Independiente:

This chapter discussed fifteen cases in which the defendant claimed that an allegedly diluting mark use ought to be protected from dilution liability under the First Amendment or one of the TDRA’s exclusions as an expressive use.242 Interestingly, the TDRA’s “fair use” exclusion, which expressly protects parody, commentary and criticism

238_Id.

239_{Id. at 853 (citing Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 906 (9th Cir.2002)).} 240_Id.

241_Id.

242 _{Nat'l Bus. Forms & Printing, Inc. v. Ford Motor Co., 2009 WL 3570387 (S.D. Tex. Oct. 30, 2009), aff'd}

in part, rev'd in part, 671 F.3d 526 (5th Cir. 2012); Cintas Corp. v. Unite Here, 601 F. Supp. 2d 571 (S.D.N.Y. 2009), aff'd, 355 F. App'x 508 (2d Cir. 2009); Utah Lighthouse Ministry, Inc. v. Discovery Computing, Inc., 506 F. Supp. 2d 889 (D. Utah 2007), aff'd sub nom. Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008); Cleary Bldg. Corp. v. David A. Dame, Inc., 674 F. Supp. 2d 1257 (D. Colo. 2009); Roxbury Entm't v. Penthouse Media Group, Inc., 669 F. Supp. 2d 1170 (C.D. Cal. 2009); Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008); Burnett v. Twentieth Century Fox Film Corp., 491 F. Supp. 2d 962 (C.D. Cal. 2007); BidZirk, LLC v. Smith, 2007 WL 3119445 (D.S.C. Oct. 22, 2007); Griffith v. Fenrick, 486 F. Supp. 2d 848 (W.D. Wis. 2007).

of the famous mark owner or its goods or services, was applied only once, in NBFP.243

In all of the other cases in which the defense was raised, it was rejected. For example, in

Hyundai Motor and Hershey Co, the use was found ineligible for the protection of the TDRA’s expanded fair use exclusion because it did not comment directly on the mark owner.244 In both HersheyCo. and Hyundai Motor, the mark was used in a promotion for the defendant’s own products and services,245 _{and in both cases the use was found}

actionable and diluting based on a weighing of the blurring factors.246 The plaintiff was

not required to show that the association between the two marks was likely to diminish the strength or reputation of the senior mark in either case.

The “fair use” exclusion was also rejected in Haute Diggity Dog and Starbucks Corp. II.247 _{In those cases, the respective courts found that the mark was used as a}

designation of source for the defendants’ own products, and was thus ineligible for the TDRA’s expanded “fair use” exclusion.248 Nonetheless, in Haute Diggity Dog and

Starbucks III the use was ultimately found to be non-diluting based on an application of

243 _{Nat'l Bus. Forms & Printing, Inc. v. Ford Motor Co., 2009 WL 3570387 (S.D. Tex. Oct. 30, 2009), aff'd}

in part, rev'd in part, 671 F.3d 526 (5th Cir. 2012);

244 _{Louis Vuitton Malletier, S.A. v. Hyundai Motor Am., 2012 WL 1022247, at *19 (S.D.N.Y. Mar. 22,} 2012); Hershey Co. v. Art Van Furniture, Inc., 2008 WL 4724756, at *15 (E.D. Mich. Oct. 24, 2008). 245_{Hyundai Motor, 2012 WL 1022247 at *2 (describing the use as part of a larger super bowl commercial} for the Hyundai “Sonata” automobile); HersheyCo., 2008 WL 4724756 at *1 (describing the use as part of an online promotional campaign).

246_{HyundaiMotor, 2012 WL 1022247at *13-14; HersheyCo., 2008 WL 4724756 at *15.}

247 _{Starbucks Corp. v. Wolfe's Borough Coffee, Inc. (Starbucks Corp. II), 559 F. Supp. 2d 472 (S.D.N.Y.} 2008), aff'd in part, vacated in part, 588 F.3d 97 (2d Cir. 2009); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F. Supp. 2d 495 (E.D. Va. 2006), aff'd on other grounds, 507 F.3d 252 (4th Cir. 2007).

