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Introduction

It is perhaps not difficult to imagine why grant of monopolistic rights over individual
words of a language would be a cause for concern. In a lot of contexts, a particular
word may not be fungible and the the suppression of particular words runs a
substantial risk of suppressing ideas in the process[internal quotations omitted ]. 1
It is possible to observe, therefore, certain exceptions within laws that have the
potential to affect rights over words. Copyright law, for example, incorporates the
De minimis doctrine.2 Although the application of this doctrine may occur in several
different contexts in copyright law, 3 one of its effects has been to deny the very
subsistence of copyright over a single word, whether or not completely fanciful. 4
Similarly, in traditional trademark law also, the right granted in words was only
quasi-property right that could be asserted only in so far as the use of the words by
others was likely to cause confusion.5 In this manner, the trademark law both
served its purpose of [protecting] consumers from marketplace confusion and
increased search costs and prevented such monopoly over words as had no nexus
with the aforementioned purpose.6
However, the rise of trademark dilution doctrine has brought rights over words
outside the confusion analysis and thus, much closer to a monopoly status. 7 The
increase in the breadth of rights has also created greater potential for conflicts with

1 San Francisco Arts & Athletics, Inc. V. United States Olympic Committee, 483 U.S.
522 at 532
2
3 McGrath, William T. "Copyright infringement and the de minimis doctrine." IP
Litigator May 2002, page 18.
4 See Bainbridge, David, Intellectual Property
5 Justin J. Gunnell, Evaluation Of The Dilution-Parody Paradox In The Wake Of The
Trademark Dilution Revision Act Of 2006, 26 Cardozo Arts & Ent. L.J. 441 at page
443 444.
6 Ibid at page 444.
7 Ibid at page 450.

alternative codings8 representative of


existence of sub-cultural views.9

a free speech culture that allows for

In this paper, I will analyze this potential conflict. Part I will look at Trademark
Dilution [and some of its criticisms]. Part II will look at Free speech 10 as a
countervailing interest and Parody as a key element of the same. Part III will discuss
a possible balancing between the two with particular reference to the UK decision in
Ate My Heart Inc v Mind Candy Ltd. 11

8 Tan,
9 Tan
10 Used interchangeably with Freedom of expression in this paper.
11 [2011] EWHC 2741 (Ch)

Trademark Dilution
Trademark dilution has been described as in infection. 12 It comes with the threat
that it may start small, but left untreated, it has the potential to kill its host, the
trademark.
The origin of the dilution doctrine can be traced back to a 1927 article by Frank
Schechter.13 In this article, he took a view that the primary focus of the protection
afforded to trademarks by the laws then in currency was consumer protection. He
argued that this did not afford sufficient protection to the owner of the trademark
who had created value into the trademark more than as merely a source identifier. 14
It contended that protection should be granted to use of the trademark even with
respect to non-similar goods so as to avoid their dilution. 15
Thus, dilution refers to the whittling away of the value of a trademark when it's
used to identify different products 16 [internal quotations omitted]. As discussed
above, to prove liability for dilution, it need not be shown that defendants use of
the mark is likely to give rise to any confusion in the minds of the consumers.
Moreover, legal remedy for dilution has also been kept limited to famous marks.
This on the one hand ensures that the extended protection for trademarks beyond
its traditional boundaries is granted in limited cases while also rationalizing the
concept of dilution which may be expected to occur only to marks that are famous.
Also, in the cases of famous marks, confusion is deemed unlikely to occur, thus in
theory leading to need for dilution rights.
Dilution may be classified into three types:12 Julie C. Frymark TRADEMARK DILUTION: A PROPOSAL TO STOP THE INFECTION
FROM SPREADING, 38 Val. U. L. Rev. 165, quoting H.R. REP. No. 104-374, at 3
(1995), reprinted in 1996 U.S.C.C.A.N. 1029,1030.
13 Frank 1. Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV.
813, 833 (1927).
14
15 Frymark at page 174, citing the famous example If you take Rolls Royce -for
instance, if you allow Rolls Royce restaurants and Rolls Royce cafeterias, and Rolls
Royce pants, and Rolls Royce candy, in 10 years you will not have the Rolls Royce
mark anymore."
16 Mattel, Inc. v. MCA Records, Inc., F.3d 894 at 903.

