Jennifer B. Reiter*
As mass-marketing and advertising have become ever more sophisticated
and pervasive, the law's conception of the scope and purpose of
trademark protection has shifted in a way that potentially threatens
freedom of expression. Traditionally, a trademark's primary function
was to identify the source of a product; the focus was on protecting
the public by ensuring that consumers had accurate information.
Nowadays, though, trademarks are designed not so much to reveal
the product's corporate source as to convey a favorable image of
the product. As a result, we have become more receptive to the notion
that the main goal of trademark laws is to protect the reputation
of the owner of the mark, rather than to prevent consumer confusion.
Nowhere is this shift of focus more evident than in the doctrine
of "trademark dilution," a cause of action recognized
in several states' unfair competition statutes and recently written
into the Lanham Act as § 43(c). 15 U.S.C. § 1125(c) (1996).
Infringement by dilution occurs when the infringer's use of the
mark "causes dilution of the distinctive quality of the mark."
15 U.S.C. § 1125(c)(1) (1996). In a significant departure from
traditional trademark law, the owner of the mark need not allege
likelihood of consumer confusion as an element of the dilution cause
of action. Dilution can occur either by "blurring" (the
infringer's use of the mark diminishes its uniqueness even when
there is no source confusion) or by "tarnishment" (the
infringer uses the mark in a context that reflects badly on the
image that the mark's owner wants to promote). See Jordache Enterprises,
Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1489 (10th Cir. 1987) (discussing
various dilution theories in context of state statute). The federal
statute is limited to dilution of "famous" marks. It is
also worth noting that the federal anti-dilution statute does not
explicitly mention tarnishment, and that therefore some ambiguity
exists (in theory) as to whether the statute authorizes a cause
of action based on the tarnishment theory. However, the legislative
history suggests that the statute was meant to encompass this cause
of action, and courts have applied it accordingly.
This legal development should be disturbing to advocates of individual
liberties and free markets. Unlike tangible resources, words and
images can be used by unlimited numbers of people without being
used up: in their natural state, they are a common resource, not
exclusive property. Trademark protection is a limitation placed
upon the free marketplace of ideas which is justified, if at all,
by countervailing social benefits it produces. Expansion of a trademark
owner's property rights, then, does not necessarily expand individual
liberties or advance free market ideals. The concept of dilution
by tarnishment may in fact hinder free debate and criticism of the
values promoted by the "famous" marks that pervade our
The federal anti-dilution statute itself provides only a partial
safeguard against the danger that large corporations will use the
statute to insulate their products' images from effective criticism.
The statute does not apply to "noncommercial use" of a
mark. 15 U.S.C. § 1125(c)(4)(B) (1996). However, both the nature
of modern advertising and the outcome of some recent trademark parody
cases suggest that it is often difficult to distinguish between
commercial and noncommercial expression. Moreover, some of the state
anti-dilution statutes do not even contain an explicit exemption
for noncommercial uses.
The Supreme Court's attempt to define commercial speech as speech
that merely proposes a commercial transaction, see Virginia State
Board of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425
U.S. 748, 762 (1976), seems out of touch with today's style of advertising.
Ads featuring cultural icons like Joe Camel and the Marlboro Man
are designed to create and promote the image of an entire lifestyle
supposedly associated with the product. The product itself is often
not even featured prominently. Overt commercial proposals have given
way to subtle psychological appeals.
Because of the expressive nature of such marks, anti-smoking activists
have found that one of the most effective ways to criticize the
product is to parody the trademarks that make it attractive. They
must counteract not just the appeal of "cigarettes" in
the abstract, but (perhaps even more so) the widespread cultural
images of cool camels and rugged cowboys whom smokers desire to
emulate. New York City taxis now carry parody ads depicting a yellow-toothed
crone smoking "Virginia Slimes" with the slogan "It's
a Cancer Thing" (a parody of "It's a woman thing")
and a skeleton on a horse underneath the word "Cancer"
in the red-and-white style of the Marlboro logo. Stuart Elliott,
Uncle Sam Is No Match for the Marlboro Man, N.Y. Times, Aug. 27,
1995, Money & Business, at 1. Similarly, an anti-alcohol group
parodied the Absolut Vodka ads with a picture of a bottle outlined
in chalk on the pavement at the scene of a car wreck, next to the
words "Absolute End." Steven Greenhouse, Hoist on their
Own Ad Campaigns, N.Y. Times, March 17, 1996, Week in Review, at
6. Sponsors of these parodies argue that they are necessary and
effective because the main message conveyed by the marks in question
is not commercial information about a product, but instead expressive
promotion of a certain lifestyle, which can only be counteracted
by contesting the cultural meaning of the symbols themselves.
