By David M. Given

To determine whether a trademark has been infringed, courts must evaluate whether the use of the trademark by a nonprotected party will result in public confusion. In Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (1961), the Second Circuit advanced eight factors to help decide whether the ordinary purchaser is likely to be misled. "The factors are: the strength of the prior owner's mark, the similarity between the two marks, the competitive proximity of the products, the likelihood that the prior user will bridge the gap, actual confusion, the defendant's good faith, the quality of the defendant's product, and the sophistication of the buyers." Girl Scouts of the United States v. Bantam Doubleday Dell Publishing Group, Inc., 808 F. Supp. 1112, 1122-1130 (S.D.N.Y. 1992).

However, the use of trademarks for expressive purposes, in a work of art or literature, or in a parodic work, may receive special protection under the First Amendment, requiring trademark holders to address freedom of expression concerns in addition to the traditional Polaroid public confusion factors. Three tests have been articulated for determining whether limited use of trademark for an expressive purpose is permissible. See Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559, 1571-1573 (S.D. Cal. 1996) (examining the three tests), aff'd, 109 F.3d 1394 (9th Cir. 1997). 


Existence of "Alternative Avenues of Communication"

Under the first test, an artist may be enjoined from utilizing a trademark for expressive purposes if "alternative avenues of communication" might have conveyed the artist's message. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206 (2nd Cir. 1979). The Dallas Cowboys Cheerleaders court enjoined the use of a promotional poster for the pornographic film "Debbie Does Dallas." The poster portrayed actress Bambi Woods in an outfit similar to the Dallas Cowboys Cheerleaders' uniform, and contained the legends "Starring Ex Dallas Cowgirl Cheerleader Bambi Woods" and "You'll do more than cheer for this X Dallas Cheerleader." Id. at 203. The court concluded that the defendants could have found many alternative ways to "comment on 'sexuality in athletics' without infringing plaintiff’s trademark"; thus, a preliminary injunction did not infringe the defendants' First Amendment rights. Id. at 206.

The Southern District of California adopted the "alternative avenues of communication" test in Dr. Seuss Enterprises, but in general, the test's precedential power is probably limited. Certainly, the Dallas Cowboys Cheerleaders decision was influenced by the court's view that "Debbie Does Dallas" was "a gross and revolting sex film." Id. at 202. Subsequent Second Circuit decisions have limited Dallas Cowboys Cheerleaders to cases involving "blatantly false and misleading advertising." Ocean BioChem, Inc. v. Turner Network Television, 741 F. Supp. 1546, 1560 n.8 (S.D. Fla. 1990) (citing Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir. 1989)). For First Amendment cases, the rule of Dallas Cowboys Cheerleaders has been superseded by the more nuanced Rogers and Cliffs Notes decisions discussed below.


First Circuit: No Trademark Protection For Expressive Non-Commercial Use

Under the second test, the First Circuit refused to apply trademark protection laws to noncommercial usages. Thus, First Amendment considerations override any expressive, noncommercial use of trademarks. "The Constitution is not offended when the [Maine] antidilution statute is applied to prevent a defendant from using a trademark without permission in order to merchandise dissimilar products or services. ... The Constitution does not, however, permit the range of the antidilution statute to encompass the unauthorized use of a trademark in a noncommercial setting such as an editorial or artistic context." L.L. Bean, Inc. v. Drake Pubs., Inc., 811 F.2d 26, 31, 33 (1st Cir. 1987). Similarly, the new Federal Trademark Dilution Act of 1995 does not apply to the "noncommercial use" of a famous mark. 15 U.S.C.A. 1125(c)(4)(B). The U.S. Supreme Court has defined "commercial speech" as "speech which ... propose[s] a commercial transaction." Virginia Pharmacy Ed. v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 762 (1976).


Balancing the Possibility of Consumer Confusion with First Amendment Rights

Under the third and most widely used test, the court balances the possibility of consumer confusion against the author's or artist's First Amendment right to expression. "[I]n deciding the reach of the Lanham Act in any case where an expressive work is alleged to infringe a trademark, it is appropriate to weigh the public interest in free expression against the public interest in avoiding consumer confusion." Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490, 494 (2d Cir. 1989). This balancing test is often called "the Rogers test" because of its origin in Ginger Rogers' failed attempt to enjoin Federico Fellini's use of the film title "Ginger and Fred." Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). Like the Cliffs Notes court, the Rogers court endorsed the use of a balancing test when First Amendment concerns are implicated: "We believe that in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." Id. at 998-99.

