Control automático

In only two cases were the defendants’ uses of a mark for purportedly artistic or parodic purposes found both actionable and diluting. One case was Kraft Foods

Holdings, Inc. v. Helm, a 2002 decision by a federal district court in Illinois.83 In Kraft Foods, the owner of the mark “Velveeta” for cheese products sought to enjoin a website operator from using the name “King VelVeeda” in association with his websites

81 _{Id. at 442-43 (noting that “many of WWE's t-shirt graphics contain phrases that are profane, violent or} carry sexual connotations,” and that the most offensive phrase used by Big Dog was “Open Up a Can of Woof Ass,” which was a takeoff on WWE's phrase “Open Up a Can of Whoop Ass”).

82_{Id. at 441 (noting that “Dilution by blurring occurs when the use of the defendant's mark results in the} loss of the ability for plaintiff's mark to serve as a unique identifier of the plaintiff's product, causing the public to no longer associate the plaintiff's famous mark with its goods or services” and concluding that “Big Dog's parody is actually likely “increase public identification” of WWE's marks with WWE.”) (internal citations omitted);Tommy Hilfiger 221 F. Supp. 2d at 422 (holding that “rather than result in this type of dilution, Nature Labs' spoof, like other obvious parodies, “tends to increase public identification of a plaintiff's mark with the plaintiff… [T]he joke itself reinforces the public's association of the mark with the plaintiff.”) (internal citations omitted).

www.cheesygraphics.com and www.courtofporn.com.84 _{Kraft claimed that the use of the}

“King VelVeeda” name caused dilution by tarnishment because it associated Kraft’s family-friendly food product with pornographic images of nude women, illustrations of obscene sexual activities, and drawings of illicit drug use.85 The defendant, Stuart Helm, argued that the use of the name “King VelVeeda” was non-commercial because it was intended as a parody.86 _{He further claimed that the use was expressive and protected by}

the First Amendment because he used it in connection with his art.87

The court first concluded that Helm’s use was commercial because “significant portion[s]” of Helm’s websites were devoted to the sale of Helm’s products and

advertisements for Helm’s design services.88 Moreover, the court found that Helm’s had used the name “King VelVeeda” to identify the websites, artwork and design services as belonging to him.89 The court equated this to the use of the mark as a “ designation of source,” a classically commercial use within the meaning of the Lanham Act.90

The court in Kraft Foods also rejected Helm’s argument that the use was a parody protected by the First Amendment.91 In finding the use non-parodic, the court cited Helm’s own testimony, in which he admitted that the use of the name “King VelVeeda” was “not meant to be an opinion, commentary or parody of Kraft or Velveeta.”92 The

                                                                                                                84_{Id. at 944.} 85_Id. 86_Id. 87_{Id. at 952.} 88_{Id. at 947.} 89_{Id. at 955.} 90_Id. 91 _{Id. at 952-53.} 92_{Id. at 952-53.}

court also noted that there was no parody or commentary art on the site at all, and particularly none commenting on the mark or mark owner.93 As such, the Kraft Foods

court concluded that the use of the “King VelVeeda” mark was entirely unnecessary for Helm’s expressive messages,94 and that an injunction would have no substantial First Amendment implications on Helm’s ability to make and distribute art commercially or for free.95

A similar conclusion was reached in Conopco Inc. v. 3DO Co.,96a 1999 decision issued by a federal district court in New York. In Conopco Inc., the defendant video game company, 3DO Co., aired a commercial for the violent video game, BattleTanx, in which a stuffed bear similar to the Downy Fabric Softener “Snuggle Bear” was chased by a tank, mutilated and crushed.97 _{The defendant claimed that the use was parodic because}

it juxtaposed the “saccharine sweet” world of the trademarked bear with the violent universe of the BattleTanx video game.98

In finding the use actionable and diluting, the court first noted that the use was quintessentially commercial because the defendant had employed the plaintiff’s mark in an advertisement for its own product.99 _{The court then concluded that it was unnecessary}

to use the plaintiff’s trademark in order to convey the violent nature of the game, and

93 _{Id. at 955 (“Mr. Helm did not reveal any examples of his commentary—political or social, that he} allegedly posts on his website, save for the drawing of a giant noodle, which he has posted on his website since the filing of the instant lawsuit.”)

94_{Id. at 954.} 95_Id.

