FROM BOOK COVERS TO DOMAIN NAMES: SEARCHING FOR THE TRUE MEANING OF THE CLIFFS NOTES TEMPORAL TEST FOR PARODY

FROM BOOK COVERS TO DOMAIN NAMES:
SEARCHING FOR THE TRUE MEANING OF THE
CLIFFS NOTES TEMPORAL TEST FOR PARODY

Brian R. Landry?

Cite as: 7 J. HIGH TECH. L. 19

Parody—the close imitation of the style of an author or work for
comic effect or ridicule—has existed for centuries and continues to
be a vibrant part of American culture.1 Because parodies such as
Darrell Hammond’s imitation of the political talk show Hardball with
Chris Matthews on Saturday Night Live may serve as valuable
cultural commentary, parodies are given certain First Amendment
protections from regulation under copyright and trademark law.2
This Note examines the requirements for establishing a parody
under federal trademark law. In particular, it suggests that the Fourth
Circuit decision in PETA v. Doughney3 misinterpreted the Second
Circuit’s requirements for establishing a parody in Cliffs Notes, Inc.
v. Bantam Doubleday Dell Publishing Group, Inc.4 Through
examination of both PETA and Cliffs Notes, this Note argues that
especially where a court is applying a balancing test animated by free
speech concerns (as the Second Circuit did in Cliffs Notes), a court
should consider the consumer’s reception and interpretation of the
expression as a whole and in context of the medium of the
expression. The Note argues that it makes little sense to subject

? Managing Editor, Journal of High Technology Law. J.D. Candidate, Suffolk
University Law School, 2007.

1. L.L. Bean, Inc. v. Drake Publ’rs, Inc., 811 F.2d 26, 28 (1st Cir. 1987);
WEBSTER’S NEW COLLEGIATE DICTIONARY 827 (1979). See also BLACK’S LAW
DICTIONARY 1190 (8th ed. 2004) (“A transformative use of a well-known work for
purposes of satirizing, ridiculing, critiquing, or commenting on the original work,
as opposed to merely alluding to the original to draw attention to the later work.”).

2. See, e.g., L.L. Bean, 811 F.2d 26. In this example, Saturday Night Live’s
(SNL’s) parody would presumably receive additional, albeit non-legal protection, as
SNL is broadcast NBC, the majority owner of MSNBC, which broadcasts Hardball
with Chris Matthews.

3. 263 F.3d 359 (4th Cir. 2001).

4. 886 F.2d 490 (2d Cir. 1989).

Copyright © 2007 Journal of High Technology Law and Brian Landry. All Rights Reserved. ISSN
1536-7983

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defendants to an overly rigid definition of parody that does not
account for a consumer’s actual experience of the expression.
Parody is at least as old as Greek civilization5 and has found
expression through society’s evolving technologies.6 However, like
never before, computers and the Internet have democratized
expression, including parodic expression, by lowering the cost and
expanding the reach of all forms of written and visual
communication.7 As a result, individuals with moderate skill and
minimal assets have the ability to create powerful and effective social
commentary.8 The legal consequences of parody are complex.
While parody – a form of social and political commentary – may
annoy or anger its target, as a legal matter it may also infringe or
otherwise harm protected trademark rights, even in light of
significant First Amendment protection.9


5. L.L. Bean, 811 F.2d at 28.

6. See, e.g., Hustler Magazine v. Falwell, 485 U.S. 46, 48 (1988) (parody in the
form of a liquor advertisement in magazine); Lyons P’ship v. Giannoulas, 179 F.3d
384 (5th Cir. 1999) (parody by mascot incorporating the children’s character
Barney); Groucho Marx Prods., Inc. v. Day & Night Co., 689 F.2d 317, 318-19 (2d
Cir. 1982) (theatrical parody); MasterCard Int’l, Inc. v. Moulton, 2004 U.S. Dist.
LEXIS 11376 (S.D.N.Y. June 22, 2004) (website); Gen. Elec. Co. v. Alumpa Coal
Co., 205 U.S.P.Q. (BNA) 1036 (D. Mass. 1979) (modified logo on clothing); Girl
Scouts of the United States v. Personality Posters Mfg. Co., 304 F. Supp. 1228,
1230 (S.D.N.Y. 1969) (poster). Litigation surrounding the Barney trademarks
remained in the courts for five years with the Electronic Frontier Foundation
recently seeking declaratory judgment that use of Barney in a website depicting the
(satanic) “secret ‘double life’” of the character. The case was recently setteled. See
Complaint at 2, Frankel v. Lyons P’ship, No. 06-CV-6413 (S.D.N.Y. Aug. 23,
2006), available at http://www.eff.org/legal/cases/barney/ (follow “Complaint” and
“Settlement Agreement” hyperlinks).