248_{Haute Diggity Dog, 507 F.3d 252, 266 (noting that the TDRA’s fair use defense does not extend to} parodies used as a trademark and therefore does not apply to the defendant’s use); Starbucks Corp. II, 588 F.3d 97, 112 (“Charbucks Marks cannot qualify under the parody exception because the Charbucks Marks are used “as a designation of source for [Black Bear's] own goods[, i.e., the Charbucks line of coffee].”).

the blurring factors.249 _{Interestingly, in both cases factor (i), the similarity of the marks,}

was central to the courts final holding.250

The “fair use” exclusion was not addressed at all, however, in the product parody case Anheuser-Busch.251 What’s more, the blurring factors proved largely irrelevant. Instead, the court dismissed the dilution claim because the plaintiff’s offered no evidence that the “buttwiper” chew toy was likely to tarnish or diminish the strength of the

“Budweiser” mark.252

The failure to provide evidence that the allegedly diluting use harmed the reputation or strength of the senior mark was also determinative in Volkswagen.253 Volkswagen was the only case identified for this study involving the use of a mark in an “artistic work” that was decided outside of the Ninth Circuit.254 _{The Volkswagen court}

did not consider any of the TDRA’s exclusions in its dilution analysis. This distinguishes it from Burnett and Roxbury Entertainment,two cases involving an “artistic work” that were decided by a California federal district court.255 The court in those cases cited MCA Records and found that the use of a mark in an expressive, artistic work such as a

249_{Haute Diggity Dog, 507 F.3d at 267-68; Starbucks  Corp.  v.  Wolfe's  Borough  Coffee,  Inc.  (Starbucks}  

Corp.  III),  2011  WL  6747431  (S.D.N.Y.  Dec.  23,  2011,  aff'd,  736  F.3d  198  (2d  Cir.  2013)).

250_{Haute Diggity Dog, 507 F.3d 252, 267-68 (finding that in the case of a true parody factors related to the} strength of the senior mark, intent to associate and actual association do not favor the plaintiff); Starbucks Corp. III, 736 F.3d 198, 213 (weighing the dissimilarity of the marks heavily, and the other factors only minimally to moderately).

251 _{Anheuser-Busch, Inc. v. VIP Products, LLC, 666 F. Supp. 2d 974 (E.D. Mo. 2008).} 252_{Id. at 987.}

253 _{Volkswagen AG v. Dorling Kindersley Pub., Inc., 614 F. Supp. 2d 793, 808 (E.D. Mich. 2009).} 254_Id.

255  _{Roxbury  Entm't  v.  Penthouse  Media  Group,  Inc.,  669  F.  Supp.  2d  1170  (C.D.  Cal.  2009);  Burnett  v.}  

television program or a film would be protected under the non-commercial use exclusion.256

While the use of a mark in parody, criticism of commentary about a mark owner or its goods and services would be protected under the TDRA’s “fair use” exclusion, the exclusion was not frequently applied. For example, the use of a mark in a consumer reviews of the mark owner’s product and services was protected under either the news reporting and commentary exclusion,257 or the non-commercial use exclusion,258 depending on the nature of the defendant’s criticism. And in Utah Lighthouse Ministry, Wal-Mart Stores and Cintas Corp,three cases in which the mark was used in a parody or criticism of the mark owning organization, the use was found non-commercial.259 Finally, the non-commercial use exclusion was applied in Griffith to protect the defendant’s use of a senior mark in a political campaign.260

256_{Roxbury Entertainment, 669  F.  Supp.  2d  at  1175  ;  Burnett,  491  F.  Supp.  2d  at  974.}   257_{BidZirk, 2007 WL 3119445.}

258_{Clearly Building., 674 F. Supp. 2d 1257.}

259_{Cintas Corp., 601 F. Supp. 2d 571; Utah Lighthouse Ministry,527 F.3d 1045; Wal-Mart, 537 F. Supp.} 2d 1302.