Standard of analyzing cause of action—Likelihood of confusion
CT: a reasonable jury could find a likelihood of confusion
Some affidavits offered from ppl who thought Parks sponsored the song
Rogers Test (First Amendment) Artistic relevance—is the use of the person’s name or identity artistically relevant to the content of the work?
Her name is not artistically relevant to the content of the Outkast song
They could’ve named it something not associated with Rosa Parks’ name
Misleadingas to the source of content? (left for LC to decide, depending on first prong)
Neville Brothers’ song Her name is artistically relevant to the topic and purpose of the song
Couldn’t tell the story without reference her name
§ 32 (registered mark): words “Tiger Woods” on art prints, calendars, mounted photographs, notebooks, pencils, unmounted photographs, etc.
his name is mentioned in the narrative that accompanies the painting
no use of his name directly on the painting
CT: this falls under statutory fair use defense
Just describing the product in good faith
§ 43(a) (unregistered mark) claiming TM rights to image and likeness
CT: his image doesn’t indicate source—just a picture of Tiger Woods
But leaves open that there is a possibility that a particular pose could be trademarked (like Elvis), but not right now
Under state law Ringling Bros. (“Greatest Show on Earth”) Even if Lanham preempts IL state def of “distinctive,” ct already applied Hyatt factors for distinctiveness
Coined or invented term
Length of time used
Scope of advertising
Nature and extent of the business
Scope of first user’s repuation
Injunction b/c irreparable harm
Mead Data v. Toyota (LEXIS v. LEXUS) In NY, the court makes clear that the mark doesn’t have to identical to senior user, but needs to be substantially similar.
DC thought Lexus and Lexis were substantially similar, but this court said they were not.
Commercial speech standard: doesn’t matter that some people would mispronounce these, but professional announcers would be able to do it correctly.
In visual appearance, you would be able to tell
because the marks are not substantially similar, there is no cause of action.
The court continues on about distinctiveness of marks. Just being distinctive or well known in a smaller market isn’t enough. Have to be well known generally. Not about secondary meaning, but recognizable. The people who would see the marks as distinctive (attys) are fairly sophisticated.
What about reverse dilution claim in this case? Lexis concerned that Lexus would become really famous, Lexis mark would be compromised. We allow for reverse confusion, why not reverse dilution? The only people having mental association are sophisticated and will be able to recognize the difference.
Deere v. MTD Products—Tarnishment, Parody
involved an advertisement between two competing lawn tractors. Competitor had ad with cartoon version of Deere ad, making fun of the deer.
Court said that there wasn’t blurring because the competitor was referring to senior users mark – issue is not that consumers would think that the Deere mark was the MTD’s mark.
Six factor test for determining blurring:
Similarity of the marks
Not tarnishment either because that usually refers to linking products with shoddy quality.
Tarnishment is usually found where a distinctive mark is depicted in a context of sexual activity, obscenity, or illegal activity.
But there is dilution in the form of “making fun.” (form of tarnishment?)
Some satiric expression is ok, but there is a line that was crossed.
Not ok if in direct competition – meaning if competitor was making fun of senior mark to promote its own product. Also, this is in a commercial context.
Parody outside of commercial context is ok, as is comparative advertising.
Hormel Food v. Jim Henson Productions—Parody
Muppets use the name Spa’am. Court says that this is ok – not in commercial context.
Specifically talks about Deere, reads it differently than we discuss. Revisits its holding – never said that there was a third category other than blurring or tarnishment – just a form of tarnishment that court hadn’t previously mentioned.
Even if it had been in commercial context, would it be tarnishment? No. No evidence that the use causes negative associations, not direct competitor, and the parody inheres in the product.
Federal Dilution § 43(c) Dilution means the lessening of the capacity of a famous mark to identify and distinguish goods or services.
Famous mark (most states is just “distinctive mark”)
Ads and publicity
Recognition (public generally in the trading areas of * and * mark, how they overlay)
3rd party uses
Commercial use in commerce
Diluting action has to occur after mark is famous
Cause dilution (states is “likely to dilute”
general injunctive relief
damages if willful intent
Word Marks Moseley v. V. Secret Catalogue (Victor’s Little Secret) Is proof of actual injury to economic value of famous mark for federal dilution? NO
Junior non-identical use of senior mark does not necessarily create actionable dilution
Mark had no effect on ppl’s opinion of Victoria’s Secret
Suggests need to use consumer surveys when not identical
Kennedy concurrence in Moseley:
diminishment of the famous mark’s capacity can be shown by the probable consequences flowing from use or adoption of the competing mark….a holder of a famous mark threatened with diminishment of the mark’s capacity to serve its purpose should not be forced to wait until the damage is done and the distinctiveness of the mark has been eroded.
Elements of federal cause of action:
Sufficient similarity of marks to evoke in consumers a mental association of the two that
Causes actual harm to the senior mark’s economic value as a product-identifying and advertising agent.
How do you show actual harm and that it was caused by * use?
Consumer surveys whether there is association
Loss of revenues, and exclude other potential causes for the loss
Contextual factors such as the extent of the junior mark’s exposure, the similarity of the marks, the firmness of the senior mark’s hold.
Can show dilution through circumstantial evidence. Evidence here shows that the reference actually boosted Ringling Bros. mark here. More people in Utah knew about the circus than the rest of the country.
Congress has proposed abrogating the holding in Moseley.
Would change to “likely to cause dilution by blurring or dilution by tarnishment of the famous mark,” Would lower standard to state level.
Argument for it is that * wouldn’t have to wait around until it was injured to bring an action.
Argument against the amendment? Limiting the language by letting companies to lock-up words – applies not just to arbitrary or fanciful.