1. Dilution by Blurring
Blurring may be described as the weakening in the capacity of a mark to identify
its source.17 Thus it is primarily concerned with dilution in the source identification
power of a mark.
Although Frank Schechters comments were at the helm of the rise of the entire
dilution doctrine, it may be said that his famous comment about the Rolce Royce car
depicts what may be a typical scenario of dilution by blurring. In this example, he
hypothesizes a scenario where restaurants, pants and candy start selling under the
mark of Rolce Royce. Though belonging to category of dissimilar goods, and giving
rise to no likelihood of confusion, such use would eventually leave the Rolce Royce
mark without the same uniqueness as before and over time, the term Rolce Royce
would not bring the cars to the minds of many people. This would be clearly be
dilution of the mark by blurring.
However, concept of blurring has been subject of criticism. Mere association in the
strict sense that the later mark brings the earlier mark to mind, is not sufficient. 18
At the other end, there is no requirement for confusion. Thus it is not clear as to
exactly at which point blurring occurs.
Secondly, the concept is dependent, both in US and in EU on analysis of several
factors. Moreover, since it has been held that application of each factor depends
upon the individual facts and circumstances of each case, 19 the legal position
becomes very unclear, leading a possible chilling effect on the very use of the right
to free speech in many circumstances.
2. Dilution by Tarnishment
Tarnishment of a mark, rather than concerning itself with the source identification
function, is focused more on the reputation of the mark. Thus, where a mark is
associated with goods or services of shoddy quality or in a manner that is "that is
totally dissonant with the image projected by the mark" 20, tarnishment is likely to be
found.

17 Gunnel at page 448.


18 Lady Gaga citing
19 Louis Vuitton v Haute Diggity Dog 507 F 3d 252, 266 (4th Cir, 2007)
20 Gunnel, quoting Kellogg Co. v. Exxon Mobile Corp., 192 F. Supp. 2d 790, 797
(W.D. Tenn. 2001)

Tarnishment may be of two types. While looking at it in a broader manner,


tarnishment may occur at any point where the mark is being used unauthorized that
diminishes the trademarks power of attraction. However, the tarnishment as
recognized by law occurs only when the said use of the mark is being done in the
course of trade.21
Tarnishment is an equally unclear concept. Unlike blurring, no specific guidelines
have been laid down for the legal analysis of what may constitute tarnishment,
either in EU or in US.. Although in Starbucks Corp. v. Wolfes Borough Coffee , the
court observed that formation of a negative association between the owners
trademark and is not sufficient and for tarnishment, the association should lead to
the consumer seeing the products under the owners trademarks in bad light, it is
submitted that it still leaves wide scope for judges to exercise discretion in
determining when such change in perception occurs.
At the same time, tarnishment is antithetical, in many contexts, to the right of
speech, especially in the form of parody.
3. Unfair advantage
In the case of both tarnishment and blurring, even where there is no likelihood of
confusion, it is clear that the rights against dilution arise only when there is
likelihood of some detriment being inflicted upon the owner of the mark. 22 However,
in the European Union (EU), under article 9(1)(c) of the Community Trade Mark
Regulations (CTMR), such right may arise even in the absence of any detriment. 23
In LOreal v Bellure24, the court explained that where use of similar mark takes
advantage of the investment and effort of the proprietor of the original mark
without compensating financially or making similar efforts, such advantage may be
considered unfair under law.25