7. Cf. STUART BIEGEL, BEYOND OUR CONTROL? CONFRONTING THE LIMITS OF
OUR LEGAL SYSTEM IN THE AGE OF CYBERSPACE 12 (2001) (discussing the ebb and
flow of the Internet as a “level playing field”). But see Miguel C. Danielson,
Confusion, Illusion and the Death of Trademark Law in Domain Name Disputes, 6
U. FLA. J. TECH. L. & POL’Y 219, 220 (2001) (suggesting that corporate pressures
are threatening the democratizing qualities of the Internet); Catherine Yang, At
Stake: The Net as We Know It, BUS. WK., Dec. 26, 2005, at 38 (discussing moves
to erode the principle of “net neutrality” under which all packets are treated the
same while traveling over the Internet, regardless of who sent them).

8. See, e.g., Christopher Palmeri, America’s Energy Morass, BUS. WK.
ONLINE, Oct. 31, 2005, at http://www.businessweek.com/bwdaily/dnflash/oct2005/
nf20051031_4168_db016.htm (discussing Internet parodies featuring the chairman
of Exxon biting into an oil barrel like Dracula).

9. E.g., RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 cmt. i (1995).
See 5 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 31:155 (4th ed. 2005) (“No one likes to be the butt of a joke, not
even a trademark. But the requirement of trademark law is that a likely confusion
of source, sponsorship or affiliation must be proven, which is not the same thing as
a ‘right’ not to be made fun of.”); Robert J. Shaughnessy, Note, Trademark
Parody: A Fair Use and First Amendment Analysis, 72 VA. L. REV. 1079, 1080

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Searching for the True Meaning of the Cliffs Notes Temporal Test for Parody
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I. Emergence of Modern Trademark Law

Although the concept of trademark law is centuries old, the current
incarnation of federal trademark law (the Trademark Act of 1946,
commonly referred to as the Lanham Act) is now over 60 years old.10
Trademarks are a breed of unfair competition law whose primary
purpose is to prevent consumer confusion as to the origin of goods.11
Essentially, trademarks function as “warranty of sameness,” assuring
consumers that they will receive a product of the quality received the
last time they purchased a product bearing the same mark.12 By
preventing confusion as to the source, trademark law encourages
businesses to produce quality goods and services because they stand a
greater chance of reaping consumer good will.13
A cause of action for trademark infringement is established by
showing that use in commerce of a similar (or identical) mark will
create a “likelihood of confusion” as to the source of either the goods
or the mark in the minds of ordinary consumers.14 Once this
likelihood of confusion is established, the Lanham Act provides an
expansive set of remedies including injunctive relief,15 recovery of
defendant’s profits,16 treble damages,17 and in cases of intentional

(1986). The availability of injunctions under the Lanham Act can pose particular
trouble from a First Amendment perspective as a prior restraint on publication.
Harriette K. Dorsen, Satiric Appropriation and the Law of Libel, Trademark and
Copyright: Remedies Without Wrongs, 65 B.U.L. REV. 923, 949 (1985).
10. 15 U.S.C. § 1051 (2000). Congress passed the Lanham Act on July 5, 1946.
See generally 1 MCCARTHY, supra note 9, §§5:1-5:4. The Lanham Act is just one
of many sources of trademark protection; state statutory and common law
trademarks still exist. See, e.g., PETA v. Doughney, 263 F.3d 359, 362 (4th Cir.
2001). More importantly, trademark dilution statutes have proliferated at both the
state and federal level. See infra note 20.
11. 15 U.S.C. § 1114(1)(a) (prohibiting the use of a mark that is “likely to cause
confusion…”); RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9; 1
MCCARTHY, supra note 9, § 5:2. Cf. Frank I. Schechter, The Rational Basis of
Trademark Protection, 40 HARV. L. REV. 813 (1927) (suggesting that trademarks
be viewed as property).
12. See WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC
STRUCTURE OF INTELLECTUAL PROPERTY LAW 167 (2003); 1 MCCARTHY, supra
note 9, § 3:10. See also H.R. REP. No. 109-23, at 4 (2005) (“When an individual
encounters a mark […], he or she can develop an association between a product or
service and its corresponding quality, brand reputation or origin.”).
13. 1 MCCARTHY, supra note 9, § 2:15. See generally LANDES & POSNER,
supra note 12, at 166-209 (discussing how trademarks lower the search costs
associated with making a purchase).
14. 3 MCCARTHY, supra note 9, § 23:1. See PETA, 263 F.3d at 364 for the
trademark infringement requirements in the Fourth Circuit.
15. 15 U.S.C. § 1116.
16. Id. § 1117(a).
17. Id.

