carl Snow, Superintendent of School District No. 411;
Frank Charlton, Principal of Twin Falls High School for
School District No. 411; Norman Thomas, Vice Principal of
Twin Falls High School for School District No. 411; and
Richard Baun, Dean of Men of Twin Falls High School for
School District No. 411, Defendants
Civil No. 87-1306
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF
IDAHO
674 F. Supp. 796; 1987 U.S. Dist. LEXIS 11324
COUNSEL: [**1]
November 5, 1987, Decided
William R. Hollifield, Fred D. Decker, Dan C. Grober, Decker and Hollifield,
P.A., for Plaintiff.
Edward L. Benoit, Fritz A. Wonderlich, Benoit, Alexander, Sinclair, Harwood
&
High, for Defendant.
OPINIONBY: CALLISTER
OPINION: [*797] MEMORANDUM DECISION
The Court has before it the plaintiff's motion for preliminary injunction.
The Court held an evidentiary hearing on October 30, 1987, and ruled from the
bench that the motion would be denied. This memorandum decision will
constitute
the Court's written findings pursuant to Fed.R.Civ.P. 52(a).
The plaintiff, Rod Gano, a Twin Falls High School student, was requested by
members of the senior class to draw a caricature of three administrators: (1)
Twin Falls High School Principal Frank Charlton; (2) Vice-Principal Norman
Thomas; and (3) Dean of Men Richard Baun. The plaintiff drew the caricature
and it was transferred to T-shirts to be sold to other students during
homecoming week.
One of those T-shirts was made a part of the record in this case. It shows
the three administrators sitting against a fence labeled "Bruin Stadium, Home of
the Bruins." Each administrator is holding a different alcoholic beverage and is
acting drunk. While one administrator holds aloft [**2] a beer mug, another
holds a wine cooler, while the third grasps a bottle of whiskey. A case of

"light beer" sits nearby. A phrase, "It doesn't get any better than this," not
coincidentally lifted from a television beer commercial, appears just below the
caricature.
When the administrators discovered the T-shirts, and the plan to sell them
to the students, they suspended the plaintiff. The suspension lasted two days,
October 5 and 6, 1987, and the plaintiff returned to school on October 7,
PAGE 70
674 F. Supp. 796, *797; 1987 U.S. Dist. LEXIS 11324, **2
1987. The unrebutted affidavits of the administrators establish that this
disciplinary action has been removed from the plaintiff's file. For attendance
purposes, the plaintiff was not cited for being absent on October 5 and 6, 1987.
He is noted as being absent during second period on October 8, 1987. On that
date he wore the T-shirt to school, and was told to go home and change shirts
during second period. He wore the T-shirt again on October 15, 1987, and was
sent home to change it. Although he was free to return to school Without the
T-shirt, he failed to return on October 16, 1987, and is listed as being absent
on that date. If the plaintiff continues to wear the T-shirt, he will be sent
home [**3] to change it. For the purposes of this case, there are no other
absences or disciplinary actions at issue.
On October 16, 1987, the plaintiff filed this action along with a motion for
preliminary injunction. The motion seeks to enjoin defendants "from suspending
or interfering with the plaintiff's attendance at Twin Falls High School for
wearing a T-shirt with the caricature on it until such time as those matters
alleged by way of the verified complaint filed herein have been litigated or
otherwise resolved."
The standard for obtaining a preliminary injunction in the Ninth Circuit was
set forth in City of Tenakee Springs v. [*798] Block, 778 F.2d 1402 (9th
Cir. 1985). There are two alternate tests, one of which must be met in order to
grant a preliminary injunction. The first test requires that the Court find (1)
the moving party will suffer irreparable injury if the injunctive relief is not
granted; (2) there is a substantial likelihood that the moving party will
succeed on the merits; (3) in balancing the equities the nonmoving party will
not be harmed more than the moving party is helped; and (4) granting injunctive
relief is in the public interest.
The second test requires the moving [**4] party to demonstrate either (1)
a combination of probable success on the merits and the possibility of
irreparable harm; or (2) that serious questions are raised and the balance of
hardship tips sharply in his favor. These two tests are not separate; they are
the outer reaches of a single continuum. Id. at 1407.
The Court will employ the second test, and will examine first the plaintiff's
chance for success on the merits. The plaintiff argues that his First Amendment
freedom of speech right will be abridged if he is disciplined for wearing the
T-shirt. Unfortunately, neither the plaintiff, nor plaintiff's counsel, was able
to articulate the expression which was in danger of suppression. Did the T-shirt
represent a political protest? Was it a criticism of administration policies?
Testimony and argument from the plaintiff, his counsel, and other witnesses
indicated that the T-shirts were not intended to criticize or be disrespectful
to the administrators. What message is conveyed by the T-shirts?

The T-shirt portrays the three administrators with alcohoiic beverages on
school property during a homecoming activity. It is a misdemeanor to consume
alcoholic beverages on school property [**5] at any school activity. See
Idaho Code @ 23-612. There is no evidence in the record that the three
administrators have ever so imbibed. The plaintiff's T-shirt thus falsely
accuses the three administrators of committing a misdemeanor. For this
expression, the plaintiff demands protection. Is he so entitled? The United
States Supreme Court has stated that students cannot be disciplined for wearing
black armbands to protest the Vietnam War, but can be disciplined for making
sexually explicit speeches at school assemblies. Compare Tinker v. Des Moines
PAGE 71
674 F. Supp. 796, *798; 1987 U.S. Dist. LEXIS 11324, **5
Community School Dist., 393 U.S. 503, 21 L. Ed. 2d 731, 89 S. Ct. 733 (1969)
with Bethel School Dist. No. 4.03 v. Fraser, 478 U.S. 675, 92 L. Ed. 2d 549,
106
S. Ct. 3159 (1986). To understand these cases, one must first understand that
discipline and debate are equally effective teaching tools. A robust exchange of
ideas can only occur effectively within a civilized context. The school is
actively engaged in teaching when it sets the bounds for proper conduct. As the
United States Supreme Court stated in the Bethel case:
The process of educating our youth for citizenship in public schools is not
confined to books, the curriculum, and the civics class; school must teach
[**6] by example the shared values of a civilized social order. Consciously or
otherwise, teachers--and indeed the older students--demonstrate the appropriate
form of civil discourse and political expression by their conduct and deportment
in and out of class. Inescapably, like parents, they are role models. The
schools, as instruments of the state, may determine that the essential lessons
of civil, mature conduct cannot be conveyed in a school that tolerates lewd,
indecent, or offensive speech and conduct such as that indulged in [here].
In the present case, the school has determined that the T-shirt--which is
clearly offensive--cannot be tolerated. In this state, schools are statutorily
charged with teaching about the "effects of alcohol." See Idaho Code @
33-1605.
When the school disciplines the plaintiff for wearing a T-shirt falsely
depicting the administrators in an alcoholic stupor, it is engaged in its
statutory duty. It is teaching the students that falsely accusing one of being
drunk is not acceptable. The administrators are role models, as stated by the
United States Supreme Court, and their position would be severely compromised
if
this T-shirt was circulated among the students. [**7] [*799] This case
appears to clearly fall within the Bethel precedent, and thus the Court finds
that the plaintiff has only a minuscule chance of success on the merits.
With regard to the balance of harm, the plaintiff would be effectively
prevented from falsely accusing the administrators of being drunks. The Court
cannot find that the plaintiff suffers much harm by being so prevented. When
this case is examined in its entirety, the plaintiff has so little success on
the merits and would suffer so little harm that the Court finds that a
preliminary injunction is not warranted. The Court will therefore deny the
motion for preliminary injunction.
DATED this 5th day of November, 1987.

MARION J. CALLISTER, CHIEF JUDGE, UNITED STATES DISTRICT
COURT.
ORDER
The Court has examined the entire record concerning the motion for
preliminary injunction filed by the plaintiff. In accordance with the views
expressed in the memorandum decision accompanying this order,
NOW, THEREFORE, IT IS HEREBY ORDERED that the motion for
preliminary
injunction be, and the same is hereby, DENIED.
PAGE 72
3RD CASE of Level 1 printed in FULL format.
UNIVERSAL CITY STUDIOS, INC. and MERCHANDISING
CORPORATION
OF AMERICA, INC., Plaintiffs, against THE T-SHIRT GALLERY,
LTD., RA PRODUCTIONS and BOB EDELSON, Defendants
No. 85 Civ. 7126 (JES)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN
DISTRICT OF
NEW YORK
634 F. Supp. 1468; Copy. L. Rep. (CCH) P25,969; 230 U.S.P.Q.
(BNA) 23
May 19, 1986
COUNSEL: EVAN L. GORDON, ESQ., Attorney for Plaintiffs, 230 Park
Avenue, New
York, New York 10169
KAZLOW & KAZLOW, Attorneys for Defendants, 19 W. 34 Street - Suite
1101, New
York, New York 10001
AMOS WEINBERG, ESQ., Of Counsel
OPINIONBY: SPRIZZO
OPINION:
[*1472] OPINION AND ORDER
SPRIZZO, D.J.:
Plaintiffs, the producer and licensing agent of the "Miami Vice" television
series, seek a preliminary injunction enjoining defendants from selling "Miami
Mice" t-shirts. n1 Plaintiffs seek relief primarily on the grounds that the
defendants have violated New York's unfair competition law relating to
misappropriation. Alternatively, plaintiffs argue that the defendants have

violated section 43(a) of the Lanham Act, 15 U.S.C. @ 1125(a)(1982).
n1 Plaintiffs also seek a permanent injunction against defendants and damages
for all profits earned by defendants from their sale of "Miami Mice" t-shirts.
See Complaint at pp. 5-6. The sole issue addressed in this Opinion and Order is
whether the preliminary injunction should be granted.
The Court has received briefs from both parties and has held an evidentiary
hearing. At the hearing, the Court viewed excerpts from the "Miami Vice"
television series, heard testimony from several witnesses, and accepted into
evidence various exhibits relating to both the t-shirts and the television
series. After considering all the evidence and arguments of counsel in this
action, the Court concludes that plaintiff's application for a preliminary
injunction must be denied for the reasons set forth infra.
FACTS
Plaintiff Universal City Studios Inc. ("Universal") is the producer of the
television series "Miami Vice." Universal holds a copyright on the series and
has also applied for a trademark registration for the logo "Miami Vice." See
PAGE 73
634 F. Supp. 1468, *1472; Copy. L. Rep. (CCH) P25,969;
230 U.S.P.Q. (BNA) 23
Transcript of Hearing ("Tr.") at 20-21; Pl. Ex. 25 & 26. This logo is displayed
at the beginning of every "Miami Vice" show and is printed in stylized block
letters with the word "Miami" above the word "Vice."
Plaintiff Merchandising Corporation of America, Inc. ("Merchandising") is the
exclusive merchandising arm of Universal and grants licenses to manufacturers
and distributors, authorizing them to produce various products relating to the
"Miami Vice" television series. See Tr. at 20. Approximately fifteen such
merchandising licenses have already been issued for "Miami Vice" products.
These
licenses cover a variety of products, including t-shirts. See id. at 21-22. n2
n2 At the evidentiary hearing, neither party introduced any evidence as to
what these various products looked like.
It is undisputed that "Miami Vice" is one of the most popular shows on
television today. The show revolves around two main characters, Detective
Sonny
Crockett, who is white, and Detective Ricardo Tubbs, who is black. These
detectives battle [*1473] against drug smugglers, mob bosses, and many
other
evil criminal figures. Plaintiffs' exhibits; a collection of articles about
"Miami Vice," as well as selected videotaped segments from the series, establish
that the show's major themes are crime and violence, with sexual overtones
thrown in. See Pl. Ex. 1-21.
"Miami Vice" is promoted as a highly stylized television series with an art
deco, flashy look. See Tr. at 5, 11. Pastel color patterns predominate on the
filming set; earth tones are never permitted. See id. at 8. Crockett and Tubbs
wear fashionable clothing in tropical pastel colors, adding to the overall style
of the show. Crockett generally wears a single-breasted jacket, collarless

shirt, and pants with no belt. See id. at 6. Tubbs, on the other hand, tends to
wear a notch-collar shirt, a thin tie, and a double-breasted suit. See id. at 7.
Finally, one of the most important elements in the overall style of the show is
that the music and lyrics of popular rock-and-roll songs are blended into the
action on the set and take the place of extended dialogue. See id. at 8.
Defendant T-Shirt Gallery ("the Gallery") manufactures and distributes, inter
alia, five different types of "Miami Mice" t-shirts, and holds a New York State
trademark and a federal copyright for the cartoon drawings of "Miami Mice." n3
See Tr. at 68; Def. Ex. B & C. Each of the t-shirts has the words "Miami Mice"
printed across the top of the t-shirt in non-stylized block letters over a
diamond shaped design. The words "T-Shirt Gallery" are printed near the bottom
of the shirts.
n3 There is no dispute that plaintiffs' copyright and their application for
trademark registration pre-date defendants' copyright and New York State
trademark registration. See Pl. Ex. 25 & 26; Def. Ex. B & C.
Each of the t-shirts features two comical cartoon mice, who wear sun glasses
and dress in clothing similar to the costumes of Crockett and Tubbs. Thus, one
mouse, who has an "Afro" hairstyle, is wearing a double-breasted suit (as does
Tubbs) while the other mouse wears a t-shirt and a single breasted suit (as does
Crockett). Furthermore, the t-shirts depict these mice in various settings: on a
beach, in New York City, leaning against an expensive sports car, and at a
dance
club. See generally Pl. Ex. 27. Plaintiffs allege these settings correspond to
typical settings in the Miami Vice television series. See Plaintiffs' Post
PAGE 74
634 F. Supp. 1468, *1473; Copy. L. Rep. (CCH) P25,969;
230 U.S.P.Q. (BNA) 23
Hearing Brief at 4. Finally, the clothing of the mice, the "Miami Mice" logo,
and any buildings or cars appearing in the t-shirts, are all generally colored
in with pastel colors.
Defendant Bob Edelson is a merchandising agent for the Gallery. See Tr. at
36. n4 According to Edelson's deposition, Edelson and Markku Anunio, a.k.a.
"Finn," the president of the Gallery, had an informal verbal agreement that
Edelson would get 25% of the profits from any merchandising deals he arranged
for "Miami Mice" products. See Tr. at 36. Pursuant to that agreement, Edelson
sent a letter dated August 8, 1985, to Universal in which he offered to seek the
"movie-TV-merchandising rights" to "Miami Mice." In the letter, Edelson
explained that "Miami Mice is an animated parody of Miami Vice," and that he
thought Universal would have the resources to develop it "into a sophisticated
animated crime-fun TV show." Universal replied by filing the present action.
n4 RA Productions, the other defendant in this action, appears to simply be a
business name for Bob Edelson. See Tr. at 31.
ANALYSIS
A preliminary injunction is proper only when the plaintiff establishes
possible irreparable injury, plus either (a) probability of success on the
merits, or (b) sufficiently serious questions going to the merits to make them a
fair ground for litigation and a balance of hardships tipping decidedly in the

plaintiffs' favor. See Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema,
Ltd., 604 F.2d 200, 206-07 (2d Cir. 1979); see also Sonesta International Hotels
Corp. v. Wellington Associates, 483 F.2d 247, 250 (2d Cir. 1973).
In cases which involve unfair competition and Lanham Act claims, irreparable
injury will be presumed if the plaintiffs [*1474] first establish a
probability of success on the merits. See American Home Products v. Johnson
Chemical Co., 589 F.2d 103, 106 (2d Cir. 1978); Russ Berrie & Co. v. Jerry
Elsner Co., 482 F. Supp. 980, 989-990 (S.D.N.Y. 1980); see also Standard &
Poor's Corp. v. Commodity Exchange, 683 F.2d 704, 708 (2d Cir. 1982) (in
Lanham
Act claim, a showing of likelihood of confusion, which is an essential element
of success on the merits, will also establish the requisite risk of irreparable
harm); cf., Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558
F.2d 91, 94 (2d Cir. 1977) (court may presume irreparable injury in copyright
infringement action if prima facia case of infringement is made out). Thus, the
Court will first discuss whether the plaintiffs have demonstrated a probability
of success on the merits before turning to the issues of irreparable injury and
balance of hardships.
I. PROBABILITY OF SUCCESS ON THE MERITS
A. New York Unfair Competition Claim
Plaintiffs' principal argument offered in support of their application for a
preliminary injunction is that the defendants have violated the misappropriation
branch of New York's unfair competition law. The New York law of unfair
competition is a "broad and flexible doctrine" encompassing "any form of
commercial immorality." See Roy Export Co. v. Columbia Broadcasting System,
672
F.2d 1095, 1105 (2d Cir.) (quoting Metropolitan Opera Assoc. v.
Wagner-Nichols
Recorder Corp., 199 Misc. 786, 792-96, 101 N.Y.S.2d 483, 488-93 (Sup. Ct.
PAGE 75
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230 U.S.P.Q. (BNA) 23
1950), aff'd, 279 A.D. 632, 107 N.Y.S.2d 795 (1951)(per curiam), cert. denied,
459 U.S. 826 (1982)). The misappropriation branch of New York's unfair
competition law generally concerns the taking and use of the plaintiff's
property to compete against the plaintiff. See id.; see also International News
Service v. Associated Press, 248 U.S. 215, 239, 63 L. Ed. 211, 39 S. Ct. 68
(1918). Thus, a defendant can be liable for unfair competition if he
misappropriates the "skill, expenditures, and labors of a competitor." See
Flexitized, Inc. v. National Flexitized Corporation, 335 F.2d 774, 781 (2d Cir.
1964) (quoting Electrolux Corp. v. Val-Worth, Inc., 6 N.Y.2d 556, 567, 190
N.Y.S.2d 977, 986, 161 N.E.2d 197, 203 (1959)).
In this case, plaintiffs argue that defendants have misappropriated from the
Miami Vice show; (a) the settings, (b) the style, dress and essential
expressions of the lead characters, (c) the color patterns and (d) the title.
See Plaintiffs Post-Hearing Brief at 4, see also Tr. at 53. n5 Plaintiffs,
however, have failed to establish a probability of success on the merits on this
claim because this claim is preempted by the federal copyright laws. See 17
U.S.C. @ 301(1982); see also Warner Bros. v. American Broadcasting Co., 720

F.2d
231, 247 (2d Cir. 1983) n6.
n5 Plaintiffs contend that the elements allegedly misappropriated from "Miami
Vice" constitute the "mise-en-scene" of the television series. See Plaintiffs'
Post-Hearing Brief at 4. According to plaintiffs, the mise-en-scene is an
essential element of the style, as opposed to the narrative portion, of a motion
picture. According to plaintiffs, the general aspects of the mise-en-scene are:
(1) setting, (2) costume, (3) lighting, and (4) figure expression and movement.
See id. at 3.
n6 17 U.S.C. @ 301 provides, in relevant part:
(a) On and after January 1, 1978, all legal or equitable rights that are
equivalent to any of the exclusive rights within the general scope of copyright
as specified by section 106 in works of authorship that are fixed in a tangible
medium of expression and come within the subject matter of copyright as
specified by sections 102 and 103, whether created before or after that date and
whether published or unpublished, are governed exclusively by this title.
Thereafter, no person is entitled to any such right or equivalent right in any
such work under the common law or statutes of any State.
(b) Nothing in this title annuls or limits any rights or remedies under the
common law or statutes of any State with respect to--
(1) subject matter that does not come within the subject matter of copyright
as specified by sections 102 and 103, including works of authorship not fixed in
any tangible medium of expression; or
(2) any cause of action arising from undertakings commenced before January
1, 1978; or
(3) activities violating legal or equitable rights that are not equivalent
to any of the exclusive rights within the general scope of copyright as
specified by section 106.
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230 U.S.P.Q. (BNA) 23
Under @ 301, a state law claim is preempted by the federal copyright laws if
[*1475] two conditions are satisfied: (1) the subject matter of the work in
which the state law rights are asserted comes within the subject matter of the
copyright laws; and (2) the state law rights asserted in the work are equivalent
to the exclusive rights protected by the federal copyright laws. See Harper &
Row, Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 200 (2d Cir. 1983),
rev'd on other grounds, 471 U.S. 539, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985);
Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F. Supp. 1523, 1531 (S.D.N.Y.
19851;
1 M. Nimmer, Nimmer on Copyright ("Nimmer") @ 1.01[B], at 1-9. The first
condition under @ 301 is clearly satisfied here because the "Miami Vice"
television series comes within the subject matter of federal copyright. The
subject matter of copyright consists of any "original works of authorship fixed
in any tangible medium of expression" and includes "motion pictures and other
audiovisual works." See 17 U.S.C. @ 102(a)(1982). Indeed, plaintiffs have
argued

in this action that they have a valid copyright for the "Miami Vice" television
series. See Tr. at 20-21. n7
n7 Plaintiffs argue that since the defendants allegedly misappropriated the
title to the "Miami Vice" series, and a title is not copyrightable, see
generally, Nimmer, supra, @ 2.16, at 2-186, the subject matter of the work in
which the state law rights are asserted is not within the subject matter of
federal copyright. See Plaintiffs' Supplemental Memorandum of Law, at 2. The
Court is not persuaded by this argument. This argument is completely at odds
with plaintiffs' assertions throughout these proceedings that the defendants
have misappropriated the entire essence of the "Miami Vice" television series, a
copyrighted work. See, e.g., Tr. at 53; Plaintiffs' Post-Hearing Brief, at 3-4.
Moreover, the mere fact that portions of the "Miami Vice" television series may
consist of uncopyrightable material does not take the work as a whole outside of
the subject matter protected by the Copyright Act and therefore does not avoid
preemption. See Harper & Row, supra, 723 F.2d at 200.
The Court also finds no merit in plaintiffs' argument that preemption does
not apply because defendants are unfairly competing with plaintiffs' licensing
program, which cannot be copyrighted. See Plaintiffs' Supplemental
Memorandum of
Law, at 4. The gravamen of plaintiffs' state law claim is the misappropriation
of plaintiffs' copyrighted television series. At best, any harm done to
plaintiffs' licensing program represents additional damages flowing from the
misappropriation claim. The strictures of @ 301 cannot be circumvented merely
by
characterizing these potential additional damages as a separate unpreempted
claim.
Turning to the second condition for federal preemption under @ 301, a state
law cause of action is preempted only if the state law creates rights that are
"equivalent to any of the exclusive rights within the general scope of
copyright." See 17 U.S.C. @ 301(b)(3). A state right is equivalent to copyright
if the state right "is infringed by the mere act(s) of reproduction,
performance, distribution or display." See Mayer supra, 601 F. Supp. at 1535
(quoting Nimmer, supra, @ 1.01 [B][3], at 1-11-12). On the other hand, if the
state law violation requires an extra qualitative element beyond those acts,
preemption will not apply. See Harper & Row, supra, 723 F.2d at 200; Nimmer,
supra, @ 1.01 [B] at 1-12. Since the unfair competition complained of here
consists simply of the misappropriation and reproduction of the style and
characters of plaintiffs' television series into t-shirt form, the second
condition under @ 301 is satisfied and plaintiffs' New York unfair competition
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230 U.S.P.Q. (BNA) 23
claim is preempted. See Walker v. Time Life Films, Inc., 784 F.2d 44, 53 (2d
Cir. 1986); Warner Bros., supra, 720 F.2d at 247; Durham Industries, Inc. v.
Tomy Corp., 630 F.2d 905, 918-19 (2d Cir. 1980); Mayer, supra, 601 F. Supp.
at
1535-36; Giangrasso v. CBS, 534 F. Supp. 472, 478 (E.D.N.Y. 1982).
Plaintiffs argue, however, that their claim of unfair competition includes
allegations of commercial immorality and an unjustifiable attempt to profit from
the efforts of another, see e.g., Metropolitan Opera Assoc., supra, 199 Misc. at

792-96, 101 N.Y.S.2d at 488-93, which are additional elements to their cause of
action negating preemption. See Plaintiffs' Supplemental Memorandum of Law
at 4.
This argument is not persuasive. As Judge Leisure noted in Mayer, supra, 601 F.
Supp. at 1535, commercial immorality is not an extra element of the cause of
action for misappropriation [*1476] under New York law, but merely a label
attached to the alleged infringing conduct. The use of that label in no way
detracts from the fact that the misappropriation claim seeks to protect the same
rights which the federal copyright laws are designed to protect. To hold
otherwise would allow the state to provide a cause of action for the same
conduct which may be protected under federal copyright laws, merely because
the
state deems the conduct "unfair" or "immoral." Such an interpretation would
clearly circumvent Congress' purpose in enacting 301 to "avoid the development
of any vague borderline areas between State and Federal protection." See Harper
& Row, supra, 723 F.2d at 200 (quoting H.R. Rep. No. 1476, 94th Cong., 2d
Sess.
130, reprinted in 1976 U.S. Code Cong. & Ad. News 5659, 5746). n8
n8 Roy Export Co. v. Columbia Broadcasting System, 503 F. Supp. 1137
(S.D.N.Y. 1980) aff'd 672 F.2d 1095 (2d Cir.), cert. denied, 459 U.S. 826, 74 L.
Ed. 2d 63, 103 S. Ct. 60 (1982) cited by plaintiffs, is not applicable to the
present case. In that case, the district court held that federal copyright law
did not preempt plaintiffs claims under New York law for unfair competition.
While stating that "the question is not easy," the Roy Export court held that
there was no preemption because New York's law required a finding of
commercial
immorality or unfairness based on additional evidence of bad faith not required
under the copyright laws. Id. at 1151-52. In the alternative, however, the
district court also found that the plaintiffs' unfair competition claim was not
preempted because the claim was based substantially on the taking of a work
not
within the subject matter of the copyright laws. Id. at 1152. The Second Circuit
affirmed but only on the basis of this second ground, specifically refusing to
consider the first ground. See 672 F.2d at 1106 & n.19.
Moreover, the district court's decision in Roy Export is not applicable here
because it was decided under the law applicable prior to the effective date of @
301. Thus, the district court in Roy Export did not consider whether these were
"rights equivalent to copyright" but rather whether the state law was "an
obstacle to the accomplishment and execution of the full purposes and objectives
of Congress," which was the applicable law at that time. See 503 F. Supp. at
1151 (citations omitted). Finding that the state law complemented rather than
conflicted with federal law, the district court found no preemption. Id.
B. Lanham Act Claim
Plaintiffs argue in the alternative that defendants have violated section
43(a) of the Lanham Act, 15 U.S.C. @ 1125(a), by "intend[ing] to take
advantage
of plaintiffs' efforts and to deceive the public into believing that the
[t-shirts] are either authorized by or connected with the plaintiffs and the
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230 U.S.P.Q. (BNA) 23

television series." Plaintiff's Memorandum of Law, at 7. n9 To succeed in an
action for trademark infringement or unfair competition under section 43(a),
plaintiffs must establish a likelihood that an appreciable number of ordinarily
prudent purchasers are likely to be misled, or confused as to the source or
sponsorship of the goods in question. See Universal City Studios, Inc. v.
Nintendo Co.; 746 F.2d 112, 115 (2d Cir. 1984), Mushroom Makers, Inc. v.
R.G.
Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978) (per curiam), cert. denied, 439 U.S.
1116, 59 L. Ed. 2d 75, 99 S. Ct. 1022 (1979); Polaroid Corp. v. Polaroid
Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 7 L.
Ed. 2d 25, 82 S. Ct. 36 (1961). In determining whether there is a likelihood of
confusion, the Court must consider, inter alia: (1) the strength of plaintiffs'
mark, (2) the [*1477] proximity of the products; (3) the sophistication of
the likely consumers; (4) the degree of similarity between plaintiffs' and
defendants' marks; (5) evidence of actual confusion; and (6) defendants' good or
bad faith in adopting the marks. See Nintendo, supra, 746 F.2d at 116; Polaroid
Corp., supra, 287 F.2d at 495.
n9 It is not disputed that section 43(a)'s protections "extend to the
specific ingredients of a successful T.V. series," and that therefore section
43(a) applies to the "broad spectrum of marks, symbols, design elements and
characters which the public directly associates" with the "Miami Vice" series.
See Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 78 (2d Cir. 1981); see
also, DC Comics, Inc. v. Filmation Associates, 486 F. Supp. 1273, 1276-77
(S.D.N.Y. 1980). Moreover, even though plaintiffs have only applied for
trademark registration for the logo "Miami Vice," plaintiffs' common law
trademarks in the "Miami Vice" series remain protectable under the Lanham
Act,
see Dallas Cowboys, supra, 604 F.2d at 203 n.3 (2d Cir. 1979), so long as those
marks have acquired a secondary meaning. See Mattel, Inc. v. Azrak-Hamway
Int'l., Inc., 724 F.2d 357, 360-61 (2d Cir. 1983) (per curiam); Dallas Cowboys,
supra, 604 F.2d at 203 & n.5.
Neither party has briefed the issue of whether plaintiffs' trademarks have
acquired a secondary meaning. Given the Court's holding infra that plaintiffs
have not established a probability of success that there will be a likelihood of
consumer confusion, the Court need not reach the secondary meaning issue.
The first two factors listed above tend to somewhat favor plaintiffs'
position. Thus, defendants do not dispute the popularity of plaintiffs'
television series. Furthermore, it is undisputed that there is a proximity
between the products, at least in so far as plaintiffs' licenses for t-shirts
have the potential for competition with the "Miami Mice" t-shirts. As to the
third factor, the sophistication of the likely consumers, this appears to be a
neutral factor given that neither party has presented any evidence on this
issue.
Both the fourth and fifth factors, however, favor defendants' position and
tip the balance against the issuance of a preliminary injunction. While there
are similarities between the "Miami Mice" t-shirts and the "Miami Vice"
television series, i.e., the titles, n10 the casual dress of the characters, the
pastel colors, and the various beach and dance club scenes, the Court concludes
that the t-shirts and the television series are not sufficiently similar to
warrant a finding of a likelihood of consumer confusion. In determining whether

a likelihood of consumer confusion exists, it is proper for the Court to compare
the "total concept and feel" of the two works. See Nintendo, supra, 746 F.2d
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230 U.S.P.Q. (BNA) 23
at 116. n11 In "Miami Vice," the two lead characters are portrayed as tough,
courageous, and stylish detectives who fight against notoriously evil criminal
figures. The major themes of "Miami Vice" are adult themes of crime, violence,
and sex. As one of plaintiffs' exhibits described the television series, "Miami
Vice" is "the most intensely serious cop show on TV." See Pl. Ex. 1 (Time,
September 16, 1985, at 61). In contrast, the "Miami Mice" t-shirts
lightheartedly focus on two comical mice who do not at all resemble the
detectives in "Miami Vice" and who do not evoke the themes of crime and
violence. n12
n10 The Court notes that while the titles are somewhat similar, the "Miami
Mice" logo on the t-shirt is very different from the "Miami Vice" logo. The
"Miami Vice" logo is written in stylized block letters with the word "Miami"
above the word "Vice." The t-shirt logo, however, has the words "Miami Mice"
written side-by-side in non-stylized block letters. Moreover, the words "Miami
Mice" are printed over a diamond-shaped design which does not appear in
connection with the "Miami Vice" logo. Given these differences, the Court does
not find the logos to be confusingly similar. Accord, Universal City Studios v.
Casey & Casey, 622 F. Supp. 201, 205 (D.C.Fla. 1985).
n11 In Nintendo the alleged holder of the trademark for "King Kong" sued
the
manufacturer of the video game "Donkey Kong" under section 43(a) of the
Lanham
Act. The Second Circuit granted summary judgment for the defendants in part
because the "farcical, childlike and nonsexual" nature of the Donkey Kong
character and game was so different from the King Kong story of the "ferocious
gorilla in quest of a beautiful woman" that there could be no likelihood of
confusion as a matter of law. See Nintendo, supra, 714 F.2d at 116-17 (quoting
district court's findings of fact in 578 F. Supp. at 928 (S.D.N.Y. 1983)).
n12 One of defendants' t-shirts, entitled "Mice Land" on defendants' order
form, does depict the themes of crimes of violence. That t-shirt depicts a shark
pointing a machine gun at a bikini-clad mouse who is standing on a pier, while
the two Miami Mice have their guns drawn. This t-shirt, however, like the
defendants' other t-shirts, at best parodies the television series and the Court
is not convinced that consumers will be confused that plaintiffs' manufactured
or authorized this t-shirt. Cf., Tetley, Inc., supra, 556 F. Supp. at 790.
Moreover, the Court notes that plaintiff has never requested that the Court
enjoin only this "Mice Land" t-shirt.
Moreover, the t-shirts' mouse-like characters, coupled with the title "Miami
Mice," clearly parody the serious, highly stylized nature of the television
series. The strength of this parody highlights the differences between the two
products and should further dispel any confusion on the part of consumers that
plaintiffs manufactured, authorized sponsored, or were in any way connected
with
the t-shirts. See Nintendo, supra, 746 F.2d at 116; cf. Tetley, Inc. v. Topps
Chewing Gum, Inc., 556 F. Supp. 785, 790 (E.D.N.Y. 1983). In sum, the Court

concludes that the conceptual [*1478] differences between defendants'
t-shirts and the plaintiffs' television series cast sufficient doubt on whether
a likelihood of consumer confusion exists, such that the Court cannot find that
plaintiffs have established a probability of success on the merits of their
Lanham Act claim.
This conclusion is in substantial accord with a decision rendered by Judge
Aronovitz in the Southern District of Florida, which denied these same
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230 U.S.P.Q. (BNA) 23
plaintiffs' motion for a preliminary injunction against another producer of
"Miami Mice" t-shirts. See Universal City Studios v. Casey & Casey, Inc., 622
F.
Supp. 201 (S.D.Fla. 1985). The "Miami Mice" t-shirts in Casey were very
similar
to the defendants' t-shirts in this action. n13 In Casey, the Court concluded
that the "cartoon depiction of two mouse-like figures, attired in casual dress
clothing similar to the fashions favored by the two leading characters in the
'Miami Vice' series," were not sufficiently similar to plaintiffs' television
series and related products to warrant a preliminary injunction. See id. at 205.
Moreover, in connection with a claim for copyright infringement raised by
plaintiffs' complaint in that action, the Casey court noted that the t-shirts
and the television series were not substantially similar. This finding was based
in part on Judge Aronovitz's observation that the comical mice clearly differed
from the "Miami Vice" characters who plaintiffs portrayed "as the embodiment
of
style, courage, and determination." See id. at 206.
n13 The parties have supplied the Court with a sample t-shirt from the Casey
action. That t-shirt has the words "Miami Mice" written in stylized block
letters across the top of the shirt. The t-shirt depicts two mice, one white and
one black, who are dressed in pastel outfits similar to the clothing worn by the
"Miami Vice" characters. Moreover, the Casey t-shirts depict the mice leaning
against a pastel-colored sports car.
The Court's conclusion that plaintiffs in the instant action have failed to
establish a probability of success on the merits of their Lanham Act claim is
bolstered by the absence of any survey evidence indicating that consumer
confusion actually occurred. Although the plaintiffs need only demonstrate a
likelihood of confusion and not actual confusion to warrant equitable relief,
see Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir. 1981), the
Court may properly infer that there is no likelihood of consumer confusion from
this absence of survey evidence. See Tetley, Inc., supra, 556 F. Supp. at 791.
This is especially true where, as here, a likelihood of confusion is not obvious
due to substantial dissimilarities between the products. See, e.g., Nintendo,
supra, 746 F.2d at 117; Mattel, Inc. v. Azrak- Hamway, Int'l., Inc., 724 F.2d
357, 361 (2d Cir. 1983) (per curiam).
Plaintiffs argue, however, that the defendants in bad faith deliberately
copied plaintiffs' marks and that the Court should presume a likelihood of
confusion from this conduct. See Plaintiffs' Memorandum of Law, at 5. The
Second
Circuit has recognized that evidence of intentional copying raises a presumption

that the second comer intended to create consumer confusion and succeeded.
See
Warner Bros., supra, 720 F.2d at 246-247. While it is clear that the defendants
were influenced by the "Miami Vice" television series, see Tr. at 69-71, and
that defendants expected that the success of the t-shirts would, in part, be
attributable to the popularity of the television series, see id. at 38-39, 45,
the evidence does not support plaintiffs' argument that the defendants copied
plaintiffs' marks with the intent to create consumer confusion. n14 Since
defendants [*1479] did not intend to copy plaintiffs' television series so
as to cause a likelihood of consumer confusion, the presumption that consumer
confusion will occur is inapplicable. n15 Compare, Dallas Cowboys
Cheerleaders,
Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366 (S.D.N.Y. 1979), aff'd, 604
F.2d
200 (2d Cir. 1979). Moreover, even assuming arguendo that the presumption of
consumer confusion arose on the facts of this case, that presumption has been
rebutted by the differences between the t-shirts and the television series and
by the absence of any survey evidence. Cf. Nintendo, supra, 746 F.2d at 117.
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230 U.S.P.Q. (BNA) 23
n16
n14 Plaintiffs rely on several letters by the defendants to establish bad
faith and intentional copying. The first letter was the August 8, 1985 letter,
in which Edelson invited Universal to participate in the creation of an animated
television show based on "Miami Mice." In that letter, Edelson merely
acknowledged that "Miami Mice is an animated parody of Miami Vice." A mere
intent to parody, however, should not give rise to a presumption of likelihood
of consumer confusion. Indeed, as discussed above, a successful parody should
serve to dispel consumer confusion rather than create it. See Nintendo, supra,
746 F.2d at 116.
The second letter plaintiffs rely on was a letter from Edelson to the Court
dated September 30, 1985. In that letter, which was Edelson's "response to the
complaint," Edelson reiterated that "Miami Mice is intended to be an animated,
comical parody of TV cop/crime shows, not like other real life imitations of
Miami Vice." Edelson also noted in the letter that he believed it was proper in
our "free competitive consumer marketplace" to "emulat[e]" popular products
until the market is saturated. The Court notes that section 43(a) of the Lanham
Act is not designed to prevent people from taking advantage of popular trends in
the marketplace. The harm that the Lanham Act seeks to protect against is the
"misrepresentation of a common source." See Warner Bros., supra, 720 F.2d at
247. This letter does not indicate an intent to misrepresent or confuse
consumers.
The final letter plaintiffs rely on was from Finn. This letter, dated August
27, 1985, was a response by Finn to plaintiffs' charges of unfair competition.
See Defendants' Memorandum of Law in Opposition at Ex. D. Although Finn
stated
that, "[w]e are appreciative . . . of the popularity of your product . . .,"
Finn also denied any wrongdoing, claiming that "we do not believe there is any
likelihood of confusion or intent to deceive by our use of rodents as obvious
cartoon characters." See id.