Since the parody advertisements discussed above are sponsored by
nonprofit groups, the noncommercial use exception would probably
apply to exempt them from liability for what would otherwise be
a clear case of dilution by tarnishment. The activists could be
liable, though, if they marketed products such as T-shirts that
portrayed trademark parodies in order to spread their message. See
Dorean M. Koenig, Joe Camel and the First Amendment: The Dark Side
of Copyrighted and Trademark-Protected Icons, 11 T.M. Cooley L.
Rev. 803, 808 (1994). The trademark owners themselves, meanwhile,
sell T-shirts and other clothing to popularize their cool characters
and the products with which they are associated. Id. at 807. In
this way, the anti-dilution law unfairly favors the trademark owner's
ability to create a favorable place for its mark in the iconography
of popular culture, while insulating it from effective criticism.
A recent case decided under the federal anti-dilution statute seems
to indicate that the noncommercial use exemption may have little
force because of the difficulty of distinguishing between advertising,
entertainment, and expression. In Anheuser-Busch, Inc. v. Andy's
Sportswear, Inc., No. C-96-2783, 1996 U.S. Dist. LEXIS 15583 (N.D.
Cal. Aug. 28, 1996), a sportswear company was enjoined from selling
T-shirts bearing the slogan "Buttweiser" on the grounds
that this use diluted the famous "Budweiser" trademark.
Here, the mark was used as an expressive parody, not as a trademark,
but the noncommercial use exception was not applied, probably because
the parody of the mark was still being used on goods. (The court
did not discuss its reasoning in any detail.) This precedent does
not bode well for anti-smoking activists who wish to popularize
their alternative interpretation of advertising's cultural icons
through buttons, T-shirts, and the like.
The greatest danger to free expression may be posed by state anti-dilution
statutes which do not contain an explicit noncommercial use exception.
For instance, when Screw Magazine published a picture of Pillsbury's
characters Poppin' Fresh and Poppie Fresh engaging in sexual acts,
a Georgia court issued an injunction pursuant to the Georgia anti-dilution
statute (on the grounds of tarnishment), despite having found that
Screw's use of the marks was editorial and noncommercial. The Pillsbury
Company v. Milky Way Productions, Inc., 215 U.S.P.Q. 124 (N.D. Ga.
State anti-dilution laws can also hinder competitors' ability to
criticize the trademark owner's product in a commercially effective
way. In Deere & Company v. MTD Products, Inc., 41 F.3d 39 (2d
Cir. 1994), Deere's competitor MTD ran a commercial which depicted
Deere's trademark deer running away in fear while being pursued
by an MTD tractor. The purpose of the parody was to compare Deere's
tractors unfavorably to MTD's. The court found that traditional
likelihood of confusion analysis was inappropriate, as was the theory
of dilution by blurring, because the alleged infringer was using
the trademark owner's mark to refer to the trademark owner's product,
rather than to identify the infringer's own goods. Id. at 43-44.
However, the court found MTD liable for dilution by tarnishment,
on the grounds that the parody's unflattering treatment of the Deere
mark "risk[ed] the possibility that consumers will come to
attribute unfavorable characteristics to [the] mark and ultimately
associate the mark with inferior goods and services." Id. at
This argument makes no sense for the simple reason that the legitimate
purpose of comparative advertising is to create a negative impression
of the rival brand. This is just market competition, not dilution.
Far from free-riding on the goodwill of Deere's mark --- the injury
that the dilution cause of action was meant to address --- MTD tried
to diminish that goodwill by suggesting that its product was superior.
The court seemed to want to restrict comparative advertising to
factual comparisons of objectively measurable product characteristics.
However, to a great extent, modern advertising focuses less on providing
factual information and more on surrounding the product with favorable
emotional and psychological associations, often by means of a memorable
trademark. Effective comparative advertising, then, must be able
to reinterpret and reconfigure those images. The Deere court's dilution
theory wrongly allows trademark owners to use their marks to prevent
State anti-dilution laws may even prevent editorial criticism of
the trademark owner's product. The Eighth Circuit recently held
that a parody advertisement in a humor magazine violated Missouri's
anti-dilution statute. Anheuser-Busch, Inc. v. Balducci Publications,
28 F.3d 769 (8th Cir. 1994). The fake advertisement, which appeared
on the back of Snicker Magazine, purported to sell "Michelob
Oily," and featured Anheuser-Busch's trademarked eagle being
soaked with oil from a beer can. The parody's dual purpose was to
mock Anheuser-Busch's brand proliferation and to express outrage
at the Shell oil spill in the Gasconade river (a source of Anheuser-Busch's
water supply). Id. at 772. The court rejected the defendants' contention
"that the First Amendment prevents any construction of an anti-dilution
statute that would enjoin perceived tarnishment in a non-commercial
context." Id. at 778. L.L. Bean, Inc. v. Drake Publishers,
Inc., 811 F.2d 26 (1st Cir. 1987), in which the First Circuit declined
to apply Maine's dilution statute to a sexually explicit parody
of L.L. Bean's catalog on First Amendment grounds, was distinguished
by the Eighth Circuit on the grounds that the parody in L.L. Bean
did not attack the quality of the trademark owner's product.