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infringement, attorney fees.18
Trademark law has grown in two major respects since the passage
of the Lanham Act.19 First, state and federal trademark dilution
statutes prohibit use of another’s famous trademark in a manner that
would diminish the mark’s ability to distinctly identify the source of
goods.20 Trademark dilution occurs through blurring and
tarnishment. Blurring is caused by use of similar marks on
noncompeting goods or services (e.g. Sony basketballs made by
someone other than Sony) such that when a consumer hears or sees
the mark (e.g. in conversation), they must ponder whose product the
mark identifies.21 Statutes preventing “dilution by blurring” protect
the distinctiveness of the mark against non-competing and non-
confusing uses of the mark by others. Tarnishment, another form of
trademark dilution, may occur where a junior mark is associated with
goods that do not reflect well on the owner of the senior mark (such
as pornography).22 Such use by the junior mark causes a negative
consumer perception of the senior mark.23 Anti-dilution statutes are
critiqued as transforming trademark rights from intellectual or
intangible property rights into rights akin to real property rights (or
“rights in gross”) by allowing owners to exclude anyone from using
the mark because the statutes do not require a showing of consumer
confusion or competition of goods.24

18. Id.; 5 MCCARTHY, supra note 9, §§ 30:99-30:100.
19. See 1 MCCARTHY, supra note 9, §§ 5.5-5.11 for comprehensive coverage of
Lanham Act amendments. Prof. Port discusses a third change, 15 U.S.C. §
1051(b), creating an “Intent to Use” or ITU registration procedure for reserving
trademarks before use in commerce. Kenneth L. Port, The Congressional
Expansion of American Trademark Law: A Civil Law System in the Making, 35
WAKE FOREST L. REV. 827, 829 (2000).
20. See, e.g., Federal Trademark Dilution Act of 1995, Pub. L. 104-98, 109 Stat.
985 (1996) (codified as amended at 15 U.S.C. §§ 1125, 1127), amended by,
Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, 120 Stat. 1730
(2006) (amending actual confusion requirement as interpreted by Mosely v. V
Secret Catalogue, Inc., 537 U.S. 418 (2003) and criteria for “famous marks”). As
of 2006, thirty-six states have passed anti-dilution statutes. International
Trademark
Association,
US
State
Chart
of
Anti-Dilution
Statutes,
http://www.inta.org/ (search “anti-dilution”; then follow “US State Chart of Anti-
Dilution Statutes” hyperlink) (last visited Nov. 21, 2006). See generally Schechter,
supra note 11, at 819 (“The mark actually sells the goods. And, self-evidently, the
more distinctive the mark, the more effective is its selling power.”).
21. 4 MCCARTHY, supra note 9, § 24:68; Schechter, supra note 11, at 825.
22. See, e.g., Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124
(N.D. Ga. 1981) (Defendants used plaintiff’s mark in a pornographic parody of
plaintiff’s advertisements.)
23. See, e.g., id. (While the court found no likelihood of confusion, liability was
imposed under Georgia’s anti-dilution statute.)
24. See, e.g., Port, supra note 19, at 874-75; Julie Zando-Dennis, Note, Not
Playing Around: The Chilling Power of the Federal Trademark Dilution Act of

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The second major development in trademark law was the passage
of the Anticybersquatting Consumer Protection Act of 1999
(ACPA).25 The ACPA was designed to reach activities that may or
may not be within the reach of the Lanham Act, namely the bad faith
registration of domain names with the intent to profit.26 The ACPA
lists nine factors indicative of bad faith, including the intellectual
property rights of others in the domain name and attempts by the
defendant to sell the domain name for financial gain without actually
having used the domain name. 27 These factors figure prominently
into court decisions, but courts are not limited to these factors in
assessing bad faith.28 Remedies available under sections 34
(injunctive relief) and 35 (monetary damages) of the Lanham Act are
available under the ACPA.29 Additionally, the ACPA allows the
plaintiff to elect to receive statutory damages between $1,000 and
$100,000, as set by the court, per domain name registered, instead of
actual damages and profits.30
As with other lawsuits, the defendant in a trademark suit may have
a number of legal avenues to pursue in resisting the suit. Beyond
procedurals grounds such as venue and jurisdiction objections, the
defendant may choose to attack the plaintiff’s trademark by objecting
to its registration or challenging its use in commerce which is a