The Court also notes that at the hearing on plaintiffs' motion for a
preliminary injunction, Finn acknowledged that the Miami Vice series
influenced
the development of the t-shirts but denied that it was his intent to copy the
series. Tr. at 69-71.
n15 Plaintiffs rely on the district court opinion in Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366 (S.D.N.Y. 1979),
aff'd, 604 F.2d 200 (2d Cir. 1979), to establish a presumption of confusion. In
this case reliance on Dallas Cowboys is misplaced. In Dallas Cowboys, the
district court preliminarily enjoined defendants from showing a sexually
explicit film entitled "Debbie Does Dallas." The film, which had "no other
purpose than to display sex acts in minute detail," see id. at 370, focused on a
high-school cheerleader, Debbie, who becomes a "Texas Cowgirl." In the film
and
in its advertisements, Debbie appeared in a cheerleading uniform which was
almost identical to the plaintiff's protected trademark in the familiar Dallas
Cowboys Cheerleaders' uniform. See id., at 371.
In granting the preliminary injunction, the district court noted that the
inference of a likelihood of confusion was readily drawn from the defendants'
deliberate attempts "to cash in on the Dallas Cheerleaders' popularity and
attracting power," see id. at 377, which indicated that the defendant expected
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230 U.S.P.Q. (BNA) 23
consumer confusion. See id. at 375. The Dallas Cowboys case is distinguishable
from the present case, however, because there was overwhelming evidence in
that
case that the defendants intended and expected consumer confusion. In addition
to defendants' use of a cheerleading uniform which was almost identical to the
Dallas Cowboys Cheerleaders' uniform, the film was promoted with
advertisements
containing deliberately misleading phrases such as, "Starring Ex Dallas Cowgirl
Cheerleader Bambi Woods" and "You'll Do More Than Cheer For this X Dallas
Cheerleader." See id. at 371. The star of the film was never a Dallas Cowboys
Cheerleader. In the present case, as noted above, there is no evidence that
defendants deliberately intended to deceive the public into believing that
plaintiffs were in any way connected with the Miami Mice t-shirts.
n16 More than one month after the hearing in this case, plaintiffs raised for
the first time a claim of copyright infringement. See Plaintiffs' Supplemental
Brief, at 7. Although the Court subsequently granted plaintiffs leave to brief
this issue, plaintiffs' complaint fails to allege copyright infringement.
Moreover, at the first Pre-Trial Conference, plaintiffs specifically disclaimed
a copyright infringement theory stating:
Basically what we have here is an unfair competition case -- and I emphasize
that -- this is an unfair competition case. It is not a trademark case, it is
not a copyright case. See Transcript of 9/20/85 Pre-Trial Conference at 2.
Assuming plaintiffs' complaint could be deemed amended to include this belated
claim for copyright infringement, cf. Studebaker Corp. v. Gittlin, 360 F.2d 692,
694 (2d Cir. 1966), plaintiffs have still failed to establish a likelihood of

success on the merits. First, to succeed on a claim for copyright infringement,
plaintiffs must establish a substantial similarity between the two works. See
Warner Bros., supra, 720 F.2d at 239. Due to the differences between the
television series and the t- shirts as noted above, it is unlikely that
plaintiffs will be able to establish this element at trial. Accord, Casey,
supra, 622 F. Supp. at 206. Moreover, given the obvious satiric effect of their
rodent-like caricatures, defendants' t-shirts may fairly be characterized as
a non-infringing parody under the "fair use" doctrine. Cf. Warner Bros., supra,
720 F.2d at 242.
In their final brief, plaintiffs also argued that defendants should be
enjoined under New York's anti-dilution statute. N.Y. Gen. Bus. Law @ 368-d
(McKinney 1984). This claim was also not raised in the complaint. Even if this
claim had been included in the complaint, however, the Court finds this claim to
be without merit at this time because there has been no showing that plaintiffs'
marks will be tarnished or blurred by the t- shirts. See Warner Bros., supra,
720 F.2d at 248; Sally Gee, Inc. v. Hogan, 699 F.2d 621, 624-26 (2d Cir. 1983).
[*1480] II. IRREPARABLE INJURY AND BALANCE OF HARDSHIPS
Since plaintiffs have failed to establish a probability of success on the
merits, plaintiffs must establish sufficiently serious questions going to the
merits making it a fair ground for litigation, irreparable injury, and a balance
of hardships tipping decidedly in their favor to succeed in their preliminary
injunction motion. See Dallas Cowboys, supra, 604 F.2d at 206-07.
Plaintiffs have not demonstrated irreparable injury. The Court will not
presume irreparable injury in the absence of a showing of a probability of
success on the merits. Cf. Windsor Industries, Inc. v. U.S. Diamond Imports,
PAGE 83
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230 U.S.P.Q. (BNA) 23
549 F. Supp. 415, 416-17 (S.D.N.Y. 1982). Plaintiffs have failed to produce any
evidence that the t-shirts have harmed plaintiffs' licensing program or the good
will associated with plaintiffs' marks. Moreover, it appears that any losses
suffered by plaintiffs as a result of the sale of the t-shirts, if proven, would
be compensable in money damages after a full adjudication of plaintiffs' claims.
Accord, Casey, supra, 622 F. Supp. at 206. n17
n17 The Court rejects plaintiffs' argument that they will suffer irreparable
injury because defendants are planning to develop a "Miami Mice" television
series. There is no evidence that defendants have the imminent capacity to carry
out such plans. Each of defendants' attempts to interest Paramount Pictures and
plaintiffs, respectively, to develop such a series was flatly rejected.
Moreover, assuming arguendo that such a series is developed at some later time,
since the idea of a "Miami Mice" television series has not progressed beyond
these two unsuccessful attempts by defendants, there is no way to determine if
the series will be similar to the "Miami Vice" series. The mere possibility that
defendants may at some future time develop a confusingly similar television
series is too speculative and attenuated a basis for the issuance of a
preliminary injunction at this time.
Plaintiffs have also failed to establish a balance of hardships tipping
decidedly in their favor. If anything, the hardships test favors defendants,

since an injunction will prevent defendants from selling their inventory,
whereas plaintiffs have not offered any evidence, as noted above, to indicate
that plaintiffs will suffer any similar hardships if the injunction is denied.
CONCLUSION
For all the foregoing reasons, plaintiffs' motion for a preliminary
injunction is denied. All parties shall appear before the Court for a Pre-Trial
Conference on June 20, 1986 at 10:00 A.M.
It is SO ORDERED.
RA Productions, the other defendant in this action, appears to simply be a
business name for Bob Edelson. See Tr. at 31.
DATE: SEPTEMBER 30, 1993
PAGE 84
CLIENT: CAREER
LIBRARY: LEXSEE
CITATION: 720 F.2d 231
PAGE 85
720 F.2d 231 printed in FULL format.
WARNER BROS. INC., FILM EXPORT, A.G., and DC COMICS
INC.,
Plaintiffs-Appellants-Cross-Appellees. v. AMERICAN
BROADCASTING COMPANIES, INC. and STEPHEN J.
CANNELL
PRODUCTIONS, Defendants-Appellees-Cross-Appellants.
Nos. 82-7152, 82-7794; No. 850 -- August Term, 1982
UNITED STATES COURT OF APPEALS FOR THE SECOND
CIRCUIT
720 F.2d 231; Copy. L. Rep. (CCH) P25,584; 222 U.S.P.Q.
(BNA) 101
Argued: March 16, 1983
October 6, 1983; As Amended
PRIOR HISTORY:
Appeal and cross-appeal from a judgment of the District Court for the Southern
District of New York (Constance Baker Motley, Chief Judge) granting summary
judgment for defendants and dismissing complaint alleging that television
program "The Greatest American Hero" and televised commercials infringed
copyrights in "Superman, the Movie" and other Superman works, and
constituted
unfair competition in violation of federal and state law and trademark dilution.
Affirmed.
COUNSEL: STUART ROBINOWITZ, New York, N.Y. (Steven B. Rosenfeld,

Kenneth Roth,
Andrew J. Frackman, and Paul, Weiss, Rifkind, Wharton & Garrison, New
York,
N.Y.), for plaintiffs-Appellants-cross-appellees.
RICHARD J. BARNES, New York, N.Y. (Mary D. Faucher and Townley &
Updike, New
York, N.Y.), for defendant-appellee-cross-appellant Stephen J. Cannell
Productions, LAURA V. JONES, New York, N.Y. (Philip R. Forlenza and
Hawkins,
Delafield & Wood, New York, N.Y.), for defendant-appellee-cross-appellant
American Broadcasting Companies, Inc.
OPINIONBY: NEWMAN
OPINION: [*235]
Before:
MANSFIELD MESKILL, and NEWMAN, Circuit Judges.
NEWMAN, Circuit Judge:
The primary issue raised by this appeal is whether as a matter of law the
fictional character Ralph Hinkley, the principal figure in a television series,
"The Greatest American Hero," is not sufficiently similar to the fictional
character Superman, the hero of comic books, television, and more recently
films, so that claims of copyright infringement and unfair competition may be
dismissed without consideration by a jury. The appeal is from a January 22,
1982, judgment of the District Court for the Southern District of New York
(Constance Baker Motley, Chief Judge) dismissing claims of plaintiffs Warner
Bros., Inc., Film Export, A.G., and DC Comics, Inc. against defendant American
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222 U.S.P.Q. (BNA) 101
Broadcasting Companies, Inc. (ABC) and third-party defendant Stephen J.
Cannell
Productions upon the granting of defendants' motion for summary judgment.
Defendants cross-appeal from the denial of their motion to amend the judgment
to
award attorney's fees and additional costs beyond those allowed under Fed. R.
Civ. P. 54(d). For the reasons that follow, we affirm the judgment.
I.
Many of the significant facts are set out in our prior opinion affirming the
denial of plaintiffs' motion for a preliminary injunction. Warner Bros. Inc. v.
American Broadcasting Companies, Inc., 654 F.2d 204 (2d Cir. 1981). Plaintiffs
own the copyrights in various works embodying the character Superman and
have
thereby acquired copyright protection for the character itself. See Detective
Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940). Since the
creation of Superman in 1938, plaintiffs have exploited their rights with great

success, portraying Superman in several media and licensing the character for a
variety of merchandising purposes. Through plaintiffs' efforts, Superman has
attained an extremely high degree of exposure and recognition.
In 1978, building on previous Superman works, plaintiff Warner Bros., Inc.
released a motion picture entitled "Superman, The Movie" (Superman I ) and
more
recently two sequels. Our prior opinion in this case summarizes the manner in
which Superman I recounts the Superman legend:
The character is depicted as a superhuman being from a fictional planet,
Krypton, who was sent to earth to escape the fatal consequences of the
imminent
destruction of his planet. Superman is found by the Kents, a midwestern couple,
who name the boy Clark and raise him as their son in a bucolic setting. The
Kents instill in Clark a strong sense of moral conviction and faith in the
"American way," and counsel the boy not to reveal his superhuman powers to
anyone. Clark matures into a tall, well-built, dark-haired, and strikingly
handsome young man. Ultimately, Clark leaves his pastoral home, finding
himself
drawn by a mysterious force to a place where he encounters the image of his
deceased father, Jor-El. There, Jor-El informs him of his true identity and
instructs him to use his superpowers to protect the world from evil. Clark
emerges from his fantastic encounter with Jor-El wearing for the first time his
Superman costume -- a skin-tight blue leotard with red briefs, boots and cape,
and a large "S" emblazoned in red and gold upon the chest and cape.
Clark subsequently obtains a position as a reporter for the Daily Planet, but
reveals his true identity to no one, assuming instead the appearance of a shy,
bumbling, but well-intentioned young man. There he soon meets and becomes
infatuated with a beautiful colleague, Lois Lane. Later he appears clad in his
Superman regalia to perform amazing feats of strength and courage which
immediately attract wide attention, acclaim, and the amorous interest of Lois
Lane.
Superman is continually confronted by villains in all of his adventures, but
eventually overcomes all evil opponents by exploiting his superpowers of
self-propelled flight, imperviousness to bullets, blinding speed, X-ray vision,
fantastic [*236] hearing, and seemingly immeasurable strength.
654 F.2d at 206.
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In Superman I and in previous Superman works, Superman is portrayed as a
brave, fearless hero, endowed with superhuman powers. His strength, speed,
vision, and hearing far exceed the physical capabilities of mere mortals. He is
impervious to bullets. In early works, Superman displayed extraordinary leaping
ability, see Detective Comics, Inc. v. Bruns Publications, Inc., supra, 111 F.2d
at 433; in later works this skill had become the power of flight, as Superman is
regularly seen soaring through the sky, arms stretched ahead, then landing
agilely on his feet ready for action. Superman engaged in a series of exploits
against assorted criminals and villains who pose threats not only to public

safety but also to national security and even world peace. Regardless of his
adversary, Superman always prevails.
Descriptions of Superman and lines of dialogue in the Superman works have
become as well known as the Superman character. He is described as "faster
than
a speeding bullet," "more powerful than a locomotive," and "able to leap tall
buildings in a single bound," and he always fights for "truth, justice, and the
American way." From the early comic books continuing through the modern
films,
startled pedestrians have shouted, "Look! Up in the sky! . . . It's a bird! . .
. It's a plane! . . . It's Superman!"
The substantial commercial success of Superman I and the attendant publicity
prompted many requests for licenses permitting the use of the Superman
character
in connection with the merchandising of toys, greeting cards, apparel, and other
products. It also led ABC to seek a license for production of a television
series about "Superboy" based on the early adventures of Superman. Plaintiffs,
who were planning to make their own sequels and derivative works, refused
ABC
permission to proceed with its proposed project.
Unable to obtain this license, ABC assigned to Cannell, the principal of the
third-party defendant production company, n1 the task of creating a "pilot"
program for a TV series involving a superhero. Cannell produced a program,
and
subsequently a weekly series, entitled "The Greatest American Hero" (Hero ),
which he described as being about "what happens when you [the average
person]
become Superman." Hero's protagonist, Ralph Hinkley, was given attributes
intended to identify him as an "ordinary guy." Hinkley is portrayed as a young
high school teacher attempting to cope with a recent divorce, a dispute over the
custody of his son, and the strain that his domestic problems place upon his
work and his relationship with his girlfriend. Although Hinkley is attractive,
his physical appearance is not imposing: he is of medium height with a slight
build and curly, somewhat unkempt, blond hair.
n1 Cannell's production company was impleaded in this action as a third-party
defendant pursuant to a contractual indemnification agreement with ABC.
In the pilot show, as described on the prior appeal:
Hinkley's van breaks down en route to a high school field trip in the desert.
While walking along a road in search of help, Hinkley is nearly run over by an
out-of-control automobile driven by Bill Maxwell, an American undercover
agent.
Maxwell has been searching the desert for his missing FBI partner who,
unbeknownst to Maxwell, has been murdered by a band of extremists. Maxwell
and
Hinkley are suddenly approached by a brightly glowing spaceship from which
descends the image of Maxwell's deceased partner. Hinkley is handed a magical
caped costume -- a red leotard with a tunic top, no boots, and a black cape --
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222 U.S.P.Q. (BNA) 101
which, when worn, endows him with fantastic powers. Unfortunately, however,
Hinkley loses the instruction book that accompanied the intergalactic gift and
is left only with the verbal instruction that he should use his powers to save
the world from self-destruction. Hinkley [*237] grudgingly accepts the
mission after being importuned to do so by Maxwell.
654 F.2d at 206-07.
Hinkley's magical costume endows him with superhuman speed and strength,
the
ability to fly, imperviousness to bullets, and what Cannell calls "holographic
vision," the power to perceive sights and sounds occurring out of his line of
vision. Partly for lack of the instruction book that accompanied the costume
and partly because some of his character traits remain dominant when he is
wearing the suit, Hinkley as a superhero is not an unqualified success. He uses
his superpowers awkwardly and fearfully. When flying, Hinkley shouts with
fright and makes crash-landings, sometimes crumpling in a heap or skidding
nearly out of control to a stop. Though protected from bullets by his costume,
Hinkley cringes and cowers when shot at by villains.
In the pilot episode of Hero, the reaction of the first man who sees Hinkley
in his costume, which he has put on in a gas station washroom, is fear that
Hinkley is some sort of pervert who may harm the man or his seven-year-old
son,
Jerry. While the man calls for the police, Jerry notices that Hinkley is trying
to fly but does not know how. The youngster patiently explains that Hinkley
must take three steps and jump vigorously into the air. Hinkley manages to get
airborne, has difficulty steering, barely avoids colliding with a fire escape,
and finally crashes into a brick wall, knocking himself out. Police officers
arrest him and take him to a hospital, where he protests in vain to a nurse that
he is not crazy.
Goaded by FBI Agent Maxwell into using his superpowers to combat villains,
Hinkley, remains a reluctant hero. When Maxwell urges him to intercept the
President's helicopter to warn the President of impending danger, Hinkley
protests, "I'm Captain Crash! I navigate like I got hit by a can of Raid. This
suit belongs in the Smithsonian. How'm I gonna buzz that chopper?" Despite
his
apprehensiveness, Hinkley saves the President's helicopter, then loses control
of his flying ability, and crash-lands, skidding to a stop of his chest.
The Hero series contains several visual effects and lines that inevitably
call Superman to mind, sometimes by way of brief imitation, sometimes by
mention
of Superman or another character from the Superman works, and sometimes by
humorous parodying or ironic twisting of well-known Superman phrases.
Hinkley's
suit invests him with most of Superman's powers, and the suit, like Superman's,
is a tight-fitting leotard with a chest insignia and a cape. Their outfits
differ in that Superman wears a blue leotard with red briefs, boots, and cape,
while Hinkley's costume is a red leotard with a tunic top, no boots, and a black
cape. In one scene, as Hinkley is running at super speed, smoke emerges from

his footsteps, and the sound of a locomotive is heard. A similar scene occurs
in Superman I, though even without seeing the movie it would be difficult not
to
be reminded by the Hero scene of Superman, who is regularly described as
"more
powerful than a locomotive." When Hinkley first views himself in a mirror
holding his costume in front of him, he says, "It's a bird . . . it's a plane .
. . it's Ralph Hinkley." The youngster, Jerry, watching Hinkley's unsuccessful
first effort to fly, tells him, "Superman wouldn't do it that way." In a scene
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222 U.S.P.Q. (BNA) 101
with his girlfriend, who is aware of the powers that come with the magic
costume, Hinkley says, "Look at it this way . . . you're already one step up on
Lois Lane. She never found out who Clark Kent really was."
In the three weeks before the first episode of Hero was televised, ABC
conducted one of the most extensive promotional campaigns in the network's
history, airing nearly 200 commercials, or "promos," each running five, ten,
twenty, or thirty seconds. Most were slight variations of thirteen basic
"promos." n2 By multiplying the number of [*238] "promos" by the
estimated
television audience at the time each was shown, plaintiffs estimate that the
promotional campaign registered more than 2.4 billion viewer impressions.
Some
of the "promos" contained scenes created specially for the commercial, a
departure from what plaintiffs contend is the normal industry practice of using
only action scenes excerpted from episodes to be shown in the series.
n2 For example, as the date for the first Hero telecast approached, the
"promos" would be modified to alert the audience to a program that was to be
aired "next week," and then "tomorrow" and then "tonight." The basic "promos"
were also varied to fit into time slots of different lengths.
Like the pilot episode, the "promos" show Hinkley displaying some
Superman-like abilities in a decidedly unSuperman-like way. For example,
Hinkley has the ability to fly, but does so carrying a large lantern and, on
occasion, waves his arms wildly to maintain his course or crash lands into a
treetop. He has superhuman strength, but, before succeeding in crashing
through
a wall to surprise the villains, his first attempt nearly knocks him out.
Though protected from bullets by his suit, he cringes and covers his face with
his arms when shots are fired. The "promos" also preview the Hero series
device
of referring to Superman characters or well-known Superman lines. Hinkley is
shown admiring himself in his suit, saying, "It's a bird! It's a plane. It's
Ralph!" In one of the basic "promos" an announcer gives this description of
Hinkley:
He may be unable to leap tall buildings in a single bound, he may be slower
than a speeding bullet and he may be less powerful than a locomotive . . . but
he's working on it. Give the poor guy a chance. He's just getting started.
But when he gets it going there's no stopping him.

During this "promo" the viewer sees Hinkley crash into a tree and then a
wall, and hears a bystander call him "butterfingers."
The "promos" include three other devices that plaintiffs assert provide
special support for their copyright infringement and unfair competition claims.
First, some of the "promos" show Hinkley flying (with his lantern) in outer
space, with the earth as a background; plaintiffs contend this is an attempt to
copy a scene from Superman I in which Superman performs exploits in outer
space.
Second, some of the "promos" show the Statute of Liberty, which plaintiffs
contend is an attempt to copy a movie scene of Superman flying around the
Statute. Third, in one of the "promos" Hinkley is shown watching a television
set on which appears a brief clip from the television cartoon "Superfriends"
showing the animated cartoon figure of Superman. In addition, plaintiffs assert
that a special videotape prepared to promote the Hero series, which was shown
to
ABC's sponsors and affiliated stations, used excerpts from the music soundtrack
of Superman I.
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The complaint alleged copyright infringement in violation of Section 101 of
the Copyright Act of 1976, 17 U.S.C. @ 501 (Supp. V 1981), unfair
competition
in violation of the common law of New York, and impairment of the value of
plaintiffs' trademarks and indicia associated with the Superman character in
violation of New York's "anti-dilution" statute, N.Y. Gen. Bus. Law @ 368-d
(McKinney 1968). Chief Judge Motley denied a preliminary injunction that
would
have barred the showing of the Hero series, 523 F. Supp. 611, and this Court
affirmed, 654 F.2d 204. The defendants then moved for summary judgment and
dismissal of the complaint. Chief Judge Motley initially denied that motion,
and prepared the case for bifurcated jury trials of the copyright infringement
and unfair competition claims, Fed. R. Civ. P. 42(b). Two specific copyright
claims, those concerning the use of the Superman I music soundtrack in the
special promotional videotape and the use of the clip from the "Superfriends"
cartoon in one of the televised "promos," were ruled to be outside the scope of
the litigation. The holder of the copyright in the Superman I music was not a
party to this suit, and the claim concerning the "Superfriends" cartoon clip was
not made until the eve of trial. Though the District Judge referred to these
two claims as "severed," it is apparent that Chief Judge Motley simply declined
to permit their addition to this lawsuit and left them [*239] available for
determination in another case. n3
n3 Since these two claims were not technically severed, leaving them for
determination in a later lawsuit did not destroy the finality of the judgment
that was entered dismissing all claims in this lawsuit. Cf. Fed. R. Civ. P.
54(b).
Prior to the start of the trial the District Judge, apparently harboring
doubts as to the need for a trial, conducted an extended pretrial conference,
lasting two weeks, to afford an opportunity to review the evidence to be offered

y the plaintiffs. In the course of the pretrial conference, Chief Judge Motley
ruled that the responses to an audience survey commissioned by the plaintiffs
were inadmissible, "because they were too general to be of any benefit to the
jury with respect to . . . the copyright claim." n4 The District Judge also
excluded all expert testimony on the copyright claim, including testimony,
sought to be introduced by plaintiffs, offered to show the inability of young
children to perceive the differences between Hinkley and Superman.
n4 The survey asked the following three questions:
(1) Was there anything about the character Ralph Hinkley that reminded you
of
any other character you had seen before?
(2) Did any scenes from that TV movie [Hero ] remind you of scenes from
any
other TV programs or movies in theatres or on TV?
(3) Aside from the actors, do you think that the people who wrote or made
this movies were responsible for any other TV programs or movies in theatres
or
on TV?
On December 9, 1981, Chief Judge Motley granted partial summary judgment
to
defendants on the claim that their "promos" infringed plaintiffs' copyrights,
but on all other issues reaffirmed her prior denial of summary judgment. n5 On
December 16, 1981, the District Judge concluded that no reasonable jury could
find that the parties' works were substantially similar and granted summary
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judgment to defendants on the entire copyright claim. Chief Judge Motley
initially expressed an intention to certify the latter ruling for appeal, 28
U.S.C. @ 1292(b) (1976), and to stay proceedings on the unfair competition
claims pending this Court's disposition of the copyright issue. However, after
reconsidering the matter, she concluded that public confusion as to the origin
of Hero was unlikely as a matter of law, and relied on this latter finding to
preclude trial on the Lanham Act and common law unfair competition claims,
and
also on the New York "anti-dilution" claim. On January 20, 1982, the District
Judge dismissed plaintiffs' complaint in a comprehensive opinion.530 F. Supp.
1187. On September 27, 1982, the Court denied defendants' motion to amend
the
judgment to include an award of attorney's fees and additional costs.
n5 At this juncture, Judge Motley had viewed all of the works at issue,
including the series of episodes based on the Hero pilot, but had not yet
completed her review of the documentary evidence and affidavits submitted by
the
parties.
II.

The basic issues concerning the copyright infringement claim are whether the
Hero and Superman works are substantially similar so as to support an inference
of copying and whether the lack of substantial similarity is so clear as to fall
outside the range of reasonably disputed fact questions requiring resolution by
a jury. The similarity to be assessed must concern the expression of ideas, not
the ideas themselves. Reyher v. Children's Television Workshop, 533 F.2d 87,
90-91 (2d Cir.), cert. denied, 429 U.S. 980, 50 L. Ed. 2d 588, 97 S. Ct. 492
(1976); Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930),
cert. denied, 282 U.S. 902, 75 L. Ed. 795, 51 S. Ct. 216 (1931), a distinction
easier to assert than to apply, see Peter Pan Fabrics, Inc. v. Martin Weiner
Corp., 274 F.2d 487, 489 (2d Cir. 1960) (decisions "inevitably . . . ad hoc ").
Though the issue of substantial similarity is frequently a fact issue for jury
resolution, see Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327
(9th Cir.1983, amended May 6, 1983); Hoehling v. Universal City Studios, Inc.,
618 F.2d 972, 977 (2d Cir.), cert. denied, [*240] 449 U.S. 841, 66 L. Ed. 2d
49, 101 S. Ct. 121 (1980), we have recognized that a court may determine
non-infringement as a matter of law on a motion for summary judgment, either
because the similarity between two works concerns only "Non -copyrightable
elements of the plaintiff's work," id., or because no reasonable jury, properly
instructed, could find that the two works are substantially similar, Durham
Industries, Inc. v. Tomy Corp., 630 F.2d 905, 918 (2d Cir. 1980). See Twentieth
Century-Fox Film Corp. v. MCA, Inc., supra, 715 F.2d 1327, 1329 & n.6; 3
Nimmer
on Copyright @ 12.10 (1983) (hereafter "Nimmer"). Before assessing the
District
Court's determination that summary judgment was appropriate in this case, we
consider the principles that guide decision in this area.
It is a fundamental objective of the copyright law to foster creativity.
However, that law has the capacity both to augment and diminish the prospects
for creativity. By assuring the author of an original work the exclusive
benefits of whatever commercial success his or her work enjoys, the law
obviously promotes creativity. At the same time, it can deter the creation of
new works if authors are fearful that their creations will too readily be found
to be substantially similar to preexisting works. The idea-expression dichotomy
originated in the case law and is now codified in the statute, 17 U.S.C. @
102(b) (Supp. V 1981), in an effort to enable courts to adjust the tension
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between these competing effects of copyright protection. Though imprecise, it
remains a useful analytic tool for separating infringing from non-infringing
works, especially when the essence of the work sought to be protected is a story
and the allegedly infringing work is accused of what Professor Nimmer calls
"comprehensive nonliteral similarity," 3 Nimmer @ 13.03[A] [1], duplicating the
"fundamental essence or structure" of a work, id. Confronting a claim of that
sort, courts have often invoked Learned Hand's "abstractions" test, n6 or
Professor Chaffee's "pattern" test. n7
n6 "Upon any work, especially upon a play, a great number of patterns of
increasing generality will fit equally well, as more and more of the incident is
left out. The last may perhaps be no more than the most general statement of

what the play is about, and at times consist only of its title; but there is a
point in this series of abstractions where they are no longer protected, since
otherwise the playwright could prevent the use of his "ideas," to which, apart
from their expression, his property is never extended." Nichols v. Universal
Pictures Corp., supra, 45 F.2d at 121.
n7 "No doubt, the line does lie somewhere between the author's idea and the
precise form in which he wrote it down. I like to say that the protection
covers the "pattern" of the work . . . the sequence of events, and the
development of the interplay of characters." Chafee, Reflections on the Law of
Copyright, 45 Colum. L. Rev. 503, 513-14 (1945).
When, as in this case, the claim concerns infringement of a character, rather
than a story, the idea-expression distinction has proved to be especially
elusive. In Nichols, Hand applied his "abstractions" test in determining that
neither the plot nor the characters of "Abie's Irish Rose" were infringed by a
similar play called "The Cohens and the Kellys." He noted that no case then
decided had found infringement of a character described only by written word,
although he recognized the possibility that a literary character could be
sufficiently delineated to support a claim of infringement by a second comer, 45
F.2d at 121. Copyrightability of a literary character has on occasion been
recognized, Burroughs v. Metro-Goldwyn-Mayer, Inc., 519 F. Supp. 388, 391
(S.D.N.Y. 1981) (Tarzan), aff'd with issue expressly left open, 683 F.2d 610,
621 (2d Cir. 1982). However, there has been no doubt that copyright protection
is available for characters portrayed in cartoons, even before Nichols, e.g.,
King Features Syndicate v. Fleischer, 299 Fed. 533 (2d Cir. 1924) (Barney
Google's horse, Spark Plug); Hill v. Whalen & Martell, Inc., 220 F. 359
(S.D.N.Y. 1914) (Mutt and Jeff); see also Empire City Amusement Co. v.
Wilton,
134 F. 132 (C.C.D. Mass. 1903) (Alphonse and Gaston) (claim sustained against
demurrer), and after Nichols, e.g., Walt Disney Productions v. Air Pirates, 581
F.2d 751 (9th Cir.), cert. denied, 439 U.S. 1132, 59 L. Ed. 2d 94, 99 S. Ct.
1054 [*241] (1978) (Mickey Mouse and other Disney characters); Detective
Comics, Inc. v. Burns Publications, Inc., supra, 111 F.2d at 433; Warner
Brothers, Inc. v. Film Ventures International, 403 F. Supp. 522, 525 (C.D. Cal.
1975); see also Sid & Marty Krofft Television Productions, Inc. v. McDonald's
Corp., 562 F.2d 1157, 1167 n.9, 1169 (9th Cir. 1977) (H.R. Pufnstuf puppets
created for children's television series). A pertinent consideration,
formulated in a case concerning greeting cards in which characters were one
element of the art work, Roth Greeting Cards v. United Card Co., 429 F.2d
1106,
1110 (9th Cir. 1970), is the extent to which the allegedly infringing character
captures the "total concept and feel" of the copyrighted character. See Sid &
Marty Krofft Television Productions, Inc. v. McDonald's Corp., supra, 562 F.2d
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at 1167 (puppets infringed); see also Eden Toys, Inc. v. Marshall Field & Co.,
675 F.2d 498, 500 (2d Cir. 1982) ("total concept and feel" pertinent but held
lacking as to toy snowman).
A somewhat paradoxical aspect of infringement disputes, especially pertinent
to claims of character infringement, concerns the attention courts give both to

similarities and differences in the two works at issue. Professor Nimmer
categorically asserts as a proposition, "It is entirely immaterial that in many
respects plaintiff's and defendant's works are dissimilar if in other respects
similarity as to a substantial element of plaintiff's work can be shown." 3
Nimmer @ 13.03[B] at 13-38. In Hand's pithy phrase, "No plagiarist can
excuse
the wrong by showing how much of his work he did not pirate." Sheldon v.
Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.), cert. denied, 298 U.S.
669, 80 L. Ed. 1392, 56 S. Ct. 835 (1936). Yet Professor Nimmer also
recognizes,
as a second proposition, that "a defendant may legitimately avoid infringement
by intentionally making sufficient changes in a work which would otherwise be
regarded as substantially similar to that of the plaintiff's," 3 Nimmer @
13.03[B] at 13-38.1 to -38.2, a proposition we recognized on the prior appeal of
this case, 654 F.2d at 211, and elsewhere, Eden Toys, Inc. v. Marshall Field &
Co., supra, 675 F.2d at 501; Durham Industries, Inc. v. Tomy Corp., supra, 630
F.2d at 913 & n.11. The two propositions are not facially inconsistent; the
second proposition contemplates a work that would be substantially similar if
its author had not made changes from the plaintiff's work. Yet in practice the
distinction between the two propositions has become somewhat blurred. We
have
observed that "numerous differences tend to undercut substantial similarity,"
id. at 913; see Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509
F.2d
64, 65-66 (2d Cir. 1974). This observation appears to go beyond Professor
Nimmer's second proposition by emphasizing the significance of differences that
do not necessarily change features of the plaintiff's work, but may be entirely
additional. To that extent, the observation modifies the first proposition.
The tension between these two propositions perhaps results from their
formulation in the context of literary works and their subsequent application to
graphic and three-dimensional works. A story has a linear dimension: it begins,
continues, and ends. If a defendant copies substantial portions of a
plaintiff's sequence of events, he does not escape infringement by adding
original episodes somewhere along the line. A graphic or three-dimensional
work
is created to be perceived as an entirety. Significant dissimilarities between
two works of this sort inevitably lessen the similarity that would otherwise
exist between the total perceptions of the two works. The graphic rendering of
a character has aspects of both the linear, literary mode and the
multi-dimensional total perception. What the character thinks, feels, says, and
does and the descriptions conveyed by the author through the comments of other
characters in the work episodically fill out a viewer's [*242] understanding
of the character. At the same time, the visual perception of the character
tends to create a dominant impression against which the similarity of a
defendant's character may be readily compared, and significant differences
readily noted.
Ultimately, care must be taken to draw the elusive distinction between a
substantially similar character that infringes a copyrighted character despite
slight differences in appearance, behavior, or traits, and a somewhat similar
though non-infringing character whose appearance, behavior, or traits,
especially their combination, significantly differ from those of a copyrighted
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character, even though the second character is reminiscent of the first one.
Stirring one's memory of a copyrighted character is not the same as appearing to
be substantially similar to that character, and only the latter is infringement.
See Ideal Toy Corp. v. Kenner Products Division of General Mills Fun Group,
Inc., 443 F. Supp. 291, 305 (S.D.N.Y. 1977).
An entirely separate issue of infringement, also posed by this case, concerns
what Professor Nimmer calls "fragmented literal similarity," 3 Nimmer @
13.03[A][2], duplicating the exact or nearly exact wording of a fragment of the
protected work, id. With respect to such claims, courts have invoked two
distinct doctrines. First, a de minimis rule has been applied, allowing the
literal copying of a small and usually insignificant portion of the plaintiff's
work. See, e.g., G.R. Leonard & Co. v. Stack, 386 F.2d 38 (7th Cir. 1967);
Werlin v. Reader's Digest Ass'n, Inc., 528 F. Supp. 451, 463-64 (S.D.N.Y.
1981).
Second, under the "fair use" doctrine, codified in 17 U.S.C. @ 107(2) (Supp. V
1981), courts have allowed the taking of words or phrases when adapted for use
as commentary or parody, see, e.g., Elsmere Music, Inc. v. National
Broadcasting
Co., 623 F.2d 252 (2d Cir. 1980) (per curiam); Berlin v. E.C. Publications Inc.,
329 F.2d 541 (2d Cir.), cert. denied, 379 U.S. 822, 13 L. Ed. 2d 33, 85 S. Ct.
46 (1964).
The "parody" branch of the "fair use" doctrine is itself a means of fostering
the creativity protected by the copyright law. It also balances the public
interest in the free flow of ideas with the copyright holder's interest in the
exclusive use of his work. Especially in an era of mass communications, it is
to be expected that phrases and other fragments of expression in a highly
successful copyrighted work will become part of the language. That does not
mean they lose all protection in the manner of a trade name that has become
generic. See, e.g., King-Seeley Thermos Co. v. Aladdin Industries, 321 F.2d
577
(2d Cir. 1963); Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921). No
matter how well known a copyrighted phrase becomes, its author is entitled to
guard against its appropriation to promote the sale of commercial products.
That doctrine enabled the proprietors of the Superman copyright to prevent a
discount chain from using a television commercial that parodied well-known
lines
associated with Superman. D.C. Comics, Inc. v. Crazy Eddie, Inc., 205
U.S.P.Q.A
1177 (S.D.N.Y. 1979) ("Look! . . . Up in the sky! . . . It's a bird! . . . It's
a plane . . . It's . . . Crazy Eddie!"). But an original work of authorship
with elements of parody, though undoubtedly created in the hope of commercial
success, stands on a different footing from the products of a discount chain.
Whatever aesthetic appeal such a work may have results from the creativity that
the copyright law is designed to promote. It is decidedly in the interests of
creativity, not piracy, to permit authors to take well-known phrases and
fragments from copyrighted works and add their own contributions of
commentary
or humor. n8 After all, any work of sufficient notoriety to be the object of
parody has already secured for its proprietor considerable financial benefit.
According that proprietor further protection against parody does little to

promote creativity, but it places a [*243] substantial inhibition upon the
creativity of authors adept at using parody to entertain, inform, or stir public
consciousness.
n8 We have no occasion in this case to consider the limiting principle that
arises when attempts at parody take the form of scatological humor, see, e.g.,
MCA, Inc. v. Wilson, 677 F.2d 180 (2d Cir. 1981); Walt Disney Productions v.
Air
Pirates, supra.
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Applying these principles to this case, we conclude that Chief Judge Motley
correctly entered summary judgment for the defendants on the claim of
copyright
infringement. Plaintiffs make no claim that the Hero pilot, subsequent
episodes, or "promos" infringes the story of any Superman works. Their
contention is that the Hero character, Ralph Hinkley, is substantially similar
to Superman and that the Hero works impermissibly copied what plaintiffs call
the "indicia" of Superman, a concept broad enough to include Superman's
costume,
his abilities, the well-known lines associated with him -- in short, anything
occurring in the Hero works that might remind a viewer of Superman.
The total perception of the Hinkley character is not substantially similar to
that of Superman. On the contrary, it is profoundly different. Superman looks
and acts like a brave, proud hero, who has dedicated his life to combating the
forces of evil. Hinkley looks and acts like a timid, reluctant hero, who
accepts his missions grudgingly and prefers to get on with his normal life.
Superman performs his superhuman feats with skill, verve, and dash, clearly the
master of his own destiny. Hinkley is perplexed by the superhuman powers his
costume confers and uses them in a bumbling, comical fashion. In the genre of
superheroes, Hinkley follows Superman as, in the genre of detectives, Inspector
Clouseau follows Sherlock Holmes.
However, we do not accept defendants' mode of analysis whereby every skill
the two characters share is dismissed as an idea rather than a protected form of
expression. That approach risks elimination of any copyright protection for a
character, unless the allegedly infringing character looks and behaves exactly
like the original. A character is an aggregation of the particular talents and
traits his creator selected for him. That each one may be an idea does not
diminish the expressive aspect of the combination. But just as similarity
cannot be rejected by isolating as an idea each characteristic the characters
have in common, it cannot be found when the total perception of all the ideas as
expressed in each character is fundamentally different.
An infringement claim would surely be within the range of reasonable jury
fact issues if a character strongly resembled Superman but displayed some train
in inconsistent with the traditional Superman image. If a second comer
endowed
his character with Superman's general appearance, demeanor, and skills, but
portrayed him in the service of the underworld, a jury would have to make the
factual determination whether the second character was Superman gone astray or