It is a sad irony that where parodies are concerned, the law seems
to afford more protection to trademarks than to people. Advertisement
parodies are enjoined if they criticize a trademarked product, but
Jerry Falwell could not succeed on a cause of action against Hustler
for printing an advertising parody stating that he had sex with
his mother while drunk in an outhouse. Hustler Magazine, Inc. v.
Falwell, 485 U.S. 46 (1988). Perhaps Falwell should have joined
forces with Campari Liquors (the brand whose advertisement was parodied)
and proceeded on a trademark tarnishment theory instead.
As described above, the concept of trademark dilution, particularly
when premised on a theory of tarnishment, tends to encroach on freedom
of expression when the expression in question makes critical use
of famous marks. By shifting the focus of trademark protection from
the consumer's ability to make free and informed choices, to the
trademark owner's ability to control its public image, anti-dilution
laws grant corporations unfair control of words and images that
should be free for all to use. Protecting famous marks from critical
use prevents market competition in the realm of ideas. Koenig, at
814. It also hinders economic competition by creating unreasonable
barriers to effective comparative advertising.
To limit the tarnishment theory's threat to free expression, Congress
and the states might consider amending their respective anti-dilution
statutes to include a clear exception for critical and expressive
uses of the mark --- an exception that does not depend on the elusive
concept of "noncommercial" use. Section 25(2) of the Restatement
(Third) of Unfair Competition may be a useful model. After setting
out the elements of dilution in § 25(1), the Restatement qualifies
them in § 25(2) as follows:
One who uses a designation that resembles the trademark, trade
name, collective mark, or certification mark of another, not in
a manner that is likely to associate the other's mark with the goods,
services, or business of the actor, but rather to comment on, criticize,
ridicule, parody, or disparage the other or the other's goods, services,
business, or mark, is subject to liability without proof of a likelihood
of confusion only if the actor's conduct meets the requirements
of a cause of action for defamation, invasion of privacy, or injurious
Here, the key distinction is not between commercial and noncommercial
use, but use as a trademark versus use as commentary. The Restatement
test is more effective at protecting critical expression, while
still preventing "free-riders" from misappropriating the
trademark owner's goodwill in order to draw attention to their own
products. If limited in this way, dilution by tarnishment may have
a useful role to play, because such misappropriation may injure
the trademark owner even in the absence of consumer confusion. E.g.
Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433
(5th Cir. 1962) (enjoining insecticide manufacturer's use of slogan,
"Where there's life . . . there's bugs!").
Meanwhile, courts should give more weight to First Amendment interests
in the trademark context. The Eighth Circuit wrongly declined to
consider Snicker's First Amendment claims because it found that
the magazine had not done enough to avoid likelihood of consumer
confusion (apparently some people thought "Michelob Oily"
was a real brand). The First Circuit's priorities in the L.L. Bean
case were more appropriate. There the court stated:
The legitimate aim of the anti-dilution statute is to prohibit
the unauthorized use of another's trademark in order to market incompatible
products or services. The Constitution does not, however, permit
the range of the anti-dilution statute to encompass the unauthorized
use of a trademark in a noncommercial setting such as an editorial
or artistic context.
L.L. Bean, 811 F.2d at 33. The court noted, however, that parodies
which engendered consumer confusion would be entitled to less protection,
and would be evaluated by balancing free expression against the
consumer protection objectives of trademark law. Id. at 32 n. 3.
At present, only the increasingly obsolete distinction between
commercial and noncommercial speech permits anti-dilution law to
avoid an overt clash with the First Amendment's goal of fostering
dissent and criticism of the political and cultural status quo.
If anti-dilution law is to survive, it must develop a more effective
safeguard against the erosion of our freedom to re-evaluate and
transfigure the cultural meaning of famous trademarks and the products
*Jennifer B. Reiter is an associate at O'Melveny & Myers, New