21 Ibid.
22 In case of blurring, detriment to the distinctive character of the mark and in
case of tarnishment, to the repute of the mark. See Art 9(1)(c), CTMR.
23 See Mc Guinness, Observations on free riding after LOreal v Bellure at 891.
24 [2009] ECR I-05185.
25 Para 49, cited in Kur, Drerier, European Intellectual Property Law, Edward Elgar
(2013) at page 218

However, this concept too has received much criticism. It has been alleged, and the
author agrees, to have granted monopoly over non rivalrous ideas and making all
free riding wrong in itself without any concern to the competitive efficiency or
without drawing any distinction between permissible and impermissible free riding.
Such an approach also curbes freedom of expression which has been considered
higher in the hierarchy of rights than rights in trademark dilution. 26
Parody
US
In US, while strong protection for free speech has often trumped dilution claims 27,
much tension still exists between dilution and parody. 28 Justin Gunnell29 has
classified the various cases representing the said tension into five categories:i.
ii.
iii.
iv.
v.

Hybrid Expression parodies30


Source identification parodies31
Parodies using Trademark as medium32
Lewd, illicit or unclean parodies33
Pure commercial parodies34

26 Mc Guinness, page 892.


27 Tan, (2012) 17 Media and Arts Law Review, 82 at 90.
28 Gunnel at 454.
29 Cite Gunnel article
30 while completely non commercial parodies are not subject matter of dilutions
claims, a number of cases arise in which financial gain results even when it is not
the sole purpose of the use. In these cases, inquiry into the facts has been
mandated by courts to determine whether the use of mark has commercial
character itself.
31 Source identification parodies where the specific parodied part was not the
expressive part but acted as its source, courts may be inclined to find dilution
32 bringing it in some analogy to the parody-satire debate as it exists in copyright
fair use doctrine, courts have asked whether use of the trademark was necessary,
and use as a medium to comment on something else does not appear to be usually
crossing this threshold.

EU
The case law emerging from the European Court of Justice on intellectual property
rights and on trademarks specifically, appears to be focused in a rather one-sided
manner on the protection of interests of the mark owner with little or no cognizance
of the countervailing interests.35 Similar interpretation has been carried over into
the individual states, such as UK.36
Article 10 of the European Convention on Human Rights presents one such, rather
important interest.37 The court in Handyside v. The United Kingdom 38 held that this
article forms inter alia, an essential fundamental of any democratic society.
However, national courts have shown reluctance towards direct application of this
article in the regular course39 of the copyright context, and presumably, similarly
in trademark cases. Rather its application will be made in a manner that
accommodates the right of freedom of expression40.
Parody and Freedom of Speech
US, with its romantic First Amendment jurisprudence has treated speech as a means
to the end as well as the end in itself. 41 Such strong recognition has lead to the
protection of parody in the trademark context.
33 Lewd, illicit or unclean parodies the US courts have shown clear distaste for
parodies that portray marks in sexual or illicit context. On the other hand, absent
such context, the courts have usually declined to find dilution
34 Pure commercial parodies Irrespective of whether the user is a direct competitor
or non competitor, courts have held that dilution is likely to be found where the use
is purely commercial.
35 See, Intel Corporation v. CPM United Kingdom Ltd. [C-252/07] [2009] RPC
15,LOreal v. bellure, [C-487/07][2009] ECR I-5185
36 See DataCard v. Eagle Technologies Ltd. [2011] EWHC 244 (Pat), and Lady Gaga.
37
38 (Application no. 5493/72) ECHR 7 December 1976
39 Tan
40