a
new addition to the superhero genre. In this case, however, a reasonable jury
could not conclude that Hinkley is substantially similar to the Superman
character with only a change of name. The overall perception of the way
Hinkley
looks and acts marks him as a different, non-infringing character who simply
has
some of the superhuman traits popularized by the Superman character and now
widely shared within the superhero genre.
The same considerations make evident the correctness of Chief Judge
Motley's
ruling that the "promos" for the Hero series present no jury issue concerning
infringement of the Superman character. By aggregating the total number of
viewer impressions made by all the showings of the thirteen basic "promos" and
their minor variations, appellants imply, and we agree, that the visual impact
of the series of "promos" should be primarily assessed. A viewer of an
adequate
sampling of the "promos" would necessarily be exposed to the Hinkley
characteristics that distinguish him from Superman. In six of the thirteen
basic "promos" Hinkley either flies out of control, crash lands, or cringes in
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cowardly fashion at the firing of bullets. In six other "promos" his flying,
through uneventful, is aided (either for vision or balance) by carrying in
[*244] one hand a large lantern. n9 It may be that within a series of
generally non-infringing "promos" a single "promo" could be so substantially
similar to a copyrighted character as to establish infringement or at least
create a fair factual issue for jury consideration. Here, however, no single
"promo" is that similar to the Superman character, and whatever recollections of
Superman may be stirred by the "promos" showing Hinkley flying without
incident
are quickly dispelled by the remainder of the series in which his flying skills
are decidedly not super. Nor does infringement arise because one "promo"
shows
the Statute of Liberty and another shows Hinkley flying in outer space with the
earth in the background. Appellants' claim that these shots infringe scenes
from Superman I is too extravagant to be maintained. The Statute of Liberty is
a widely recognized symbol of the United States, available for portrayal in any
fictional work, and Superman has no monopoly among fictional heroes on
self-propelled flight in outer space.
n9 The script for the Hero pilot explains that Hinkley's lantern is one of
two portable landing lights that he has ripped from their moorings at a heliport
as he prepares to fly toward the President's helicopter. In flight, he rolls to
his right out of control. Hinkley then drops the landing light he has been
carrying in his right hand and discovers that with the extra weight of the light
in his left hand he is able to maintain his balance.
That leaves for consideration on the infringement claim the use in the Hero
episodes and "promos" of lines that either mention Superman and other
characters

from the Superman saga or incorporate phrases associated with Superman. The
use
of such lines is manifestly not infringement. In each instance the lines are
used, not to create a similarity with the Superman works, but to highlight the
differences, often to a humorous effect. Appellants acknowledge the contrasting
point made by some of the Hero lines, but insist nevertheless that the point may
not be appreciated by some of the viewers, especially young viewers who make
up
a significant share of the television audience for the Hero series. Appellants
were prepared to offer expert testimony to show that some children would not
perceive the negatives when the announcer says that Hinkley "may be unable to
leap tall buildings in a single bound," "may be slower than a speeding bullet,"
and "may be less powerful than a locomotive." We do not doubt that some
viewers
may miss the point, but their misunderstanding does not establish infringement.
Perhaps if Hero were a children's series, aired on Saturday mornings among the
cartoon programs, we would have greater concern for the risk that lines intended
to contrast Hinkley with Superman might be mistakenly understood to suggest
that
Hero was a Superman program. Cf. Ideal Toy Corp. v. Fab-Lu, Ltd., 261 F.
Supp.
238, 241-42 (S.D.N.Y. 1966) (children's perception of television commercial for
dolls). But when a work is presented to a general audience of evening
television viewers, n10 the possible misperception of some young viewers
cannot
prevent that audience from seeing a program that will readily be recognized by
the "average lay observer," Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021,
1022
(2d Cir. 1966), as poking fun at, rather than copying, a copyrighted work.
n10 Independent television audience surveys, not disputed by the parties,
estimated that 60% of the Hero viewers were older than 20, and 73% were older
than 12.
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Our conclusion is not altered by plaintiffs' proffered evidence of a survey
of persons who viewed the Hero pilot. The survey reported, among other
things,
that of the 45% of those interviewed who said Hinkley reminded them of some
other character, 74% (33% of the entire sample) said they were reminded of
Superman. We appreciate the problem plaintiffs confronted in designing the
survey. If they asked too pointed a question, e.g., "Do you think Hinkley is
substantially similar to Superman?", they would have been faulted for using a
leading question. On the other hand, their open-ended questions caused Chief
Judge Motley to rule the entire survey inadmissible because the responses were
"too general." 530 F. Supp. at 1197 [*245] n.3. That dilemma simply
illustrates the problems that arise when surveys are sought to be used as an aid
in determining issues of copyright infringement. See Ideal Toy Corp. v. Kenner
Products Division of General Mills Fun Group, Inc., supra, 443 F. Supp. at 304
(cautioning against "the dangerous precedent of allowing trial by the court to
be replaced by trial by public opinion poll"). The "substantial similarity"
that supports an inference of copying sufficient to establish infringement of a

copyright is not a concept familiar to the public at large. It is a term to be
used in a courtroom to strike a delicate balance between the protection to which
authors are entitled under an act of Congress and the freedom that exists for
all others to create their works outside the area protected against
infringement. We need not and do not decide whether survey evidence of the
sort
tendered in this case would be admissible to aid a jury in resolving a claim of
substantial similarity that lies within the range of reasonable factual dispute.
However, when a trial judge has correctly ruled that two works are not
substantially similar as a matter of law, that conclusion is not to be altered
by the availability of survey evidence indicating that some people applying some
standard of their own were reminded by one work of the other. Courts have an
important responsibility in copyright cases to monitor the outer limits within
which juries may determine reasonably disputed issues of fact. If a case lies
beyond those limits, the contrary view of a property drawn sample of the
population, or even of a particular jury, cannot be permitted to enlarge (or
diminish) the scope of statutory protection enjoyed by a copyright proprietor.
III.
The unfair competition and trademark dilution claims present slightly
different issues, but, as will appear, we agree with Chief Judge Motley that
defendants were entitled to summary judgment on these claims as well as on the
infringement claims. Preliminarily, plaintiffs contend that summary judgment
was procedurally improper because it was entered by the District Court "sua
sponte" and without consideration of all of the evidence they proposed to offer
had the unfair competition claims gone to trial. We disagree.
Defendants moved for summary judgment with respect to the entire
complaint,
affording plaintiffs a full opportunity to submit memoranda and affidavits in
opposition. After the District Court's initial denial of the motion, which was
made prior to viewing all of the pertinent works, defendants appear to have
renewed the motion orally, at least with respect to the infringement claims.
Thereafter Chief Judge Motley granted the defendants partial summary judgment
with respect to the infringement claims and expressed an intention to certify
that ruling for appeal pursuant to 28 U.S.C. @ 1292(b) (1976). Upon further
reflection and with the opportunity to consider the mass of plaintiffs' evidence
presented during the two-week pretrial session, the District Court entered
summary judgment for defendants on all of the claims.
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Though we find no procedural error, we think the plaintiffs' point is not
answered, as defendants contend, by the provision of Fed. R. Civ. P. 54(b)
specifying that "any order or other form of decision . . . which adjudicates
fewer than all of the claims . . . is subject to revision at any time before the
entry of judgment adjudicating all the claims. . . ." The District Court's
initial ruling denying summary judgment on all claims was not an order
"adjudicating" any of them; it simply left them for adjudication at trial. n11
Normally, a trial court's reconsideration of a denial of summary judgment occurs
upon presentation of a renewed motion for summary judgment. See 6 Moore's
Federal Practice P56.14[2] at 56-366 (2d ed. 1982). But whether or not the

motion is renewed, a trial court has [*246] discretion to reconsider an
interlocutory ruling, and no abuse of that discretion occurred here since the
plaintiffs had a full opportunity to oppose the motion when first made and did
not act to their detriment in reliance on the initial ruling. Moreover, the
District Court accorded the plaintiffs extra consideration by reviewing nearly
all of their proposed evidence before making a final decision, even though the
essence of the claims could be determined by inspection of only the works in
question. n12
n11 The "subject to revision" language of Rule 54(b) underscores that a grant
of partial summary judgment on one of several claims does not have res judicata
effect prior to the entry of an appealable judgment. See 6 Moore's Federal
Practice P54.42 (1983).
n12 The only significant evidence not considered was the testimony of several
witnesses offered to show that the character and indicia of Superman had
acquired secondary meaning, a point defendants have not disputed, and to show
the strength of these marks, a point we may assume for purposes of this appeal.
Turning to the merits of the unfair competition claims, we have noted that
"the absence of substantial similarity leaves little basis for asserting a
likelihood of confusion or palming off" for purposes of a claim under section
43(a) of the Lanham Act, 15 U.S.C. @ 1125(a) (1976), Durham Industries, Inc.
v.
Tomy Corp., supra, 630 F.2d at 918. We do not doubt that the image of a
cartoon
character and some indicia of that character can function as a trademark to
identify the source of a work of entertainment, see DC Comics, Inc. v. Filmation
Associates, 486 F. Supp. 1273 (S.D.N.Y. 1980). But, as with claims of copyright
infringement, courts retain an important authority to monitor the outer limits
of substantial similarity within which a jury is permitted to make the factual
determination whether there is a likelihood of confusion as to source. Though
likelihood of confusion is frequently a fairly disputed issue of fact on which
reasonable minds may differ, see DC Comics, Inc. v. Reel Fantasy, Inc., 696
F.2d
24 (2d Cir. 1982), the issue is amenable to summary judgment in appropriate
cases, B & L Sales Associates v. H. Daroff & Sons, Inc., 421 F.2d 352 (2d
Cir.),
cert. denied, 398 U.S. 952, 26 L. Ed. 2d 292, 90 S. Ct. 1873 (1970).
We agree with Chief Judge Motley that a visual comparison of Superman
works
with the Hero series and "promos" establishes as a matter of law a lack of
substantial similarity that would create a likelihood of confusion as to source.
Our discussion of the differences in "total concept and feel" of the central
characters of Superman and Hinkley applies to the issue of likelihood of
confusion as well as to copyright infringement. We do not doubt that there may
be some viewers among the television audience who think that the Hero series
was
produced or authorized by those responsible for the Superman movies,
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television series, or comics. Some may come to that conclusion with respect to
every film or television program portraying a character with superhuman
abilities. Perhaps some viewers think that every program with a dramatic
courtroom lawyer was made by the producers of the Perry Mason series, or that
every show featuring a doctor is a spin-off of the Marcus Welby series. The
"average lay observer" test, however, must be applied by fact-finders within an
outer limit of reasonable fact-finding marked by the courts. Otherwise the
scope of protection a competitor is entitled to enjoy would be expanded far
beyond what Congress prescribed in the Lanham Act. Thus, as we concluded
with
respect to the copyright claim, the availability of survey evidence indicating
that some viewers associated the Hero series with Superman does not create a
reasonably disputed factual issue of likelihood of confusion as to source when
the works are as different as those in this case.
Appellants contend that summary judgment was inappropriate on the unfair
competition claims because of the existence of evidence offered to show that
defendants intended to make the Hero series confusingly similar to the
Superman
works. For example, plaintiffs cite the fact that Cannell rejected the first
proposal for Hinkley's costume, a beige and yellow outfit with a white collar
and "fold-up wings," and selected instead a red and black outfit with a cape,
somewhat similar to Superman's red and blue costume. We have recognized
that
evidence of intentional copying raises a [*247] presumption that a second
comer intended to create a confusing similarity of appearance and succeeded.
Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950, 954 (2d Cir.
1980) (applying New York law). But if comparison of the works reveals no fair
jury issue concerning likelihood of confusion, then intent to copy, even if
found from the proffered evidence, would not establish a Lanham Act violation.
See B & L Sales Associates v. H. Daroff & Sons, Inc., supra, 421 F.2d at 354;
Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-le Coultre
Watches,
Inc., 221 F.2d 464, 466-67 (2d Cir.), cert. denied, 350 U.S. 832, 100 L. Ed.
743, 76 S. Ct. 67 (1955); Vitarroz Corp. v. River Brand Rice Mills, Inc., 266 F.
Supp. 981, 986 (S.D.N.Y. 1967).
We also recognize that lack of substantial similarity is not a complete
answer to a Lanham Act claim, since a second comer can violate section 43(a)
by
falsely representing his goods as those of the trademark owner, see Sutton
Cosmetics (P.R.) Inc. v. Lander Co., 455 F.2d 285, 287-88 (2d Cir. 1972). A
claim of "passing off" or "palming off" may be established even if the goods are
not confusingly similar; the wrong is in the misrepresentation of a common
source. However, in this case this aspect of the section 43(c) claim is also
defeated as a matter of law by visual comparison of the works in question.
Whether a television viewer could be misled into thinking that the Hero series
was produced or authorized by those responsible for the Superman films
depends
on the extent to which the Hero programs and "promos" convey such a
misrepresentation, even if it was not intended. See Parkway Baking co. v.
Freihofer Baking Co., 255 F.2d 641, 648 & n.7 (3d Cir. 1958). Plainly there is
no overt claim in this regard, and we agree with Chief Judge Motley that
perceiving the materials through the eyes and ears of the average lay observer
does not create a fair jury issue as to whether a misrepresentation of common

source or sponsorship has been implied. The works are too fundamentally
different, and the references in the Hero programs and "promos" to names and
fragments of lines associated with Superman are pointedly made for purposes of
contrast. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v.
Chandris
America Lines, Inc., 321 F. Supp. 707, 712 (S.D.N.Y. 1971) ("The Greatest
Show
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on Earth Isn't").
Plaintiffs fare no better to the extent that their claims are based on New
York's common law of unfair competition or the state anti-dilution statute. We
have recognized the breadth of New York's common law tort of unfair
competition
and have not hesitated to apply it to pirated audio-visual works, so long as the
cause of action was not preempted by the Copyright Act of 1976, 17 U.S.C. @
301
(Supp. V 1981). Roy Export Co. v. Columbia Broadcasting System, Inc., 672
F.2d
1095, 1097 nn. 1 & 2, 1104-06 (2d Cir.), cert. denied, 459 U.S. 826, 103 S. Ct.
60, 74 L. Ed. 2d 63 (1982). More recently, we have noted the preemptive effect
of the 1976 Act with respect to a New York unfair competition claim. Arch
Oboler and Nostalgia Lane, Inc. v. Goldin, 714 F.2d 211, slip op. at 5455 (2d
Cir. Aug. 1, 1983). We do not read Oboler to hold that all state unfair
competition claims concerning works of authorship have been preempted. Since
the Copyright Act is exclusive, after January 1, 1978, only with respect to
rights "equivalent to any of the exclusive rights within the general scope of
copyright," 17 U.S.C. @ 301(a) (Supp. V 1981), state law claims that rely on
the misappropriation branch of unfair competition are preempted, see Durham
Industries, Inc. v. Tomy Corp., supra, 630 F.2d at 918-19; 1 Nimmer @
1.01[B][1]. However, to the extent that plaintiffs are relying on state unfair
competition law to allege a tort of "passing off," they are not asserting rights
equivalent to those protected by copyright and therefore do not encounter
preemption. See id. @@ 1.01[B][1] n.47, 2.12 n.25. Their claim fails
nevertheless on the merits. The lack of a fairly triable issue of fact as to
"passing off" defeats this aspect of the state law claim, just as it did the
similar theory advanced under the Lanham Act. [*248]
Finally, to whatever extent plaintiffs' claims under New York's anti-dilution
statute, N.Y. Gen. Bus. Law @ 368-d (McKinney 1968), to not involve rights
equivalent to those protected by copyright and thereby escape preemption, they
too fail on the merits as a matter of law. Though an anti-dilution claim may be
established in the absence of likely confusion as to source, there must be a
mark of sufficient distinction to warrant the statute's special protection and
there must be a blurring or tarnishing of the plaintiff's mark sufficient to
constitute dilution. Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624-26
(2d Cir. 1983). Even if we assume that the Superman character and related
indicia function as trademarks with the requisite distinctiveness, plaintiffs
have failed as a matter of law to present a triable issue as to the blurring or
tarnishing of their marks. Cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200, 204-05 & n.8 (2d Cir. 1979) (dilution by showing

"sexually depraved film" using distinctive uniforms "almost identical" with
those of plaintiffs). Even if Superman's trademarks are not as indestructible
as the character that spawned them, no reasonable jury could find that the Hero
series or "promos" blurred or tarnished those marks.
IV.
The cross-appeal need not detain us. Though defendants were surely entitled
to urge the District Judge that creativity and competition could be chilled by
the prospect of defending litigation like this suit and that defendants should
therefore be awarded attorney's fees under the Copyright and Lanham Acts, 17
U.S.C. @ 505 (Supp. V 1981); 15 U.S.C. @ 1117 (1976), for having to resist
plaintiffs' claims, Chief Judge Motley's decision not to award fees and added
costs was not an abuse of discretion.
PAGE 101
720 F.2d 231, *248; Copy. L. Rep. (CCH) P25,584;
LEXSEE
222 U.S.P.Q. (BNA) 101
The judgment of the District Court is affirmed.
DATE: SEPTEMBER 30, 1993
PAGE 102
CLIENT: CAREER
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PAGE 103
3RD CASE of Level 1 printed in FULL format.
COACH LEATHERWARE COMPANY, INC., Plaintiff-Appellee, v.
ANNTAYLOR, INC.; LAURA LEATHER GOODS, LTD.; A & R
HANDBAG,
INC. and RON'S ELEGANCE CENTER, INC., Defendants,
ANNTAYLOR,
INC.; LAURA LEATHER GOODS, LTD.; and A & R HANDBAG,
INC.,
Defendants-Appellants
Nos. 90-9082, 90-9124
UNITED STATES COURT OF APPEALS FOR THE SECOND
CIRCUIT
933 F.2d 162; 1991 U.S. App. LEXIS 10128; 18 U.S.P.Q.2D
(BNA) 1907

PRIOR HISTORY:
[**1]
April 5, 1991, Argued
May 15, 1991, Decided
Appeal from a judgment of the United States District Court for the Southern
District of New York (Kevin T. Duffy, Judge), granting, sua sponte, summary
judgment in favor of Coach Leatherware Company, Inc. ("Coach"), permanently
enjoining defendants-appellants from manufacturing and selling handbags which
emulate those produced by Coach.
DISPOSITION: Affirmed in Part, Reversed in Part, and Remanded.
COUNSEL: LUIGI P. De MAIO, De Maio & Hughes, New York, New York,
for
Defendants-Appellants Laura Leather Goods, Ltd. and A & R Handbags, Inc.
JAMES A. BEHA II, Hertzog, Calamari & Gleason, New York, New York,
for
Defendant-Appellant AnnTaylor, Inc.
DANIEL S. EBENSTEIN, Amster, New York, Rothstein & Ebenstein, New
York, New
York (Anthony F. Lo Cicero, Steven M. Levy, Amster, Rothstein & Ebenstein,
New
York, New York, of counsel), for Plaintiff-Appellee Coach Leatherware
Company,
Inc.
JUDGES: Kaufman, Winter and Miner, Circuit Judges. Judge Winter concurs in
part
and dissents in part in a separate opinion.
OPINIONBY: KAUFMAN
OPINION: [*165]
KAUFMAN, Circuit Judge
Copying women's designer handbags appears to be a convenient device for
those
seeking to ride fashion's often unpredictable [**2] waves. Abundant support
for this observation is provided on Manhattan's Fifth Avenue where within close
proximity of the flagship stores of Louis Vuitton, Gucci and Chanel, street
vendors peddle imitations of these familiar designs. More confusing, and thus
more troublesome, is the sale of copies by respected retailers. At the heart of
this case is just such a circumstance -- the sale of imitation Coach
PAGE 104
933 F.2d 162, *165; 1991 U.S. App. LEXIS 10128, **2;
18 U.S.P.Q.2D (BNA) 1907
Leatherware Company, Inc. ("Coach") handbags by the AnnTaylor, Inc.
("AnnTaylor") chain of retail stores. At issue is the potential for consumer

confusion caused by this situation.
In an effort to maintain its market share and its preferred status among
customers, Coach instituted this action against appellants AnnTaylor, Laura
Leather Goods, Inc. ("Laura") and A & R Handbag, Inc. ("A & R") for
trademark
infringement pursuant to section 43(a) of the Lanham Act and for unfair
competition under New York State common law. Coach alleged that appellants
had
produced imitations of its distinctive leather handbags in a manner likely to
cause confusion in the marketplace. Following Coach's motion for a preliminary
injunction and appellants' cross-motion for summary judgment, Judge Duffy,
[**3] sua sponte, granted summary judgment in favor of the nonmoving party,
Coach. See Coach Leatherware Co. v. AnnTaylor, Inc., 751 F. Supp. 1104, 18
U.S.P.Q.2D (BNA) 1482 (S.D.N.Y. 1990). In addition, he enjoined appellants
from
substantially emulating any of Coach's more than fifty handbag designs. We
believe, however, the record does not support the grant of summary judgment
regarding those unregistered aspects of Coach's products. Accordingly, we affirm
in part, reverse in part and remand for further proceedings consistent with our
decision.
I. Background
We need discuss only those facts and prior proceedings relevant to the
disposition of this appeal. Some contextual detail, however, is unavoidable
because of the complex nature of trademark infringement claims.
Coach, a New York corporation, has been engaged in the design,
manufacture,
marketing, distribution and sale of high quality, leather fashion products for
approximately fifty years. Coach products are sold exclusively under its own
label and are marketed in about fifty Coach-owned stores, in clearly designated
Coach displays situated in expensive department stores and through Coach mail
order catalogues.
AnnTaylor, a prominent [**4] retailer of quality women's apparel, is a
wholly-owned subsidiary of AnnTaylor Holding, Inc., which in turn is owned by
Merrill Lynch Co., Inc. AnnTaylor, like Coach, considers its market to consist
of the stereotypical successful career women. Presently, the more than 160
AnnTaylor stores are located primarily in upscale malls, exclusive
thoroughfares, and specialty retail centers. Laura, and its affiliate, A & R
(collectively "Laura"), are also New York corporations engaged in the business
of designing, manufacturing and selling handbags.
The instant litigation was initiated after Coach learned that some of its
"classic" handbag designs, which have been part of its product line for the past
fifteen years, were being copied and sold at AnnTaylor. AnnTaylor and Laura
had
allegedly replicated for sale three handbag styles made prominent by Coach: the
"Dinky Bag" -- a small handbag with a narrow profile, a flap that extends to
cover the entire face of the bag and a shoulder length strap; the "Duffle Sac"
-- a large handbag with a circular bottom, tapered sides and a leather strap
affixed to its top by solid brass hardware; and the "Convertible Clutch" -- a
larger version of the Dinky [**5] Bag. Though dissimilar in several

significant respects, each Coach bag shares several features: all are produced
from full-grain cowhide, contain exterior binding at external seams and
PAGE 105
933 F.2d 162, *165; 1991 U.S. App. LEXIS 10128, **5;
18 U.S.P.Q.2D (BNA) 1907
incorporate brass hardware components. In addition, the inside of each bag
contains a Coach registration number and various informational paraphernalia
unique to Coach marketing tactics.
[*166]
Over the years, Coach has attached to all of its handbags distinctive
lozenge-shaped leather tags embossed with the name "Coach Leatherware." The
tags, suspended from beaded brass chains, have become distinctive and valuable
through Coach's promotional efforts and by virtue of its upscale reputation --
Coach store managers report that the tags alone are often subject to theft.
Though Coach bags are not themselves registered, the Coach tag is registered on
the Principal Register of the United States Patent and Trademark Office.
Apparently seeking to capitalize on the popularity of the Coach "look", the
AnnTaylor handbags, in the Coach style, carry a similar leather tag embossed,
however, with AnnTaylor's name and distinctive typeface.
II. Proceedings Below
In May 1990, Coach filed a complaint alleging that Laura [**6] and
AnnTaylor manufactured and sold handbags which essentially mimic design
features
made famous by Coach. Subsequently, the parties engaged in extensive
discovery:
both sides retained experts, took depositions, secured affidavits and exchanged
documents. Coach went so far as to conduct a survey to determine whether
consumers would confuse the AnnTaylor bags with Coach bags, even when the
products were clearly labelled. AnnTaylor, though it has not elicited its own
evidence to challenge the survey data, contends it should be given no weight
since serious methodological flaws, including result-oriented questions, biased
the results.
In August 1990, Coach moved preliminarily to enjoin appellants from
replicating the Dinky Bag, the Duffle Sac, and the Convertible Clutch. Coach
argued that it was likely to succeed on its trademark infringement and unfair
competition claims, and contended that failure to issue an injunction
immediately would result in irreparable loss of profits and goodwill.
In response, appellants cross-moved for summary judgment, alleging that
Coach
had not established a prima facie case of infringement. AnnTaylor averred that
its clear labelling of the merchandise, [**7] its dissimilar trade name
and logo, and its failure to parody Coach's unique product packaging,
eliminated any likelihood that customers were confused as to the source of the
product.
After searching the record and examining the submissions, Judge Duffy
determined appellants' handbags were confusingly similar to those manufactured
by Coach. Accordingly, in his November 8, 1990 Memorandum and Order, he

denied
appellants' summary judgment motion and instead granted summary judgment in
favor of Coach, finding AnnTaylor and Laura liable, as a matter of law, for
trade dress infringement and common law unfair competition. Coach's motion
for a
preliminary injunction was denied as moot.
The judgment permanently enjoined appellants from replicating any of
Coach's
approximately fifty handbag styles. Further proceedings concerning possible
monetary relief were referred to Magistrate Judge Naomi Buchwald, pursuant to
PAGE 106
933 F.2d 162, *166; 1991 U.S. App. LEXIS 10128, **7;
18 U.S.P.Q.2D (BNA) 1907
18 U.S.C. @ 636(b)(1)(B).
Because we believe the district court's action prevented AnnTaylor and Laura
from raising a genuine issue of material fact, we reverse the summary judgment
insofar as it determines appellants' copying of the bags violates section 43(a)
of the Lanham Act and [**8] the New York common law of unfair
competition. We
affirm, however, the grant of summary judgment with regard to the copying of
the
registered Coach tags. We find such replication violates section 32 of the
Lanham Act which provides protection for registered marks.
III. Summary Judgment
Though the principles governing summary judgment are by no means novel,
they
bear repeating for purposes of this appeal. Rule 56(c) of the Federal Rules of
Civil Procedure provides that summary judgment "shall be rendered forthwith if
the pleadings, depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no genuine issue as to
any material fact [*167] and that the moving party is entitled to a judgment
as a matter of law." In reaching this determination, a court's responsibility is
to assess whether there are any material factual issues to be tried, while
resolving ambiguities and drawing reasonable inferences against the moving
party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49, 91 L. Ed. 2d 202,
106 S. Ct. 2505 (1986); Knight v. United States Fire Ins. Co., 804 F.2d 9, 11-12
(2d Cir. 1986), cert. denied, 480 U.S. 932, 94 L. Ed. 2d 762, 107 S. Ct. 1570
(1987). [**9] "The judge's inquiry . . . unavoidably asks whether reasonable
jurors could find by a preponderance of the evidence that the plaintiff is
entitled to a verdict." Anderson, 477 U.S. at 252. Entry of summary judgment
indicates that no reasonable jury could return a verdict for the losing party.
See Issacharoff and Loewenstein, Second Thoughts About Summary Judgment,
100
Yale L.J. 73, 84-89 (1990).
In the instant proceeding, we are presented with the somewhat unusual
circumstance where the district court has independently raised and granted a
summary judgment motion in favor of the nonmoving party. Though not
expressly
authorized by Rule 56, this practice has become an accepted method of

expediting
litigation. See Celotex Corp. v. Catrett, 477 U.S. 317, 326, 91 L. Ed. 2d 265,
106 S. Ct. 2548 (1986); 10A C. Wright, A. Miller & M. Kane, Federal Practice
and
Procedure @ 2720, pp. 33-35 (1983). Somewhat more nebulous is the issue
whether
the moving party must be afforded an opportunity to respond to the court's sua
sponte action.
The prevailing view in this Circuit is that a court need not give notice of
its intention to enter summary judgment against [**10] the moving party. See,
e.g., Abrams v. Occidental Petroleum Corp., 450 F.2d 157, 165-66 (2d Cir.
1971),
aff'd, 411 U.S. 582, 36 L. Ed. 2d 503, 93 S. Ct. 1736 (1972); Local 33, Int'l
Hod Carriers Bldg. & Common Laborers' Union of Am. v. Mason Tenders Dist.
Council of Greater N.Y., 291 F.2d 496, 505 (2d Cir. 1961). As Judge Harold
Medina, a former professor of practice and procedure, stated with his
characteristic acumen, "it is most desirable that the court cut through mere
outworn procedural niceties and make the same decision as would have been
made
had defendant made a cross-motion for summary judgment." Local 33, Int'l Hod,
291 F.2d at 505. To determine whether the absence of a cross motion affected
the
result, an appellate court must ascertain whether the facts before the district
court were fully developed so that the moving party suffered no procedural
PAGE 107
933 F.2d 162, *167; 1991 U.S. App. LEXIS 10128, **10;
18 U.S.P.Q.2D (BNA) 1907
prejudice. See 10A Wright, Miller & Kane, supra, at 35.
When assessing the potential for prejudice, we are mindful that appellants'
summary judgment motion was directed at proving that Coach, who had the
burden
of persuasion, could not establish a prima facie Lanham Act [**11] violation.
See Celotex, 477 U.S. at 323-25. In their papers, AnnTaylor and Laura focused
on
undermining Coach's proof and did not necessarily include all evidence that
might be presented at trial in their defense. Had Coach initially moved for
summary judgment, instead of the more limited motion for a preliminary
injunction, appellants would have been on notice to incorporate all rebutting
evidence available to them.
This concern, however, does not necessarily undermine the propriety of the
district court's action. Implicit in our earlier decisions is the recognition
that despite varying burdens of production, the threat of procedural prejudice
is greatly diminished if the court's sua sponte determination is based on issues
identical to those raised by the moving party. Absent some indication that the
moving party might otherwise bring forward evidence that would affect the
court's summary judgment determination, failure to provide an opportunity to
respond is not reversible error.
For these reasons, we believe AnnTaylor and Laura were not prejudiced by
the
grant of summary judgment related to Coach's registered hang tag. Appellants

contended no material issues [**12] of fact prevented summary judgment in
their favor on the Lanham Act claims. Moreover, they had significant incentive
to put forward [*168] any compelling evidence in support of their summary
judgment motion since the law prevented the district court from drawing
favorable inferences on their behalf.
Despite this assessment, we are unable to conclude that appellants were
provided with an adequate opportunity to defend against the grant of summary
judgment prohibiting replication of the Coach handbag designs. Our views on
this
matter result from the differing evidentiary burdens imposed on those who seek
to protect an unregistered, as opposed to a registered, mark. It is extremely
difficult to establish, in a motion for summary judgment, that an unregistered
design merits Lanham Act protection. See, e.g., Stormy Clime Ltd. v. Progroup,
Inc., 809 F.2d 971, 977-78 (2d Cir. 1987). Accordingly, because Coach failed to
establish as a matter of law that appellants infringed upon its "trade dress,"
we reverse the grant of summary judgment pertaining to the unregistered
elements
of Coach's products.
IV. Unregistered Trademark Infringement
Coach's federal claim is based [**13] on section 43(a) of the Lanham Act,
15 U.S.C. @ 1125(a) (1988), which provides a civil action in favor of those
who
believe they have been damaged, or are likely to be damaged, by the use of a
"fall designation of origin" on a good or service. Though enacted as part of the
Trademark Act, this provision functions as a federal law of unfair competition
for unregistered goods. Section 43(a) extends protection to a product's "trade
dress" -- the total image of a good as defined by its overall composition and
design, including size, shape, color, texture, and graphics. See Stormy Clime,
809 F.2d at 974. In this case, the district court fairly determined Coach's
"trade dress" resided in the general appearance of the handbags.
PAGE 108
933 F.2d 162, *168; 1991 U.S. App. LEXIS 10128, **13;
18 U.S.P.Q.2D (BNA) 1907
To prevail on a trade dress claim, the plaintiff must demonstrate that the
product's appearance has acquired "secondary meaning" -- the consuming public
immediately identifies the product with its maker -- and that purchasers are
likely to confuse the imitating goods with the originals. See Wallace Int'l
Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 16 U.S.P.Q.2D
(BNA)
1555 (2d Cir. 1990). Even if the plaintiff establishes these elements,
[**14] the defendant may still avoid liability by demonstrating that the
imitated features are "functional" -- essential to the basic purpose the article
is meant to serve.
A. Secondary Meaning
The trade dress of a product attains secondary meaning when the purchasing
public "associates" its design with a single producer or source rather than
simply with the product itself. See Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 851 n.11, 72 L. Ed. 2d 606, 102 S. Ct. 2182
(1982); Centaur Communications Ltd. v. A/S/M Communications, Inc., 830 F.2d

1217, 1221 (2d Cir. 1987). The plaintiff is not required to establish that all
consumers relate the product to its producer; it need only show that a
substantial segment of the relevant consumer group makes this connection. See
Centaur Communications, 830 F.2d at 1222.
Coach contends that compelling circumstantial and direct evidence confirms
that consumers associate the Dinky Bag, the Duffle Sac, and the Convertible
Clutch with Coach alone. Appellee claims its product awareness survey
establishes customer recognition since a majority of respondents associated the
AnnTaylor bags with Coach. It concludes [**15] that similarities in the
aesthetic configuration of the products indicate purposeful replication and thus
secondary meaning.
AnnTaylor and Laura respond that Coach has failed to establish, as a matter
of law, that the consuming public identifies Coach as the sole source of the
handbag designs at issue. They concede Coach handbags are widely recognized,
but
assert that the designs have become so commonplace that customers do not
reflexively assume Coach produced them. Support for this proposition,
appellants
contend, can be found in Coach's advertising slogan -- "It's Not a Coach Bag
Without the Coach Tag" [*169] -- which encourages consumers to
distinguish
its goods from those of its many imitators. If permitted to conduct additional
discovery, they argue that at a minimum they would be able to raise a genuine
factual dispute on this issue for trial. We agree.
Our cases make clear that proof of secondary meaning entails vigorous
evidentiary requirements. See Thompson Medical Co. v. Pfizer Inc., 753 F.2d
208,
217 (2d. Cir. 1985). When attempting to resolve this essentially factual
determination, we have assessed advertising expenditures, consumer studies,
unsolicited media [**16] coverage of the product, sales success, attempts to
plagiarize the mark, and length and exclusivity of use. Id. The careful weighing
of evidence necessary to determining secondary meaning renders it an unlikely
candidate for summary judgment. The case against summary judgment is even
stronger where the opposing party has not been afforded an adequate
opportunity
to seek potentially favorable information. See Schering Corp. v. Home Ins. Co.,
712 F.2d 4, 10 (2d Cir. 1983).
PAGE 109
933 F.2d 162, *169; 1991 U.S. App. LEXIS 10128, **16;
18 U.S.P.Q.2D (BNA) 1907
With these principles in mind, we find Coach has failed to establish that a
reasonable jury must conclude the overall design of its handbags have acquired
secondary meaning. Though intentional copying constitutes persuasive evidence
of
consumer recognition, 20th Century Wear, Inc. v. Sanmark-Stardust Inc., 815
F.2d
8, 9-10 (2d Cir. 1987), conscious replication alone does not establish secondary
meaning. Moreover, production of the Coach consumer awareness survey does
not
satisfy the requisite evidentiary burden. Though we have found such surveys
probative when granting summary judgment for a registered trademark owner,

see
Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Company, 799 F.2d 867, 869 &
n.1
(2d Cir. 1986), [**17] we are especially reluctant to rely upon them when
considering whether a product's unregistered trade dress has been infringed as a
matter of law.
Though the failure to establish secondary meaning renders resolution of the
section 43(a) claim premature, this does not conclude our inquiry. In
particular, a showing of secondary meaning is not necessary to prove unfair
competition under New York State common law, one of the grounds upon which
the
district court based its judgment. See Perfect Fit Indus., Inc. v. Acme Quilting
Co., 618 F.2d 950 (2d Cir. 1980), cert. denied, 459 U.S. 832, 74 L. Ed. 2d 71,
103 S. Ct. 73 (1982). To prevail on the state law claim, Coach need only
demonstrate a likelihood of confusion.
B. Likelihood of Confusion
AnnTaylor maintains that differences in packaging and in the size, shape,
logo and name on the hang tag ensure that a consumer looking to purchase a
Coach
product is unlikely to be confused as to its source. Design variations in the
imitation wares, including the spacing of the eyelets and the length of shoulder
straps, the thickness in the hasp in the buckle and the overall width of the
bags, are said to eliminate the consuming public's [**18] doubts as to maker.
Appellants argue that the sophisticated consumers likely to purchase Coach
products are informed enough to realize that handbags lacking a Coach
registration number and the Coach name are not Coach products.
Coach responds that the district court's visual inspection was highly
probative and largely conclusive of customer confusion. It argues the virtual
identity in overall appearance, combined with other significant evidence,
including the inability of Laura's President to distinguish across a conference
table the differences between Coach and AnnTaylor submissions, would
necessarily
lead a rational trier of fact to conclude these products were likely to confuse
consumers as to manufacturer.
We conclude that Coach has not presented sufficient convincing evidence to
prevail on summary judgment. Similarity in overall appearance alone cannot
establish source confusion as a matter of law. Nor is the addition of the
anecdotal evidence and the consumer awareness survey dispositive. After
drawing
all reasonable inferences in favor of appellants, we are [*170] unable to
conclude Coach has established that AnnTaylor and Laura engaged in unfair
competition under New York state [**19] law.
V. Registered Trademark Infringement
Despite Coach's failure to prove section 43(a) or New York state unfair
competition liability on summary judgment, we find it has established
PAGE 110
933 F.2d 162, *170; 1991 U.S. App. LEXIS 10128, **19;
18 U.S.P.Q.2D (BNA) 1907

infringement of its registered hang tags. Though Coach has not expressly
pleaded
a cause of action under section 32 of the Lanham Act, 15 U.S.C. @ 1114, it
seeks
in its complaint a permanent injunction preventing "the use of any . . . symbol,
representation, description or designation which is likely to create the
erroneous impression that defendants' goods emanate from Coach . . . or are
otherwise authorized by Coach." We read this broad request for relief to include
protection of its tags.
When assessing the protectable nature of a registered trademark, we first
consider its strength. The four basic classifications, arranged from least to
greatest degree of protection accorded, are: (1) generic, (2) descriptive, (3)
suggestive, and (4) arbitrary or fanciful. See Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). The inherently distinctive
shape and composition of the Coach hang tag leads us to conclude the mark is a
fanciful one. This determination, [**20] which is supported by registration
on the federal Principal Register, eliminates the trademark owner's need to
prove secondary meaning. See J. McCarthy, Trademarks and Unfair
Competition, @@
7:31, 11:3 (2d ed. 1984). Accordingly, to prevail on its section 32 claim, Coach
need only establish a likelihood of confusion as to its registered mark. See
Lois Sportswear, 799 F.2d at 871.
Presumptions of differing weight govern determination of the likelihood of
confusion issue with regard to registered trademarks as opposed to unregistered
trade dress. When engaging in this inquiry, registered marks are "entitled to a
liberal application of the law." Lois Sportswear, 799 F.2d at 871. And, unlike
unregistered trade dress claims, disposition by summary judgment is often
appropriate where the protection of a registered trademark is at issue. See
Barton, Summary Judgments in Trademark Cases, 75 Trademark Rep. 497, 525
(1985).
Therefore, our conclusion that Coach has not proven a likelihood of confusion
among the handbags does not pre-determine resolution of the claim regarding its
hang tags.
We agree with Judge Duffy that [**21] "AnnTaylor's tag, although it
contains AnnTaylor's name, is nonetheless confusingly similar to that of Coach's
tag in look and feel." Coach Leatherware, 751 F. Supp. at 1109. This
observation, coupled with the fact that the tags are affixed to almost identical
products marketed towards the same consumer group establishes likelihood of
confusion under section 32. n1 See Polaroid Corp. v. Polarad Electronics Corp.,
287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S. Ct. 36, 7 L. Ed.
2d 25, 131 U.S.P.Q. (BNA) 499 (1961).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 These considerations are equally applicable to Laura. Laura affixes to its
imitation Coach bags a cardboard tag, as well as a lozenge-shaped leather tag in
the Coach style, when selling directly to the public. Moreover, when
manufacturing bags for retailers, Laura embosses its leather tags with the
retailer's name if the retailer requests it. Accordingly, Laura infringes the
Coach trademark when it sells, either directly or indirectly, Coach knockoffs
with the embossed, lozenge-shaped leather tags.

- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**22]
PAGE 111
933 F.2d 162, *170; 1991 U.S. App. LEXIS 10128, **22;
18 U.S.P.Q.2D (BNA) 1907
Recognition of Coach's sophisticated customer base does not necessarily
bolster AnnTaylor's claim that confusion is unlikely. When rejecting a similar
argument raised by a designer jeans manufacturer who had incorporated a
pocket
stitching pattern nearly identical to the one made famous by Levi Strauss & Co.,
we concluded that it is the sophisticated consumer "who is most likely to
assume
that the presence of appellee's trademark stitching pattern on appellants' jeans
indicates some sort of association between the two manufacturers. Presumably it
is these sophisticated jeans buyers who pay the most attention to back pocket
stitching patterns and their 'meanings.'" Lois Sportswear, 799 F.2d at 875.
Finally, Coach's failure to [*171] document significant evidence of actual
confusion does not undermine the propriety of summary judgment. To warrant
injunctive relief, plaintiffs were not required to establish unquestioned
confusion but a mere likelihood of it; proof of real and precise confusion is
necessary only for the recovery of monetary damages. As we have indicated,
this
determination awaits resolution of the proceedings now pending before
Magistrate
Judge Buchwald. [**23]
VI. The Functionality Defense to Section 43(a)
Though we need not consider appellants' affirmative defenses to section 43(a)
of the Lanham Act because of our finding that summary judgment on the unfair
competition issues is premature, we briefly discuss the doctrine of
functionality to provide necessary guidance to the court below on remand. Trade
dress protection does not extend to a product's functionality -- those
characteristics of the product which are essential to its purpose or use. See
Wallace Int'l, 916 F.2d at 81; Stormy Clime, 809 F.2d at 977. Basic Lanham
Act
principles dictate that an owner may not use a trademark to circumscribe the
flow of useful ideas and designs in the marketplace. See Note, The Problem of
Functional Features: Trade Dress Infringement Under Section 43(a) of the
Lanham
Act, 82 Colum. L. Rev. 77, 79 (1982).
Judge Duffy, however, held as a matter of law that appellants' functionality
defense was meritless, since the three Coach handbags are distinctive in their
overall design and composition. He determined that many of the component
parts,
such as the distinctive lozenge-shaped leather [**24] tag, are purely
ornamental and serve primarily to signify origin. Moreover, he found it possible
to produce acceptable variations of the Coach styles. Based on these
conclusions, the court proceeded to issue expansive relief, enjoining appellants
from copying any Coach handbag.
Though Judge Duffy is undoubtedly correct that there are several ways to

produce the handbag styles at issue without creating so great a likelihood of
confusion for consumers, there is more to the functionality defense. Lanham Act
protection does not extend to configurations of ornamental features which would
significantly limit the range of competitive designs available. Wallace Int'l,
916 F.2d at 81. We are concerned that the grant of such broad relief chills
competition excessively.
Coach produces from fifty to sixty different styles of handbags in various
shapes and sizes. Though the scope of the injunction may reflect the court's
desire to conserve judicial resources and stem relitigation of substantially
similar infringement claims, we are skeptical that Coach could produce evidence
sufficient to support such sweeping protection for its entire line of handbags.
An extensive injunction [**25] prohibiting emulation of all types of Coach
PAGE 112
933 F.2d 162, *171; 1991 U.S. App. LEXIS 10128, **25;
18 U.S.P.Q.2D (BNA) 1907
bags could have the unacceptable effect of removing non-infringing design
innovations from the market. Similar concerns are raised by an injunction
preventing replication of such elemental features as the size, shape, color and
materials of Coach bags.
VII. Conclusion
Regretfully, the body of law relating to the Lanham Act has developed into a
tangled morass. See Brown, Design Protection: An Overview, 34 U.C.L.A. L.
Rev.
1341, 1357 (1987). Courts struggling to move mountains often find they have
only
affected minuscule changes in trademark jurisprudence and occasionally have
created their own likelihood of confusion. Be that as it may, our review of the
record leads us to conclude that though Judge Duffy prematurely determined
AnnTaylor and Laura have infringed upon Coach's unregistered trade dress in its
handbags, permanent injunctive relief was properly extended to the registered
Coach tag.
For the reasons we have stated, we affirm in part the grant of summary
judgment, finding appellants' replication of the Coach tag violated Coach's
trademark under section 32 of the Lanham Act. That part of the judgment
finding
[**26] appellants have infringed on Coach's trade dress under section 43(a) of
the Lanham Act and [*172] the New York common law of unfair
competition is
reversed and remanded for further proceedings consistent with this opinion.
CONCURBY: WINTER (In Part)
DISSENTBY: WINTER (In Part)
DISSENT: WINTER, Circuit Judge, concurring in part and dissenting in part.
I agree with my colleagues that we must reverse the sweeping relief ordered
by the district judge in his sua sponte grant of summary judgment for the
plaintiff. However, I respectfully dissent from the affirmance on entirely new
grounds of a portion of that judgment. My disagreement is based on procedural

as
well as substantive concerns.
If procedural regularity is to be accorded even minimal observance, an
appellate court should be extraordinarily cautious about issuing a sua sponte
grant of summary judgment against a defendant on a fact-specific claim that the
plaintiff did not make in its complaint or on appeal. On the merits, I agree
with my colleagues that the overall similarity in appearance of the bags with
hang tags does not, as a matter of law, create a likelihood of confusion as to
source. Precisely because I agree on the trade dress issue, however, [**27]
I do not agree that there is an infringement of a registered trademark as a
matter of law. Ann Taylor's hang tags are different from Coach's registered tag,
and, as Judge Kaufman notes, have a potential for creating confusion as to
source only when attached to handbags that are substantially identical in
appearance. The bags, however, are not part of the registered mark. Because it
is the substantially identical handbags that create the confusion, if any, the
issue is one of trade dress rather than trademark infringement -- as Coach has
insisted throughout.
I
PAGE 113
933 F.2d 162, *172; 1991 U.S. App. LEXIS 10128, **27;
18 U.S.P.Q.2D (BNA) 1907
I address the procedural issues first. I agree with my colleagues on the
strawman issue of whether a court has power to make sua sponte grants of
summary
judgment. When it appears that the sole issue in a case is a matter of law and
the parties have no genuine disagreement on the material facts, a party cannot
insist on the formality of a motion before a court acts. Nevertheless, sua
sponte grants of summary judgment are rare and should be employed only when
a
court is absolutely sure that no issue of material fact exists. The need for
caution is nowhere better demonstrated than in the actions of the district court
in [**28] the instant matter. Ignoring the fine but important distinctions
between the legal protections offered by design patents, copyrights and
trademarks, and ignoring further the lack of any motion for judgment by Coach,
the district court in effect gave Coach a monopoly against the world on all its
handbag designs, whether or not they were involved in this case.
Regretfully, the majority does not draw from this extraordinary decision an
appreciation of the need for caution but rather states the law concerning
summary judgment in an erroneous way that encourages other district judges to
ignore the Federal Rules of Civil Procedure. The majority thus states that when
a party moves for summary judgment, a court may grant summary judgment
against
the moving party "absent some indication" that the moving party has
undisclosed
evidence relevant to the issue. This new rule is apparently based on the
"significant incentive" a moving party has to put forth all its evidence when
making its motion.
I disagree. When a defendant moves for summary judgment, it says only,
"Plaintiff has insufficient evidence to make out a prima facie case." See
Celotex Corp. v. Catrett, 477 U.S. 317, 91 L. Ed. 2d 265, 106 S. Ct. 2548

(1986). [**29] It most assuredly does not say, "If plaintiff does have
enough evidence to make out a prima facie case, I have no evidence to rebut it."
Moreover, a party moving for summary judgment does not always have an
incentive
to offer rebuttal evidence. If the plaintiff can make out a prima facie case,
the defendant will generally not have such overpowering rebuttal evidence that
it will be entitled to judgment as a matter of law and thus will have little
incentive to expose its defense to scrutiny that will aid its adversary in
preparing for trial.
[*173]
In the instant matter, the defendants' motion for summary judgment said only,
"Coach cannot make out a prima facie case because it has no evidence of
confusion as to source." Coach in effect replied, "To the contrary, we have
evidence of confusion, including the overall identity in appearance. There is,
therefore, sufficient evidence to allow a trier to find confusion as to source."
Based on this exchange, the district court granted a monopoly to Coach on all of
its handbag designs whether or not they were involved in this litigation. I
would condemn rather than encourage this disregard for procedural regularity.
Moreover, when an appellate court [**30] sua sponte grants summary
judgment for the plaintiff on a claim the plaintiff has never made -- especially
a fact-specific claim on which the plaintiff bears the burden of proof -- it
certainly does "cut through . . . procedural niceties." Coach's complaint did
not allege infringement of a registered trademark or even mention Section 32 of
the Lanham Act. Instead, it asserted two claims: (1) copying of nonfunctional
design features resulting in a likelihood of confusion as to source in
PAGE 114
933 F.2d 162, *173; 1991 U.S. App. LEXIS 10128, **30;
18 U.S.P.Q.2D (BNA) 1907
violation of Section 43(a) and (2) common law unfair competition through the
copying of distinctive trade dress and palming off. The district court based its
grant of summary judgment solely on Section 43(a). On appeal, Coach never
mentioned registered trademark infringement or even cited Section 32. Until the
instant decision, therefore, this was solely a trade dress case. As my
discussion of the merits indicates, I believe that observance of procedural
regularity might have prevented an erroneous decision.
II
Turning to the merits, I of course agree with my colleagues that the
extraordinarily broad order of the district court is plain error. I also agree
that summary judgment was inappropriate [**31] on the issues of secondary
meaning and likelihood of confusion as to source resulting from similar trade
dress. Ann Taylor's bags were on the market for months, but Coach has been
unable to offer any substantial evidence of actual confusion as to source. That
is to say, Coach has not shown that consumers who buy Ann Taylor bags
believe
they are buying bags produced by Coach rather than imitations of Coach bags
produced by Ann Taylor. To be sure, the bags are remarkably -- and not
accidentally -- similar in design, and each has a "lozenge" shaped (but
different) hang tag. However, even identical appearances are insufficient by
themselves to show confusion as to source as a matter of law, the indispensable

element of a trademark claim. Unlike a design patent or copyright owner, a
trademark claimant does not have an exclusive right to a design; its right is
solely in protecting its identity as the source of its product. Ann Taylor thus
has every right to copy Coach's bags so long as consumers know they are
buying
Ann Taylor bags. Whether confusion exists should be resolved at a trial.
My disagreement with the majority on the merits relates to its making and
then adopting the claim of [**32] registered trademark infringement. It is
correct that a failure to show likelihood of confusion under Section 43(a) -- a
trade dress claim -- does not preclude assertion of a registered trademark
claim. For example, if the tag used by Ann Taylor were identical to Coach's,
including the use of the name "Coach," the fact that it was attached to shoes
rather than handbags would not legitimate that use under Polaroid Corp. v.
Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820,
82 S. Ct. 36, 7 L. Ed. 2d 25, 131 U.S.P.Q. (BNA) 499 (1961). However, Ann
Taylor's hang tag is different. Ann Taylor's tag is oval-shaped whereas Coach's
tag is rectangular. Their respective sizes are different. Moreover, each has a
very different name and logo style embossed on it. I cannot, therefore, agree
with my colleagues that the Ann Taylor tag infringes the Coach tag, because no
reasonable trier of fact could find infringement if the two tags were hung on
handbags with different appearances.
My colleagues seem to agree with this analysis, because they qualify their
holding by noting that only when the hang tags are [*174] put on identical
handbags -- which are not part of the registered trademark -- [**33] does a
likelihood of confusion exist. By limiting their holding to circumstances
involving items that are not part of the registered mark, however, they abandon
the infringement theory only to embrace the very trade dress claim that is held
in the immediately preceding section of Judge Kaufman's opinion not to have
been
established as a matter of law.
PAGE 115
933 F.2d 162, *174; 1991 U.S. App. LEXIS 10128, **33;
18 U.S.P.Q.2D (BNA) 1907
By converting a rejected trade dress claim into a registered trademark claim
and then granting relief on the registered trademark claim on a trade dress
rationale, the majority opinion completely blurs the distinction between these
two legal theories. The closest precedent relied upon by the majority is Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Company, 799 F.2d 867 (2d Cir.
1986).
In that case -- in which a registered trademark claim was made -- we held that
use of a back pocket stitching pattern that was part of a registered mark and
had secondary meaning violated the Lanham Act where the products -- ordinary
jeans and designer jeans -- were not identical and were sold in overlapping but
different markets. The fact that the products were different was regarded as
making confusion "more likely." 799 F.2d at 874. [**34] The present
decision
turns Lois Sportswear on its head. Secondary meaning has not been established
as
a matter of law for either the tags or the bags, and it is the identity of the
products, which are not part of the registered mark, that supplies the critical
element causing the supposed confusion. I believe, therefore, that the present
decision will be the source of much future mischief.

PAGE 116
7TH CASE of Level 1 printed in FULL format.
THE BLACK DOG TAVERN COMPANY, INC., Plaintiff, v. J.
PETER
HALL d/b/a BASEMENT DESIGNS, INC., et al., Defendants.
CA No. 92-11905-T
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF
MASSACHUSETTS
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827
June 3, 1993, Decided
COUNSEL: [*1] For THE BLACK DOG TAVERN CO., INC., Plaintiff,
Counter-Defendant: Philip X. Murray, Lorusso & Loud, 440 Commercial Street,
Boston, MA 02109, 617-227-0700.
For PETER HALL dba Basement Design, Defendant, Counter-Claimant: Robert
R.
Terrell, Hill & Barlow, 100 Oliver Street, One International Place, Boston, MA
02110-2607, 617-439-3555.
JUDGES: Tauro
OPINIONBY: JOSEPH L. TAURO
OPINION: MEMORANDUM
June 3, 1993
TAURO, Ch.J.
Plaintiff, The Black Dog Tavern Company, Inc. ("The Black Dog Tavern"),
brings this action against defendant J. Peter Hall ("Hall"), alleging: (1)
trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. @
1114(1); (2) common law trademark infringement; (3) unfair competition under
Section 43(a) of the Lanham Act, 15 U.S.C. @ 1125(a); (4) common law unfair
competition, (5) unfair and deceptive trade practices under Mass. Gen. L. ch.
93A; and (6) dilution of plaintiff's marks and injuries to its business
reputation under Mass. Gen. L. ch. 110B.
Defendant asserts a counterclaim seeking: (1) a declaratory judgment
concerning the parties' rights; (2) damages for plaintiff's alleged intentional
interference [*2] with defendant's advantageous business relations; and (3)
damages for plaintiff's alleged unfair competition and unfair and deceptive
trade practices under Mass. Gen. L. ch. 93A.
Presently before the court are the parties' cross motions for summary
judgment.
I.

BACKGROUND
As presently developed, the record yields the following facts. In the early
1970s, plaintiff opened a restaurant and bakery shop on Martha's Vineyard
PAGE 117
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *2
("the Vineyard"), an island off the coast of southeastern Massachusetts.
Plaintiff's establishments, and the goods and services provided therein, came to
be identified by the term "The Black Dog" and a corresponding design of a
black
dog (the "Black Dog Design"). See Appendix A.
In the latter part of the decade, plaintiff expanded its business to include
the sale of T-shirts with the Black Dog Design printed on the front and the
phrase "The Black Dog, Martha's Vineyard" printed on the back, together with
the
year the shirt was purchased. Since then, thousands of visitors to the
Vineyard--many of whom arrive on ferries out of Woods Hole, Falmouth,
Hyannis
and New Bedford--have returned to the mainland with T-shirts emblazoned with
plaintiff's ubiquitous canine. [*3] Sales of Black Dog clothing and novelty
items, n1 which are available only on plaintiff's premises or through its mail
order catalog, have grown steadily and now account for approximately forty
percent of plaintiff's annual revenues.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 Plaintiff's inventory now includes, inter alia, tank tops, sweatshirts,
polo shirts, sweat pants, shorts, aprons, sunglasses, appointment books, wooden
signs, blankets, fanny packs, dish towels, maple syrup, granola, tote bags,
beach towels, beach balls, beach umbrellas, mugs, dog bowls, lapel pins, stuffed
toys, cookies, jams and dog biscuits.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
In October of 1989, plaintiff registered the term "THE BLACK DOG" and the
Black Dog Design as federal service marks (Reg. Nos. 1,559,349 and 1,561,546,
respectively) for its restaurant and bakery shop services. In April of 1990,
plaintiff registered the term "THE BLACK DOG" as a federal trademark (Reg.
No.
1,593,194) for jellies and preserves, tinned cookies and bakery goods.
The proliferation of plaintiff's marks has not gone unnoticed [*4] among
the island's full-time residents, one of whom is defendant Hall. Since moving to
the Vineyard in 1986, Hall has operated a silkscreen printing business out of
the basement of his home. n2 In July of 1990, he began selling T-shirts with an
upside-down version of plaintiff's Black Dog Design (the "Upside-Down Dog
Design") printed on the front and the phrase "The Dead Dog, Martha's Vineyard
1990" printed on the back in a typeface similar to that used on plaintiff's
Black Dog T-shirts. Unamused by Hall's moribund mongrel, plaintiff requested
Hall to cease all sales, production and distribution of his new T-shirts.
Following negotiations, Hall agreed and stopped selling T-shirts bearing the
Upside-Down Dog Design.

- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n2 In July of 1992, Hall incorporated his printing business under the name
Basement Designs, Inc.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
In August of 1990, Hall began selling a new T-shirt, this one bearing the
design of a black hog (the "Black Hog Design"), see Appendix B, on the front
and
the phrase "The Black Hog, Martha's Vineyard 1990" [*5] on the back. Once
again, Hall chose a typeface similar to that used on the back of plaintiff's
PAGE 118
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *5
Black Dog T-shirts. Before long, plaintiff contacted Hall and objected to his
porcine product. But, Hall continued to sell the shirts, and the summer drew to
a close with the dispute unresolved.
On September 4, 1990, Hall registered "The Black Hog" silkscreen print with
the United States Copyright Office (Reg. No. 190-312). On October 30, 1990,
plaintiff registered the Black Dog Design as a federal trademark (Reg. No.
1,620,023) for clothing--namely, hats, T-shirts, sweatshirts and shorts.
The following year, Hall resurrected his Dead Dog T-shirt, only this time in
a somewhat different form. He replaced the Upside-Down Dog Design on the
front
of the T-shirt with the depiction of a dog's skeleton (the "Dead Dog Design").
See Appendix C. Apparently, the year was printed on some, but not all, of the
new Dead Dog T-shirts. Hall registered "The Dead Dog" silkscreen print with
the
United States Copyright Office (Reg. No. 207-686) on July 29, 1991.
During the summer of 1991, Hall marketed both his Dead Dog T-shirts and
his
Black Hog T-shirts at flea markets, street fairs and a handful of Martha's
[*6] Vineyard retail stores owned by Famous-Fraternity Sportswear Company
("Famous Sportswear"). On September 5, 1991, plaintiff's attorney sent a letter
to Famous Sportswear, requesting that it cease selling Hall's shirts. By letter
dated September 30, 1991, Famous Sportswear expressed a willingness to
comply
with plaintiff's request. With the summer at an end, plaintiff did not pursue
the matter further.
In 1992, Hall once again marketed his Black Hog and Dead Dog T-shirts on
the
Vineyard. n3 Unwilling to share the island's T-shirt market with such a
diversity of animal designs, plaintiff initiated this action against Hall and
Famous Sportswear on August 4, 1992. Two days later, this court heard
arguments
on plaintiff's motion for a temporary restraining order, which was denied.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -

n3 By this time, Hall was also printing his Black Hog and Dead Dog marks
on
sweatshirts and hats.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Soon thereafter, Famous Sportswear contacted Hall and asked him to pick up
his unsold merchandise and issue a refund. Hall agreed to do so, and [*7]
Famous Sportswear subsequently entered into a stipulation of dismissal with
plaintiff. Hall, on the other hand, answered plaintiff's complaint and asserted
a counterclaim. Thereafter, the parties filed the motions for summary judgment
which are now before the court.
II.
SUMMARY JUDGMENT STANDARD
"While infringement and unfair competition cases often present factual issues
that render summary judgment inappropriate, this is not invariably so." Kazmaier
v. Wooten, 761 F.2d 46, 48-49 (1st Cir. 1985). See also Pignons S.A. de
Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 486 (1st Cir. 1981)
("While summary disposition is usually inappropriate in complex infringement
and
unfair competition cases, it is not unheard of."). Summary judgment is
PAGE 119
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *7
warranted "if the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to
judgment as a matter of law." Fed. R. Civ. P. 56(c). "A factual dispute is
material if it 'affects the outcome of the litigation,' and genuine if [*8]
manifested by 'substantial' evidence 'going beyond the allegations of the
complaint.'" Pignons, 657 F.2d at 486 (quoting Hahn v. Sargent, 523 F.2d 461,
464 (1st Cir. 1975), cert. denied, 425 U.S. 904, 96 S. Ct. 1495, 47 L. Ed. 2d
754 (1976)). "In passing on a summary judgment motion, the court must view
the
record and draw inferences in the light most favorable to the opposing party."
Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 815 (1st Cir.
1987)
(citations omitted).
III.
PROTECTED STATUS OF MARKS
As a preliminary matter, the court must determine whether plaintiff's
registered marks n4 are entitled to protection. It is well established that
"trademark rights do not generally arise from registration." Id. at 815; see
Planned Parenthood Fed'n, Inc. v. Problem Pregnancy of Worcester, Inc., 398
Mass. 480, 486, 498 N.E.2d 1044, 1048 (1986). Such rights, which accrue from
the
prior usage of a mark, find their source in the common law. Volkswagenwerk,
814
F.2d at 816; [*9] Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 372 (1st

Cir. 1980). Nevertheless, registration does serve an important evidentiary
function. Under the Lanham Act, registration of a mark is prima facie evidence
of "the registrant's exclusive right to use the registered mark in commerce on
or in connection with the goods or services specified in the registration." 15
U.S.C. @ 1115(a). n5
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n4 "Service marks and trademarks are similar yet distinct creatures." Boston
Athletic Ass'n v. Sullivan, 867 F.2d 22, 23 n.1 (1st Cir. 1989). The former are
used to distinguish one's services, while the latter are used to distinguish
one's goods. See 15 U.S.C. @ 1127. Both are "used to indicate the distinctive
source of . . . goods or services, even if that source is unknown." Sullivan,
867 F.2d at 23 n.1 (citation omitted). The distinction between the two types of
marks does not affect the analysis in this case. Accordingly, the court will
refer to plaintiff's service marks and trademarks collectively as "marks."
[*10]
n5 This right becomes incontestable if the registered mark is used
continuously for five consecutive years subsequent to the date of registration.
15 U.S.C. @ 1065. In such a case the registration is deemed to be conclusive
evidence of the registrant's exclusive right to use the mark. Id. @ 1115(b).
Because plaintiff's marks were registered between October of 1989 and October
of
1990, its rights to use them have not yet become incontestable under the
Lanham
Act.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
In the context of the present case, the registration of plaintiff's marks
creates a presumption that they are entitled to protection. Defendant, in an
attempt to overcome this presumption, contends that plaintiff's marks are
PAGE 120
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *10
merely functional and, therefore, not entitled to protection. See Fisher Stoves,
Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193, 195 (1st Cir. 1980)
("Functional features which are not the subject of a valid patent or copyright
may be imitated with impunity."); Keebler, 624 F.2d at 378. In support of this
contention, [*11] defendant argues that "people purchase [Black Dog]
T-shirts not because they desire a T-shirt which they are assured originated
with The Black Dog Tavern, but because they want a T-shirt with an image of a
dog they consider pleasing." Def.'s Mem. Supp. Summ. J. at 9.
The court finds no merit to this argument. The evidence proffered by
plaintiff clearly establishes that people buy Black Dog T-shirts precisely
because they associate them with plaintiff's establishments. See Pl.'s Mem.
Supp. Mot. T.R.O. Ex. E (letters and photos from purchasers of Black Dog
apparel). Where, as here, a mark indicates source, its "aesthetic functionality"
cannot preclude a finding of nonfunctionality. See Ferrari S.P.A. Esercizio
Fabriche Automobili E Corse v. Roberts, 944 F.2d 1235, 1247 (6th Cir. 1991),
cert. denied, 120 L. Ed. 2d 899, 112 S. Ct. 3028 (1992). Accordingly, the court
finds that defendant has failed to overcome the presumption created by
plaintiff's registration of its marks.

Even if plaintiff's marks were not registered, the record would support the
conclusion that plaintiff has acquired an exclusive right to use them. [*12]
"Whether a particular . . . mark is entitled to legal protection depends on
whether it is classified, in ascending order of eligibility for protection, as
(1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary and fanciful."
Calamari Fisheries, Inc. v. Village Catch, Inc., 698 F. Supp. 994, 1006 (D.
Mass. 1988) (citing S.S. Kresge Co. v. United Factory Outlet, Inc., 598 F.2d
694, 696 (1st Cir. 1979)). Plaintiff's marks are properly classified as
"arbitrary or fanciful," as they "bear no logical or suggestive relation to the
actual characteristics of the goods or services" offered by plaintiff. Id. at
1007. n6 Rather, "their intrinsic nature serves to identify a particular source
of a product." Two Pesos, Inc. v. Taco Cabana, Inc., 120 L. Ed. 2d 615, 112 S.
Ct. 2753, 2757 (1992). Plaintiff's marks, therefore, "are deemed inherently
distinctive and are entitled to protection." Id.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n6 For example, it can hardly be suggested that the name "The Black Dog
Tavern" alludes to a dish on plaintiff's menu.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[*13]
IV.
TRADEMARK INFRINGEMENT
Having concluded that plaintiff has enforceable rights in its marks, the
court now turns to its claims of trademark infringement. Although plaintiff's
claims are brought under both section 32(1) of the Lanham Act n7 and the
common
law, the analysis required by each is largely the same. Whether brought under
state or federal law, the central issue in most infringement cases--including
this one--is whether the allegedly infringing use creates a likelihood of
confusion. See Sullivan, 867 F.2d at 28 (claims under Lanham Act); Pignons,
657
F.2d 482 at 486-87 (claims under Lanham Act and Mass. Gen. L. ch. 110B, @
11);
PAGE 121
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *13
Planned Parenthood, 398 Mass. at 488, 498 N.E.2d at 1049 (common law
claims).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n7 In relevant part, section 32(1) of the Lanham Act provides:
Any person who shall, without the consent of the registrant--
(a) use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale, offering for sale,
distribution, or advertising of any goods or services on or in connection with
which such use is likely to cause confusion, or to cause mistake, or to deceive

. . . .
shall be liable in a civil action by the registrant for the remedies hereinafter
provided.
15 U.S.C. @ 1114(1).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[*14]
In the "typical" trademark infringement case, the likelihood of confusion
inquiry centers on whether members of the purchasing public are likely to
mistake one party's products or services for another party's protected products
or services within the same category. Sullivan, 867 F.2d at 28. See Franks v.
Markson, 337 Mass. 278, 149 N.E.2d 619 (1958) ("The ultimate test . . . is
whether there is a reasonable probability that the buying public will confuse
one [mark] with the other so that they will be induced to purchase [defendant's]
merchandise in the belief that it is [plaintiff's]."). In the context of this
case, this aspect of the inquiry becomes whether consumers are likely to
purchase defendant's Black Hog or Dead Dog T-shirts in the mistaken belief that
they are purchasing plaintiff's Black Dog T-shirts.
In some infringement cases, the likelihood of confusion inquiry also focuses
upon whether members of the purchasing public are likely to believe that the
plaintiff produces, licenses, or otherwise endorses the defendant's products.
Sullivan, 867 F.2d 22 at 28-29. See [*15] WCVB-TV v. Boston Athletic
Ass'n,
926 F.2d 42, 44 (1st Cir. 1991) ("Trademark law prohibits the unauthorized use
of . . . a mark, but only where doing so creates a 'likelihood of confusion'
about who produces the goods or provides the service in question." (emphasis in
original)); Pignons, 657 F.2d at 490 ("Confusion over the nature of the parties'
business relationship may be as objectionable for purposes of trademark
infringement as is confusion between their goods."). In the present case, it is
this latter type of confusion with which plaintiff seems most concerned. See
Compl. PP 28-31 (alleging likelihood of confusion "as to the sponsorship,
affiliation, association and origin of Defendant's goods.").
In assessing likelihood of confusion, the First Circuit has consistently
considered eight different factors: (1) the similarity of the marks; (2) the
similarity of the goods; (3) the relationship between the parties' channels of
trade; (4) the relationship between the parties' advertising; (5) the classes of
prospective purchasers; (6) evidence of actual confusion; (7) the defendant's
intent in adopting its mark; [*16] and (8) the strength of the plaintiff's
mark. Sullivan, 867 F.2d at 29; Volkswagenwerk, 814 F.2d at 817; Pignons, 657
PAGE 122
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *16
F.2d at 487. n8 "No one factor is necessarily determinative, but each must be
considered." Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222 (1st
Cir. 1989) (citing Volkswagenwerk, 814 F.2d at 817).
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n8 Other circuits have compiled similar lists of factors. See, e.g., W.W.W.
Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993) (listing 8

factors); Dakota Industries, Inc. v. Dakota Sportswear, Inc., 988 F.2d 61, 64
(8th Cir. 1993) (listing 6 factors); Metro Publishing, Ltd. v. San Jose Mercury
News, 987 F.2d 637, 640 (9th Cir. 1993) (listing 8 factors); Sands, Taylor &
Wood Co. v. Quaker Oats Co., 978 F.2d 947, 959 (7th Cir. 1992) (listing 7
factors), cert. denied, 113 S. Ct. 1879, 123 L. Ed. 2d 497 (1993); Ford Motor
Co. v. Summit Motor Products, Inc., 930 F.2d 277, 293 (3d Cir.) (listing 10
factors), cert. denied, 116 L. Ed. 2d 324, 112 S. Ct. 373 (1991); Homeowners
Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir.
1991) (listing 8 factors); Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 1548-49 (Fed. Cir. 1990) (listing 13 factors).
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[*17]
A. Similarity of the Marks
"Similarity is determined on the basis of the total effect of the
designation, rather than a comparison of individual features." Pignons, 657 F.2d
at 487 (citations omitted). Marks may be recognized as similar based on their
appearance, sound and meaning. Calamari, 698 F. Supp. at 1009. See Sullivan,
867
F.2d at 29 ("Meaning alone . . . may be sufficiently close to constitute
similarity."); Volkswagenwerk, 814 F.2d at 817 ("[A] finding of similarity may
be based on appearance alone."). The similarity of the marks must be considered
"in light of what occurs in the marketplace, taking into account the
'circumstances surrounding the purchase of the goods' or services." Calamari,
698 F. Supp. at 1009 (quoting Alpha Industries, Inc. v. Alpha Steel Tube &
Shapes, Inc., 616 F.2d 440, 444 (9th Cir. 1980)).
Plaintiff's Black Dog Design depicts what its name suggests, a black dog. The
animal--whose breed the court is unable to discern--is oriented to the left with
its head up [*18] and its tail curved slightly upward. Touches of white can
be seen on its muzzle, paws and collar.
Like the Black Dog Design, defendant's Black Hog Design depicts a black
quadruped facing to the left. For the most part, the similarity ends there.
Unlike plaintiff's somewhat noble depiction of man's best friend, defendant's
swine strikes a less inspiring pose. Its tail--such as it is--and its snout are
pointing downward. In addition, the curvature of its back and its overall
corpulence stand in sharp contrast to the stature of plaintiff's dog.
The Dead Dog Design also bears little resemblance to the Black Dog Design.
Although the stance of defendant's skeletal dog is similar to that of
plaintiff's black dog, the two dogs face in opposite directions. More
significantly, the bony make-up of defendant's dog creates an image quite
distinct from that of plaintiff's canine rendition.
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823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *18
The written marks utilized by the parties share some common characteristics.
Each is comprised of three monosyllabic words: the definite article, an
adjective, and a noun denoting an animal. Also, each is printed in the same
typeface and appears above the term "Martha's Vineyard" and, in most instances,
the [*19] year. "The Black Dog" and "The Black Hog" are most alike in
sound

and appearance, differing only by one letter. "The Dead Dog" is less similar on
both counts, owing to its use of "Dead," instead of "Black," to modify "Dog."
Despite their phonetic similarities, the parties' written marks, like their
corresponding designs, connote very different meanings. Color notwithstanding,
a
dog and a hog are two very different creatures, unlikely to be confused in the
average person's mind. Likewise, it can hardly be suggested that a typical
consumer will not distinguish the macabre overtones of "The Dead Dog" from
the
more salutary connotations of "The Black Dog."
Viewed in their totality, defendant's marks are not sufficiently similar to
plaintiff's in appearance, sound or meaning to create a substantial likelihood
of confusion. "While the similarity of the words used in the marks would
support
an inference of likelihood of confusion, . . . the striking dissimilarities in
the designs used in the marks greatly outweigh any similarities." Jordache
Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1485 (10th Cir. 1987).
B. Similarity of the Goods
All of [*20] the goods on which defendant's allegedly infringing marks
appear--T-shirts, sweatshirts and hats--can also be found in plaintiff's
inventory. This fact increases the likelihood of confusion among the buying
public. See Sullivan, 867 F.2d at 30.
C. Relationship Between the Parties' Channels of Trade
D. Relationship Between the Parties' Advertising
E. Classes of Prospective Purchasers
Following the example of the court of Appeals for the First Circuit, this
court will treat these three factors as related. See, e.g., Volkswagenwerk, 814
F.2d at 818.
Defendant sells his goods at flea markets, street fairs and independent
retail shops on the Vineyard. Up to now, his advertising effort has consisted of
displaying his T-shirts at the above outlets. Plaintiff's goods, on the other
hand, are marketed in a much more sophisticated and focused manner. Plaintiff
offers them only at its bakery or through its mail order catalog, which it sends
to customers throughout the United States and Canada. Unlike defendant,
plaintiff has advertised extensively through magazines and newspapers, as well
as on the radio. Notwithstanding [*21] the parties' geographical proximity,
there is minimal overlap between either their channels of trade or their
advertising.
The class of prospective purchasers of each party's goods is virtually the
same: all visitors to and residents of the Vineyard. n9 Ordinarily, this fact
would point toward a greater likelihood of confusion. See Sullivan, 867 F.2d at
30; Volkswagenwerk, 814 F.2d at 818. Here, however, the relative sophistication
of the consumers involved warrants consideration. Those most likely to buy
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823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *21

