Re: Lame "dilution" assertion by United Feature Syndicate, Inc.

On 04/20/99, Michael Juhre <michael.juhre[_at_]aig.com> wrote:
>
> Thanks for your comments. I will divide my response between trademark
> and copyright issues:
>
> 1) Trademark:
>
> Regarding trademark dilution, you are likely correct that common law
> mark can legally be "diluted" so long as it is famous. In this case,
> I'm sure USF could successfully argue that the likeness of Dilbert is
> a famous mark. I guess I am simply in agreement with the scholars who
> believe that using dilution to enjoin a work in this way violates the
> first amendment.
>
> I do believe rotten.com's Dilbert parodies are clearly non-commercial.
> On the other hand, when you throw the obscenity standard into the loop,
> it may be a whole new issue. I don't know the intricacies of that -
> even whether it is a federal or state standard.
>
> I am not familiar with the "tarnishment" possibility you cited (though
> the sound of it concerns me), and I will explore that further.

In the U.S., tarnishment is considered a species of dilution. It occurs when the mark is associated with unsavory or undesirable connotations. Federal dilution law may not apply because the use was non-commercial, but having viewed the redacted versions of the parodies at issue (thank you for providing them), I can almost GUARANTEE you that a U.S. court would find that tarnishment exists under state laws protecting against dilution.

Obscenity is judged according to "community" standards, which raises interesting questions in an Internet context: what is the "community" whose standards are to be applied? In any event, I doubt this would be found to be obscene; but I do not doubt that the vast majority of U.S. judges would go out of their way to find SOME grounds for enjoining this kind of parody.

> 2) Copyright
>
> For your examination, I have posted censored versions of the work in
> question at http://www.culturefreak.com/censored.html and provided a
> direct link from there to the Cease and Desist letter sent on behalf
> of USF.
>
> The works are censored in the sense that all Dilbert visuals and
> references are removed. The text remains as they did in the original
> parodies (so all you have to do is imagine Dilbert characters saying
> the text).
>
> As you mentioned, it all boils down to determining the target of the
> parody. I personally believe it that Dilbert itself is clearly the
> target. Have a look and see if you agree. Certainly there is no
> obvious third party that could be the target (such as OJ Simpson was
> in the case Dr. Seuss Enterprises v. Penguin Books). I suppose, as
> you said, that someone could make the argument that the work merely
> makes fun of social mores, and is using Dilbert only as a "tool,"
> but I believe that this argument is invalid (as if that ever matters).

Well, the "target" analysis is sufficiently flexible that a judge can reach almost any result that he or she wants. Judge Posner, for example, would say this is not a parody. It doesn't make fun of anything peculiarly Dilbertian; it just uses Dilbert to make fun of society's prudish attitudes toward sex. It is just an example of a pornographic derivative work. There is a market for such works that can be licensed, and if the author chooses not to take advantage of that market, why should we step in? On the other hand, he would find that a "true" parody is something that is so socially valuable that we ought to presume a market failure and allow fair use. The dividing line, as far as I can see, is the social value of the alleged parody. And frankly, it IS hard to see how making the Dilbert characters sexual comments upon them in a socially useful way that could not be communicated in other ways.

But I am troubled by letting governments (or even juries) decide what is socially useful speech and what isn't. The core First Amendment value is that we must tolerate viewpoints that we disagree with, even viewpoints that we revile, to protect against the evils of government censorship. I feel the same way about copyright. "Tarnishment" simply ought not to be considered as part of the economic "harm" that factors into fair use.

Note that I have no problem punishing "tarnishment" IF there is a likelihood of confusion. If people think that this use is authorized, and are offended, then the copyright owner is economically harmed. BUT if people understand that the use is unauthorized, then the fact that they are offended should not create a cause of action in favor of the copyright owner. But my view is definitely not the majority view. I think that under cases such as Air Pirates, MCA v. Wilson, and even Dr. Seuss, these parodies would be enjoined, notwithstanding Campbell.

> I do have a follow up question: As the owners of rotten.com stated
> "Mad magazine... published a Dilbert parody, and others exist on the
> net. Apparently, [ours were] singled out because of the things the
> characters [were] saying. And admittedly, they are foul mouthed."
>
> I believe that in the case of trademarks (at least registered marks),
> a diligent trademark owner is required to police ALL cases of
> infringement. That is, the owner cannot address one infringement,
> but let another "slip by." Is copyright different? I.e. can a
> copyright owner use more discretion in its policing efforts?
>
> For example, if one succesffully argued that the target of the Dilbert
> parodies posted at rotten.com (i.e. the Dilbert cartoon itself) was in
> fact, the same target as the parody published in Mad Magazine, does USF
> have the right stop rotten.com if they made no effort to stop Mad
> Magazine?

The short answer is yes. The mere failure to enforce your copyright does not amount to abandonment. And even though trademark requires more policing, I don't think this limited failure to police would amount to trademark abandonment either.

Tyler T. Ochoa
Associate Professor
Whittier Law School
<tochoa[_at_]law.whittier.edu> Received on Wed Apr 21 1999 - 21:44:26 GMT