We Are All Dilutional: Fair Use and the Dilution Act


One way to distinguish trademark infringement from trademark dilution is to realize that we are all dilutional. Virtually every day. At home, at work, and at play. Indeed, the life would be sucked out of our popular culture -- and our daily discourse -- without our First Amendment right to dilute like crazy.

The bedrock of trademark law is protection of the public. We give trademark owners enforcement powers to help protect consumers from being misled by infringers.  But the bedrock of trademark dilution law is private property. Under dilution laws, we give trademark owners enforcement powers to help them protect the distinctiveness of their property from being eroded by others. Consumer confusion is not a concern in dilution cases.

This significant move from protecting consumers to protecting property rights, especially when famous marks are involved, creates significant First Amendment concerns—so much so that Congress created a safe harbor for “non-commercial use” of a famous mark, which courts have interpreted to include parody, satire and editorial commentary. Mattel, Inc. v. MCA Records, Inc. 296 F. 3d 894 (9th Cir. 2002).

But that safe harbor merely allows companies to engage in what the rest of do all the time, which is use famous trademarks in noncommercial ways that may blur or tarnish those marks. Who hasn’t used the Walt Disney Company’s most precious trademark derisively to label an incompetent organization “a Mickey Mouse operation”? A Type A boss and his lackey get labeled, behind their backs, as “Batman and Robin.” That too perfect couple are, of course, “Ken and Barbie.”

Indeed, as Judge Kozinski explained in Mattel, supra, 296 F.3d at 900, "Some trademarks enter our public discourse and become an integral part of our vocabulary. How else do you say that something's 'the Rolls Royce of its class'? What else is a quick fix, but a Band-Aid? . . . Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions.  Once imbued with such expressive value, the trademark becomes a work in our language and assumes a role outside the bounds of trademark law."

From “Wonder Bread” to “Wonder Woman,” we use famous marks in quintessentially dilutional ways, i.e., to describe goods and services unrelated to the marks. Whether it’s Irving Berlin originally, or Gene Wilder and Peter Boyle later in Young Frankenstein, the hotel's famous mark is used in the song “Putting on the Ritz.” More recently, two famous DC Comics marks served the rock group 3 Doors Down, whose hit song "Kryptonite" asks “will you still call me Superman?”

So feel free to look for Mr. Goodbar® or point out the Stealth® political candidate or get misty over  that Hallmark Cards® moment or mock the McMansion (with the Lawyer Foyer) going up in the next suburb. And rest assured that the Federal Trademark Dilution Act allows you snuggle up with that special someone known to you as Miss America® or Mr. Universe®.  But please, please avoid my high school basketball coach's favorite joke, which was to tell us that he was wearing his Burger King pants.  Why Burger King? Because, he explained, they were The Home of the Big Whopper®.

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