Black Dog T-shirts--i.e., those familiar with and fond of The Black Dog
Tavern--are also least likely to be confused by any similarities between
plaintiff's and defendant's marks. See Pignons, 657 F.2d at 489 ("Courts have
found less likelihood of confusion where goods are expensive and purchased
after
careful consideration.").
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n9 The class of prospective purchasers of plaintiff's goods also includes
individuals who receive plaintiff's catalog without ever visiting the Vineyard.
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[*22]
F. Actual Confusion
"A showing of actual confusion is not essential in order to find a likelihood
of confusion." Volkswagenwerk, 814 F.2d at 818 (citations omitted). But, the
lack of evidence of actual confusion, when the marks have been in the same
market, may indicate that there is little likelihood of confusion. See Pignons,
657 F.2d at 490; Gruner + Jahr USA Publishing, Div. of Gruner + Jahr Printing
&
Publishing Co. v. Meredith Corp., 793 F. Supp. 1222, 1232-33 (S.D.N.Y. 1992),
aff'd, 991 F.2d 1072, 1993 U.S. App. LEXIS 9954 (2d Cir. 1993).
As evidence of actual confusion, plaintiff offers the affidavit of Mary
Alarie, whose advertising specialty company does business with plaintiff. She
states that during the summer of 1992, while riding in a cab on the Vineyard,
she overheard another passenger refer to plaintiff's bakery as "the Dead Dog
place." Even if admissible, n10 this isolated comment is not persuasive evidence
of actual confusion. Ms. Alarie's affidavit says little about the context of the
conversation, other than that it took place [*23] while the cab was driving
by plaintiff's premises.
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n10 Because the passenger's statement is not offered to prove what it
asserts, but rather to show what the passenger believed, it is not hearsay. See
Fed. R. Evid. 801(c); Sullivan, 867 F.2d at 31.
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Plaintiff also offers the affidavit of Marianne Neill, who has been
plaintiff's screen printer for approximately twelve years. She states that
during the past two years, people have entered her shop asking for Dead Dog
and
Black Hog items. Such requests are not indicative of customer confusion. Ms.
Neill does not print shirts exclusively for plaintiff, and it is reasonable to
infer that some potential customers visited her print shop with the expectation
that defendant's alternative designs were included in her product line.
Finally, the general manager of The Black Dog Tavern testified that during
the summer of 1991 he received a telephone call from someone who wanted to

order
a Dead Dog T-shirt. n11 The strength of this evidence is minimal, [*24] at
best. As the First Circuit has observed, "a single misdirected communication is
very weak evidence of consumer confusion." Pignons, 657 F.2d at 490.
Moreover,
that inquiry demonstrated no product confusion on the caller's part. He
PAGE 125
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *24
clearly wanted a Dead Dog T-shirt, and not a Black Dog T-shirt.
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n11 See Deposition of Joseph B. Hall at 90-92.
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Overall, plaintiff's evidence is not significantly probative of actual
confusion. Even when viewed in the light most favorable to plaintiff, it points
to relatively few incidents of actual consumer confusion since defendant began
marketing his Dead Dog and Black Hog T-shirts. Given that both parties' goods
have been simultaneously on sale for over two years, the court finds that the
absence of more evidence of actual confusion weighs against a finding of
likelihood of confusion. See Pignons, 657 F.2d 482 at 490-91 ; Pump, Inc. v.
Collins Management, Inc., 746 F. Supp. 1159, 1169-70 (D. Mass. 1990).
[*25]
G. Defendant's Intent
From the record, it is clear that defendant, in creating his Black Hog and
Dead Dog T- shirts, intended to parody plaintiff's Black Dog T- shirts. n12
His designs fit a conventional definition of trademark parody. They embody "a
simple form of entertainment conveyed by juxtaposing the irreverent
representation of the trademark with the idealized image created by the mark's
owner." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir.),
cert. denied, 483 U.S. 1013, 107 S. Ct. 3254, 97 L. Ed. 2d 753 (1987).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n12 In his affidavit, defendant has the following to say about the message
he intended to convey through his T- shirts:
Given the growing commercialization of the black dog image, and its apparent
popularity among tourists, . . . I decided that The Black Dog and its T- shirt
were appropriate objects for satirical comment and parody. . . . Because of
the large number of Black Dog T- shirts visible on the Island, . . . I thought
that some people might want to express their aversion to following the crowd or
participating in a fad by wearing a distinctive T- shirt that comments on the
trend.
Affidavit of J. Peter Hall at 3.
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[*26]
When confronted with trademark parody, some courts have adopted a

alancing
test, weighing the public interest in avoiding consumer confusion against the
public interest in free expression. See, e.g., Cliffs Notes, Inc. v. Bantam
Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989)
(considering
the multi-factor likelihood of confusion analysis "at best awkward in the
context of parody"). Absent contrary guidance from the Court of Appeals for the
First Circuit, this court sees no reason to abandon the present likelihood of
confusion analysis, "provided that it is applied with special sensitivity to the
purposes of trademark law and the First Amendment rights of [defendant]."
Anheuser-Busch, Inc. v. Balducci Publications, 814 F. Supp. 791, 795-96 (E.D.
PAGE 126
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *26
Mo. 1993).
"Where a party chooses a mark as a parody of an existing mark, the intent is
not necessarily to confuse the public but rather to amuse." Jordache, 828 F.2d
at 1486. Of course, the mere fact that a party intends to create a parody does
not preclude the possibility of confusion. Indeed, "[a] parody which causes
confusion [*27] in the marketplace implicates the legitimate commercial and
consumer protection objectives of trademark law." L.L. Bean, 811 F.2d at 32
n.3.
As the Court of Appeals for the Second Circuit has observed:
A parody must convey two simultaneous--and contradictory--messages: that it is
the original, but also that it is not the original and is instead a parody. To
the extent that it does only the former but not the latter, it is not only a
poor parody but also vulnerable under trademark law, since the customer will be
confused.
Cliffs Notes, 886 F.2d at 494 (emphasis in original). See also Jordache, 828
F.2d at 1486 ("A parody relies upon a difference from the original mark,
presumably a humorous difference, in order to produce its desired effect.");
Elsmere Music, Inc. v. National Broadcasting Co., 623 F.2d 252, 253 n.1 (2d
Cir.
1980) (per curiam) ("[A] parody frequently needs to be more than a fleeting
evocation of an original in order to make its humorous point.").
In this case, the court finds that defendant's Black Hog and Dead Dog marks
convey just [*28] enough of plaintiff's Black Dog marks to allow an
ordinarily prudent consumer to appreciate the point of the parody, thereby
diminishing the risk of confusion. See Anheuser-Busch, Inc. v. L & L Wings,
Inc., 962 F.2d 316, 321 (4th Cir.), cert. denied, 121 L. Ed. 2d 147, 113 S. Ct.
206 (1992). Cf. Yankee Publishing Inc. v. News America Publishing Inc., 809 F.
Supp. 267 (S.D.N.Y. 1992) (finding that defendant's caricature of plaintiff's
trade dress "made it sufficiently clear to consumers that it was a joke and not
a trademark source identifier"); Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F.
Supp. 785 (E.D.N.Y. 1983) ("The very heavy handedness of defendant's parody
would appear to assure that a clear distinction will be preserved in a
consumer's mind . . . ."). n13 The fact that defendant's parody appears on
products that are sold for profit does not alter this conclusion. This is not a
case in which the defendant's spoof is "subservient and only tangentially
related" to a primarily commercial message. See White v. Samsung Electronics

America, Inc., 971 F.2d 1395, 1401 (9th Cir. 1992), [*29] cert. denied, 113
S. Ct. 2443, 124 L. Ed. 2d 660 (U.S. 1993).
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n13 Two recent trademark cases that also involved T-shirt designs, Nike,
Inc. v. "Just Did It" Enterprises, 799 F. Supp. 894 (N.D. Ill. 1992), and Hard
Rock Cafe Licensing Corp. v. Pacific Graphics, Inc., 776 F. Supp. 1454 (W.D.
Wash. 1991), are distinguishable. In Nike, the court found that it was "not
clear from viewing [defendant's] merchandise that it [was] intended as a
parody. " 799 F. Supp. at 898. In Hard Rock Cafe, the court explicitly found
the case before it "different from those cases in which courts have found that
the junior user's mark is a true parody." 776 F. Supp. at 1462. But see Mutual
of Omaha Ins. Co. v. Novak, 836 F.2d 397 (8th Cir. 1987) (affirming district
court's finding of likelihood of confusion between parties' marks), cert.
denied, 488 U.S. 933, 109 S. Ct. 326, 102 L. Ed. 2d 344 (1988).
PAGE 127
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *29
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[*30]
H. Strength of Plaintiff's Mark
"Factors useful in determining a trademark's relative strength include the
length of time a mark has been used and the plaintiff's relative renown in its
field; the strength of the mark in plaintiff's field of business, especially by
looking at the number of similar registered marks; and the plaintiff's actions
in promoting its mark." Tanel Corp. v. Reebok Int'l, Ltd., 774 F. Supp. 49, 55
(D. Mass. 1990) (citing Sullivan, 867 F.2d at 32). Consideration of these
factors leads to the ineluctable conclusion that plaintiff's marks are strong,
particularly on the Vineyard.
Plaintiff's Black Dog marks have been appearing on T-shirts and other items
for well over a decade. In that time, the marks have become quite popular and
widely known. They have gained exposure not only through plaintiff's
advertising, but also through write-ups in such magazines as Rolling Stone,
Gourmet and Cape Cod Life. Indeed, it is the strength of plaintiff's marks which
made them an object of defendant's parody. Cf. Eveready Battery Co. v. Adolph
Coors Co., 765 F. Supp. 440, 450 (N.D. Ill. 1991) [*31] (finding that "the
very strength of [plaintiff's] Energizer Bunny mark . . . seemed to weigh
against a likelihood of confusion, particularly in light of the obvious parody
depicted in defendant's use").
After analyzing and weighing each of these eight factors in light of the
totality of circumstances presented here, this court finds that members of the
purchasing public are not likely to confuse defendant's Black Hog or Dead Dog
merchandise with plaintiff's Black Dog merchandise. Nor are ordinarily prudent
consumers likely to believe that plaintiff produced or otherwise endorsed
defendant's goods. Accordingly, defendant is entitled to summary judgment on
plaintiff's claims of trademark infringement.
V.

UNFAIR COMPETITION
Plaintiff also alleges that defendant's use of the Black Hog and Dead Dog
marks constitutes unfair competition under section 43(a) of the Lanham Act n14
and the common law. These claims of unfair competition, like plaintiff's claims
of trademark infringement, must be supported by a showing of a likelihood of
confusion. Pignons, 657 F.2d at 493; Bayshore Group Ltd. v. Bay Shore
Seafood
Brokers, Inc., 762 F. Supp. 404, 415 (D. Mass. 1991); [*32] NEC Electronics,
Inc. v. New England Circuit Sales, Inc., 722 F. Supp. 861, 864 (D. Mass. 1989)
(citations omitted). See Datacomm Interface, Inc. v. Computerworld, Inc., 396
Mass. 760, 489 N.E.2d 185 (1986) ("The gravamen of an unfair competition
claim
is the likelihood of consumer confusion as to the source of the goods or
services."). This court has determined that plaintiff has failed to demonstrate
the existence of a likelihood of confusion among potential consumers. It
follows, therefore, that defendant is entitled to summary judgment on
plaintiff's claims of unfair competition.
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823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *32
n14 In relevant part, section 43(a) of the Lanham Act provides:
Any person who, on or in connection with any goods or services, . . . uses in
commerce any word, term, name, symbol, or device, or any combination thereof,
or
any false designation of origin, . . . which--
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or
as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person, . . .
shall be liable in a civil action by any person who believes that he or she is
or is likely to be damaged by such act.
15 U.S.C. @ 1125(a)(1).
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[*33]
VI.
DILUTION
Plaintiff also brings a claim under the Massachusetts anti-dilution statute,
which provides in relevant part:
Likelihood of injury to business reputation or of dilution of the distinctive
quality of . . . a mark valid at common law, or a trade name valid at common
law, shall be a ground for injunctive relief notwithstanding the absence of
competition between the parties or the absence of confusion as to the source of
goods or services.

Mass. Gen. L. ch. 110B, @ 12. To prevail under this provision, plaintiff must
show that its marks are distinctive, and that defendant's use of similar marks
has created the likelihood of dilution. Pignons, 657 F.2d 482 at 493-94
(citation omitted). The court has already concluded that plaintiff's marks are
distinctive. It remains, then, to determine whether the record supports a
finding that defendant's use of the Black Hog and Dead Dog marks is likely to
dilute the distinctive quality of the Black Dog mark.
A likelihood of dilution can result from any of the following: (1) injury to
the value of a mark caused by actual or potential confusion; (2) diminution in
the uniqueness and individuality of [*34] a mark; or (3) injury resulting
from use of a mark in a manner that tarnishes or appropriates the goodwill and
reputation associated with plaintiff's mark. L.L. Bean, 811 F.2d at 30
(citations omitted). This court's determination that there is no likelihood of
confusion between the parties' marks precludes consideration of the first test
for dilution. Accordingly, the court will concern itself with the latter two
tests for dilution.
According to plaintiff, this case presents a "classic example" of trademark
dilution. It argues that defendant's use of the Black Hog and Dead Dog marks
will diminish the public's ability to identify the Black Dog marks with
plaintiff's establishments. Plaintiff also maintains that defendant's use of his
marks tarnishes its reputation. Specifically, plaintiff alleges that
PAGE 129
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *34
defendant's use of the term "Dead" serves to disparage the positive connotations
plaintiff's mark has come to convey in conjunction with plaintiff's food service
business.
Assuming, for present purposes only, that either of these theories could
serve as the basis for a finding of dilution, plaintiff has offered virtually no
persuasive evidence to support [*35] them. The mere fact that defendant's
use of his marks has been "continuous and ever-expanding," is not evidence that
such use has either blurred the distinctiveness of plaintiff's marks or
tarnished its reputation. Indeed, the fact that plaintiff's sales have increased
every year since defendant began selling his shirts n15 would suggest that
defendant's marks have had no such adverse effect. Cf. Lighthawk,
Environmental
Air Force v. Robertson, 812 F. Supp. 1095, 1102 (W.D. Wash. 1993) (finding
that
"the use of Smokey Bear in political speech and parody is unlikely to diminish
the value of Smokey Bear for forest fire prevention purposes").
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n15 See Affidavit of Joseph B. Hall at 5-6.
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In sum, "there is simply not enough evidence to show that defendant's use of
[his] trademarks . . . is likely to dilute plaintiff's trademarks under any of
the interpretations of dilution recognized in this circuit." PPG Industries,
Inc. v. Clinical Data, Inc., 620 F. Supp. 604, 609 (D. Mass. 1985). [*36] n16

Accordingly, defendant is entitled to summary judgment on plaintiff's claim of
dilution.
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n16 In light of this finding, the court need not consider "the
constitutional limits which might be imposed on the application of [Mass. Gen.
L. ch. 110B, @ 12] to unauthorized uses of trademarks on products whose
principal purpose is to convey a message." L.L. Bean, 811 F.2d at 32, n.4.
According to the First Circuit, such an analysis "undoubtedly would require a
balancing of the harm suffered by the trademark owner against the benefit
derived by the parodist and the public from the unauthorized use of a trademark
on a product designed to convey a message." Id.
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VII.
MASS. GEN. L. CH. 93A
Finally, plaintiff alleges that defendant has engaged in unfair methods of
competition and deceptive trade practices in violation of Mass. Gen. L. ch. 93A.
This claim warrants little discussion. Having already concluded that defendant
was fully within his rights in parodying plaintiff's marks, the court [*37]
finds that "even under the most critical view, [his] actions can hardly be
described as 'immoral, unethical, oppressive, or unscrupulous.'" Pump, 746 F.
Supp. at 1173 (quoting Purity Supreme, Inc. v. Attorney General, 380 Mass.
762,
777, 407 N.E.2d 297, 307 (1980)). See also Bayshore, 762 F. Supp. at 415
(linking plaintiff's 93A claim to its trademark infringement and unfair
PAGE 130
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *37
competition claims). Consequently, defendant is entitled to summary judgment
on
plaintiff's chapter 93A claim.
VIII.
HALL'S COUNTERCLAIM
In his counterclaim, Hall alleges that The Black Dog Tavern, through its
September 5, 1991 letter to Famous Sportswear and its subsequent
commencement of
this action, intentionally and wrongfully interfered with his advantageous
business relationship with Famous Sportswear. He also claims that plaintiff's
interference, which allegedly cost him over 860 T-shirt sales, constituted
unfair competition in violation of Mass. Gen. L. ch. 93A.
To prevail on either theory, Hall must prove that plaintiff's actions were
somehow improper. See United Truck Leasing Corp. v. Geltman, 406 Mass.
811,
815-16, 551 N.E.2d 20, 23 (1990) [*38] (holding "improper" conduct to be an
element of the tort of intentional interference with an advantageous business
relationship); Levings v. Forbes & Wallace, Inc., 8 Mass. App. Ct. 498, 396

N.E.2d 149, 153 (1979) (To be actionable under 93A, "the objectionable conduct
must attain a level of rascality that would raise an eyebrow of someone inured
to the rough and tumble of the world of commerce.").
Given the facts of this case and the current state of the applicable law, n17
the court finds no support for the contention that plaintiff's decision to bring
this suit was somehow improper. The mere fact that plaintiff did not ultimately
prevail on its claims does not mean that those claims were groundless. See
Quaker State Oil Refining Corp. v. Garrity Oil Co., 884 F.2d 1510, 1513-14 (1st
Cir. 1989); Boothroyd Dewhurst, Inc. v. Poli, 783 F. Supp. 670, 678 (D. Mass.
1991). "It is clear . . . that a party is justified in interfering with a
third-party's contract with another by filing a lawsuit in a good faith effort
to assert legally protected rights." G.S. Enterprises, Inc. v. Falmouth Marine,
Inc., 410 Mass. 262, 273, 571 N.E.2d 1363, 1370 (1991). [*39] Absent
evidence
of bad faith, plaintiff is entitled to summary judgment on counts II and III of
defendant's counterclaim.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n17 "Regretfully, the body of law relating to the Lanham Act has developed
into a tangled morass. Courts struggling to move mountains often find they have
only affected minuscule changes in trademark jurisprudence and occasionally
have
created their own likelihood of confusion." Coach Leatherware Co. v.
AnnTaylor,
Inc., 933 F.2d 162, 171 (2d Cir. 1991) (citation omitted).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
IX.
CONCLUSION
For all of the foregoing reasons, this court finds that defendant's use of
his Black Hog and Dead Dog marks is a parody of plaintiff's Black Dog marks
having the intention and effect of amusing, rather than confusing, the public.
Plaintiff's claims of infringement, unfair competition, dilution and deceptive
trade practices, therefore, are dismissed.
PAGE 131
823 F. Supp. 48; 1993 U.S. Dist. LEXIS 7827, *39
There being no basis for defendant's allegations that it was improper for
plaintiff to have initiated this action, counts II and III [*40] of his
counterclaims are also dismissed.
An order will issue.
Joseph L. Tauro
United States District Judge
[SEE APPENDIX A IN ORIGINAL]
[SEE APPENDIX B IN ORIGINAL]

[SEE APPENDIX C IN ORIGINAL]
ORDER
June 3, 1993
TAURO, Ch.J.
For the reasons stated in the accompanying memorandum, defendant's motion
for
summary judgment is hereby ALLOWED with respect to all counts of plaintiff's
complaint and count I of defendant's counterclaim, and DENIED with respect to
counts II and III of defendant's counterclaim. Plaintiff's motion for summary
judgment is DENIED with respect to all counts of its complaint and count I of
defendant's counterclaim, and ALLOWED with respect to counts II and III of
defendant's counterclaim.
It is so ordered.
Joseph L. Tauro
United States District Judge
PAGE 132
8TH CASE of Level 1 printed in FULL format.
GIRL SCOUTS OF THE UNITED STATES OF AMERICA and BOY
SCOUTS
OF AMERICA Plaintiffs, v. THE BANTAM DOUBLEDAY DELL
PUBLISHING GROUP, INC. d/b/a DELL PUBLISHING and JUDY
DELTON, Defendants.
89 Civ. 1194 (LMM)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN
DISTRICT OF
NEW YORK
808 F. Supp. 1112; 1992 U.S. Dist. LEXIS 19424; 25
U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
December 21, 1992, Decided
December 21, 1992, Filed
JUDGES: [**1] McKENNA
OPINIONBY: LAWRENCE M. McKENNA
OPINION: [*1114]
MEMORANDUM AND ORDER
McKENNA, D.J.

Plaintiffs Girl Scouts of the United States of America and Boy Scouts of
America ("Plaintiffs", "Girl Scouts" or "Boy Scouts") instituted this action on
February 17, 1989 against defendants Bantam Doubleday Dell Publishing Group,
Inc. and Judy Delton ("Defendants"), the publisher and author of a series of
children's books (currently sixteen in number), bearing the title "Pee Wee
Scouts" along with various subtitles. Plaintiffs allege that Defendants' use of
the words "scout," "scouting," and related terms in the titles and texts of
their publications (1) infringe Plaintiffs' registered trademarks and service
marks in violation of @ 32(1) of the Lanham Act, 15 U.S.C. @ 1114 (1988),
(2)
infringe Plaintiffs' common law trademarks and service marks in violation of the
New York State law of unfair competition, (3) falsely represent and designate
the origin or sponsorship of such books in violation of @ 43(a) of the Lanham
Act, 15 U.S.C. @ 1125(a), and (4) will injure Plaintiffs' business reputation
and tend to dilute the quality of Plaintiffs' trademarks and service [**2]
marks in violation of Section 368-d of the New York General Business Law
(McKinney 1984). Plaintiffs seek injunctive relief and damages. Now before this
Court is Defendants' second motion for summary judgment brought pursuant to
Federal Rule of Civil Procedure ("Fed. R. Civ. P.") Rule 56 or, in the
alternative, for an order certifying an immediate interlocutory appeal under 28
U.S.C. @ 1292(b). For the reasons set forth below, Defendants' motion for
summary judgment is granted.
After answering the complaint, Defendants moved for summary judgment
pursuant
to Fed. R. Civ. P. Rule 56. That motion was denied by Judge Patterson in an
Opinion and Order dated October 10, 1989. Girl Scouts of the U.S.A. v. Bantam
Doubleday Dell Publishing Group, Inc., 1989 U.S. Dist. LEXIS 12054 (S.D.N.Y.
1989). In that first motion, Defendants argued that they were entitled to
judgment as a matter of law because Defendants' books are protected by the
PAGE 133
808 F. Supp. 1112, *1114; 1992 U.S. Dist. LEXIS 19424, **2;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
free [*1115] speech and free press guarantees of the Constitution's First
and Fourteenth Amendments and that these interests outweigh the statutory and
common law trademark interests of Plaintiffs under [**3] the balancing test
applicable when trademark and other commercial interests conflict with the First
Amendment. Judge Patterson isolated the critical legal issue as whether the
interest in preventing consumer confusion outweighs First Amendment concerns.
He
denied Defendants' motion, finding that, while the ultimate determination of
whether likelihood of confusion exists is a question of law, the factors to be
used in making the determination involve factual issues. He concluded that
Plaintiffs raised genuine issues of material fact on the issue of likelihood of
confusion; based on these factual issues and because no discovery had taken
place, he found that it would be premature to engage in an assessment of the
factors to be used in weighing consumer confusion and First Amendment
concerns.
Id. at *16-*17. In an Order dated October 25, 1989, Judge Patterson denied
Defendants' motion for reargument or for certification under 28 U.S.C. @
1292(b).
Defendants' second motion for summary judgment, now before this Court, is
founded on two changes in circumstances. First, Defendants argue that because

discovery has now been completed, additional facts are established [**4] and
the time is therefore ripe for the Court to decide their summary judgment
motion. Moreover, Defendants' current motion expands upon the First
Amendment
defenses raised in its first summary judgment motion. Specifically, Defendants
seek summary judgment on the merits of Plaintiffs' trademark and unfair
competition claims as well as on their First Amendment defenses.
BACKGROUND
A. Plaintiffs Boy Scouts and Girl Scouts
Both the Girl Scouts and the Boy Scouts have been prominent organizations
in
American life since they began their operations early in the century. The
principle purpose of both organizations is to supplement the formal education of
young girls or boys with a structured environment incorporating social,
athletic, outdoors and creative activities.
The Girl Scouts was first incorporated in 1915 and was subsequently
incorporated by a special Act of Congress in 1950. 36 U.S.C. @@ 31--39. n1
Approximately 3.3 million girls and young women, as well as 788,000 adult
leaders and participants, in over 200,000 troops nationwide, are currently
involved with the Girl Scouts. Over 55 million women and girls have been
members
of the Girl Scouts since its inception. [**5] The young women and girls
engage in various character-building activities, n2 participation in which earns
them badges in such activities as camping, community services, and selling
cookies door-to-door. Members are organized into troops which meet weekly,
they
recite a pledge, and they wear uniforms for certain activities, sometimes
including a scarf worn around the neck. The Girl Scouts are divided into groups
by age, beginning with kindergartners who are called Daisy Girl Scouts. As
second and third graders, the girls become Brownie Scouts and, in grades four
through six, [*1116] they are Junior Girl Scouts. Young women may
continue
on to the Cadette Girl Scout level and finally to Senior Girl Scouts and Campus
Girl Scouts.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - -
PAGE 134
808 F. Supp. 1112, *1116; 1992 U.S. Dist. LEXIS 19424, **5;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
-
n1 Section 36 gives the Girl Scouts certain exclusive rights. It provides:
The corporation shall have the sole and exclusive right to have and to use, in
carrying out its purposes, all emblems and badges, descriptive or designating
marks, and words or phrases now or heretofore used by the old corporation . . .
in carrying out its program, . . . .
n2 Section 33 of the Act incorporating the Girl Scouts lists its purposes:

The purposes of the corporation shall be to promote the qualities of truth,
loyalty, helpfulness, friendliness, courtesy, purity, kindness, obedience,
cheerfulness, thriftiness, and kindred virtues among girls, as a preparation for
their responsibilities in the home and for service to community, to direct and
coordinate the Girl Scouts movement in the United States . . . and to fix and
maintain standards for the movement which will inspire the rising generation
with the highest ideals of character, patriotism, conduct, and attainment, which
purposes shall be nonsectarian, nonpolitical, and not for pecuniary profit.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**6]
The Girl Scouts have the following registered trademarks or service marks:
Girl Scouts, Campus Girl Scouts, Brownie, and Daisy Girl Scouts, Girl Scout
Cookies, Scout Cookies, and Cadette Girl Scout. n3 (Pl. Pretrial Mem. at 4-9.)
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n3 The trefoil design has been a common designation of the organization and
its products. The trademarks and designations have been used in connection with
various products, notably clothing and handbooks. Plaintiffs claim that many
terms using the word "Scout" have been commonly employed by the Girl Scouts
in
carrying out their activities; for example: "Scout Oath," "Scout Law," "Scout
Sign," "Scout Motto," "Scout Badge," "Scout Uniform," "Scout Activities,"
"Scouting Organization," "Scout," "Scouting," etc.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The Boy Scouts was first incorporated in the United States in 1910 and was
then incorporated by a Special Act of Congress in 1916. 36 U.S.C. @ 21--29.
n4
Current Boy Scout membership totals 4.2 million youths and 1.1 million
participating adults in 130,000 [**7] organizational units. Approximately 100
million boys and adults have been Boy Scout organization members since its
founding in 1910. The Boy Scouts' purpose is to build good character in its
young charges. n5 Boy Scouts also meet weekly, participating in activities
commensurate with the organization's purpose, often to earn badges. Important
elements of the Boy Scouts organization are the Scout Oath, Scout Motto and
Scout Law recited by members and the uniforms worn, including a neckerchief.
The
age divisions of the Boy Scouts are Tiger Cubs, boys aged six, Cub Scouts,
boys
in the second through the fifth grades, and, for older boys, Boy Scouts,
including Varsity Scouts, Explorer Scouts, Eagle Scouts, Official Scouts, and
Sea Scouts. n6 In addition to their alleged common law trademarks and service
marks, the Boy Scouts have secured registrations in the U.S. Patent and
Trademark Office for the following: Boy Scouts of America, Cub Scouts,
PAGE 135
808 F. Supp. 1112, *1116; 1992 U.S. Dist. LEXIS 19424, **7;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
Scouting (a magazine for adult Boy Scout leaders), Scouting/USA, National
Scout
Jamboree, Varsity Scout, and Eagle Scout Association. n7 The Boy Scouts, as

well
as the Girl Scouts, have used the terms "scout" or "scouts" alone or in
combination [**8] with other words to indicate various indicia and activities
of their organizations.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n4 Section 27 employs the same language as 36 U.S.C. @ 36, relating to the
exclusive right to emblems, badges, marks, and words or phrases. See supra n.
1.
n5 36 U.S.C. @ 23 lists the Boy Scouts' purposes:
The purpose of the corporation shall be to promote, through organization, and
cooperation with other agencies, the ability of boys to do things for themselves
and others, to train them in scoutcraft, and to teach them patriotism, courage,
self-reliance, and kindred virtues, using the methods which were in common use
by Boy Scouts on June 15, 1916.
n6 The fleur-de-lis logo is commonly used to designate the Boy Scouts
organization or particular activities. See supra Note 3 for a list of terms
Plaintiffs claim are used by the Boy Scouts as well as the Girl Scouts in
connection with their activities.
n7 Defendants note, and Plaintiffs do not dispute, that in Boy Scouts'
registration for Varsity Scout, dated November 12, 1985, the organization
accepted the express disclaimer that "No claim is made [by the Boy Scouts] to
the exclusive right to use 'Scout,' apart from the mark as shown." The Boy
Scouts accepted this disclaimer at the suggestion of the U.S. Patent and
Trademarks Office (PTO). They also disclaimed the word "scout" in registering
for National Eagle Scout Association (Sept. 21, 1982). (Pl. Pretrial Mem. at 7.)
Plaintiffs contend that the disclaimers are irrelevant to the claim they have
brought. See @ 6(b) Lanham Act, 15 U.S.C. @ 1056(b); In re National Data
Corp.,
753 F.2d 1056, 1059 (Fed. Cir. 1985). This Court is in accord with Plaintiffs'
argument on this point.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**9]
Books, catalogs, and magazines are some of the numerous products marketed
by
the Boy Scouts in connection with its activities. Examples include: the Official
Boy Scout Handbook, the Big Bear Cub Scout Book, and a monthly magazine
entitled
Boys Life. Boys Life magazine runs a comic strip about a fictional Boy Scout
named Pee Wee Harris and his troop. n8 Plaintiffs do not [*1117] assert a
separate claim with respect to the word or name "pee wee." (See Compl. at PP
10-11, 13) The Girl Scouts have also marketed printed matter in connection with
the organization's activities, consisting primarily of handbooks and catalogs.
For many years until the late 1970s, the Girl Scouts published the magazine
American Girl.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n8 Plaintiffs report that they have an application for registration of a Boy

Scouts' mark for Pee Wee Harris now before the PTO (Serial No. 73/106114).
(Def.
Pretrial Mem. at 12-13.)
PAGE 136
808 F. Supp. 1112, *1117; 1992 U.S. Dist. LEXIS 19424, **9;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Both the Boy Scouts and the Girl Scouts go to great lengths to promote their
activities through print, radio and television [**10] advertisements, often
done free of charge and worth many thousands of dollars per year. Unsolicited
media coverage and recognition by government officials of the Boy Scouts' and
Girl Scouts' many activities contributes, along with advertising, to
unprecedented public awareness of Plaintiffs' organizations.
B. Defendants Judy Delton and Dell Publishing
Judy Delton is the author and Dell Publishing is the publisher of a series of
illustrated children's books under the series title "Pee Wee Scouts". n9 On the
cover of each book, the author's and illustrator's names and the publisher's
name and logo appear prominently, along with the "Pee Wee Scouts" general
title
and the book's specific title. In addition, in the lower right hand corner of
each book is an inset with a drawing of a red scarf held together by a pin
bearing the name "Pee Wee Scouts." On the back cover of each book is a
cut-out
merit badge, presumably associated with the scouting activity described in the
book, e.g. camping. Defendants have also published a promotional 11-page
"Official Pee Wee Scouts Handbook," which provides the background of the Pee
Wee
Scouts and includes cut-out badges.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n9 Sixteen "Pee Wee Scouts" books have been published as of May 1992.
They
each have an individual title, as follows: Cookies and Crutches; Camp
Ghost-Away; Lucky Dog Days; Blue Skies, French Fries; Grumpy Pumpkins;
Peanut-Butter Pilgrims; A Pee Wee Christmas; That Mushy Stuff; Spring
Sprouts;
The Pooped Troop; The Pee Wee Jubilee; Bad Bad Bunnies; Rosy Noses,
Freezing
Toes; Sonny's Secret; Sky Babies; and Trash Bash.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**11]
The books are fictional short stories about a co-ed group of first and second
graders, all members of Troop 23 of the Pee Wee Scouts. In the course of the
books, the children engage in activities such as camping, attending regular
weekly meetings, doing good deeds, earning merit badges, celebrating holidays,
selling doughnuts, attending a Pee Wee jubilee, playing sports, gardening,
learning about health and fitness, doing arts and crafts, etc. At their

meetings, the children sing their Pee Wee Scout Song and recite the Pee Wee
Scout Pledge.
Plaintiffs allege that the plots of certain of the books contain elements
very closely associated with the Boy Scouts or Girl Scouts. For example, the
book entitled "Pee Wee Jubilee" involves a large gathering of scouts from
different states, similar to the nationwide Boy Scout Jamborees held every four
years. In another book, the troop leader consults a "Pee Wee Scout Handbook"
to
ascertain whether one of the children may earn a badge for a certain activity.
Plaintiffs' similar scouting handbooks are well-known.
PAGE 137
808 F. Supp. 1112, *1117; 1992 U.S. Dist. LEXIS 19424, **11;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
The activities and purposes of the Pee Wee Scouts thus resemble in various
respects those of the Boy Scouts and Girl Scouts. [**12] The boys and girls
who form the Pee Wee Scouts are referred to as such or as "Pee Wees" or
"Scouts," but never as Boy Scouts or Girl Scouts or any other name used by
Plaintiffs such as Daisy Scouts or Cub Scouts.
DISCUSSION
A. Appropriateness of Summary Judgment
Summary judgment under Fed. R. Civ. P. Rule 56 will be granted if the
movant
establishes that there is no genuine issue as to any material fact and that the
movant is entitled to judgment as a matter of law. Therefore, this Court is
precluded from trying issues of fact on a summary judgment motion. Donahue
v.
Windsor Locks Bd. of Fire Comm'rs, 834 F.2d 54, 58 (2d Cir. 1987) (citations
omitted). A court must resolve all ambiguities and draw all reasonable
[*1118] inferences in the light most favorable to the non-moving party.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 91 L. Ed. 2d 202, 106 S.
Ct.
2505 (1986).
As numerous cases in the Second Circuit demonstrate, the issues present in
this trademark action may be decided as a matter of law. See, e.g., Lang v.
Retirement Living Publishing Co., Inc., 949 F.2d 576, 580 (2d Cir. 1991). The
Memoranda submitted [**13] by Plaintiffs and Defendants demonstrate that
they
substantially agree that three issues are facing this Court on Defendants'
motion. First, Defendants claim, and Plaintiffs dispute as a legal matter, that
this action is completely barred by the First and Fourteenth Amendments.
Defendants in trademark infringement cases have been granted summary
judgment
where First Amendment concerns were prevalent. See, e.g., Rogers v. Grimaldi,
875 F.2d 994, 998 (2d Cir. 1989); Cliffs Notes, Inc. v. Bantam Doubleday Dell
Publishing Group, Inc., 886 F.2d 490, 494-95 (2d Cir. 1989); New Kids on the
Block v. News America Publishing, Inc., 745 F. Supp. 1540 (C.D. Cal. 1990).
Second, the parties dispute whether Plaintiffs have the exclusive right to
the term "scout" and "scouting" in the titles or text of children's fiction,

and, third, the parties dispute whether the public is likely to be confused as
to the source or sponsorship of Defendants' books. In trademark cases where
First Amendment concerns are absent, summary judgment has been granted
despite
the variety of factors frequently at issue in trademark [**14] infringement
actions. See, e.g., Lang, 949 F.2d 576. The Second Circuit's eight-factor test
requires the weighing of all of those factors, each often involving substantial
factual issues. See Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492
(2d Cir.), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961); see
infra for a discussion of the factors.
Neither the volume of evidence nor the complexity of the case should
preclude
a grant of summary judgment if otherwise appropriate. See Lang, 949 F.2d at
580
("some alleged factual dispute . . . will not defeat . . . motion for summary
judgment; the requirement is that there be no genuine issue of material fact");
Continental Corrugated Container Corp. v. Continental Group, Inc., 462 F. Supp.
200, 209 (S.D.N.Y. 1978) (in trademark infringement case "complexity of a case
is not necessarily a barrier to summary judgment"). In weighing the Polaroid
factors in a summary judgment motion, a court must examine "not how many
factors
favor each side but whether a reasonable trier [**15] of fact might differ
PAGE 138
808 F. Supp. 1112, *1118; 1992 U.S. Dist. LEXIS 19424, **15;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
as to the likelihood of confusion." Physicians Formula Cosmetics Inc. v. West
Cabot Cosmetics, Inc., 857 F.2d 80, 85 (2d Cir. 1988).
As set out below, even interpreting all of the relevant evidence brought to
light as of the close of discovery in the manner suggested by Plaintiffs,
Defendants nonetheless must prevail in their summary judgment motion. The
factors articulated by Judge Patterson as dispositive in his denial of
Defendant's first motion for summary judgment -- at which time certain facts
had
not been clarified by discovery -- are adjudged by this Court to have been
resolved through discovery in a manner sufficient to support summary judgment
on
First Amendment grounds.
B. First Amendment Grounds
Artistic expression frequently conflicts with intellectual property rights.
The owner of a trademark does not possess a property right that is superior to
the First Amendment right accorded to artistic expression. See L.L. Bean, Inc.
v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir.), cert. denied, 483 U.S.
1013, 97 L. Ed. 2d 753, 107 S. Ct. 3254 (1987). Commentators have noted that
courts [**16] frequently overprotect trademarks at the expense of First
Amendment interests. Diane Leenheer Zimmerman, Information as Speech,
Information as Goods: Some Thoughts on Marketplaces and the Bill of Rights,
33
Wm. & Mary L. Rev. 665, 673, 720 n.356 (1992); Rochelle Cooper Dreyfuss,
Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65
Notre

