Re: Trademark dilution

Ron Abramson <abramson[_at_]hugheshubbard.com> wrote:
>
> There are three statutory exceptions in the federal dilution statute,
> (a) for "fair use" in connection with comparative advertising or
> promotion, (b) for noncommercial uses, and (c) news reporting and news
> commentary. Does anyone know where that leaves "satire" in the context
> of a paid-for (i.e. commercial) medium or performance? Does this come
> down to the First Amendment, or have there been any cases construing the
> statutory language so as to avoid the constitutional issue?

I think satire and parody ALWAYS come down to the First Amendment. In addition, most trademark actions against satirists and parodists are not brought as infringement actions, because there's usually no likelihood of confusion. If the satire/parody is any good, it's going to be perfectly clear that it did NOT come from the trademark owner. As far as I am aware, most actions of this kind have arisen under state law dilution/tarnishment claims and/or under Lanham Act 43(a). Whether the term "news commentary" might be broad enough to cover things like satirical/parody articles and ads, I don't think has yet been tested. But a believe that a strong argument could be made, since satire/parody nearly always involve comment on some timely issue or other.

Bob Cumbow
<cumbr[_at_]perkinscoie.com> Received on Thu Mar 12 1998 - 17:49:48 GMT