It is submitted further, that even this jurisprudence has been less than completely
successful in countering the protection afforded by the trademark dilution
doctrine.42 Almost categorical approach of finding trademark dilution has been
followed in cases involving sex and other such unsavoury contexts, without proper
analysis of whether the speech or expression in question would otherwise have
been protected.
The author submits that such application of trademark dilution doctrine is
undesirable and puts into jeopardy not only freedom of speech (in the form of
parody, or in any other way forming protected speech), but the essentially nonrivalrous function of the trademarks, thus entering into the much avoided realm of
idea in intellectual property doctrines. In the following section, I propose a higher
standard for grant of dilution rights in trademarks, with the view that the above two
concepts should retain primacy.
Lady Gaga case
In this case, the High Court of England and Wales, interpreting the CTMR, granted
interim injunction holding that the launch on iTunes, of a song by Lady Googoo, an
animated character arguably bearing similarities to the famous music artist Lady
Gaga, would amount to Trademark dilution in addition to Trademark infringement.
This case highlights a number of issues highlighted earlier with respect to the
trademark dilution doctrine in general, and the EU jurisprudence over this issue in
particular. By holding trademark infringement and dilution over a clearly parodic use
of the trademark, the case has thwarted free speechs survival in its battle with
Trademark dilution.
I would like to highlight a few particular issues arising out of the case.

The CJEU in the Intel case opined that blurring would occur if there is evidence of change in
the economic behavior of the average consumer of the senior mark43. The consequential
question is what is this change in economic behavior and how is it evaluated?

41 Whitney v. California, 274 US 357 (1927), Brandeis J at p. 375: Those who won our independence
valued liberty both as an end and as a means; R v. Secretary of State for the Home Department ex parte
Simms (2000) 2 AC 115, Lord Steyn ar 126: freedom of expression is, ofcourse, intrinsically important:
it is valued for its own sake. But it is well recognized that it is also instrumentally important. It serves a
number of broad objectives
42 Gay Olympics case.
43 Supra n. 28 at 81 (Intel).

The question arises as to what extent is it applicable in cases that are selling similar
products rather than dissimilar product. The regulation provided for application of
9(c) only in cases where the goods that are being sold are dissimilar. However, in
Davidoff v. Goofkid44, the ECJ considered this issue and held that if the requirement
of the mark being used in the context of dissimilar products was interpreted strictly,
it would defeat the scheme and objective of the provision. 45
It is submitted that while it is not unthinkable that even where the mark is being
used in similar goods, blurring or tarnishment may take place, courts analysis in Ate
My Heart case under article 9(1)(c) places too much reliance on whether the
consumers of the song would be unclear as to whether the song has Lady Gagas
approval, rather than whether because of the song, the public would over time start
identifying Lady Gagas trademark with things other than those that bear authentic
Lady Gaga mark or whether they would consider such things as less attractive after
having seen Lady Googoo. More importantly, these two situations need arise where
there is no confusion, not where they arise because of them, since such a situation
would be proper subject matter of trademark infringement and not dilution.
The question arise as to what is the law when blurring and tarnishment occur
because of confusion, and not in its stead. It is submitted that they still remain
proper subject matter of trademark infringement law as protection against
likelihood of confusion standard assumes possible injury to trademark owner by
both damage to its reputation and uniqueness. Adding another layer to the
detriment that has already been dealt with under a particular branch of trademark
doctrine would serve no purpose other than making more nebulous what has
already been considered a nebulous doctrine.
However the question arises whether same could be said for the liability that has
arisen under the unfair competition limb of section 9(1)(c). This is one limb of the
dilution doctrine that appears to be at odds to the highest degree with any
countervailing interest in freedom of speech.
It is important to consider the effect of the due cause clause in this context. See its
interpretation in the interflora case. In my opinion, the due cause clause should be
used to grant more
It is difficult to find legal precedent for protection of countervailing free speech
interest in EU both because of lack of open ended fair use provision in the
directives or the regulation and because of unwillingness of the jurisprudence
to grant direct recognition to rights under article 10 of the ECHR cutting
44 [2003] ECR I-389.
45 This was further confirmed in ECJ case C-408/01, Adidas v Fitnessworld, [2003]
ECR I-12537