Dame L. Rev. 397, 398 (1990) (finding First Amendment law [*1119] has
proven
"uncongenial" as means to limit trademark rights and proposing framework to
further expressive uses of trademarks by third parties); Robert C. Denicola,
Trademarks as Speech: Constitutional Implications of the Emerging Rationales
for
the Protection of Trade Symbols, 1982 Wis. L. Rev. 158, 202 (1982) (First
Amendment defense should be recognized in cases where defendant "has a
message,
and the trademark assists in conveying it").
"To prevent filmmakers, novelists, painters, and political satirists from
including trademarks in their works is to cordon off an important part of modern
culture from public discourse." Robert N. Kravitz, Trademarks, Speech, and the
Gay [**17] Olympics Case, 69 B.U. L. Rev. 131, 152 (1989). The case
before
this Court involves expression obviously implicating First Amendment concerns,
see Abood v. Detroit Bd. of Educ., 431 U.S. 209, 231, 97 S. Ct. 1782, 52 L. Ed.
2d 261 (1977); as explained infra, a trademark owner cannot circumscribe the
mark's use beyond a relatively narrowly defined area where consumer confusion
is
substantial.
This Court grants Defendants' motion for summary judgment on the basis of
Rogers v. Grimaldi. 875 F.2d 994. The Plaintiffs allege that Defendants' books
infringe their registered marks in violation of @ 32(1) n10 and @ 43(a) n11 of
the Lanham Act. To prevail in their trademark claim, Plaintiffs must show that
they have a protectable mark, and "that 'an appreciable number of ordinary
prudent purchasers are likely to be misled, or indeed simply confused, as to the
source of the goods in question.'" Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d
70, 75 (2d Cir. 1988) (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580
F.2d 44, 47 (2d Cir. 1978) (per curiam), cert. denied, [**18] 439 U.S. 1116,
59 L. Ed. 2d 75, 99 S. Ct. 1022 (1979)).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - -
PAGE 139
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-
n10 15 U.S.C. @ 1114(1). The section prevents the use of "any reproduction,
counterfeit, copy, or colorable imitation of a registered mark in connection
with the sale, offering for sale, distribution, or advertising of any goods or
services . . . which is likely to cause confusion, or to cause mistake, or to
deceive."
n11 15 U.S.C. @ 1125(a). The section prohibits the use of "a false
designation of origin, or any false description or representation, including
words or other symbols tending falsely to describe or represent the same . . .
."
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
In evaluating whether ordinary purchasers are likely to be misled, a court is

to consider the eight factors articulated in Polaroid. The factors are: the
strength of the prior owner's mark, the similarity between the two marks, the
competitive proximity of the products, the likelihood that the prior user will
bridge the gap, actual confusion, the defendant's good [**19] faith, the
quality of the defendant's product, and the sophistication of the buyers.
Polaroid, 287 F.2d at 495.
As explained in Rogers v. Grimaldi, the Polaroid analysis changes when the
First Amendment is implicated. First Amendment concerns do not, of course,
negate the protection afforded by trademark law. The Second Circuit in Rogers
articulated the conflict underlying the balancing test it announced therein.
"Movies, plays, books, and songs are all indisputably works of artistic
expression and deserve protection. Nonetheless, they are also sold in the
commercial marketplace like other more utilitarian products, making the danger
of consumer deception a legitimate concern that warrants some government
regulation." Rogers, 875 F.2d at 997.
The Rogers case involved plaintiff Ginger Rogers, the famed show business
star, who sued the producers and distributors of the film "Ginger and Fred," a
fictional film about two minor Italian cabaret performers named Pippo and
Amelia
who, in their heyday, had imitated Fred Astaire and plaintiff Ginger Rogers.
Plaintiff brought several claims, including a Lanham [**20] Act @ 43(a)
claim, alleging that the film created a false impression that the film was about
plaintiff Rogers or that she sponsored, endorsed or was somehow involved in
the
film. The alleged false impression created stemmed from the film's title. The
Court of Appeals analyzed the competing interests at stake and arrived at a
balancing test. [*1120]
Consumers of artistic works . . . have a dual interest: They have an interest in
not being misled and they also have an interest in enjoying the results of the
author's freedom of expression. For all these reasons, the expressive element of
titles requires more protection than the labeling of ordinary commercial
products.
* * *
We believe that in general the [Lanham] Act should be construed to apply to
artistic works only where the public interest in avoiding consumer confusion
PAGE 140
808 F. Supp. 1112, *1120; 1992 U.S. Dist. LEXIS 19424, **20;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
outweighs the public interest in free expression.
Id. at 998-99. There is no reason for this Court to depart from the Second
Circuit's reasoning and explicit balancing test articulated in Rogers.
Plaintiffs' claims include, but also extend beyond, the titles of the
children's books at issue. The common title of Defendants' [**21] series,
"Pee Wee Scouts," is arguably the element most likely to create confusion
among
consumers. Plaintiffs contend that the impression created by the title, as well
as other impressions given on a consumer's first look at the book, -- from an

inset with a neckerchief drawing, a cut-out Pee Wee Scout badge on the back
cover, and the individual titles, many of which deal with "scouting"-type
activities -- together are likely to cause confusion. Moreover, it seems that
Defendants' choice of subject-matter, a youth organization composed of "scouts"
who engage in many "scouting" activities, also forms part of Plaintiffs'
trademark infringement claims. Clearly, the Lanham Act cannot restrict the
Defendants' rights to author and publish books on a particular organization
resembling those founded by Plaintiffs. Because such an end obviously would
conflict with basic First Amendment principles, the Act cannot be read in such a
manner. As a general rule, one may write fiction about virtually any topic,
involving any public or private organization, corporation, or person so long as
it is not defamatory.
A statement in a California Supreme Court case applies equally to people
[**22] and to organizations. "Prominence invites creative comment. Surely, the
range of free expression would be meaningfully reduced if prominent persons in
the present and recent past were forbidden topics for the imaginations of
authors of fiction." Guglielmi v. Spelling-Goldberg Productions, 25 Cal. 3d 860,
603 P.2d 454, 460, 160 Cal. Rptr. 352 (1979) (Bird, C.J., concurring). A leading
New York case has expressed the same view.
It is at once apparent, when we deal with the content of a book or motion
picture, that we deal with no ordinary subject of commerce. . . . Their
importance 'as an organ of public opinion is not lessened by the fact that they
are designed to entertain as well as to inform;' . . . [books and motion
pictures] are a constitutionally protected form of expression notwithstanding
that 'their production, distribution and exhibition is a large-scale business
conducted for private profit.'
University of Notre Dame du Lac v. Twentieth Century-Fox Film Corp., 22
A.D.2d
452, 457, 256 N.Y.S.2d 301 (1st Dep't), aff'd, 15 N.Y.2d 940, 259 N.Y.S.2d
832,
207 N.E.2d 508 (1965) (quoting Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495,
501, 96 L. Ed. 1098, 72 S. Ct. 777 (1952); [**23] Aldoon v. Detroit Bd. of
Educ., 431 U.S. at 231).
Lanham Act conflicts arise when the fiction is marketed commercially in a
manner exploiting another's trademark in a manner likely to confuse consumers.
The Rogers opinion states that "poetic license is not without limits. The
purchaser of a book, like the purchaser of a can of peas, has a right not to be
misled as to the source of the product." Rogers, 875 F.2d at 997. Insofar as
Plaintiffs' claim relates to the title of Defendants' books, this case resembles
Rogers; insofar as Plaintiffs contend that the impression given by Defendants'
books as a whole is misleading (that they "look" like they might have been
sponsored by Plaintiffs' organizations), this case resembles the Second
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808 F. Supp. 1112, *1120; 1992 U.S. Dist. LEXIS 19424, **23;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
Circuit's Cliffs Notes decision which extended Rogers. [*1121]
In Cliffs Notes, the Second Circuit extended its test balancing First
Amendment interests and trademark infringement claims to the parody context.
By

definition, parody requires resemblance to the original near enough so that the
public will recognize the parodist's artistic object. However, the language used
by the [**24] Second Circuit is broad; clearly, the Court views parody as a
subset of "artistic expression, a category that includes parody." Cliffs Notes,
886 F.2d at 495. The Court of Appeals' holding should not be limited in light of
the express language including artistic expression in general.
We believe that the overall balancing approach of Rogers and its emphasis on
construing the Lanham Act 'narrowly' when First Amendment values are
involved
are both relevant in this case. That is to say, in deciding the reach of the
Lanham Act in any case where an expressive work is alleged to infringe a
trademark, it is appropriate to weigh the public interest in free expression
against the public interest in avoiding consumer confusion.
Id. at 494.
Defendants have published works of fiction entitled to First Amendment
protection as such. In contrast to Rogers, which involved social and personal
commentary, and to Cliffs Notes, which involved parody, Plaintiffs' claim
involves fictional children's books. However, the central issue in all three
cases is the same: whether the risk of confusion as to the source of Defendants'
[**25] merchandise is greater than the public interest in artistic
expression. n12 This Court is unpersuaded that Defendants' fictional children's
books merit less First Amendment protection than social or personal
commentary
or parody. While the analysis and outcome could differ because of the nature
of the different modes of artistic expression, the balancing test employed in
trademark infringement cases involving the First Amendment is the same. n13 In
applying the test to a new medium, this Court will analyze the public confusion
element in this new context, but the Court need not directly assign a lesser
First Amendment value to children's fiction as against parody or social
commentary. n14 The fact that Rogers involved the issue of the film's title and
that Cliffs Notes involved the parodying of the plaintiffs' study guide covers
does not preclude extending the reasoning of those cases to the slightly
different context now before this Court.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n12 The Court notes that an author certainly would have a First Amendment
right to write about the subject of the Boy Scouts and/or Girl Scouts. However,
this right is diluted by trademark law insofar as that author cannot present her
subject in a manner that confuses or misleads the public into believing, through
the use of one or more trademarks, that those organizations have produced or
sponsored the work in question. "Trademark protection is not lost simply
because
the allegedly infringing use is in connection with a work of artistic
expression." Silverman v. CBS, Inc., 870 F.2d 40, 49 (2d Cir.), cert. denied 492
U.S. 907, 106 L. Ed. 2d 569, 109 S. Ct. 3219 (1989). [**26]
n13 As Judge Patterson notes in his opinion, Girl Scouts, 1989 U.S. Dist.
LEXIS 12054 at *13 n.10, children's fiction involving subject matter protected
by trademark and the allegedly confusing presentation of that subject matter
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25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
may be more likely to confuse the public, thus overcoming First Amendment
concerns, than parody and social commentary in which the referral back to the
original is necessary, sometimes absurd, moving or humorous, and obviously
done
to invite comparison between the original and the alleged infringing elements,
and all for primarily artistic purposes.
n14 In this minor respect, this Court's approach may differ slightly from
the approach Judge Patterson suggested that he would use if called upon to
decide this issue. See Girl Scouts, 1989 U.S. Dist. LEXIS 12054 at *17 n.12.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
C. Application of Polaroid Factors in light of First Amendment
As noted in Cliffs Notes, the approach adopted by the Second Circuit in
Rogers "takes into account the ultimate test in trademark law, namely, the
likelihood [**27] of confusion '"as to the source of the goods in
question."'" Cliffs Notes, 886 F.2d at 495 (quoting Universal City Studios, Inc.
v. Nintendo Co., 746 F.2d 112, 115 (2d Cir. 1984) (quoting Mushroom Makers,
Inc.
v. R.G. Barry Corp., 580 F.2d 44, 47 [*1122] (2d Cir. 1978) (per curiam)
(citations omitted), cert. denied, 439 U.S. 1116, 59 L. Ed. 2d 75, 99 S. Ct.
1022 (1979))). However, in neither Cliffs Notes nor Rogers did the Second
Circuit explicitly employ the Polaroid factors in weighing the trademark rights
of the plaintiffs against the First Amendment implications of artistic
expression. In response to the plaintiffs' contention that the Polaroid factors
supply the relevant standard, the court in Cliffs Notes stated that
the Polaroid test has its origin in cases of purely commercial exploitation,
which do not raise First Amendment concerns. Thus, the Polaroid test is at best
awkward in the context of parody, which must evoke the original and constitutes
artistic expression. In such a situation, the Polaroid factors should be applied
with proper weight given to [**28] First Amendment considerations,
something
the district court did not do here.
Cliffs Notes, 886 F.2d at 495 n.3. n15
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n15 The district court in the Cliffs Notes case had analyzed the plaintiff's
trademark claims under Polaroid's eight-factor balancing test, rejecting the
defendant's general theory that the First Amendment gave it unbridled freedom
to
use a registered trademark as a parody or satire. Cliffs Notes, Inc. v. Bantam
Doubleday Dell Publishing Group, Inc., 718 F. Supp. 1159, 1162 (S.D.N.Y.
1989).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
As in the Cliffs Notes case, pure commercial speech, speech "related solely
to the economic interests of the speaker and its audience," Central Hudson Gas

&
Elec. v. Public Serv. Comm'n, 447 U.S. 530, 561, 100 S. Ct. 2326, 65 L. Ed. 2d
319 (1980), is not at issue in this case, and thus the Polaroid test must be
followed with "proper weight" given to First Amendment concerns. n16
Although
possibly not required to so do in light of Cliffs [**29] Notes and Rogers,
this Court chooses to examine each of the eight Polaroid factors in turn as the
means by which to most effectively address the likelihood of confusion issue.
PAGE 143
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25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
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n16 One commentator favors looking beyond the medium of expression --
newspapers, books, movies, T-shirts, etc. -- to determine whether speech is
purely commercial and thus entitled to diminished protection. He argues that the
nature of the speaker, the audience, and the expression itself should be
considerations in weighing an expression's commercial nature. Kravitz, 69 B.U.
L. Rev. at 159. Such an approach could have changed the result in the case of
San Francisco Arts & Athletics, Inc. v. United States Olympic Committee ("Gay
Olympics"), 483 U.S. 522, 97 L. Ed. 2d 427, 107 S. Ct. 2971 (1987), where the
Supreme Court held that protection of the Olympic trademark outweighed the
resulting restrictions on the defendants' freedom of expression. The Supreme
Court's analysis seemed to focus upon the Gay Olympics' appropriation of the
congressionally protected word "olympic" in a similar expressive context: an
athletic contest.
The present case involves a trademark's alleged use in a distinct context and
in a traditionally protected First Amendment area, fictional books. As
Plaintiffs emphasize, Defendants' books are sold for a profit; however, by their
nature, books have a creative component and they have always unquestionably
been
given First Amendment protection.
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[**30]
In any trademark infringement case, the Polaroid factors are not exhaustive,
nor is any particular factor or factors dispositive. This Court will examine the
relevant Polaroid factors to ascertain whether confusion exists, bearing in
mind, however, First Amendment considerations so as to give due weight to the
fact that the goods at issue are artistic expression, even if some degree of
consumer confusion exists. See Rogers, 875 F.2d at 1001. This Court concludes
that the likelihood of confusion is at best minimal and, in any event, not
significant enough to overcome the First Amendment concerns implicated here.
1. Strength of Plaintiffs' Marks
The Second Circuit has defined the "strength" of the trademark as "its
tendency to identify the goods sold under the mark as emanating from a
particular . . . source . . . . The strength of a mark depends ultimately on its
distinctiveness, or its 'origin-indicating' quality, in the eyes of the
purchasing public." McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131

(2d Cir. 1979); see also Western Publishing Corp. v. Rose Art Industries, Inc.,
910 F.2d 57, 61 (2d Cir. 1990); [**31] Banff, Ltd. v. Federated Dept. Stores,
Inc., 841 F.2d 486, 491 (2d Cir. 1988). In order to better evaluate the strength
of trademarks, the Second [*1123] Circuit utilizes the following hierarchy
of trademark strength (in ascending order): (1) generic; (2) descriptive; (3)
suggestive; and (4) arbitrary or fanciful. See Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
A generic term is not entitled to trademark protection no matter how closely
it is associated with the product of a single proprietor. A generic term refers
to "the genus of which the particular product is a species" and is not
inherently distinctive. Id. at 9. A descriptive term "conveys an immediate
PAGE 144
808 F. Supp. 1112, *1123; 1992 U.S. Dist. LEXIS 19424, **31;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
idea of the ingredients, qualities or characteristics of the goods," id. at 11;
it is eligible for trademark protection only if it has "become distinctive of
the applicant's goods in commerce," or, in other words, if it has acquired
secondary meaning. 15 U.S.C. @ 1052(f) (1988). The boundaries between the
suggestive and the arbitrary or fanciful categories [**32] are not fixed,
but, in both cases, the marks are entitled to registration without proof of
secondary meaning. McGregor-Doniger, 599 F.2d at 1131. A term is suggestive
"if
it requires imagination, thought and perception to reach a conclusion as to the
nature of the goods." Abercrombie & Fitch, 537 F.2d at 11. However, "[a]
coined
term, initially suggestive or even fanciful, can lose its full trademark status
if it comes to signify to the public the generic name of an article rather than
the source of a particular brand of that article." Id.
For purposes of this motion, this Court accepts that Plaintiffs'
organizations are the only existing organizations called "scouts," whose members
are addressed as "scout," and whose youth activities are known as "scouting."
(Pl. Mem. at 20.) However, the Plaintiffs' have failed to show that the their
marks are entitled to protection in the area of children's fiction. Defendants
use the term "Pee Wee Scouts" rather than "Boy Scouts" or "Girl Scouts."
Certainly the term "scout" alone is neither "suggestive" nor "arbitrary or
fanciful," but it may be "descriptive," as opposed to "generic," [**33] in
which case Plaintiffs' must demonstrate secondary meaning in the term "scout"
alone. n17 This Court is of the view that the "vigorous evidentiary
requirements" Plaintiffs must meet in order to prove secondary meaning cannot
be
met by them in the context of children's fiction. Thompson Medical Co. v.
Pfizer, Inc., 753 F.2d 208, 217 (2d Cir. 1985); Bristol-Myers Squibb Co. v.
McNeil-P.P.C., Inc., 973 F.2d 1033, 1040-41 (2d Cir. 1992).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n17 For purposes of this motion, the Court assumes "scout" to be
descriptive. However, there is merit in Defendants' assertion that the term
should be deemed generic under the Lanham Act generally. Whether "scout" has
acquired secondary meaning in the context of youth organizations seems a
circular analysis in light of the unique protection afforded by Congress to
Plaintiffs. See infra Note 18.

- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The Second Circuit has articulated a number of indicators of secondary
meaning: the "crucial question" is "whether the public [**34] is moved in any
degree to buy an article because of its source;" American Footwear Corp. v.
General Footwear Co., 609 F.2d 655, 663 (2d Cir. 1979), cert. denied, 445 U.S.
951, 63 L. Ed. 2d 787, 100 S. Ct. 1601 (1980); a mark acquires secondary
meaning
when "it is shown that the primary significance of the term in the minds of the
public is not the product but the producer;" Centaur Communications, Ltd. v.
A/S/M Communications Inc., 830 F.2d 1217, 1221 (2d Cir. 1987); a mark merits
protection only if "consumers have come to associate [it] with a particular
manufacturer or source." Perfect Fit Industries, Inc. v. Acme Quilting Co., 618
F.2d 950, 953 (2d Cir. 1980). While Plaintiffs have demonstrated both Congress'
and the public's longstanding recognition of their organizations and of various
well-known indicia of their organizations (such as uniforms, scout manuals,
troops, earning merit badges, doing good deeds, etc.), they are not
automatically entitled to enjoin Defendants' children's books based on these
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808 F. Supp. 1112, *1123; 1992 U.S. Dist. LEXIS 19424, **34;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
facts.
The terms "scout" and "scouting" have not acquired secondary meaning in the
[**35] context of children's books. Plaintiffs have never produced significant
quantities of children's fictional books using the marks [*1124] "scout" or
"scouting." Furthermore, Plaintiffs have not produced evidence indicating that
consumers would conclude that a children's book with "scouts" in the title and
whose content deals with "scouting" is associated with their organizations. n18
Indeed, the fame of the Girls Scouts and Boy Scouts is such that confusion with
the name "Pee Wee Scouts" in this context is highly unlikely. See B.V.D.
Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 729 (Fed. Cir.
1988)
("The better known [a mark] is, the more readily the public becomes aware of
even a small difference").
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n18 This Court is inclined to agree with Defendants' contention that
"scouts" is a generic term in the context of children's fiction about scouting
organizations. It would be difficult to write about a children's youth
organization engaged in activities like sports, crafts, and helping others, and
to attain the reading audience's near-universal recognition of the book's
subject, without using the term "scout." The content of Defendants books may
well require that they use the term "scout" to convey that content; on the other
hand, Defendants' deliberately have chosen a title distinguishing their
fictional organization from Plaintiffs.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**36]
2. Similarity between the Marks

The "pertinent inquiry" for this Polaroid factor is "the general impression
conveyed to the purchasing public by the respective marks." Centaur
Communications, 830 F.2d at 1225. In essence, "whether the similarity is likely
to create confusion" is the "crucial question." Hasbro, 858 F.2d at 77.
In considering this factor, the Court notes that, rather than comparing two
books or other objects to determine if a defendant has produced something
likely
to be confused with a plaintiff's object, this Court can only examine whether
Defendants' books are likely to be misconstrued, because of the title,
appearance, or subject matter, as products of Plaintiffs. In other words, to
date Plaintiffs have not produced a similar series of children's fictional
books, n19 in contrast to such cases as Cliffs Notes and Merriam-Webster, Inc.
v. Random House, Inc., 1991 U.S. Dist. LEXIS 4135, 18 U.S.P.Q.2D (BNA)
1755
(S.D.N.Y. 1991), in which the courts compared plaintiffs' and defendants'
existing books. The Pee Wee Scouts are a fictional entity with a name different
from those of Plaintiffs' organizations. [**37] As discussed supra,
Plaintiffs' trademark right to the words "scout" or "scouting" alone is not
absolute. Plaintiffs' mark may not be dissected to prove similarity to or public
confusion with Defendants' books. See Universal City Studios, 746 F.2d at 117
("Donkey Kong" and "King Kong" are not similar when compared in entirety);
Inc.
Publishing Corp. v. Manhattan Magazine, Inc., 616 F. Supp. 370, 379 (S.D.N.Y.
1985), aff'd mem., 788 F.2d 3 (2d Cir. 1986) (Inc. and Manhattan Inc.
magazines
must be compared in their entirety).
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808 F. Supp. 1112, *1124; 1992 U.S. Dist. LEXIS 19424, **37;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
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n19 Subsequent to filing this action, Plaintiffs announced their intention
to produce and market a series of children's fiction. This development does not
affect the outcome of the analysis of this prong of the Polaroid inquiry. If
Defendants' behavior at the commencement of the suit was not a trademark
infringement, subsequent acts by Plaintiffs to manufacture a product similar to
that of Defendants will not create automatically retroactive infringement
barring Defendants' products.
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[**38]
The marks of each party should be compared, with consideration given to the
contexts in which the public is exposed to them. The "Pee Wee Scouts" are a
fictional group introduced on the covers of Defendants' children's books. One
could reasonably speculate that the average person, if asked who the "Pee Wee
Scouts" are without context, might conclude that such a group is an affiliate of
Plaintiffs' organizations. This situation is not before this Court. A consumer
could pick up one of Defendants' books and would see no indication that the
Girl
Scouts or Boy Scouts were in any way connected to the book; this Court
concludes

that there is little similarity between Defendants' books and Plaintiffs'
organizations. The books' covers (as well as the content) give no indication
that they are sponsored or related to the famed Girl Scouts and Boy Scouts.
Instead, Defendants have prominently placed the publisher's house mark, "Dell
Young Yearling," in large letters, and a picture of [*1125] their logo, a
colored yearling horse, above all other information on the cover. "The Second
Circuit has held that the defendant's use of its own well-known mark would
ensure that the goods at issue would [**39] be associated with the defendant
and not the plaintiff." Pristine Industries Inc. v. Hallmark Cards Inc., 753 F.
Supp. 140, 145-46 (S.D.N.Y. 1990) (citing Thompson Medical Co. v. Pfizer,
Inc.,
753 F.2d 208 (2d Cir. 1985) and Vitarroz Corp. v. Borden, Inc., 644 F.2d 960
(2d
Cir. 1981)); see also, Merriam-Webster, 1991 U.S. Dist. LEXIS 4135, 18
U.S.P.Q.2D (BNA) 1755, 1759 (use of "house mark -- its name together with
the
drawing of a house" on dictionary cover "is clearly a relevant consideration in
determining . . . likelihood of confusion."). Dell Young Yearling denotes a
division of Dell Publishing, a division of Bantam Doubleday Dell Publishing
Group, Inc.; Dell Publishing and Dell Young Yearling are prominent in the
publishing industry, thereby diminishing the likelihood that a consumer would
confuse Defendants' books with Plaintiffs' organizations.
Plaintiffs contend that a comic strip featured since 1953 in the Boy Scouts'
widely circulated magazine Boys Life is another factor, along with the use of
"scouts," likely to confuse consumers. The comic strip is entitled "Pee Wee
Harris," [**40] and it relates the adventures of a fictional Boy Scout named
Pee Wee Harris. The Court disagrees that Defendants' use of the descriptive
term
"pee wee" is dispositive. As discussed supra, this Court will not dissect titles
in order to find an infringement of the registered marks. n20 There is no
striking similarity between a comic strip dealing with a Boy Scout and entitled
"Pee Wee Harris" and books entitled "Pee Wee Scouts."
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n20 Plaintiffs claim they have a registration for the comic strip "Pee Wee
Harris," (see Pl. Mem. at 10 n.3) although they do not apparently bring this
action against Defendants on the basis of that trademark. (See Compl. at PP
10-11, 13.) Thus, this Court can consider only whether the existence of the
strip contributes to confusion engendered by alleged infringements of
Plaintiffs' registrations for Girl Scouts, Boy Scouts, etc., but the Court does
not consider infringement of the mark Pee Wee Harris itself.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Plaintiffs claim that Defendants' use in their books of various regalia
[**41] and indicia associated with Plaintiffs' organizations -- and which they
claim are protected by Acts of Congress, see 36 U.S.C. @@ 27 & 36 --
contributes
to confusion as to the books' association with Plaintiffs. Plaintiffs'
trademarks do not permit them to restrict Defendants' First Amendment right to

write about and depict any subject related to Plaintiffs, including kerchiefs,
merit badges, pledges and songs, troops, and other indicia related to youth
organizations. The Acts of Congress referred to give Plaintiffs exclusive rights
to have and use "all emblems and badges, descriptive or designating marks, and
words or phrases . . . ." 36 U.S.C. @@ 27 & 36. Defendants do not violate this
statute in writing about a fictional youth organization which uses indicia and
regalia common to scouting organizations. Defendants have not appropriated any
of Plaintiffs' particular "emblems and badges," "descriptive or designating
marks" or "words or phrases." n21 On the cover of the Pee Wee Scouts books
there
appears an inset of a colored neckerchief with a pin visibly reading "Pee Wee
Scouts." This picture does not in any way refer to Plaintiffs' organizations,
nor is it confusingly similar [**42] to anything, particularly books, that
Plaintiffs have produced.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n21 Many of the features of Defendants' fictional Pee Wee Scouts differ
substantially enough that consumers would be likely to recognize these
differences from the well-known Boy Scouts and Girl Scouts and therefore to
disassociate Defendants' books from Plaintiffs. For example, the Pee Wee Scouts
are coed and they wear only a pinned neckerchief with street clothes in contrast
to a full formal uniform of the sort the Boy Scouts and Girl Scouts wear.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The Court concludes that the similarity of Plaintiffs' trademarks to
Defendants' books is negligible and that this Polaroid factor weighs in
Defendants' favor.
3. Competitive Proximity of the Products
There is no product of Plaintiffs that is directly analogous to Defendants'
children's books. Plaintiffs' diverse activities have involved them in
children's publications, [*1126] but relatively few have been children's
fictional books using their trademarks. n22 It has never been the central
purpose of [**43] Plaintiffs' organizations to publish children's fiction.
n23 Of course, Plaintiffs are entitled to protect their trademarks at any time.
The number or nature of past infringements is not directly relevant to this
action. Cuban Cigar Brands N.V. v. Upmann Intern., Inc., 457 F. Supp. 1090,
PAGE 148
808 F. Supp. 1112, *1126; 1992 U.S. Dist. LEXIS 19424, **43;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
1097 n. 28 (S.D.N.Y. 1978), aff'd without op., 607 F.2d 995 (2d Cir. 1979);
Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96, 126-27
(S.D.N.Y. 1989); Council of Better Business Bureaus, Inc. v. Better Business
Bureau, Inc., 200 U.S.P.Q. 282, 294-95 (S.D. Fla. 1978). However, the volume
of
children's literature incorporating "scouting" themes in content or title
underscores the fact that Plaintiffs have been prominent in American life for
most of this century and thus a frequent subject for fictional works.
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n22 Plaintiffs and Defendants have submitted large exhibits composed of
fictional works dealing with scouting. Defendants' Composite Exhibit 5 presents
54 examples of publications and films purportedly not sanctioned (i.e. not
containing a copyright notice or other clear indicia of sponsorship) by the
Plaintiffs whose title or content is centered on "scouts" or "scouting."
Plaintiffs have submitted examples of children's fiction sponsored by them. See,
e.g., Exhibits 6-8 & 14-17. It is interesting to note that in the two
collector's guides to scouting books presented by Plaintiffs (Exhibits 6 & 7),
the compilers of the collector's guides note that many works, even from a time
years ago when the Plaintiffs more frequently sponsored fictional works, were
not sanctioned by Plaintiffs. See Exhibit 7 (Girl Scout Collector's Guide) at
187 ("Some of the [fictional] books were approved and sold by the Girl Scout
organization, but most were not."); Exhibit 6 (Collecting Scouting Literature)
(documenting that only a fraction of the hundreds of fictional works dealing
with Boy Scouts in some manner were copyrighted or sanctioned by Boy Scouts
of
America). This information simply demonstrates that Plaintiffs have not
attempted to control children's fiction about their organization; they have no
greater right to control fiction about a fictional scouting organization, absent
egregious trademark infringement. [**44]
n23 The provision outlining the Girl Scouts' purposes specifies that those
purposes "shall be nonsectarian, nonpolitical, and not for pecuniary profit." 36
U.S.C. @ 33 (1988). The Act of Congress pertaining to the Boy Scouts contains
a
similar limit on the Boy Scouts: "its object and purposes [are] solely of a
benevolent character and not for pecuniary profit to its members." 36 U.S.C. @
24 (1988).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
For purposes of analysis of this prong of the Polaroid test, the Court does
not examine whether a consumer might mistakenly believe that Plaintiffs
produced
or sponsored Defendants' books, when in fact Plaintiffs' actual market presence
in this field has been negligible. Numerous cases in this circuit demonstrate
that the competitive proximity must be close in order to support likelihood of
confusion in favor of the senior user. See e.g., Western Publishing, 910 F.2d at
62 ("it is undisputed that [publisher of children's book series] does not
currently market a product directly competitive with [children's [**45]
drawing slate];" therefore this factor weighs in defendant's favor); Plus
Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1008 (2d Cir. 1983) ("The
differences in modes of marketing and the segregation of [plaintiff's]
merchandise renders the slight proximity of the parties' products
insignificant."); Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 967 (2d Cir.
1981) (tortilla chips and crackers not proximate).
PAGE 149
808 F. Supp. 1112, *1126; 1992 U.S. Dist. LEXIS 19424, **45;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
The channels of trade utilized by Plaintiffs and Defendants are not at all
wholly coterminous. Plaintiffs' market presence is as dispersed as Plaintiffs'
organizations themselves, but publication and distribution of children's fiction
has never been a focus of the organizations. Scouting manuals, fiction features
in Plaintiffs' magazines, and catalogs, which include fictional book offerings,

many of which are not published by Plaintiffs, do not compete in any direct
sense with Defendants' children's fiction sold in retail stores. Much of
Plaintiffs' discussion of this prong centers around the significant presence of
their scouting-related products, primarily such items as uniforms, equipment,
and scouting [**46] manuals, with little emphasis on children's fiction, in
retail stores. (See Pl. Pretrial Mem. at 35-36.) [*1127]
Plaintiffs' successful real-life maintenance of nationwide scouting
organizations is not comparable to Defendants' books depicting a fictional
organization with similar features, and does not demonstrate product proximity.
Thus, the product proximity comparison is between Plaintiffs' organizations and
Defendants' children's books rather than the fictional Pee Wee Scouts' features.
See Ocean Bio-Chem, Inc. v. Turner Network Television, Inc., 741 F. Supp.
1546,
1557 (S.D. Fla. 1990) (real trade name not infringed by film about a company
with a similar, but fictional name; product proximity requires comparison
between plaintiff's goods and film itself not fictional company's goods).
This Court finds no basis to conclude that Plaintiffs' organizations'
competitive proximity with Defendants' books is substantial. The facts of this
case show that publishing and marketing children's fiction has been a sporadic
and marginal aspect of Plaintiffs' purposes.
4. Bridging the Gap
The fourth Polaroid factor considers "the likelihood that the [**47]
senior user of the mark will bridge the gap by entering the market in which the
junior user operates." Hasbro, 858 F.2d at 78. Plaintiffs are not publishers in
any traditional sense, nor is publishing children's books likely ever to be
their main service. However, the nature of the Girl Scouts and Boy Scouts has
enabled Plaintiffs to enter diverse retail fields in order to further the
purposes of their organizations, including publishing and distribution of
publications. Plaintiffs have submitted evidence that they in fact have
concluded an agreement with the Putnam and Gosset Group and that they intend
to
publish a series of fictional children's books which they expect to be marketed
through retail bookstores beginning in approximately fall 1993. (See Becker Aff.
PP 2-5.) Therefore, credible evidence exists that by virtue of the strength and
popularity of their organizations, Plaintiffs could at any time enter the field
of children's books and that they intend to do so in the near future. n24
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n24 Of course, Plaintiffs' decision to publish a series of similar books
after commencement of their suit does not affect the rights of the parties; they
must be considered as of the time the suit was commenced. Sears, Roebuck &
Co.
v. Charles W. Sears Real Estate, Inc., 1989 U.S. Dist. LEXIS 5862, at *14-*15
(N.D.N.Y. 1989).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**48]
PAGE 150
808 F. Supp. 1112, *1127; 1992 U.S. Dist. LEXIS 19424, **48;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257

Because First Amendment considerations figure strongly in this case,
however,
the weight of this factor must be minimal. Plaintiffs cannot limit publishers of
children's fiction, even those whose books depict similar youth organizations.
5. Actual Confusion
A determination of actual confusion is one of the several Polaroid factors to
be used in assessing likelihood of confusion. It may be proper for a court to
infer from the absence of proof of actual confusion that there is no likelihood
of confusion. McGregor-Doniger, 599 F.2d at 1136. However, the Second
Circuit
has noted "the difficulty of establishing confusion on the part of retail
customers." Id. (citing Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d
44,
48 (2d Cir. 1978), cert. denied, 439 U.S. 1116, 59 L. Ed. 2d 75, 99 S. Ct. 1022
(1979)). In order to demonstrate actual consumer confusion, parties have
typically undertaken "some form of survey of consumer attitudes under actual
market conditions." Mattel, Inc. v. Azrak-Hamway Int'l, Inc., 724 F.2d 357, 361
(2d Cir. 1983).
In this case, Plaintiffs have submitted [**49] no evidence indicating that
they have ever received confused consumer-initiated inquiries or comments as to
the source of Defendants' Pee Wee Scouts books. In her Declaration, defendant
Judy Delton stated that she had received hundreds of fan letters from children
and adults, none of which suggested that her Pee Wee Scouts were actually Girl
Scouts or Boy Scouts, nor that those organizations sponsored or were "behind"
the books, nor did any of them exhibit confusion between the Boy Scouts or
Girl
Scouts and her imaginary Pee Wee [*1128] Scouts. n25 (Delton Dec. at P 9.)
Defendants' books have been on the market for over three years and hundreds of
thousands of copies have been distributed nationwide. Therefore, this failure to
uncover even a single case of actual confusion is significant.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n25 Plaintiffs cite the Tenth Circuit's certainly valid observation that
"purchasers ore unlikely to bother to inform the trademark owner when they are
confused about an inexpensive product." Beer Nuts, Inc. v. Clover Club Foods
Co., 805 F.2d 920 (10th Cir. 1986). While this may be very accurate as to
purchasers of snack foods at issue in that case, it does not necessarily apply
to the adults and children who are moved to comment on a series of books. In
fact, the author has received letters commenting on them whereas Plaintiffs
evidently have not.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**50]
Due to the lack of unsolicited comments, Plaintiffs must rely upon a
consumer
survey to demonstrate actual confusion. The survey undertaken by the Plaintiffs
indicated consumer confusion in the case of approximately 12.6% of the 598
respondents. n26 This Court is not convinced that this fraction is large enough
to demonstrate significant "actual" confusion, particularly in light of the