96 _{Conopco Inc. v. 3DO Co., 1999 WL 1277957 (S.D.N.Y. Dec. 7, 1999).} 97_{Id. at *1.}

98_{Id. at *3.} 99_Id.

therefore held that this use was not protected under the First Amendment.100 _{Because the}

bear was in the commercial was extremely similar to the “Snuggle Bear” and associated the mark with violence, the court concluded that it caused both dilution by blurring and by tarnishment, and enjoined the defendant from “using or referring to any bear or bear character . . . likely to dilute the distinctiveness of, the SNUGGLE® Bear trademark” in its advertisements, marketing materials or game products.101

Kraft Foods and ConopcoInc. were the only FTDA cases identified for this study in which the court expressly rejected the defense of artistic or parodic use and found the use to be both commercial and diluting. The decision not to apply the non-commercial use exclusion in these cases was relatively clear-cut because the marks in both cases were being used in traditionally commercial fashions: as a designation of source for the

defendant’s goods in Kraft Foods, and as part of a non-comparative advertisement for the defendant’s goods in Conopco Inc. What’s more, the parody defenses in these cases were weak because neither use was truly parodic; neither defendant attempted to convey a critical message or commentary about the plaintiff mark-holder. Rather, in both cases the defendants appear to have appropriated the fame of the senior mark to make their own products more memorable. It is also noteworthy that in each of these cases the mark in question was a “family-friendly” mark, and the defendant had associated that mark in with sex, drug use, or graphic violence – associations that are classically tarnishing.102

100_Id. 101_{Id. at *1.}

102_{See generally, Sandra L. Rierson, The Myth and Reality of Dilution, 11DUKE L.&TECH.REV.212} (2012).

II. DIRECT CRITICISM OR COMMENTARY REGARDING THE MARK OWNER

As discussed in Chapter Two, a review of the legislative history of the FTDA indicates that the non-commercial use exclusion was intended to protect not only expressive uses in artistic works and parody, but also direct criticism and commentary about the mark owner or its goods and services.103 This study identified ten cases from the FTDA period in which the defendant claimed that the allegedly diluting mark use ought to be protected as criticism or commentary about the mark owner or its goods or services.104 It is noteworthy that the majority of these cases involve the use of marks on websites, and particularly the use of marks as domain names. The cases in this section are divided into two subsections based on the courts’ treatment of the use. Subsection (A) discusses cases in which the defendant’s use of the mark, purportedly for criticism or commentary, was found to be both actionable and diluting. Subsection (B) discusses cases in which the defendant’s use of the mark, purportedly for criticism or commentary, was found to be non-commercial and/or was protected under the First Amendment.

103_{See H.R. REP.NO. 104-374 at 8 (1995) (statement of Senator Orin Hatch); see alsoMadrid Protocol}

Implementation Act and Federal Trademark Dilution Act of 1995; Hearing on H.R 1270 and H.R. 1295 Before the Subcomm. on Courts and Intel. Prop. of the H. Comm. on the Judiciary, 104 Cong. 84 (1995), (statement of Mary Ann Alford, executive vice president, International Trademark Association).

104 _{Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005); Nissan Motor Co. v. Nissan Computer} Corp.,231 F. Supp. 2d 977 (C.D. Cal. 2002), aff'd in part, rev'd in part, and remanded sub nom. Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004); People for Ethical Treatment of Animals, Inc. v. Doughney, 113 F. Supp. 2d 915, 920 (E.D. Va. 2000) aff'd sub nom., People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (addressing all but the dilution claim, but affirming the lower courts interpretation of commercial use); Planned Parenthood Fed'n of Am., Inc. v. Bucci, 1997 WL 133313 (S.D.N.Y. Mar. 24, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (affirming without opinion); Jews For Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), aff'd, 159 F.3d 1351 (3d Cir. 1998) (affirming without opinion); MasterCard Int'l Inc. v. Nader 2000 Primary Comm., Inc., 2004 WL 434404 (S.D.N.Y. Mar. 8, 2004); Am. Family Life Ins. Co. v. Hagan, 266 F. Supp.2d 682 (N.D. Ohio 2002); Ford Motor Co. v. 2600 Enterprises, 177 F. Supp.2d 661 (E.D. Mich. 2001); Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108 (D. Minn. 2000); World Wrestling Fed'n Entm't, Inc. v. Bozell, 142 F. Supp. 2d 514 (S.D.N.Y. 2001); OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176 (W.D.N.Y. 2000); Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998).