through any rights that may exist in TM dilution. However, not only because the
courts have said that the copyright law (and so it needs to be assumed in the
benefit of the higher rights) will be interprested in while taking into account ECHR,
but also because such a one sided emphasis on TM rights, epically with the
presence of the unfair advantage clause, will have a chilling effect on.
In Ate My Heart, their seemed to be no standard for parody once it was established
that the marks were being used in a commercial context. However, where the marks
are being used in a purely non commercial basis, the dilution doctrine may very well
be inapplicable since Article 9(1)(c) requires the marks to be used in the course of
trade.46 Thus, if UK courts stand was to be taken, marks being in purely commercial
context, and most likely also in hybrid context47, would be left with no defense.
Can any help be taken from the transformative use doctrine of copyright law?
Having contended for the primacy of the freedom of speech, it is conceded that
there may indeed be instances where no such interest exists and results in dilution
of the trademark. However, it is observed that all three limbs of the dilution doctrine
are varied in terms of what each is oriented to achieve. As a result, an inquiry into
the manner in which a countervailing free speech interest may be disproved cannot
be conducted on the same standard.
A standard of Bad Faith
Having contended for the primacy of the freedom of speech, the author submits
that there may indeed be instances where rights of the owner in dilution of the
trademark should trump a countervailing interest in free speech. It is submitted that
the only instances in which such interests should be allowed to prevail over the
former are the instances where the plaintiff can establish bad faith in the use of
mark by the defendant.
While the author is aware that it may indeed be a high barrier to cross for the
plaintiffs, it is submitted that the trademark owners already have a degree of
protection under the traditional trademark doctrine. Even though the likelihood of
confusion analysis protects consumers from confusion, it simultaneously protects
owners, from effects that are akin to tarnishment, blurring or even unfair
advantage, in so far as consumers confused as to the source of the product being
used would form parallel (blurring) or negative (dilution) association, with clear free
riding by the user.
Extending protection in the form of dilution on the other hand, creates instances
where speech and expression worthy of protection coexists, in varying proportions,
46 Gunnel. Also see Lady Gaga case
47

with the harm to the trademark owner or unfair advantage to the user of the mark.
Weighing of these proportions by its very nature lacks any objective standards, thus
granting excessive subjective discretion to the judge and creating great uncertainty.
Therefore, it is submitted, that harm / benefit may be capable of serving as a proper
standard.
However, the important question is, what constitutes such bad faith?
Initially, where a likelihood of confusion exists, the inquiry is the proper subject
matter not of dilution, but of trademark infringement. However, it is observed that
even where the courts have analyzed whether a possibility exists that a link may be
drawn between the said mark and its secondary use, the courts have taken into
account whether likelihood of confusion exists. 48 This implies therefore, that a
likelihood of confusion analysis is not disjunctive with the question of dilution. Thus,
at least theoretically, it is possible that because of the famousness of the mark, the
very intention of the user of the junior mark to cause likelihood of confusion does
not succeed. Such a use would nevertheless, be in bad faith. 49 In Lady Gaga case,
no such intention is apparent. The defendants song itself was different and
annoying50 enough to diminish the possibility of them acting with an intention to
cause likelihood of confusion. A the same time, they were engaged in bona fide
negotiations with Lady Gagas UK record label for a possible commercial tie-up.
It is submitted that limited help may be taken to understand the meaning and scope
of bad faith from the jurisprudence that exists on bad faith as a ground for refusal of
application.51 Even in this jurisprudence however, its meaning has been found hard
to determine.52 However, it is important to note that in Baywatch Trade Mark
Application53, although the mark was ultimately refused on the ground that no bona
fide intention to use the mark existed, it was held that an attempt to opponents
48
49 This however, would not imply that all cases of infringement would also lead to a
finding of bad faith.
50 Para 25.
51 Especially, bad faith in registering but not using the mark or offering to sell at
very high prices have no application here. See, Bainbridge at 699.
52 Bainbridge on page 697, citing Tesco Stores Ltds Trade Mark Application [2005]
RPC 361.
53 (Unreported) 12 November 1999, Trade Mark Registry of UK cited in Bainbridge.