Second Circuit's discussion in Rogers v. Grimaldi. In its discussion of
balancing the Lanham Act with the First Amendment in the context of titles of
artistic works in Rogers, the Court stated that titles "that are explicitly
misleading as to source or content, or that have no artistic relevance at all"
are vulnerable to claims of deception, in contrast to "titles with at least
PAGE 151
808 F. Supp. 1112, *1128; 1992 U.S. Dist. LEXIS 19424, **50;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
minimal artistic relevance that are ambiguous or only implicitly misleading"
that would be insulated from restriction under the Lanham Act. Rogers, 875
F.2d
at 1000. This Court views the survey evidence submitted here as the Second
Circuit did in Rogers.
The survey evidence, even if its validity is assumed, indicates at most that
some members of the public would draw the incorrect [**51] inference that
Rogers had some involvement with the film. But that risk of misunderstanding,
not engendered by any overt claim in the title, is so outweighed by the
interests in artistic expression as to preclude application of the Lanham Act.
Id. at 1001.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n26 Plaintiffs' original study was contested by Defendants in the previous
summary judgment proceeding before Judge Patterson. Plaintiffs withdrew the
results of that study and conducted a new study whose only material difference
is in the composition of the universe. The original study contained only women;
the new study includes men in the universe of qualified respondents.
Plaintiffs maintain that their latest study, the "Weilbacher Study," conforms
to the recognized principles of market research appropriate in federal
litigation. See Handbook of Recommended Procedures in the Trial of Protracted
Cases, 25 F.R.D. 351 (1960). For purposes of this motion, the Court will assume
that Plaintiffs' survey is proper as to universe and the questions asked of
respondents. The Weilbacher Study polled males and females between the ages
of
22 and 55 who had purchased a book for children under the age of twelve
within
the past six months. The interviews took place in four shopping malls in
Indianapolis, Memphis, Philadelphia and San Diego. The qualified respondents
were asked to examine four of Defendants' books. They were then asked in an
allegedly non-leading and generally accepted manner whether they believed
"that
these children's books are sponsored or approved by any particular organization,
or not?" Those answering "yes" were asked what organization they believed had
sponsored or approved of the books and why they believed that. In "coding" the
respondents answers, Mr. Weilbacher deleted answers mentioning only "scouts"
or
"scouting," as opposed to the full names of one of Plaintiffs' organizations. He
concluded, based upon responses to the two questions described supra, that
12.6%
were clearly confused as to content or source of Defendants' books. Defendants
point out that up to 37% of the respondents exhibited some confusion because

they made a "general mention of scouting" in their responses.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**52]
6. Good Faith
Several decisions have minimized the weight to be given this Polaroid factor.
"Intent is largely irrelevant in determining if consumers likely will be
confused as to source. The history of advertising suggests that consumer
reactions usually are unrelated to manufacturer intentions." Lois Sportswear,
U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986); TNT Ltd.
v. TNT Messenger Service, Inc., 724 F. Supp. 201, 206 (S.D.N.Y. 1989).
PAGE 152
808 F. Supp. 1112, *1128; 1992 U.S. Dist. LEXIS 19424, **52;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
Because Defendants could reasonably have concluded, as this Court
concludes,
[*1129] that Plaintiffs did not possess the exclusive right to the words
"scout" and "scouting," thereby limiting the rights of others to publish books
about a fictional "scouting" organization, this Court cannot conclude that the
Defendants acted in bad faith. Moreover, there is no evidence that Defendants
deliberately sought to cause confusion between their books and Plaintiffs'
organizations, for example by designing a cover maximizing "Pee Wee Scouts"
and
minimizing Defendants' names and logo; in fact, as discussed supra, Defendants
have not directly referred to Plaintiffs' [**53] organizations in any way.
The fact that Defendants decided to publish a series of books about a scouting
organization and to use the word "scouts" in the title as part of a description
of the books' content does not establish bad faith. Nor is knowledge of
Plaintiffs' marks and marketing success dispositive. See U.S. Shoe Corp. v.
Brown Group, Inc., 740 F. Supp. 196, 199 n.3 (S.D.N.Y.), aff'd without op., 923
F.2d 844 (2d Cir. 1990).
Undoubtedly, Defendants publish books to make money, and various
personnel at
Dell Publishing believed that a series of books for very young readers about a
scouting organization in particular would sell very well. None of the numerous
facts Plaintiffs have elicited from Defendants, both prior to and during
discovery, that Defendants acted with knowledge of Plaintiffs' organizations and
their trademark rights, undermines Defendants' good faith. As this Court has
emphasized throughout this Opinion, Plaintiffs do not have the exclusive right
to generate fiction about the organizations they founded. The Boy Scouts and
Girl Scouts are indeed well known and dear to generations of American [**54]
youth, but this fact does not prohibit Defendants from capitalizing on
Plaintiffs' mystique, so long as Defendants' effort does not unduly confuse the
public as to the source. See American Footwear Corp. v. General Footwear Co.,
609 F.2d at 662; Merriam-Webster, 18 U.S.P.Q. at 1760.
7. Quality of Goods
This Court must again confront the fact that Plaintiffs do not produce any
"goods" that are closely analogous to Defendants' books. Thus, the Court
examines the general quality of Defendants' books for indications that their

quality may bear in some respect upon consumer confusion as to source. Several
courts have noted that this Polaroid factor may cut either way. "The factor of
the quality of the defendant's product has come to represent two problems: that
of the inferior product thought, through confusion, to be the superior, so that
sales of the latter suffer; and that of products of equal quality, in which case
there may be more likelihood of confusion." Merriam-Webster, 18 U.S.P.Q at
1760
(citing Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 78 (2d Cir. 1988)).
[**55]
In this case, Plaintiffs allege that, because of the apparent high quality of
Defendants' books, -- glossy covers, attractive art work -- the likelihood of
confusion is increased and that Defendants are likely to profit from Plaintiffs'
good will. See Banff, 841 F.2d at 492; Lois Sportswear, 799 F.2d at 875.
Defendants' do not use Plaintiffs' names or other marks in a misleading way.
Moreover, to date Plaintiffs have not published similar children's serial
fiction likely to be confused with Defendants' products. As discussed supra, the
minimal evidence of actual or possible confusion, in combination with the First
Amendment considerations presented here, limits the effectiveness of Plaintiffs'
argument that Defendants are unlawfully profiting from Plaintiffs' good will.
PAGE 153
808 F. Supp. 1112, *1129; 1992 U.S. Dist. LEXIS 19424, **55;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
8. Buyers' Sophistication
This final Polaroid factor is derived from "the belief that unsophisticated
consumers aggravate the likelihood of confusion." Hasbro, 858 F.2d at 79. The
value of an article may influence the sophistication and awareness of buyers
which in turn may influence the degree of confusion [**56] as to origin. At a
sale price of $ 2.50 to $ 2.75, Defendants' books might be categorized as
"impulse" buys. However, as the Hasbro court noted, confusion is most likely
under this factor "when the . . . products' marks are similar and the [products
are] inexpensive." [*1130] Id. (emphasis added). Plaintiffs contend that, in
combination with other confusing aspects of Defendants' product, -- "scouts" in
the title and the kerchief logo on the cover suggesting Plaintiffs' sponsorship
-- parents or others, many of whom may be "unsophisticated" because of the
low
price and who are buying "on impulse" due to that price, may buy Defendants'
books without making an informed decision as to quality. Plaintiffs' reputation
and control over their marks is thus subjected to Defendants' quality and
marketing decisions. Plaintiffs do not support their contentions nor, in the
view of this Court, can they do so. As in the case of purchasers of dictionaries
discussed in Merriam-Webster, 18 U.S.P.Q. at 1761, purchasers of children's
books are undoubtedly literate; moreover, undoubtedly they have in mind
supplying quality reading material to a five or six year [**57] old. In
short, they are not necessarily "unsophisticated" because the books are low
priced. In this case, Plaintiffs do not market a similar product which could
easily confuse hypothetical "unsophisticated" consumers. Even if this Court were
to agree that the buyers of Defendants' books were unsophisticated, "the
complete lack of evidence of actual confusion militates against according this
factor much weight." Western Publishing, 910 F.2d at 63.
The sparse evidence and marginal relevance of lack of consumer
sophistication

certainly does not contribute to overcoming the First Amendment considerations
presented by this action.
9. Other Factors
The factors listed in the Polaroid decision are not exhaustive; thus, a court
may consider other relevant factors in determining whether the plaintiff is
entitled to relief. A court may consider the conflicting interest of the parties
involved. McGregor-Doniger, 599 F.2d at 1140. The injunctive relief sought
would
provide little benefit to Plaintiffs, who have not demonstrated any tangible
harm, whether monetary or to reputation, to their marks from Defendants'
publications, [**58] whereas it would substantially harm Defendants to
enjoin them from publishing the Pee Wee Scouts series.
* * *
The overwhelming consideration in balancing Plaintiffs' Lanham Act
trademark
rights with Defendants' interests is in preserving the public's and Defendants'
First Amendment interests. In considering the substantial evidence resulting
from the parties' completed discovery, this Court is unable to find that there
is a likelihood of confusion between Plaintiffs' protected trademarks and
Defendants' children's books sufficient to overcome the First Amendment value
of
protecting creative works such as Defendants' books. The Court's decision rests
heavily upon Rogers v. Grimaldi, whose principles and conclusions this Ccourt
deems clearly applicable to the context of children's fiction. Although the
PAGE 154
808 F. Supp. 1112, *1130; 1992 U.S. Dist. LEXIS 19424, **58;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
title and content (including the use of indicia associated by many with
Plaintiffs' organizations) of Defendants' books could engender some consumer
confusion as to source, no overt references to Plaintiffs' trademarks are ever
made, thus further minimizing the risk and reasonableness of confusion,
particularly in a creative field protected by the First Amendment. "Most
consumers [**59] are well aware that they cannot judge a book solely by its
title any more than by its cover." Rogers, 875 F.2d at 1000.
D. PLAINTIFFS' STATE LAW CLAIMS
1. New York Anti-Dilution Claim
Plaintiffs are not entitled to relief under New York State's anti-dilution
law. N.Y. General Business Law, @ 368-d (McKinney 1984). n27 In order to
prove
dilution Plaintiffs would have to prove two [*1131] elements: "(1) an
extremely strong mark -- either because of the mark's distinctive quality or
because it has acquired secondary meaning -- and (2) a likelihood of dilution".
Mead Data Central, Inc. v. Toyota Motor Sales, 875 F.2d 1026, 1032 (2d Cir.
1989) (citations omitted) (Sweet, J., concurring). Plaintiffs cannot fulfill
their burden under the facts of this case. The fact that both Plaintiffs' and
Defendants' marks use the word "scouts" falls far short of establishing the
"substantial similarity" required in the dilution context. See Mead Data

Central, 875 F.2d at 1029; Universal City Studios, 746 F.2d at 120.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n27 Section 368-d provides:
Likelihood of injury to business reputation or of dilution of the distinctive
quality of a mark or trade name shall be a ground for injunctive relief in cases
of infringement of a mark registered or not registered or in cases of unfair
competition, notwithstanding the absence of competition between the parties or
the absence of confusion as to the source of goods or services. [**60]
n28 Because Plaintiffs cannot prove dilution, this Court need not decide
whether the First Amendment would bar recovery even if dilution were proven.
See
L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.), cert. denied,
483 U.S. 1013, 97 L. Ed. 2d 753, 107 S. Ct. 3254 (1987).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
In this case, satisfaction of the second element -- likelihood of dilution --
turns on the issue of whether Defendants' mark "blurs" the senior mark's product
identification. Blurring involves "the whittling away of an established
trademark's selling power and value through its unauthorized use by others upon
dissimilar products." Mead Data Central, 875 F.2d at 1028, 1031. The Court has
no doubt that the fame, reputation and selling power of Plaintiffs'
organizations will continue undisturbed. As in Universal City Studios, the Court
concludes "that the names and characters in dispute are so different that no
reasonable question of fact [is] raised on the issue of blurring." 746 F.2d at
120. The Court does not find any [**61] danger of dilution to Plaintiffs'
marks in a series of fictional books about a fictional scouting group.
2. Common Law Trademark and Unfair Competition Claims
PAGE 155
808 F. Supp. 1112, *1131; 1992 U.S. Dist. LEXIS 19424, **61;
25 U.S.P.Q.2D (BNA) 1737; 21 Media L. Rep. 1257
Under New York law, common law unfair competition claims closely
resemble
Lanham Act claims except insofar as "the state law claim may require an
additional element of bad faith or intent." Weight Watchers International, Inc.
v. Stouffer Corp., 744 F. Supp. 1259, 1283 (S.D.N.Y. 1990). Plaintiffs would
need to prove the use of their trademarks in a way likely to confuse consumers
as to the source of the product just as in a Lanham Act claim. Educational
Testing Service v. Touchstone Applied Science Assoc., Inc., 739 F. Supp. 847,
849 (S.D.N.Y. 1990). In deciding to author and publish a series of children's
fictional books about a fictional scouting organization and in choosing to use a
different name and different scouting-like indicia, Defendants have not
misappropriated the labors and expenditures of Plaintiffs, nor have they
"copied" Plaintiffs marks, thereby establishing a presumption of bad faith.
Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir. 1980);
[**62] Jolly Good Industries, Inc. v. Elegra, Inc., 690 F. Supp. 227, 233
(S.D.N.Y. 1988). In light of this Court's analysis of Plaintiffs' Lanham Act
claims, the Court finds Plaintiffs' state law unfair competition claim to be
legally insufficient and therefore not a bar to Defendants' motion for summary
judgment.

* * *
For the foregoing reasons, Defendants' motion for summary judgment is
granted
and the complaint is hereby dismissed.
SO ORDERED.
Dated: New York, New York
December 21, 1992
LAWRENCE M. McKENNA
U.S.D.J.
PAGE 156
9TH CASE of Level 1 printed in FULL format.
NIKE, INC., (an Oregon corporation), Plaintiff, v. "JUST DID
IT" ENTERPRISES (a business of unknown legal character);
MICHAEL STANARD (an Illinois resident); and JOHN DOES 1
through 5 (Illinois residents and/or business entities of
unknown legal character), Defendants.
91 C 4001
UNITED STATES DISTRICT COURT FOR THE NORTHERN
DISTRICT OF
ILLINOIS, EASTERN DIVISION
799 F. Supp. 894; 1992 U.S. Dist. LEXIS 13161; 25 U.S.P.Q.2D
(BNA) 1056
September 1, 1992, Decided
September 2, 1992, Docketed
DISPOSITION: [**1] Plaintiff's motion for summary judgment is granted,
and
defendants' motion is accordingly denied.
JUDGES: Kocoras
OPINIONBY: CHARLES P. KOCORAS
OPINION: [*895] MEMORANDUM OPINION
CHARLES P. KOCORAS, District Judge:
This matter comes before the court on plaintiff's and defendant's
cross-motions for summary judgment pursuant to Rule 56 Fed. R. Civ. P. For
the
reasons set forth below, plaintiff's motion is granted, and defendant's motion
is denied.
BACKGROUND

Plaintiff Nike, Inc. ("Nike") filed this suit against defendant Michael
Stanard ("Stanard") alleging trademark infringement, unfair competition,
trademark dilution, and deceptive trade practices arising out of defendants'
manufacture and sale of T-shirts and sweatshirts bearing the logo "MIKE,"
displayed in the same typeset and along with a reproduction of the Swoosh
stripe
for which Mike has been granted trademark protection. Moreover, Nike
contends
that defendants' use of the tradename "Just Did It" Enterprises constitutes
infringement on Nike's slogan "Just Do It." Both parties have filed motions for
summary judgment pursuant to Rule 56 Fed. R. Civ. P.
Summary judgment is appropriate where the submissions of the parties
indicate
that no genuine [**2] issue of material fact stands in the way of judgment as
a matter [*896] of law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). Here, the
submissions of the parties show that the parties agree on the material facts of
the case: Stanard offered for sale, sold and distributed through the mail
T-shirts and sweatshirts bearing the name "Mike", set in the same typestyle and
along with the Swoosh stripe that Mike uses as its trademark, using the
company
name "Just Did It" Enterprises. Yet, the parties disagree about the legal
PAGE 157
799 F. Supp. 894, *896; 1992 U.S. Dist. LEXIS 13161, **2;
25 U.S.P.Q.2D (BNA) 1056
consequences of Stanard's actions. Mike argues that Stanard's activities
constitute trademark infringement and unfair competition, and seek injunctive
relief as well as attorneys fees. Stanard argues his work is protected as a
parody, and therefore Mike is not entitled to any relief.
DISCUSSION
Nike seeks an order that defendants have infringed its exclusive rights in
the trademark NIKE, the Swoosh stripe design, the NIKE and Swoosh design
combination, and the trademark slogan "Just Do It." Mike seeks a permanent
injunction enjoining defendants from further use [**3] of the NIKE, Swoosh
stripe, and "Just Do It" trademarks. Nike also seeks the following relief: 1)
an order pursuant to @ 36 of the Federal Trademark Act, 15 U.S.C. @ 1118
requiring defendants to deliver for destruction all infringing articles, 2) an
order pursuant to @ 35(b) of the Federal Trademark Act, 15 U.S.C. @ 1117(b),
requiring defendants to account for and pay Nike for all profits they have
realized from the infringing activity, and 3) an order requiring defendants to
costs of this action and reasonable attorneys' fees, in accordance with @ 35 of
the Federal Trademark Act, 15 U.S.C. @ 1117.
In order to obtain an injunction, Nike must establish the following: 1) that
it will or has succeed on the merits, 2) no adequate remedy at law exists; 3)
irreparable harm will arise absent injunctive relief, 4) the irreparable harm
that Nike will suffer in absence of injunctive relief outweighs the irreparable
harm Stanard will suffer if the injunction is granted, and 5) the injunction
will not harm the public interest. Amoco Production v. Gambell, 480 U.S. 531,
546, 94 L. Ed. 2d 542, 107 S. Ct. 1396 n.12 (1987); U.S. v. Rural Electric

Convenience Coop. Co., 922 F.2d 429, 432 (7th Cir. 1991). [**4] Each of
these
elements will be discussed in turn.
I. Success on the Merits
In order to establish liability for trademark infringement and unfair
competition, Nike must show: 1) that it has a protectible trademark, and 2)
likelihood of confusion as to the source or origin of defendants' product. See
e.g., International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1084 (7th
Cir. 1988). Nike has clearly established that it has a protectible trademark.
The trademark NIKE, the Swoosh stripe design, and the trademark NIKE along
with
the Swoosh stripe are registered trademarks. n1 Their registration provides
prima facie evidence of their validity as trademarks and of Nike's exclusive
right to use the marks on apparel and related accessories. Union Carbide Corp.
v. Ever-Ready Inc., 531 F.2d 366 (7th Cir. 1976), cert. denied, 429 U.S. 830, 50
L. Ed. 2d 94, 97 S. Ct. 91 (1976). Moreover, each of these registrations have
become incontestable under @ 15 of the Federal Trademark Act, 15 U.S.C. @
1065,
and accordingly constitute conclusive evidence of their distinctiveness as
trademarks. Id. at 377.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 Registration Nos. 1,277,066; 1,284,385; and 1,237,469.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**5]
PAGE 158
799 F. Supp. 894, *896; 1992 U.S. Dist. LEXIS 13161, **5;
25 U.S.P.Q.2D (BNA) 1056
Although it is not registered, the slogan "Just Do It" is also entitled to
trademark protection. An unregistered mark is still entitled to trademark
protection where its use is inherently distinctive as applied to the goods on
which it is used, or where its use has acquired secondary meaning in the
marketplace. See International Kennel Club, 846 F.2d at 1085. Although
Stanard
is correct in arguing that "Just Do It" is a common phrase used in the English
language, Mike's use of the phrase in association with apparel makes it
distinctive and arbitrary so that it is entitled [*897] to trademark
protection. See Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609 (7th
Cir. 1965). Moreover, Mike's extensive use of the phrase in conjunction with its
promotion of its products has given it significant public recognition.
Therefore, we conclude as a matter of law that Mike has established the validity
of the marks in question.
Next we must evaluate the likelihood of confusion resulting from Stanard's
use of MIKE with the Swoosh stripe. In McGraw-Edison Co. v. Walt Disney
Productions, 787 F.2d 1163, 1167 (7th Cir. 1986), the Seventh [**6] Circuit
set forth seven factors to be analyzed in determining the likelihood of
confusion:
The degree of similarity between the marks in appearance and suggestion; the

similarity of the products for which the name is used; the area and manner of
concurrent use; the degree of care likely to be exercised by consumers; the
strength of the complainant's mark; actual confusion; and an intent on the part
of the alleged infringer to palm off his products as those of another.
787 F.2d at 1167-68. Evaluating these factors, we find that there is a
significant likelihood of confusion resulting from Stanard's use of a mark
similar to Nike's. A comparison of plaintiff's and defendant's marks reveals
that they are virtually identical. In fact, the only difference between the
marks is that Stanard has substituted an "M" for the "N", thus using the word
"MIKE" rather than "NIKE". Even Stanard himself admitted in his deposition
that
from a distance, the two marks could not be distinguished. (Stanard Deposition,
p. 115).
Moreover, both parties sell T-shirts and sweatshirts. Both parties'
merchandise is offered to the general public, although Stanard has limited his
offering [**7] to persons name "Mike". However, people named "Mike" are
part
of the consumer market which purchases Nike products. Moreover, 44 of the
123
orders which Stanard received were from persons with names other than Mike.
(Stanard Deposition). Additionally, purchasers of defendant's goods are not
likely to exercise a particularly high degree of care in purchasing them.
(Stanard Deposition, pp. 16-17).
As we discussed above, Nike's marks are worthy of strong protection. Each of
these marks has been used extensively in Nike's promotion and advertising, and
it is undisputed that the marks are widely recognized and associated with
plaintiff. Moreover, the incontestable status of Nike's federal registrations is
also evidence of the strength of the marks. See Wynn Oil Co. v. Thomas, 839
F.2d
1183, 1187 (6th Cir. 1988).
Evidence has been submitted which indicates that Stanard intended to pass off
his merchandise as that of Nike. In addition to constructive notice of Nike's
trademark rights by virtue of @ 22 of the Federal Trademark Act, 15 U.S.C. @
PAGE 159
799 F. Supp. 894, *897; 1992 U.S. Dist. LEXIS 13161, **7;
25 U.S.P.Q.2D (BNA) 1056
1072, Stanard admits to having actual knowledge of Nike's trademark rights as
well as a desire to benefit from Nike's advertising [**8] and promotion.
(Stanard Deposition, pp. 36, 59, 66-67, 74, 107, 171). When asked at his
deposition whether someone reading his T-shirt from across the room may think
that it says NIKE, Stanard responded. "That's the whole point." (Stanard
Deposition, p. 115).
The final factor for consideration in evaluating likelihood of confusion is
actual confusion. However, evidence of actual confusion is not required for
likelihood of confusion to be established. Tisch Hotels, 350 F.2d at 611. Here,
while Nike has not submitted any evidence of actual confusion, even Stanard
has
admitted that actual confusion could occur if his products were viewed from a
distance. (Stanard Deposition, p. 115). Moreover, given that our evaluation of

the other six factors tilts towards Nike's position, we find that Nike has
sufficiently demonstrated likelihood of confusion and has demonstrated
trademark
infringement.
However, Stanard argues that his work is entitled to protection under the
First Amendment as a parody. In support of his parody argument, Stanard cites
several cases where seemingly infringing activity [*898] was protected under
the First Amendment as a parody. See e.g. Jordache Enterprises, Inc. v. Hogg
Wyld, Ltd., 625 F. Supp. 48, [**9] (D. N.M. 1985), aff'd, 828 F.2d 1482
(10th
Cir. 1987); Cliff's
Cliff's Notes v. Bantam-Doubleday Dell Publishing Group, 886 F.2d 490 (2d
Cir. 1989). Parody is not a defense to trademark infringement, but rather it is
another factor to be considered in determining the likelihood of confusion.
Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 910, (D. Neb. 1986),
aff'd,
836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933, 109 S. Ct. 326, 102 L.
Ed. 2d 344 (1988). In addition, a defendant's parody argument will be
disregarded where the purpose of the similarity between the marks is to
capitalize on the popularity of the famous mark for the defendant's commercial
use. Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1175 (C.D. Cal. 1986),
aff'd,
830 F.2d 197 (9th Cir. 1987).
In Mutual of Omaha, supra, the defendant designed a logo displaying the
words
"Mutant of Omaha" and featuring a war-bonneted, emaciated human face. This
design was placed on T-shirts in conjunction with the phrase "Nuclear Holocaust
[**10] Insurance." The reverse side of the T-shirts read, "When the world's in
ashes, we'll have you covered." Defendant also designed a shirt reading "Mutant
of Omaha's Wild Kingdom," featuring a one-eyed tiger. Plaintiff Mutual of
Omaha,
whose primary business is selling insurance, filed a lawsuit claiming that
defendant's design infringed on their trademark, which featured the words
"Mutual of Omaha" and an Indian headdress. In finding that defendant's logo
constituted trademark infringement, the court rejected defendant's claim of
parody, finding that defendant's logo did not create a clear distinction as to
the source of the message and did not dispel the likelihood of confusion, like
an appropriate parody would. 648 F. Supp. at 910.
Similarly, in Hard Rock Cafe, supra, defendant designed heat transfers for T-
shirts bearing the logo "Hard Rain Cafe". Defendant claimed that this was a
parody, in attempt to poke fun at the constant rain in Seattle. However, the
court rejected defendant's parody argument, finding that the logo designs were
so similar that consumer confusion was likely. 776 F. Supp. at 1462.
PAGE 160
799 F. Supp. 894, *898; 1992 U.S. Dist. LEXIS 13161, **10;
25 U.S.P.Q.2D (BNA) 1056
The cases cited by Stanard [**11] where the courts have found no
infringement can be distinguished. In Cliff's Notes, supra, the publishers of
Spy magazine participated in publishing a series of books known as Spy Notes,
as

a parody of the Cliff's Notes study guides. The court found that there was no
likelihood of confusion between the two publications. The court noted the
difference in appearance of the covers of the two publications, and that the
words "A Satire" appear five times on the cover and four times on the back of
Spy Notes. Moreover, while Cliff's Notes are available for classic literature,
Spy Notes were produced for modem novels "depicting the drug abuse,
promiscuity
and post-adolescent angst of the 1980s." The court also pointed out that
potential consumers of both products, primarily college students, would note Spy
Notes' affiliation with Spy magazine, which itself is a satire, and would
realize that it is a parody. Thus considering these factors, the court concluded
that there was little likelihood of confusion between the two publications.
Moreover, in Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F. Supp. 785
(E.D.N.Y. 1983), [**12] plaintiffs sued for infringement where defendant had
created a sticker for its "Wacky Packs" depicting a fictional product of "Petley
Flea Bags," a parody of "Tetley Tea Bags. " The court found that there was no
likelihood of confusion because the sticker was found in Topps' "Wacky
Packages"
with four other stickers which also satirized other products. Thus it was
apparent from both the appearance of the sticker, and from the way that it was
marketed and sold, that it was a parody.
Contrary to Cliff's Notes and Tetley, where the packaging of defendants'
products gave clear notice that it was a satire, in the instant case, it is not
clear from viewing Standard's merchandise that it is intended as a parody.
Stanard is producing and selling T- shirts and sweatshirts, [*899] just
like Nike. Moreover, unlike Cliff's Notes and Tetley, here one of defendant's
satirizing products can be substituted for one of Nike's products.
The only case cited by defendants which bears a striking similarity to the
facts in this case is Jordache Enterprises v. Hogg Wyld, Ltd., 625 F. Supp. 48
(D. N.M. 1985). There, defendants created and sold designer jeans bearing the
name [**13] "Lardache" and featuring a pig's head as the logo. Plaintiff, a
well-known maker of designer jeans, including a line of clothing for large-sized
women, claimed that defendants' product infringed upon their name "Jordache"
and
logo of a horse's head. The court found that the logos were sufficiently
different to limit consumer confusion. The court found that while Jordache's
mark was refined and subtle, presenting an image of "class", the Lardashe mark
and pig was brash, brightly colored, and conveyed a "cute, humorous" image.
625
F. Supp. at 53.
We find that the circumstances presented in this case are more akin to those
in Mutual of Omaha and Hard Rock, and find that defendants' use of the MIKE
logo
and Swoosh stripe creates a likelihood of confusion so as to constitute
infringement and unfair competition. We therefore find that Nike will succeed
on
its infringement claims.
II. Other Factors

In actions for trademark infringement or unfair competition, once the
plaintiff has proven likelihood of confusion, the inadequacy of other remedies
and irreparable harm is ordinarily presumed. See e.g. Rodeo Collection, Ltd.
PAGE 161
799 F. Supp. 894, *899; 1992 U.S. Dist. LEXIS 13161, **13;
25 U.S.P.Q.2D (BNA) 1056
v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987). [**14] Here, as in
Hard
Rock Cafe, supra, Nike has no control over the quality of the garments to which
Stanard affixes the MIKE logo. Given that the two marks are confusing, it is
possible that consumers may attribute any defects in a MIKE garment to NIKE,
thus further damaging its reputation. See generally Hard Rock Cafe, 776 F.
Supp.
at 1463.
The balancing of hardships based on whether an injunction is issued tips
decidedly in favor of Nike. Nike has invested a great deal of time and effort in
advertising and promoting its trademarks NIKE, Swoosh stripe, and "Just Do It,"
thus making them the strong, famous, and valuable marks that they have
become.
Nike has spent over Three Hundred Million Dollars ($ 300,000,000) on the
advertising and promotion of its products during the years 1977 to August,
1991.
(Affidavit of Thomas Niebergall, P4). Since 1971, aggregate sales of Nike
apparel have exceeded Ten Billion Dollars ($ 10,000,000,000). (Niebergall
Affidavit, P6). If others are allowed to use confusingly similar marks, the name
recognition and goodwill that Nike has developed will suffer.
On the other hand, Stanard will not be significantly harmed [**15] if he
is ordered to cease producing the MIKE garments. Stanard admits that he has
not
made any profit from his distribution of MIKE merchandise, so he will suffer no
financial harm. The only harm which Stanard can allegedly suffer is the stifling
of his free expression. Yet, as we discussed above, the First Amendment does
not grant Stanard the right to infringe on Hike's trademarks where there is a
likelihood of confusion. We therefore find that balancing of hardships tips in
favor of Nike.
Because we find that Nike prevails on the merits, that Hike will suffer
irreparable harm should an injunction not be granted, and that the balancing of
harms tips decidedly in favor of Nike, we grant a permanent injunction
preventing defendants from infringing on any Nike trademark in any manner.
We
also order Stanard to deliver any remaining merchandise, advertisement, or any
other material bearing the MIKE logo, pursuant to @ 36 of the Federal
Trademark
Act, 15 U.S.C @ 1118. Since Stanard has stated under oath that he did not
make a
profit, we will not require an accounting pursuant to @ 35(b) of the Federal
Trademark Act, 15 U.S.C. @ 1117(b).
Attorneys Fees

Section 35(a) of the Federal [**16] Trademark Act, 15 U.S.C @ 1117(a),
provides that in exceptional cases of trademark infringement, the prevailing
party is entitled [*900] to reasonable attorneys' fees, absent extenuating
circumstances. The "exceptional case" requirement can be fulfilled where it can
be shown that defendant's infringing acts were willful and intentional. see
Centaur Communications v. A/S/M/ Communications, 830 F.2d 1217, 1229 (2d
Cir.
1987); Stone v. Lozos, 223 U.S.P.Q.2D (BNA) 301, 302 (N.D. Ill. 1983).
Here, Stanard willfully and knowingly designed his product to infringe on
Hike's trademark. He purposely designed his shirts to resemble Nike products,
using the same typset and trademark Swoosh stripe as Nike's merchandise.
Stanard
named his company "Just Did It" Enterprises in order to further identify his
product with Nike's. Even Standard admitted that from a distance, his products
could be mistaken for those of Nike. Moreover, Stanard's own solicitation letter
reveals that he knew his activity constituted infringement, as he states: "As
PAGE 162
799 F. Supp. 894, *900; 1992 U.S. Dist. LEXIS 13161, **16;
25 U.S.P.Q.2D (BNA) 1056
you might imagine, this is probably going to be a VERY LIMITED OFFER!"
When Nike contacted Stanard about ceasing his infringing activity, [**17]
Stanard responded with a signed letter stating that "this corporation is not
doing business as "Just Did It" Enterprises and we are not in the business of
marketing T-shirts and sweatshirts." Yet, despite Nike's objections, Stanard
continued his infringing activity: marketing T-shirts and sweatshirts under the
name of "Just Did It" Enterprises. We therefore find that Stanard's
infringement was willful and intentional, thus qualifying this as an exceptional
case of infringement warranting the imposition of reasonable attorneys' fees.
CONCLUSION
For the reasons set forth above, plaintiff's motion for summary judgment is
granted, and defendants' motion is accordingly denied. It is therefore ordered
that defendants be permanently enjoined from engaging in any activity which
infringes on any of plaintiff's trademarks or logos. Defendants are required to
deliver any remaining merchandise or promotional materials displaying The
MIKE
mark. Finally, defendants shall pay plaintiff reasonable attorneys fees.
Charles P. Kocoras
United States District Judge
Dated: September 1, 1992
PAGE 163
11TH CASE of Level 1 printed in FULL format.
HARD ROCK CAFE LICENSING CORPORATION, a New York
corporation, Plaintiff, v. PACIFIC GRAPHICS, INC., Defendant
No. C91-1164

UNITED STATES DISTRICT COURT FOR THE WESTERN
DISTRICT OF
WASHINGTON
776 F. Supp. 1454; 1991 U.S. Dist. LEXIS 15621; 21
U.S.P.Q.2D (BNA) 1368
COUNSEL: [**1]
October 23, 1991, Decided
October 22, 1991, Lodged
Attorneys for Plaintiff: Robert Stokes, Jr., Daniel Laster, MONROE,
STOKES,
EITELBACH & LAWRENCE, P.S., Seattle, Washington, Of Counsel: Eric C.
Cohen,
Gerald T. Shekleton, Robert B. Breisblatt, WELSH & KATZ, LTD., Chicago,
Illinois.
Attorneys for Defendant: Rex B. Stratton, STRATTON BELLOMY
BALLEW, Seattle,
Washington.
JUDGES: Thomas S. Zilly, United States District Judge.
OPINIONBY: ZILLY
OPINION: [*1455] FINDINGS OF FACT, CONCLUSIONS OF LAW, AND
PERMANENT
INJUNCTION ORDER
THOMAS S. ZILLY, UNITED STATES DISTRICT JUDGE
On October 15, 1991, this matter came before the Court on Plaintiff's motion
for a preliminary injunction. The Court has considered the Stipulated Findings
of Fact submitted by the parties, the Exhibits List for Hard Rock Cafe's
Preliminary Injunction Motion, the Exhibits described therein, the Declaration
of Merissa S. Kelley Goldstein, the Declaration of Lane James, the
Supplemental
Declaration of Robert Brown, the deposition transcripts of Lane James and
Kathy
Hurd, the briefs filed by the parties, and has heard oral argument. The Court
finds as follows:
STIPULATED FINDINGS OF FACT
The parties have stipulated that this court has jurisdiction and that venue
is proper. The parties have also stipulated to findings of fact. The stipulation
[**2] entered into by the parties is adopted by this Court as follows:
JURISDICTION, VENUE AND PARTIES
1. This is an action for trademark infringement, false designation of origin,
dilution and unfair trade practices. It is brought under the Lanham Act, 15

U.S.C. @ 1501, et seq., and under RCW 19.77.160 and RCW 19.86.020.
Jurisdiction
is predicated upon 28 U.S.C. @@ 1331, 1338(a) and 1338(b) and under the
PAGE 164
776 F. Supp. 1454, *1455; 1991 U.S. Dist. LEXIS 15621, **2;
21 U.S.P.Q.2D (BNA) 1368
principles of pendent jurisdiction. Venue is proper under 28 U.S.C. @@ 1391(b)
and 1391(c). Stipulated Facts, para. 1.
[*1456] PARTIES
2. Plaintiff, Hard Rock Cafe Licensing Corporation (hereinafter "Licensing
Corporation"), is a corporation organized under the laws of the State of New
York. Licensing Corporation is the owner of all rights to the mark and logo
HARD
ROCK CAFE for restaurant services and a variety of merchandise. Stipulated
Facts, para. 2.
3. Defendant Pacific Graphics, Inc. (hereinafter "Pacific Graphics") is a
Washington corporation having a principal place of business at 1122 Fir
Avenue,
Blaine, Washington. Stipulated Facts, para. 3.
4. In 1971, Peter Morton and a partner opened an American-style hamburger
restaurant in London, England, under the mark [**3] HARD ROCK CAFE.
The
restaurant, which featured a rock-and-roll motif, was an instant success. Since
then, the London HARD ROCK CAFE has flourished, drawing tourists and
local
patrons. Stipulated Facts, para. 4.
5. As the result of the success of the London HARD ROCK CAFE restaurant,
HARD
ROCK CAFE restaurants have been opened in various locations throughout the
United States. Stipulated Facts, para. 5.
6. Plaintiff Licensing Corporation acquired the ownership of and presently
owns all rights in the service marks HARD ROCK CAFE and HARD ROCK
CAFE and
Design for restaurant services. Licensing Corporation is also the owner of the
trademarks HARD ROCK CAFE and HARD ROCK CAFE and Design for a
variety of
apparel, including T-shirts. Licensing Corporation owns valid certificates of
registration issued by the United States Patent and Trademark Office for these
trademarks, as is indicated below:
Registered Mark Reg. No. Date Goods or Services
HARD ROCK CAFE 1,397,180 6/10/86 Restaurant services.
HARD ROCK CAFE 1,398.940 6/24/86 Restaurant and
prepared
and Design
take-out food services.
HARD ROCK CAFE 1,408.637 9/9/86 T-shirts.
and Design
HARD ROCK CAFE
1,504,904 9/20/88 T-shirts, sweatshirts,
polo shirts, sport

HARD ROCK CAFE
and Design
shirts, jackets, hats,
caps, bolo ties, belts
and sun visors.
1,504,905 9/20/88 T-shirts, sweatshirts,
polo shirts, sport
shirts, jackets, hats,
caps, bolo ties, belts
and sun visors.
[**4]
Copies of the foregoing certificates were presented to and reviewed by the
Court. Stipulated Facts, para. 6.
7. Licensing Corporation has granted Peter Morton an exclusive license in
various parts of the United States to operate restaurants and to sell
PAGE 165
776 F. Supp. 1454, *1456; 1991 U.S. Dist. LEXIS 15621, **4;
21 U.S.P.Q.2D (BNA) 1368
merchandise under the registered HARD ROCK CAFE marks. Peter Morton, in
turn,
has granted licenses to certain limited partnerships in the United States to
operate restaurants and sell merchandise under the registered HARD ROCK
CAFE
marks. Pursuant to such licenses HARD ROCK CAFE restaurants have been
operated,
and HARD ROCK CAFE merchandise has been sold, in such restaurants in
Chicago,
Illinois; Los Angeles, California; Houston, Texas; New Orleans, Louisiana; San
Francisco, California; San Diego, California; Aspen Colorado; Las Vegas,
Nevada;
Honolulu, Hawaii; and Lahaina, Hawaii. Stipulated Facts, para. 7.
8. HARD ROCK CAFE restaurants are decorated with rock-and-roll
memorabilia.
Large signs bearing the HARD ROCK CAFE mark and logo hang outside of
each
[*1457] of tee HARD ROCK CAFE restaurants. Stipulated Facts, para. 8.
9. Licensed HARD ROCK CAFE merchandise, including T-shirts, sweatshirts,
polo
shirts, sport shirts, jackets, [**5] hats, caps, bolo ties, belts and sun
visors, is sold only at such licensed HARD ROCK CAFE restaurants. Stipulated
Facts, para. 9.
10. For many years, HARD ROCK CAFE restaurants have sold "classic"
HARD ROCK
CAFE T-shirts, which bear the HARD ROCK CAFE and Design mark. On those
"classic"
HARD ROCK CAFE T-shirts, the words "HARD ROCK CAFE" are printed in
a
maroon/brown color. The words "HARD ROCK" are larger than the word
"CAFE." There
is a shadow background to the words "HARD ROCK." The words "HARD
ROCK" are
superimposed over a yellow/gold-colored circle. There is a concentric white ring

ordered by a concentric black ring around the yellow/gold-colored circle. The
word "CAFE" is positioned under the words "HARD ROCK" in the
yellow/gold-colored
circle. Those colors have always been the same. Exhibit 6 (Attachment A) is a
classic HARD ROCK CAFE T-shirt. Stipulated Facts, para. 10.
11. Licensing Corporation has also marketed HARD ROCK CAFE shirts in
which
different colors have been used in the letters and circle. Exhibits 7-9. The
selection of colors on its licensed merchandise is important to Licensing
Corporation. Stipulated Facts, para. 11.
12. The lettering on Licensing [**6] Corporation's HARD ROCK CAFE
T-shirts
is stylized in a unique manner. It was created by an artist especially for
Licensing Corporation. Stipulated Facts, para. 12.
13. Millions of customers have eaten at HARD ROCK CAFE restaurants.
Millions
of T-shirts and other merchandise bearing the HARD ROCK CAFE marks have
been
sold by HARD ROCK CAFE restaurants, which are the only authorized sources
for
genuine HARD ROCK CAFE merchandise. Stipulated Facts, para. 13.
14. In 1990 alone, over 3 1/2 million customers ate at HARD ROCK CAFE
restaurants, and more than $ 39,000,000 was spent by customers for food and
other restaurant services at HARD ROCK CAFE restaurants. More than $
47,000,000
worth of merchandise bearing the HARD ROCK CAFE mark and logo has been
sold at
HARD ROCK CAFE restaurants. Stipulated Facts, para. 14.
15. Licensing Corporation's HARD ROCK CAFE registered marks are
distinctive,
well known and famous. Licensing Corporation has developed extremely
extensive
and substantial goodwill in interstate commerce and foreign commerce
associated
with its registered HARD ROCK CAFE marks. Stipulated Facts, para. 15.
PAGE 166
776 F. Supp. 1454, *1457; 1991 U.S. Dist. LEXIS 15621, **6;
21 U.S.P.Q.2D (BNA) 1368
Pacific Graphics' Actions
16. Pacific Graphics is in [**7] the business of distributing heat
transfers. It is located in Blaine, Washington. Stipulated Facts, para. 16.
17. Pacific Graphics presently distributes 732 different designs of heat
transfers. Stipulated Facts, para. 17.
18. A heat transfer (sometimes also referred to as "transfer") is a negative
image (or mirror image) which is "transferred" by a heat process to blank
garments (that is, a plain shirt, T-shirt or other garment) to create a positive

image on the garment. Pacific Graphics sells its transfers to retail merchants
from about $ .50 apiece to about $ 3.75 apiece. Pacific Graphics sells its HARD
RAIN CAFE design transfers for $ 1.75 apiece. Stipulated Facts, para. 18.
19. Pacific Graphics distributes heat transfers with the following messages:
"Duck You", "Darts - Oh shit", "Safe Sex/Mongrel". Stipulated Facts, para. 19.
Pacific Graphics' Decision To Sell "HARD RAIN CAFE" Design Transfers
20. Defendant Pacific Graphics has offered for sale transfers bearing a
"HARD
RAIN CAFE" design. Pacific Graphics' HARD RAIN CAFE design transfers
have been
applied to T-shirts and other items of sportswear. Stipulated Facts, para. 20.
21. Pacific Graphics' marketing [**8] of HARD RAIN CAFE design
transfers
came about when Lane James, the proprietor of a small chain of retail stores
called "Just Ducky", located in Seattle, Everett, and [*1458] Mount Vernon,
Washington, requested Kathy Hurd, the general manager of Pacific Graphics, to
"make a HARD RAIN CAFE transfer as a souvenir design with a water
puddle."
Stipulated Facts, para. 21.
22. Pacific Graphics decided to produce HARD RAIN CAFE design transfers
because Ms. Hurd had concluded that they would probably sell. Ms. Hurd
testified
that her primary purpose in producing HARD RAIN CAFE design transfers was
so
that Pacific Graphics could sell them and make money. Stipulated Facts, para.
22.
23. After her conversation with Mr. James, Ms. Hurd phoned Venture
Graphics
and asked the art department to come up with a HARD RAIN CAFE design
with a
water puddle. Ms. Hurd testified that the words "Hard Rock Cafe" were not
mentioned in either conversation, as far as she could recall, and that she had
no conversations with Venture Graphics about the way the HARD RAIN CAFE
design
transfer would look. Stipulated Facts, para. 23.
24. Ms. Hurd testified that at the time she asked Venture Graphics to make a
HARD [**9] RAIN CAFE design transfer, she had no idea what it would
look
like; she had no idea that it would wind up having a colored circle underneath
the words "Hard Rain" or that the lettering of "Hard Rain" would be similar to
the lettering in the HARD ROCK CAFE mark. Stipulated Facts, para. 24.
25. Pacific Graphics purchased the first shipment of HARD RAIN CAFE
design
transfers on January 17, 1990. It received 538 transfers and paid $ 0.77 apiece.
Stipulated Facts, para. 25.
PAGE 167
776 F. Supp. 1454, *1458; 1991 U.S. Dist. LEXIS 15621, **9;

21 U.S.P.Q.2D (BNA) 1368
26. Ms. Hurd testified that prior to the time Lane James made the request to
Ms. Hurd that Pacific Graphics make a HARD RAIN CAFE design transfer, Ms.
Hurd
was not certain whether she had heard of HARD ROCK CAFE restaurants. She
testified that she was certain that she had not seen any HARD ROCK CAFE
T-shirts
prior to the time Mr. Lane made his request. She also testified that when
Venture Graphics first showed her the artwork for the HARD RAIN CAFE
design
transfer, she associated it with HARD ROCK CAFE. Stipulated Facts, para. 26.
27. Ms. Hurd first saw a sample of the HARD RAIN CAFE transfer made by
Venture Graphics on a visit that she made to pick up transfers. The sample
looked like Exhibit 10 (Attachment [**10] B), which is a T-shirt bearing the
design made by the first version of Pacific Graphic's HARD RAIN CAFE
transfer.
The only change in the sample suggested by Ms. Hurd was that Venture
Graphics
put more city names on the bottom. Stipulated Facts, para. 27.
28. Ms. Hurd testified that it was her intent that the HARD RAIN CAFE
design
transfers make a humorous statement, and she explained the humor as follows:
Q. Can you explain what the humor is?
A. The humor?
Q. Yes.
A. Is that it's raining. It's a hard rain in Seattle. It rains hard here all
the time. I mean it's constantly raining. It is constantly miserable. And as a
tourist -- and if I was a tourist, then that would be something that would be
funny because it's hard rain. I went to Seattle and it rained while I was there,
so I bought a shirt that said "Hard Rain".
Q. But you don't need the word "cafe" to do that, do you?
A. Well, in this situation as it is, it's a parody on Hard Rock.
Q. Now if I understand you correctly, you are not sure that you were aware
of
Hard Rock Cafe at the time you had this request from Mr. James, is that right?
A. Right.
Q. So if you weren't aware of the Hard Rock Cafe, then you couldn't have
intended [**11] this as a parody on the Hard Rock Cafe, is that right?
A. Okay. Yes. But once it was made, then I became aware that, "Hey, this is
similar to Hard Rock." But it wasn't because we put the water puddle -- we
didn't want it to be a hard rock. We didn't want it to say "Hard Rock." We
wanted it to say [*1459] "Hard Rain". I don't know how to explain it.