1995, 11 CARDOZO WOMEN’S L.J. 599 (2005). But see Brief for Intellectual
Property Law Professors as Amicus Curiae Supporting Respondents at 1-2, Mosely
v. V Secret Catalogue, Inc. 537 U.S. 418 (2003) (No. 01-1015), 2002 WL 1967938
(arguing that a likelihood of dilution does not overly expand trademark rights). See
generally LANDES & POSNER, supra note 12, at 206-09 (evaluating the economic
underpinnings of dilution statutes).
25. 15 U.S.C. § 1125(d).
26. S. REP. No. 106-140, at 4 (1999). In order to violate the ACPA, the
defendant need not set up a website at the domain name. Furthermore, even if the
user sets up a legitimate website at the domain name that does not create a
likelihood of confusion, liability still may exist if there is a bad faith attempt to
profit. Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir.
2001).
27. 15 U.S.C. § 1125(d)(B)(i); 4 MCCARTHY, supra note 9, § 25:78; Elizabeth
D.
Lauzon,
Annotation,
Validity,
Construction,
and
Application
of
Anticybersquatting Consumer Protection Act, 15 U.S.C.A. § 1125(d), 177 A.L.R.
FED. 1 (2005).
28. 15 U.S.C. § 1125(d)(B)(i).
29. S. REP. No. 106-140, at 16-17; 4 MCCARTHY, supra note 9, § 25:78. See 15
U.S.C. § 1125(d)(2)(D)(3). Note that references to the Lanham Act by practitioners
often refer to the structure of the Act as enacted by Congress. For example, section
1 of the Lanham Act has been codified at 35 U.S.C. § 1051, section 34 is codified
at 35 U.S.C. § 1116 and section 35 is codified at 35 U.S.C. § 1117.
30. 15 U.S.C. § 1117(d); 4 MCCARTHY, supra note 9, § 25:78. See also Susan
Schultz Laluk, Anticybersquatting Consumer Protection Act, in 1 INTERNET LAW &
PRACTICE c. 14, § 14:40 (2004) (discussing cases and factors in damage awards).

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requirement for registration under section 1 of the Lanham Act.31
The defendant may challenge the actual infringement claim by
contesting the evidence of actual or likely confusion.32 Depending on
the circumstances of the infringement, the defendant may also claim
that the work is a parody and is therefore either not infringing or, if it
is infringing, protected by the First Amendment.33

A. Parody

A parody is a literary, musical or artistic “work in which the style
of an author or work is closely imitated for comic effect or in
ridicule.”34 Parody has a long cultural history including use by the
most distinguished writers and artists.35 Because the nature of parody
requires the parodist to imitate the targeted work, parody may give
rise to claims under copyright and/or trademark law, depending on
the form of the expression itself.36 Importantly, parodies are often not
directed at the original work, but rather at a societal problem or
another person or entity.37 For example, in the case of Mutual of

31. 15 U.S.C. § 1051(3)(C); 5 MCCARTHY, supra note 9, § 34:5. Such an attack
is similar to attacking the validity of a patent in a patent infringement suit.
32. 5 MCCARTHY, supra note 9, § 34:5. Courts have developed multi-factored
tests for likelihood of confusion, the most famous being the Polaroid factors.
Polaroid Corp. v. Polorad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.) (Friendly, J.),
cert. denied, 368 U.S. 820 (1961). See also Lyons P’ship v. Giannoulas, 179 F.3d
384, 388-89 (5th Cir. 1999) (“digits of confusion” test).
33. For a list of affirmative trademark infringement defenses, see 5 MCCARTHY,
supra note 9, § 34:5.
34. WEBSTER’S NEW COLLEGIATE DICTIONARY, supra note 1, at 827. See also
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580-81 (1994); Yankee Publ’g
Inc. v. News Am. Publ’g Inc., 809 F. Supp. 267 (S.D.N.Y. 1992) (“Parody
implicates an element of ridicule or at least mockery”); BLACK’S LAW
DICTIONARY, supra note 1, at 1190 (“A transformative use of a well-known work
for purposes of satirizing, ridiculing, critiquing, or commenting on the original
work, as opposed to merely alluding to the original to draw attention to the later
work.”). See generally MARGARET A. ROSE, PARODY: ANCIENT, MODERN, &
POST-MODERN (1993) (discussing the history of parody, its differences from other
forms of literary or artistic criticism and its symbolism). While trademark and
copyright parody laws do vary in some key respects, an analogy to the parody/fair
use defense of copyright law in resolving trademark parody claims has been
suggested. 5 MCCARTHY, supra note 9, § 34:156.
35. Chaucer, Shakespeare and Voltaire have written parodies. E.g., L.L. Bean,
Inc. v. Drake Publ’rs, Inc., 811 F.2d 26, 28 (1st Cir. 1987). On the opposite
extreme, parody has also been the tool of pornographers. See, e.g., id. at 27.
36. See, e.g., Acuff-Rose, 510 U.S. 569 (suit for copyright infringement); Cliffs
Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, Inc., 886 F.2d 490 (2d Cir.
1989) (suit for trademark infringement); Pillsbury Co. v. Milky Way Prods., Inc.,
215 U.S.P.Q. (BNA) 124 (N.D. Ga. 1981) (suit for copyright and trademark
infringement).
37. Cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d