goodwill by taking unfair advantage of the repute of the opponent[t] did not
amount to bad faith.54
As in registration, so in the use of a registered mark, it is submitted that merely
establishing the use to fall under the third limb under article 9(1)(c) of the CTMR
cannot be deemed to have been made in bad faith. Although it appears somewhat
contradictory to claim that what is unfair is not in bad faith, it is submitted that
the term unfair as used in the article is focused on the rights of the trademark
owner and draws from the objective standard of effect of the use. However, it is
proposed that the possible effect, which may very well amount to free riding is not a
standalone consideration and needs to be pitted against the countervailing interest
in protection of free speech. The subjective bad faith provides this balancing (and
arguably higher) standard.
The determination of bad faith in any case needs to take into consideration all
relevant factors and circumstances. The most relevant inquiry however, has
emerged to be that into dishonest intention. 55
In the context of registration, it has been observed that a purely subjective standard
should not be applied in determining dishonesty, since it may grant leeway to
people with low standards of honesty to avert charges of bad faith. Instead, a two
step test has been used where it would be asked, first, whether ordinary honest
persons would consider a particular act to be dishonest and second, if yes, whether
the applicant knew this.56
It is submitted that this two step approach in the context of alleged dilutive use may
be of equivalence. However, the determination of the ordinary honest person
standard must be independent and context specific. For example in Lady Googoo
case, such a person may not have standards of honesty so high that he considers
taking others work and drawing on the same as dishonesty, as this would have the
effect of making this inquiry redundant in so far as the ordinary honest person
would never take unfair advantage of anothers mark.
In Lady Googoo case, the launch of the single by the defendants was not an abrupt
decision but was derived from the successful game of the defendants, to which the
plaintiffs had no objection. The Lady Googoo character was not the only one and
several similarly parodic characters existed. Also, as mentioned above, the
defendants had entered into bona fide negotiations to enter into a commercial tieup with the plaintiffs record label. Thus, these circumstances taken together with
54 Bainbridge, page 699.
55 See both UK and under CTMR, where too, it has been construed narrowly.
56

the style, music and presentation of the song do not point towards the presence of a
dishonest intention on the part of the defendants. Even applying the two step test
to assess dishonesty, given the evidence of the article in the Music Talkers
magazine57, it is submitted that the ordinarily honest person, in the context of a
childrens game based on childish parodies, may not reach the conclusion that the
song amounted to dishonest intention.58
At the same time, the mere fact that the secondary mark made an attempt to be as
close to the original mark as possible may have no bearing on the finding of bad
faith. The very nature of parodies, an important element under the free speech
protection, mandates that the mark indentifies the original mark while at the same
time communicating that it is not the same mark.59
As a specific observation in the context of tarnishment, it is not clear why a
distinction must exist between commercial use and non commercial use of
trademark. Tarnishment does not prevent undue benefit to the user of the mark.
Non commercial use of the mark may not have any less tarnishing effect. If such
non commercial use is protected by free speech considerations, it does not appear
reasonable to withdraw the protection from use in the commercial context.
It may be argued that the protection may not be the same since the latter is
commercial speech. However, even commercial speech is worthy of protection and
any exceptions to the same must be justified and proportionate 60 It is submitted
that in the absence of bad faith, any exceptions created to same under the dilution
doctrine do not appear to be justified.
Lastly, the burden to prove bad faith must be on him who alleges. However, only
under []
Conclusion
Thus, it is observed that trademark dilution doctrine is overreaching and do not
justify nullifying otherwise valid freedom in speech. Such an approach is valid
irrespective of the specific constitutional mandates of each country, since freedom
of speech, in my opinion, represents a transcendental value that must be allowed to
57
58 Since first limb of the test itself is answered in no, the application of the second
limb is not needed.
59
60 McGuinnesse on 899 citing Kur et al.

be curtailed only in exceptional situations. The standard of bad faith as proposed


above, represents such situations in the context of trademark dilution.