The case law is unsettled about how the Rogers test interacts with the traditional likelihood of confusion factors outlined in Polaroid. The Southern District of New York discussed each of the traditional public confusion factors in light of First Amendment considerations, Girl Scouts, 808 F. Supp. at 11221130, whereas the Central District of California balanced the possibility of public confusion as a whole against the defendants' general First Amendment rights, No Fear, Inc. v. Imagine Films, Inc., 930 F. Supp. 1381, 1384 (C.D. Cal. 1995). The California court decided that it should "first determine the likelihood of confusion ... and then weigh Plaintiffs showing of likelihood of confusion against the First Amendment concerns raised by Defendants' expressive conduct. Plaintiffs showing ... must be particularly compelling to overcome the constitutional protection afforded expressive activity." Id.

Use of Trademarks for Parodic Purposes

The Rogers balancing test applies to the use of trademark in all types of expressive material despite the fact that First Amendment rights have been enforced most clearly in cases involving the parodic use of another's protected creation. Although frequently characterized as a separate and independent category, parody can most usefully be described as a specific subset of artistic expression. "Because unauthorized uses that provoke litigation, both in the copyright and the trademark field, often involve parody, the decisions often discuss the special latitudes that are afforded to parody. But parody is merely an example of the types of expressive content that are favored in fair use analysis under the copyright law and First Amendment deference under the trademark law. Indeed, of the two leading cases that have explained that deference in the Second Circuit, while Cliffs Notes dealt with parody, Rogers v. Grimaldi did not. The message of these cases is not merely that parody is accorded First Amendment deference, but that the use of a trademark in the communication of an expressive message is accorded such deference." Yankee Pub. Inc. v. News America Pub. Inc., 809 F. Supp. 267, 279 (S.D.N.Y. 1992). See also Simon & Schuster Inc. v. Dove Audio Inc. 936 F. Supp. 156, 164 n.4 (S.D.N.Y. 1996) (rejecting the argument that Rogers and its progeny only apply to parodic works). In Girl Scouts, the court held that the balancing test applied regardless of the medium of artistic expression; in the Girl Scouts case, the medium was children's books featuring the fictional "Pee Wee Scouts." Girl Scouts, 808 F. Supp. at 1121.


Use of Trademarks for Non-Parodic Expressive Purposes

The Rogers test was recently employed to uphold a visual artist's right to incorporate trademarks into realistic paintings of a racetrack. In New York Racing Ass'n v. Perlmutter Publishing, 959 F. Supp. 578, 583 (N.D.N.Y. 1997), the court held that "the use of Plaintiffs marks in reproductions of paintings that depict scenes where the mark actually appears in the scene depicted, serves an artistically relevant purpose (realism), while the need to avoid consumer confusion in this case is de minimis." The court noted, however, that it might have ruled against the artist if the artist's paintings depicted a "mark [that] does not actually exist in the scene depicted." Id. at 582 n.9.

While exercising their First Amendment rights to create expressive material, authors and artists must take care not to misrepresent the source of creative inspiration. The Girl Scouts court noted "that an author certainly would have a First Amendment right to write about the subject of the Boy Scouts and/or Girl Scouts. However, this right is diluted by trademark law insofar as that author cannot present her subject in a manner that confuses or misleads the public into believing, through the use of one or more trademarks, that those organizations have produced or sponsored the work in question." Girl Scouts, 808 F. Supp. at 1121 n. 12. In Rock and Roll Hall of Fame and Museum, Inc., v. Gentile Prods., 934 F. Supp. 868, 873 (N.D. Ohio 1996), the Northern District of Ohio, basing its decision on a pre-Rogers decision of the Southern District of New York, enjoined the manufacturer of a poster which consisted of a photograph of the Hall of Fame and the words "Rock N' Roll Hall of Fame" and "Cleveland." The court held that the poster was "misleading as to its source of sponsorship" and thus was not entitled to First Amendment protection. Id. at 873.