Stipulated Facts, para. 28.
Transfers Sold By Pacific Graphics
29. There have been three versions of HARD RAIN CAFE design transfers
sold by
Pacific Graphics. Exhibit 10 is an example of the image produced on a T-shirt
by
one of the first two versions of Pacific Graphics' "HARD RAIN CAFE" design
PAGE 168
776 F. Supp. 1454, *1459; 1991 U.S. Dist. LEXIS 15621, **11;
21 U.S.P.Q.2D (BNA) 1368
transfers. Stipulated Facts, para. 29.
30. The color of the letters HARD RAIN produced by the version of Pacific
Graphics' HARD RAIN CAFE transfer (as depicted in Exhibit 10) (Attachment
B) is
brown, similar to the maroon/brown color of the HARD ROCK words in
Licensing
Corporation's classic HARD ROCK CAFE T-shirts. Exhibit 6 (Attachment A).
The
font of the letters in Pacific Graphics' transfer is virtually identical to the
font of the letters in Licensing Corporation's classic HARD ROCK CAFE
T-shirts.
There is a shadow background to the words [**12] "HARD RAIN" on Pacific
Graphics' transfer that is virtually identical to the shadow background to the
words HARD ROCK in Licensing Corporation's classic HARD ROCK CAFE
T-shirts. The
words "HARD RAIN" on Pacific Graphics' transfer are superimposed over an
orange/red circle in the same manner as the words HARD ROCK are
superimposed
over the yellow/gold circle in Licensing Corporation's classic HARD ROCK
CAFE
T-shirts. There is a concentric white ring bordered by a concentric black ring
around the orange-colored circle on Pacific Graphics' transfer just as in
Licensing Corporation's classic HARD ROCK CAFE T-shirts. The word
"CAFE" is
under the words "HARD RAIN" on Pacific Graphics' transfer (in the
orange/red-colored circle), just as the same word is situated under the words
HARD ROCK in Licensing Corporation's classic HARD ROCK CAFE T-shirts.
Compare,
Exhibits 6 and 10 (Attachments A and B). Stipulated Facts, para. 30.
31. The other of the first two versions of Pacific Graphics' transfer
produced an image identical to that produced by Exhibit 10, except that the
color of the circle is blue. Stipulated Facts, para. 31.
32. The third version of Pacific Graphics' HARD RAIN [**13] CAFE
design
transfer is shown in Exhibit 11 (Attachment C), which is a T-shirt with a design
produced by the third version of Defendant's HARD RAIN CAFE design
transfer.
Stipulated Facts, para. 32.

33. The third version, Exhibit 11 (Attachment C), differs from the version
shown in Exhibit 10 (Attachment B) only in two respects. First, there is an
umbrella and falling rain in the upper left hand corner above the words HARD
RAIN CAFE. Second, the following statement appears in the lower left hand
corner
of the design in a typeface much smaller than the type face of the words HARD
RAIN CAFE:
"This design is not licensed by or associated with Hard Rock Cafe Licensing
Corp."
The letter "H" in the "HARD RAIN" portion of Pacific Graphics' design is 2-1/8
inches in height. The letter "H" in the "Hard Rock" statement in the lower left
hand corner is only 1/8 inch in height. Compare Exhibit 10 and Exhibit 11
(Attachments B and C). The umbrella and the quoted language were added by
Pacific Graphics after it received a letter dated May 30, 1991 from a law firm
representing the plaintiff in this case. Stipulated Facts, para. 33.
34. Pacific Graphics first obtained the third version [**14] of the HARD
RAIN CAFE design transfer on May 9, 1991. By that time, Ms. Hurd knew that
Hard
Rock Cafe T-shirts were very popular with a segment of the population and
wanted
to continue selling HARD RAIN CAFE design transfers. Stipulated Facts, para.
34.
PAGE 169
776 F. Supp. 1454, *1459; 1991 U.S. Dist. LEXIS 15621, **14;
21 U.S.P.Q.2D (BNA) 1368
35. Of the 732 different designs of heat transfers presently distributed by
Pacific Graphics, only one is a HARD RAIN CAFE design. Stipulated Facts,
para.
35.
36. Pacific Graphics distributes catalogs of its transfers to customers.
Those catalogs do not show all of the 732 transfers marketed by Pacific
Graphics. On page 12 of the current 1992 catalog, the HARD [*1460] RAIN
CAFE
design transfer appears, with the word "HOT" in a burst adjacent to the
transfer. The words, "This design is not licensed by or associated with Hard
Rock Cafe Licensing Corp." in the lower part of the transfer are not legible in
the catalog. Other designs on the same page have a burst that says "NEW"; the
HARD RAIN CAFE transfer does not. A copy of that catalog was submitted to
the
Court as Exhibit 13. Prior versions of Pacific Graphics catalogs did not include
the HARD RAIN CAFE transfers. Stipulated Facts, para. 36.
37. The sale of HARD RAIN CAFE design [**15] heat transfers constitutes
one percent of Pacific Graphics' business or less. Stipulated Facts, para. 37.
38. Pacific Graphics sells heat transfers to T-shirt retailers. Pacific
Graphics does not exercise any control over the quality of garments to which its
HARD RAIN CAFE design transfers are applied by its customers. Stipulated
Facts,

para. 38.
39. Ms. Hurd admitted that when people look at Exhibit 10, they will think of
Hard Rock Cafe. Stipulated Facts, para. 39.
40. Consumers who see T-shirts bearing the design made by Pacific Graphics'
HARD RAIN CAFE design transfer associate such shirts with HARD ROCK
CAFE.
Stipulated Facts, para. 40.
41. Pacific Graphics has obtained all of the HARD RAIN CAFE design
transfers
it has sold from a Canadian company called Venture Graphics. Venture Graphics
is
owned by a 50% shareholder of Pacific Graphics. Stipulated Facts, para. 41.
42. Pacific Graphics will not suffer more than insignificant monetary damage
if it is enjoined from selling HARD RAIN CAFE design transfers. Stipulated
Facts, para. 42.
CONCLUSIONS OF LAW
Based on the stipulated findings of fact, the Court enters the following
conclusions of law:
1. Licensing [**16] Corporation has moved for a preliminary injunction,
prohibiting Pacific Graphics from marketing HARD RAIN CAFE transfers. To
qualify
for a preliminary injunction, the Licensing Corporation must show either "(1) a
combination of probable success on the merits and the possibility of irreparable
harm, or (2) the existence of serious questions going to the merits and the
balance of hardships tipping in its favor." Vision Sports, Inc. v. Melville
Corp., 888 F.2d 609, 612 (9th Cir. 1989).
I. PROBABLE SUCCESS ON THE MERITS
PAGE 170
776 F. Supp. 1454, *1460; 1991 U.S. Dist. LEXIS 15621, **16;
21 U.S.P.Q.2D (BNA) 1368
A. Lanham Act
2. Licensing Corporation's HARD ROCK CAFE logo is a combination of a
trademark which contains both words and a symbol (the graphic elements of the
logo). The logo can also be viewed as trade dress. Both the words and the trade
dress are registered as a trademark. Infringement of a registered trademark is
actionable under 15 U.S.C. @ 1114. Infringement of trade dress is actionable
under 15 U.S.C. @ 1125(a).
Trade dress protection is broader in scope than trademark protection, both
because it protects aspects of packaging and product design that cannot be
registered for trademark protection and because evaluation of trade dress
infringement [**17] claims requires the court to focus on the plaintiff's
entire selling image, rather than the narrower single facet of the trademark.
Vision Sports, Inc. v. Melville Corp., 888 F.2d at 613. Where, as here, the

graphic elements that might otherwise be considered trade dress are part of a
registered trademark, that mark should also be entitled to the broader
protection afforded to trade dress.
3. In this case, Pacific Graphics has conceded that the HARD ROCK CAFE
logo
is a famous mark owned by Licensing Corporation. Thus, the only issue on the
Lanham Act claims is whether Pacific Graphic's sales of its HARD RAIN CAFE
design transfers creates a likelihood of confusion.
4. The Ninth Circuit has analyzed between 5 and 8 different factors in
determining [*1461] likelihood of confusion. In Eclipse Associates, Ltd. v.
Data General, 894 F.2d 1114, 1117 (9th Cir. 1990) the Court affirmed the
District Court's application of the following five factor test:
1. strength of the mark;
2. similarity of the marks;
3. class of goods and marketing channels;
4. evidence of actual confusion; and
5. intent of second user.
The Court stated that those factors are "a non-exclusive [**18] series of
factors that are helpful in making the ultimate factual determination" that need
not be slavishly applied by the District Court. Id. at 1118.
5. Strength of the mark. The parties have stipulated that the HARD ROCK
CAFE
logo is famous; thus it is a strong mark. "A strong mark 'is afforded the widest
ambit of protection from infringing uses'". Academy of Motion Picture Arts and
Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 19 U.S.P.Q.2D
(BNA)
1491, Nos. 90-55006 and 90-55144, slip op. (9th Cir. 1991 as amended October
2,
1991).
6. Similarity of the marks. The HARD RAIN CAFE design transfers sold by
Pacific Graphics are virtually identical in design to the HARD ROCK CAFE
logo:
the stylized lettering in the words HARD are the same; there are only three
PAGE 171
776 F. Supp. 1454, *1461; 1991 U.S. Dist. LEXIS 15621, **18;
21 U.S.P.Q.2D (BNA) 1368
letters that are different in the marks; and the graphics are virtually
identical.
7. Class of goods and marketing channels. The goods involved are, in
essence,
identical. Pacific Graphics' transfers are used to create HARD RAIN CAFE
T-shirts, which are competitive with Licensing Corporation's HARD ROCK
CAFE

T-shirts. As to marketing channels, Licensing Corporation's HARD ROCK
CAFE
T-shirts are sold [**19] only in HARD ROCK CAFE restaurants and Pacific
Graphics' transfers are sold to T-shirt shops in Washington, which sell HARD
RAIN CAFE T-shirts. Notwithstanding a difference in marketing, the resulting
post-sale confusion which is caused after the sale of the Hard Rain Cafe design
strongly weighs in favor of plaintiff's claim and its likelihood of success.
8. Evidence of actual confusion. Proof of actual confusion is not necessary.
As the Court stated in Academy of Motion Picture Arts and Sciences v. Creative
House Promotions, Inc., supra,
In this circuit, actual confusion is not necessary to a finding of likelihood of
confusion under the Lanham Act. American Int'l Group, Inc. v. American Int'l
Bank, 926 F.2d 829, 832, 17 U.S.P.Q.2D (BNA) 1907 (9th Cir. 1991).
Likelihood of
confusion will be found whenever consumers are likely to assume that a mark is
associated with another source or sponsor because of similarities between the
two marks. Shakey's Inc. v. Covalt, 704 F.2d at 431 (9th Cir. 1983).
Accord, Eclipse Associates, Limited v. Data General Corp., 894 F.2d at 1118
(evidence of actual confusion is difficult to obtain).
9. Intent of the second user. Mrs. Hurd [**20] testified that she was not
certain whether she had heard of HARD ROCK CAFE restaurants when one of
her
customers requested that she make a HARD RAIN CAFE design. Stipulation,
Par. 26.
She testified that she had not seen any HARD ROCK CAFE T-shirts prior to
that
request. Id. She testified that when she requested that Venture Graphics make a
HARD RAIN CAFE design transfer, she had no idea what the HARD RAIN
CAFE design
would look like. Stipulation, Par. 24. Regardless of actual intent, the
defendant has knowingly adopted a mark substantially similar to plaintiff's
mark. The Court should therefore presume that the defendant will accomplish its
purpose and that the public will be deceived. Academy of Motion Picture Arts
and
Sciences v. Creative House Promotions, Inc., supra.
10. From the foregoing the Court concludes that Licensing Corporation is
likely to succeed on its trademark infringement and Lanham Act Section 43(a)
claims.
B. DILUTION
11. Because the Court has ruled that there is a violation of the Lanham Act,
there is no need to decide the claim of dilution and accordingly the Court makes
[*1462] no Findings of Fact or Conclusions of Law regarding dilution.
C. PACIFIC [**21] GRAPHICS' PARODY ARGUMENT
12. Parody is not a defense to trademark infringement, but rather is another
factor to be considered in the likelihood of confusion equation. Schieffelin &
Co. v. Jack Co. of Boca, 725 F. Supp. 1314, 1323 (S.D.N.Y. 1989); Mutual of

PAGE 172
776 F. Supp. 1454, *1462; 1991 U.S. Dist. LEXIS 15621, **21;
21 U.S.P.Q.2D (BNA) 1368
Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 910 (D. Neb. 1986), aff'd, 836
F.2d
397 (8th Cir. 1987), cert. denied, 488 U.S. 933, 102 L. Ed. 2d 344, 109 S. Ct.
326 (1988). A "true" parody will be "so obvious and heavy handed that a clear
distinction [is] preserved in the viewer's mind between the source of the actual
product and the source of the parody." Mutual of Omaha, 648 F. Supp. at 910.
A
defendant's claim of parody will be disregarded where the purpose of the
similarity is to capitalize on a famous mark's popularity for the defendant's
own commercial use. Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1175
(C.D.
Cal. 1986), aff'd, 830 F.2d 197 (9th Cir. 1987).
13. In the Mutual of Omaha case, after a comparison of the trademark
(Mutual
of Omaha) with the defendant's design (Mutant of Omaha) the court noted:
the lettering [**22] styles are identical, the Indian head logo depicts the
same side view of a war-bonneted head, and the substitution of "Mutant" for
"Mutual" is confusing and suggestive especially upon a brief glance . . . While
there are differences that can be pointed out in a side-by-side comparison, on
the whole the name and logo created a substantially similar concept, image and
feel which the Court finds is likely to create confusion as to source,
affiliation or sponsorship on the part of consumers.
648 F. Supp. at 909-910. In thin case, the defendant's attempt at parody was not
sufficient to destroy the potential for consumer confusion. Id. at 1324.
14. In this case, Pacific Graphics' wholesale copying of the HARD ROCK
CAFE
logo cannot be explained or excused by parody. Initially, Pacific Graphics
appropriated the color scheme, shapes, lettering, size, and background of the
classic HARD ROCK CAFE T- shirt. The only difference between the first
HARD
RAIN CAFE design and the classic HARD ROCK CAFE T- shirt is the three
letters
in the second word of the mark: the graphics are indistinguishable.
15. This case is different from those cases in which courts have found that
the junior [**23] user's mark is a true parody. In some cases, courts have
found no likelihood of confusion where the degree of copying of the plaintiff's
trademark is slight. n1 That is not the case here, where the entire HARD ROCK
CAFE logo has been appropriated by Pacific Graphics.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 See, e.g., Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 117
(2d Cir. 1984) ("The two characters [defendant's "Donkey Kong" and plaintiff's
"King Kong"] and stories are so different that no question of fact was presented
on the likelihood of confusion."); Toho Co. v. Sears, Roebuck & Co., 645 F.2d
788 (9th Cir. 1981) (not only were goods unrelated but "Bagzilla" creature was

mere humorous caricature of plaintiff's "Godzilla"); Eveready Battery Co. v.
Adolph Coors Co., 765 F. Supp. 440, 450, 19 U.S.P.Q.2D (BNA) 1265 (N.D.
Ill.
1991) ("The unmistakable differences between the Energizer Bunny and Leslie
Nielsen in modified rabbit attire arguably generate much of the humor in the
Coors parody."); Jordache Enter. v. Hogg Wyld, Ltd., 625 F. Supp. 48 (D. N.M.
1985) (defendants' "Lardashe" mark with pig insignia could not be confused
with
plaintiff's trademark "Jordache" and horse insignia), aff'd, 828 F.2d 1482 (10th
Cir. 1987); Universal City Studios v. Casey & Casey, Inc., 622 F. Supp. 201,
204
(S.D. Fla. 1985) (cartoon of two well-dressed mice with caption "Miami Mice"
not
sufficiently similar to "Miami Vice" human characters to cause a likelihood of
PAGE 173
776 F. Supp. 1454, *1462; 1991 U.S. Dist. LEXIS 15621, **23;
21 U.S.P.Q.2D (BNA) 1368
confusion), aff'd, 792 F.2d 1125 (11th Cir. 1986).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**24]
16. Courts have also found no likelihood of confusion on the basis of parody
where the subject matter concerns social commentary. n2 That is not the case
here.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n2 See, e.g., Cliffs Notes v. Bantam Doubleday Dell Pub. Group, 886 F.2d
490
(2d Cir. 1989) (parody deserves freedom as a form of social and literary
criticism; risk of confusion between "Cliffs Notes" study guides and "Spy
Notes," which follow format similar to Cliff Notes but poke fun at modern
literature, is outweighed by First Amendment rights); L.L. Bean, Inc. v. Drake
Publishers, Inc., 811 F.2d 26 (1st Cir.) (trademark owner's rights extend to
commercial uses of mark but cannot be used to suppress points of view; thus,
defendant's "L.L. Beam's Back-To-School-Sex-Catalog" was not an infringement
of
the "L.L. Bean" mark), cert. denied, 483 U.S. 1013, 97 L. Ed. 2d 753, 107 S.
Ct.
3254 (1987); Girl Scouts of U.S.A. v. Personality Posters Mfg., 304 F. Supp.
1228 (S.D.N.Y. 1969) (makers of poster featuring pregnant Girl Scout with
phrase
"Be Prepared" were not in any way competing with Girl Scouts).
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
[**25]
[*1463] 17. Parody is no defense to Pacific Graphics' misappropriation of
the famous HARD ROCK CAFE logo. Defendant's copying of Hard Rock's
design is far
from slight. Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905 (D. Neb.
1986),
aff'd, 836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933, 102 L. Ed. 2d

344, 109 S. Ct. 326 (1988). See, Walt Disney Prod. v. Air Pirates, 581 F.2d 751
(9th Cir. 1978). Plaintiff has under all the circumstances demonstrated a high
likelihood of confusion and therefore a high likelihood of success on the
merits.
18. Thus, the Court concludes that Defendant's parody defense fails as to all
of Licensing Corporation's claims.
III. IRREPARABLE HARM
19. In trademark infringement or unfair competition actions, once the
plaintiff establishes a likelihood of confusion, it is ordinarily presumed that
the plaintiff will suffer irreparable harm. Rodeo Collection, Ltd. v. West
Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987). In this case, it is not contested
that T-shirt shops which purchase Pacific Graphics' HARD RAIN CAFE
transfers may
apply those transfers to any type of garment, without regard to [**26] its
quality. Given that Pacific Graphics has stipulated that consumers associate the
HARD RAIN CAFE design with HARD ROCK CAFE, it is likely that they will
also
associate any defects in HARD RAIN CAFE garments with HARD ROCK
CAFE, damaging
plaintiff's reputation.
20. The Court concludes that Licensing Corporation has demonstrated that it
will suffer irreparable injury if the preliminary injunction is not granted.
PAGE 174
776 F. Supp. 1454, *1463; 1991 U.S. Dist. LEXIS 15621, **26;
21 U.S.P.Q.2D (BNA) 1368
III. BALANCE OF HARDSHIPS
21. The HARD ROCK CAFE logo is an extremely valuable asset to
Licensing
Corporation, as is demonstrated by the fact that more than 47 million dollars'
worth of HARD ROCK CAFE merchandise has been sold at HARD ROCK
CAFE. The HARD
ROCK CAFE logo symbolizes the goodwill connected with Licensing
Corporation's
business, and that goodwill should not be jeopardized by placing it in the hands
of Pacific Graphics.
22. The Court finds that the entry of an injunction would not cause
substantial harm to Pacific Graphics. The sale of HARD RAIN CAFE design
transfers is less than one percent of Pacific Graphics' business. On that ground
alone the balance of hardships tips decidedly in favor of Licensing Corporation.
Midway Mfg. Co. v. Artic Int'l, Inc., 547 F. Supp. 999, 1014 (N.D. Ill. 1982),
[**27] aff'd, 704 F.2d 1009 (7th Cir. 1983) (balance of hardships tipped in
plaintiff's favor where the sale of the accused devices was a small part of
defendant's business). The only harm Pacific Graphics will suffer if an
injunction is entered is a small loss of profits. That is no hardship under
these circumstances, where the defendant has misappropriated the plaintiff's
entire logo. Helene Curtis Industries v. Church & Dwight Co., Inc., 560 F.2d
1325, 1333 (7th Cir. 1977), cert. denied, 434 U.S. 1070, 98 S. Ct. 1252, 55 L.
Ed. 2d 772, 197 U.S.P.Q. (BNA) 592 (1978) ("Advantages built upon a

deliberately
plagiarized make-up do not seem to us to give the borrower any standing to
complain that his vested interests will be disturbed.", quoting My-T Fine Corp.
v. Samuels, 69 F.2d 76, 78 (2d Cir. 1934)).
23. The Court thus concludes that the balance of hardships tips substantially
in favor of granting Licensing Corporation's motion for a preliminary
injunction. Furthermore the defendant has stipulated that if the preliminary
injunction motion is granted a permanent injunction may be entered.
For the foregoing reasons, [**28]
IT IS HEREBY ORDERED, ADJUDGED AND DECREED that, in
accordance with Rule 65
of the Federal Rules of Civil Procedure, Defendant Pacific Graphics, [*1464]
Inc., its officers, agents, servants, employees, and attorneys, and those
persons in active concert or participation with them who receive actual notice
of the order by personal service or otherwise, are permanently enjoined from
engaging in any of the following acts:
(i) infringing Licensing Corporation's HARD ROCK CAFE logo in any
manner;
(ii) diluting the distinctive quality of Licensing Corporation's HARD ROCK
CAFE mark in any manner;
(iii) unfairly competing with Licensing Corporation; and,
(iv) manufacturing, printing, silk screening, reproducing, marketing,
distributing, selling, offering to sell, displaying, moving or transferring
merchandise bearing the mark "HARD RAIN CAFE" or any mark which is a
colorable
of or confusingly similar to Licensing Corporation's registered HARD ROCK
CAFE
marks and logo.
PAGE 175
776 F. Supp. 1454, *1464; 1991 U.S. Dist. LEXIS 15621, **28;
21 U.S.P.Q.2D (BNA) 1368
[SEE ATTACHMENTS IN ORIGINAL]
The foregoing FINDINGS OF FACT, CONCLUSIONS OF LAW, AND
PERMANENT INJUNCTION
ORDER are submitted to the Court by the undersigned:
DATED this 22 day of October, 1991.
PAGE 176
14TH CASE of Level 1 printed in FULL format.
THE
FREDERICK W. HUGHES, as Executor of the Estate of ANDY
WARHOL, Deceased, and ANDY WARHOL'S FOUNDATION FOR
VISUAL ARTS, Plaintiffs, v. PLUMSTERS, LTD. d.b.a. PLUM,
Defendant

No. C-88-3512 EFL
UNITED STATES DISTRICT COURT FOR THE NORTHERN
DISTRICT OF
CALIFORNIA
1989 U.S. Dist. LEXIS 11678; 11 U.S.P.Q.2D (BNA) 1572; 17
Media L. Rep. 1186
OPINIONBY: [*1]
LYNCH
OPINION: ORDER
June 15, 1989, Decided and Filed
EUGENE F. LYNCH, UNITED STATES DISTRICT JUDGE
This is an action for trademark infringement under 15 U.S.C. section 1114(1),
false designation of origin under 15 U.S.C. section 1125(a), infringement of the
right of publicity under California Civil Code section 990, unfair competition
under California Business and Professions Code section 17200, and for dilution
and injury to business reputation under California Business and Professions
Code
section 14330.
Plaintiffs, Frederick W. Hughes and Andy Warhol's Foundation for the Visual
Arts, which plaintiffs claim to be the owners of the rights and registrations of
the deceased artist, Andy Warhol, complain about defendant's manufacturing,
advertising, and sale of a T- shirt which defendant claims to be a parody of
the works of Andy Warhol.
The motion for summary judgment by plaintiffs Frederick W. Hughes and
Andy
Warhol's Foundation for the Visual Arts ("plaintiffs") and the cross-motion for
summary judgment by defendant Plumsters, Ltd. ("defendant") came on
regularly
for hearing on May 12, 1989. The matter having been briefed, argued, and
submitted and good cause appearing therefor,
IT IS HEREBY ORDERED that:
1. Plaintiffs' [*2] motion for summary judgment on plaintiff's first and
second claims that defendant has committed trademark infringement under 15
U.S.C. section 1114(1) and false designation of origin under 15 U.S.C. section
1125(a) is denied.
The Court finds that plaintiffs have the burden of proof, by a preponderance
of the evidence, on the eight factors which must be considered by the Court in
assessing the real issue, likelihood of confusion. Those eight factors are:
A. The strength or weakness of the mark;
PAGE 177

1989 U.S. Dist. LEXIS 11678, *2; 11 U.S.P.Q.2D (BNA) 1572;
17 Media L. Rep. 1186
B. Similarity in appearance, sound, and meaning;
C. The class and proximity of the goods in question;
D. The marketing channels used;
E. Evidence of actual confusion;
F. The type of goods and degree of care exercised by the purchaser;
G. The intent of defendant; and
H. The likelihood of expansion of product lines.
Parody is not an affirmative defense in a trademark infringement case.
Rather, it is a way of establishing that consumers are not likely to be confused
as to the source, sponsorship, or approval of the product in question. Jordache
Enterprises, Inc. v. Hogg Wyld, Ltd., 625 F. Supp. 48, 55 (D.N.M. 1985); see
also, 2 J. McCarthy, Trademarks and Unfair Competition, [*3] sec. 31:38 (2d
ed. 1984). While plaintiff bears the burden of proof as to defendant's intent,
defendant bears the burden of proof as to whether its art work is a successful
parody.
The jury shall also determine whether the name "Andy Warhol" as it appears
on
defendant's T- shirt is used only to describe the parody or to identify the
source of the T- shirt or the art work depicted on it.
These are questions of fact for the jury and cannot be decided by the Court
as a question of law. The ultimate question of likelihood of confusion is a
question of law to be determined by the Court. The final decision of the Court
as to whether there is a likelihood of confusion, mistake, or deception will be
determined based upon answers to questions put to the jury as to these issues.
2. Defendant's cross-motion for summary judgment is denied, with the
exception that defendant's cross-motion for summary judgment on plaintiffs'
fourth claim for dilution under California Business and Professions Code section
14330 is granted;
3. Plaintiffs' third claim for unfair competition under the common law and
California Business and Professions Code section 17000, et seq., are, by
admission of plaintiff's [*4] counsel, deplicative of the Lanham Act claims.
Therefore, pursuant to stipulation by counsel, the third claim for relief is
voluntarily dismissed without prejudice. Defendant's cross-motion for summary
judgment on the third claim is therefore denied without prejudice;
4. Plaintiffs' fifth claim for violation of the right of publicity under
California Civil Code section 990 shall be severed for separate trial or
judgment. The court is of the view that the statute is probably unconstitutional
as applied to this case if defendant establishes the success of its attempted

parody.
5. It is summarily adjudicated that the facts of this case do not meet the
elements of judicial estoppel and judicial estoppel does not preclude the
PAGE 178
1989 U.S. Dist. LEXIS 11678, *4; 11 U.S.P.Q.2D (BNA) 1572;
17 Media L. Rep. 1186
assertion of plaintiffs' claims as set forth in their complaint; and
6. A status conference shall be held on July 19, 1989, commencing at 8:45
a.m. Plaintiffs and defendant shall each file with the Court and hand serve on
the opposing party on July 7, 1989 a list of witnesses expected to testify at
trial and a brief, not to exceed ten (10) pages in length, addressing the
following issue: Is a likelihood of confusion established if a jury believes
that Andy Warhol created [*5] the illustration depicted on defendant's "Andy
Warhol's Cat" T-shirt but does not believe that the T-shirt itself was created
by or is otherwise associated with, sponsored, or endorsed by Andy Warhol or
plaintiffs?
The Court would also like the parties to consider and be in a position to
discuss whether there should be a mini-trial assessing issues such as 1) did
defendant intend to create a parody and 2) does the public perceive the
T- shirts at issue, as they are sold by defendant, as a parody.
IT IS SO ORDERED.
DATED: June 15, 1989.
****------------------------------------------------------------------------****
PAGE 1
Auto-Cite (R) Citation Service, (c) 1993 Lawyers Cooperative Publishing
695 F. SUPP. 112:
CITATION YOU ENTERED:
Rogers v. Grimaldi, 695 F. Supp. 112, 1988 U.S. Dist. LEXIS 8694, 15 Media
L.
Rep. (BNA) 2097, 8 U.S.P.Q.2d (BNA) 1562 (S.D.N.Y. 1988)
SUBSEQUENT APPELLATE HISTORY:
aff'd, Rogers v. Grimaldi*1, 875 F.2d 994, 1989 U.S. App. LEXIS
6443, 16 Media L. Rep. (BNA) 1648, 10 U.S.P.Q.2d (BNA) 1825 (2d Cir.
N.Y.
1989)
ANNOTATIONS CITING THE CASE(S) INDICATED ABOVE WITH
ASTERISK(S):
*1 Invasion of privacy by use of plaintiff's name or likeness for

nonadvertising purposes, 30 A.L.R.3d 203, supp sec. 16 (sec. 18 superseded
by Right of exonerated arrestee to have fingerprints, photographs, or other
criminal identification or arrest records expunged or restricted, 46
A.L.R.3d 900 (sec. 11 superseded by False light invasion of
privacy--accusation or innuendo as to criminal acts, 58 A.L.R.4th 902)).
Invasion of privacy by use of plaintiff's name or likeness in advertising,
23 A.L.R.3d 865, supp sec. 7.
To search for collateral annotations referring to the annotation(s) above, type
the citation and press the ENTER key.
PAGE 1
Auto-Cite (R) Citation Service, (c) 1993 Lawyers Cooperative Publishing
25 CAL. 3D 860:
CITATION YOU ENTERED:
Guglielmi v. Spelling-Goldberg Productions*1, 25 Cal. 3d 860, 160 Cal. Rptr.
352, 603 P.2d 454, 5 Media L. Rep. (BNA) 2208, 205 U.S.P.Q. (BNA) 1116
(1979)
PRIOR HISTORY:
Guglielmi v. Spelling-Goldberg Productions, 73 Cal. App. 3d 436, 140 Cal.
Rptr.
775 (2d Dist. 1977)
superseded, (BY CITATION YOU ENTERED)
ANNOTATIONS CITING THE CASE(S) INDICATED ABOVE WITH
ASTERISK(S):
*1 Right to publicize or commercially exploit deceased person's name or
likeness as inheritable, 10 A.L.R.4th 1193.
To search for collateral annotations referring to the annotation(s) above, type
the citation and press the ENTER key.
PAGE 1
Auto-Cite (R) Citation Service, (c) 1993 Lawyers Cooperative Publishing
634 F. SUPP. 1468:
CITATION YOU ENTERED:

Universal City Studios, Inc. v. T-Shirt Gallery, Ltd.*1, 634 F. Supp. 1468, 230
U.S.P.Q. (BNA) 23 (S.D.N.Y. 1986)
ANNOTATIONS CITING THE CASE(S) INDICATED ABOVE WITH
ASTERISK(S):
*1 Literary and artistic rights for purposes of, and their infringement by or
in connection with, motion pictures, radio, and television, 23 A.L.R.2d
244, supp secs. 7, 8, 40.
Parody as trademark or tradename infringement, 92 A.L.R. Fed. 25, secs. 3,
8.
To search for collateral annotations referring to the annotation(s) above, type
the citation and press the ENTER key.
PAGE 1
Auto-Cite (R) Citation Service, (c) 1993 Lawyers Cooperative Publishing
720 F.2D 231:
CITATION YOU ENTERED:
Warner Bros., Inc. v. American Broadcasting Cos.*1, 720 F.2d 231, 222
U.S.P.Q.
(BNA) 101 (2d Cir. N.Y. 1983)
PRIOR HISTORY:
Warner Bros., Inc. v. American Broadcasting Cos.*2, 523 F. Supp. 611, 7 Media
L. Rep. (BNA) 1595, 211 U.S.P.Q. (BNA) 51 (S.D.N.Y. 1981)
aff'd, remanded, Warner Bros., Inc. v. American Broadcasting Cos.*3, 654
F.2d 204, 7 Media L. Rep. (BNA) 1973, 211 U.S.P.Q. (BNA) 97 (2d Cir.
N.Y.
1981)
on remand, Warner Bros., Inc. v. American Broadcasting Cos.*4, 530 F.
Supp. 1187, 215 U.S.P.Q. (BNA) 690 (S.D.N.Y. 1982)
aff'd, (BY CITATION YOU ENTERED)
ANNOTATIONS CITING THE CASE(S) INDICATED ABOVE WITH
ASTERISK(S):
*1 Literary and artistic rights for purposes of, and their infringement by or
in connection with, motion pictures, radio, and television, 23 A.L.R.2d
244, supp sec. 40.
Parody as trademark or tradename infringement, 92 A.L.R. Fed. 25, secs. 8,
11.

Modern status of Federal Civil Procedure Rule 54(b) governing entry of
judgment on multiple claims, 89 A.L.R. Fed. 514, sec. 48.
*2 Parody as copyright infringement or fair use under Federal Copyright Act
(17 USCS secs. 101 et seq.), 75 A.L.R. Fed. 822, secs. 2, 4, 6, 7, 9.
*3 Parody as infringement of copyright, 9 A.L.R.3d 620, supp sec. 4
(superseded by Parody as copyright infringement or fair use under Federal
Copyright Act (17 USCS secs. 101 et seq.), 75 A.L.R. Fed. 822).
Literary and artistic rights for purposes of, and their infringement by or
in connection with, motion pictures, radio, and television, 23 A.L.R.2d
244, supp sec. 40.
Parody as copyright infringement or fair use under Federal Copyright Act
(17 USCS secs. 101 et seq.), 75 A.L.R. Fed. 822, secs. 4, 6, 7.
*4 Literary and artistic rights for purposes of, and their infringement by or
in connection with, motion pictures, radio, and television, 23 A.L.R.2d
244, supp sec. 40.
PAGE 2
Auto-Cite (R) Citation Service, (c) 1993 Lawyers Cooperative Publishing
720 F.2D 231:
Modern status of Federal Civil Procedure Rule 54(b) governing entry of
judgment on multiple claims, 89 A.L.R. Fed. 514, sec. 48.
Parody as copyright infringement or fair use under Federal Copyright Act
(17 USCS secs. 101 et seq.), 75 A.L.R. Fed. 822, sec. 9.
To search for collateral annotations referring to the annotation(s) above, type
the citation and press the ENTER key.
PAGE 1
Auto-Cite (R) Citation Service, (c) 1993 Lawyers Cooperative Publishing
11 U.S.P.Q.2D (BNA) 1572:
CITATION YOU ENTERED:
Hughes v. Plumsters, Ltd., 1989 U.S. Dist. LEXIS 11678, 17 Media L. Rep.
(BNA)
1186, 11 U.S.P.Q.2d (BNA) 1572 (N.D. Cal. 1989)

SUBSEQUENT APPELLATE HISTORY:
later proceeding, Hughes v. Plumsters, Ltd., 1989 U.S. Dist.
LEXIS 16452, 17 Media L. Rep. (BNA) 1188, 13 U.S.P.Q.2d (BNA) 1253
(N.D.
Cal. 1989)