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Omaha, Inc. v. Novak, the defendant-artist modified the “Mutual of
Omaha” logo and put it on t-shirts to reading “Mutant of Omaha”
claiming to comment on the nuclear arms race, not to criticize the
insurance company.38 Courts in trademark and copyright cases have
vacillated on whether fair use protection extends to works (known as
satires) which critique an object other than the original work.39
Trademark parodies present two obvious “defenses” to a claim of
trademark infringement.40 The first defense is to challenge the
likelihood of confusion, an element of trademark infringement.41 The
accused infringer may argue that although a consumer might believe
for an instant that the offending product is affiliated with the target of
the parody, the consumer will quickly realize that it is a parody.42
Unfortunately, the value of the likelihood of confusion defense has
been diminished in the area of parodies as a result of expanded
trademark protections under anti-dilution statutes and the view that
trademark protection extends “rights in gross” to trademark owners.43

200, 206 (2d Cir. 1979) (Second Circuit rejected defendants’ argument that they
were using replicas of plaintiff’s cheerleading costumes to comment on the role of
sexuality in sports).
38. 836 F.2d 397, 403 (8th Cir. 1987) (affirming the grant of a preliminary
injunction against defendant-artist).
39. Compare, e.g., Dr. Suess Enters. v. Penguin Books USA, Inc., 924 F. Supp.
1559, (S.D. Cal. 1996) (denying fair use for book using the style of DR. SUESS, THE
CAT IN THE HAT to poke fun at the O.J. Simpson trial), with Mattel, Inc. v. Walking
Mountain Prods., 353 F.3d 792 (9th Cir. 2003) (holding of fair use for photographs
of Barbie doll being attacked by household appliances).
40. Parody is not a true legal defense. See infra note 45.
41. See 15 U.S.C. § 1125(a)(1) (2000) (creating liability for the use in
commerce of “any word, term, name, symbol, or device” which “is likely to cause
confusion” as to the “origin, sponsorship, or approval” of goods).
42. See Girl Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231
(S.D.N.Y. 1969) (Defendant produced and distributed poster of a pregnant young
woman wearing a Girl Scout uniform and the phrase “BE PREPARED”. The court
found that the while a consumer may initially believe the poster was produced by
the Girl Scouts, such belief would be fleeting because the poster was contrary to the
organization’s values.) See also Lyons P’ship v. Giannoulas, 179 F.3d 384 (5th
Cir. 1999) (affirming ruling that use of Barney look-alike constituted a parody and
that this finding of parody could be used as a factor in the Fifth Circuit’s “digits of
confusion” analysis). Cf. New York Stock Exch., Inc. v. Gahary, 196 F. Supp. 2d
401, 406 (S.D.N.Y. 2002) (noting that the “sheer outrageousness” of defendant’s
messages impersonating Richard Grasso, CEO of the New York Stock Exchange,
as well as the posting of the message on the Internet bulletin board RagingBull.com
bolstered defendant’s claim that defendant intention was not to impersonate
Grasso).
43. See Shaughnessy, supra note 9, at 1092-99. Cf. Dorsen, supra note 9, at 947
(arguing that the proper view of dilution statutes is not to prevent reputational
damage to the mark, but rather to protect, from overuse in other areas, the mark’s
ability to identity goods). Additionally, the initial interest confusion doctrine
would weaken this defense by focusing on the consumer’s first impressions, as