In Apple Corps Ltd. v. A.D.P.R., Inc., 843 F. Supp. 342, 349 (M.D. Tenn. 1993), the Apple record label, in successfully enjoining a Beatles simulation group, enjoined the group's use of a concert poster which was modeled on the album cover of "A Hard Day's Night." A First Amendment defense raised in relation to the group's existence, but not as to the group's use of the poster, was rejected. "The public interest in entertainment will support the sporadic, occasional and good-faith imitation of a famous person to achieve humor, to effect criticism or to season a particular episode, but it does not give a privilege to appropriate another's valuable attributes on a continuing basis as one's own without the consent of the other." Id. at 347 (quoting Estate of Presley v. Russen, 513 F. Supp. 1339, 1359-1360 (D.N.J. 1981)).

Courts have drawn a distinction between material that is truly creative or expressive, and material which is merely "merchandise." In National Football League properties v. Playoff Corp., 808 F.Supp. 1288, 1295 (N.D. Tex. 1992), the Northern District of Texas refused to enjoin the manufacturer of football trading cards but rejected a First Amendment defense. Citing a pre-Rogers decision of the Southern District of New York, the court noted a distinction between subject matter protected by the First Amendment and "merchandise." Id. at 1294. "[M]ore so than posters, bubble gum cards, or some other such 'merchandise,' books and movies are vehicles through which ideas and opinions are disseminated and, as such, have enjoyed certain constitutional protections, not generally accorded 'merchandise.'"  Hicks v. Casablanca Records, 464 F.Supp. 426, 430 (S.D.N.Y. 1978). But see Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 504 (2d Cir. 1996) (holding that mass merchandised hand puppet of the Muppet character Spa'am did not cause a likelihood of confusion with the potted meat Spam).


Artistic Relevance

The concept of artistic relevance, discussed in New York Racing, is embodied in the Second Circuit's standard for use of trademark in expressive works. The Second Circuit test can be divided into two tests: one for the titles of expressive works and another for the expressive works themselves.


Titles of Expressive Works

"In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the [Lanham] Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work." Rogers, 875 F.2d at 999. As an example, the court stated that neither the song title "Bette Davis Eyes" nor the film title "Come Back to the Five and Dime Jimmy Dean, Jimmy Dean," would be actionable under the Lanham Act because the titles' artistic relevance outweighs the fact that some consumers might assume that the named celebrities endorsed the works. Rogers, 875 F.2d at 999, 1000.

Once the determination is made that a title is artistically relevant, the question becomes whether the title is misleading in the sense that it induces members of the public to believe the work was prepared or otherwise authorized by the named celebrity. Twin Peaks Prod., Inc. v. Publications Int'l Ltd. 996 F.2d 1366, 1379 (2d Cir. 1993). "This determination must be made, in the first instance, by application of the venerable Polaroid factors. However, the finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interest recognized in Rogers." Id. The Second Circuit's test applies to instances of mixed commercial and noncommercial speech. "Titles, like the artistic works they identify, are of a hybrid nature, combining artistic expression and commercial promotion." Rogers, 875 F.2d at 998.


The Expressive Work

The balancing approach of Rogers and Cliffs Notes "takes into account the ultimate test in trademark law, namely, the likelihood of confusion as to the source of the goods in question. At the same time, a balancing approach allows greater latitude for works ... in which expression, and not commercial exploitation of another's trademark, is the primary intent, and in which there is a need to evoke the original work...." Cliffs Notes, 886 F.2d at 495.



When deciding a case involving the use of a trademark in expressive works, most courts tend to follow the Rogers approach, balancing the possibility of public confusion against the First Amendment rights of the author or artist. Courts have been willing to recognize that most creators of expressive works have not used others' trademarks in an attempt to mislead. They have instead used them as part of their legitimate creative efforts. However, despite courts' receptivity to First Amendment considerations, authors and artists must be careful when incorporating protected material into their creative works, making sure that they do not cross the line between homage or reference and misappropriation.

Copyright 1998 David M. Given. All rights reserved.

The author wishes to thank his law clerk Elizabeth L. Musser for her help in assembling the research for this article and in making PLI 's deadline.