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As a result, courts may find that although there exists no likelihood of
confusion, the mark holder has still suffered reputational damage.44
Because of the limited protection of the likelihood of confusion
defense, a second defense has assumed an important role.
The second “defense” available to a claim of trademark
infringement is claiming that parody is a form of constitutionally
protected speech.45 Unfortunately, courts have been inconsistent in
deciding whether parody deserves protection under the First
Amendment.46 In particular, courts have had two stumbling blocks.47
First, some courts have held that private actions to enforce
trademarks are not subject to First Amendment freedom of speech
strictures.48 Second, some courts have viewed trademarks “as a type
of ‘private property.’”49 Under the second analysis, the exercise of
trademark rights need not yield to the First Amendment where

opposed to what the consumer believed at the time of sale. See infra pp. 27-28.
44. See, e.g., Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124
(N.D. Ga. 1981).
45. Prof. McCarthy explains that parody is not an affirmative defense to
trademark infringement, but rather a factor to be balanced by the court. 5
MCCARTHY, supra note 9, § 31:153. But see L.L. Bean, Inc. v. Drake Publishers,
Inc., 811 F.2d 26, 33-34 (1st Cir.) (suggesting that parody might be a complete
defense to trademark infringement in the First Circuit, especially if it is
noncommercial parody), cert. denied, 483 U.S. 1013 (1987); infra p. 39.
46. Compare, e.g., Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd.,
604 F.2d 200, 206 (2d Cir. 1979) (denying First Amendment protection) with, e.g.,
L.L. Bean, 811 F.2d at 29-35 (holding that First Amendment protection exists).
One commentator has suggested that such decisions are driven by the court’s
assessment of the artistic merits of the parody. Dorsen, supra note 9, at 926-27.
The merit of this argument can be seen in the evaluation of the pornographic
parody in L.L. Bean. 811 F.2d at 29-35. The First Circuit reversed the grant of
injunction because the granted depended upon “an untoward judicial evaluation of
the offensiveness or unwholesomeness of the appellant’s materials” and
considerations of the “coarseness and baseness” of the parody. Id. at 33-34. Such
evaluations, the court stated, are in conflict with Supreme Court. Id. (citing Cohen
v. California 403 U.S. 15, 25 (1971)). In contrast, Prof. McCarthy has suggested
that commercial use of a trademark is the main factor in cases where courts have
rejected First Amendment disputes. 5 MCCARTHY, supra note 9, § 31:152.
47. Shaughnessy, supra note 9, at 1108-12. For a comprehensive overview of
federal trademark parody decisions, see Jordan M. Blanke, Victor’s Little Secret:
Supreme Court Decision Means More Protection for Trademark Parody, 13
FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 1053 (2003).
48. Shaughnessy, supra note 9, at 1110-11. See Reddy Commc’ns, Inc. v.
Envtl. Action Found., Inc., 199 U.S.P.Q. (BNA) 630 (D.D.C. 1977) (rejecting
argument that under Shelly v. Kraemer, 334 U.S. 1 (1948), state action occurs when
the courts are used to enforce private rights). Contra L.L. Bean, 811 F.2d at 30 n.2
(citing N.Y. Times v. Sullivan, 376 U.S. 254 (1964)); 5 MCCARTHY, supra note 9,
§ 31:143.
49. Shaughnessy, supra note 9, at 1111-12. See, e.g., Dallas Cowboys
Cheerleaders, 604 F.2d at 206.

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“adequate alternative avenues of communication exist.”50 For
example, in the oft-cited Dallas Cowboys Cheerleaders case, the
Second Circuit rejected the argument that the defendant’s use of
cheerleading costumes resembling the plaintiff’s actual costumes in a
pornographic film constituted a parody of the role of sexuality in
sports because the defendant had other means by which to express
this opinion.51 Other courts have utilized a balancing approach that
weighs the public interest in being free from confusion as to source of
the good or service with the public interest in parody and free
speech.52 And still other courts have completely exempted
noncommercial parody from liability under the Lanham Act.53

B. Assessing the Likelihood of Confusion

A more basic problem underlies courts’ parody analysis and leads
to this Note’s main critique of the analysis in the PETA decision. The
critical element in assessing traditional trademark infringement is a
likelihood of consumer confusion.54 Whether the parody is infringing
a trademark holder’s rights in their trademark depends on whether
consumers are likely to be confused as to the trademark’s
significance in the parody (i.e. whether the mark is identifying the
trademark holder as the source of the parody).55 Somewhat
surprisingly, courts are not of a uniform mind on when to assess this
potential confusion. Most courts&