Shakin’ It to the Back of the Bus: How Parks v. LaFace Uses the Artistic Relevance Test to Adjudicate Artistic Content

Shakin’ It to the Back of the Bus: How Parks v. LaFace Uses the Artistic Relevance Test to Adjudicate Artistic Content

Greggs, Mitchell David

I. Introduction

In our current society most people can access a staggering volume of information with a speed and frequency unimaginable at the turn of the century.1 With this change, the arts have become both more commercial and more influential in the life of the public as a whole.2 As a result, more people have commercial access to artistic works such as music, literature, and movies.3 These informational advances and commercial distribution methods have created new popular forms of art that enjoy less prestige than more traditional forms.4 For example, despite one’s personal preferences, opera is generally regarded as a more sophisticated form of music than rap.5 Beauty is truly in the eye of the beholder though, and, as a rule of thumb, these hierarchies seem to equate age and accessibility with quality.6 Arguably, if something is new and widely available, it cannot be as good as something that is old or exclusive.7 Socially this phenomenon is harmless, but when the legal community applies different levels of protection for artists based upon whether their art carries a favorable reputation among the general public, society faces an unconscionable stifling of speech.8 Speech, despite being presented in a vehicle sold for profit, deserves First Amendment protection.9 Further, the sale of expressive material does not deprive it of the full scope of First Amendment protection.10 “Music, as a form of expression and communication, is protected under the First Amendment.”11 The Sixth Circuit’s decision in Parks v. LaFace Records12 highlights the fact that the Artistic Relevance Test, as developed by the second Circuit in Rogers v. Grimaldi,13 allows courts to stifle protected speech by focusing on the content of a protected work rather than on whether the use of the protectable interest is misleading in a commercial manner.

As noted by recent commentary, cases such as Parks present the unique situation in which the title of a creation is itself expressive and not merely a description of the underlying work.14 Because of their expressive nature, such titles deserve more protection than the increasingly popular Artistic Relevance Test provides. Under current law, an artist choosing to use a public figure, or a recognizable mark that has gained an expressive element, anywhere in the title of a work has no assurance of avoiding a lawsuit.15 Interestingly, if the public reacts favorably to the artistic creation, the artist runs a higher risk of facing a suit by the markholder because of the increased publicity of the work.

Traditionally, public figures have guarded the use of their names and likenesses with actions invoking the rights of publicity and privacy.16 But the increasing alternative pleading of right of publicity cases as trademark cases has led the judicial system into a tight spot.17 Courts are stuck with the challenging task of trying to reconcile property rights with constitutional rights.18 The Artistic Relevance Test represents a high water mark of First Amendment protection for infringing uses of a mark in the title of an artistic work.19 However, despite this test’s status as the best recent alternative for balancing speech concerns with commercial concerns, it still falls short in cases involving the titles of artistic works. Its central weakness lies in allowing a sympathetic plaintiff such as Rosa Parks to go forward with her case, and requiring the court to examine and make a determination, whether factual or legal, as to the meaning, and indirectly the merits, of the content of an artistic work.20 The courts should have no right to do this.21

This Note will focus on how the application of trademark law principles to titles of artistic works containing the name or likeness of a celebrity, or a mark that has developed an expressive meaning, requires the court to make content determinations about those artistic works that can keep artists involved in protracted litigation, thus running the risk of stifling artistic speech. It will first provide a brief analysis of the evolution of section 43(a) of the Lanham Act in order to show its origin in consumer protection.22 This Note will then examine each test used by the circuit courts to balance the free speech interests of an artist against the property interests of a markholder asserting a claim under section 43(a).23 Also, it will assert that the Artistic Relevance Test is superior to the Alternative Avenues Test and the Likelihood of Confusion Test because it does not rely as heavily upon judicial hindsight and because it provides more direction to future artists.24 Further, this Note will describe how Parks highlights a shortcoming of the Artistic Relevance Test when used to analyze an allegedly infringing use of a mark in the title of an artistic work by asking the legal system to make an artistic judgment concerning what a work of art means in order to determine if the title misleads as to content.25 It will explain that this determination is not crucial in a society in which the consumer has more opportunity than ever before to preview the contents of an artistic work such as a book or an album, even when purchasing the work over the Internet.26 Finally, this Note will conclude that the appropriate judicial analysis of Lanham Act claims for the use of a celebrity’s name or likeness or an expressive mark in the title of an artistic work should revolve around an implication of endorsement or sponsorship, and not a judicial determination of artistic content.27

II. Reasons for the Enactment of Section 43(a) of the Lanham Act and Its Relation to the Right of Publicity

Section 43(a) of the Lanham Act provides that:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.28

In application, the section provides a federal cause of action under two prongs-trademark infringement and false advertising.29 According to J. Thomas McCarthy, “[s]ection 43 (a) was originally envisioned as a federal antifalse advertising statute, with emphasis on the ‘false description or representation’ language.”30 Further, the drafters intended that the “false designation of origin” language would apply only to false indications of geographical origin.3′ But, as McCarthy notes, the section expanded far beyond the envisioned application, allowing for the assertion of infringement of unregistered marks and names32 and applying to representations of the “origin of source of manufacture.”33 With respect to false advertising, section 43(a) focuses on protecting the consumer from false and misleading marks.34 According to the 1989 version of the statute, this section prohibits both misleading and false advertisements.35

In contrast, the right of publicity represents the “the inherent right of every human being to control the commercial use of his or her identity.”36 According to this characterization, the right of publicity exists as a form of intellectual property.37 McCarthy distinguishes the rights of a trademark holder from the right of publicity by noting a few key differences. Most importantly, “the right of publicity had its origins in the law of ‘privacy,’ whereas the law of trademarks had its origins in the tort of fraud.”38 The test for infringement used to evaluate claims constitutes a further difference.39 While trademark cases are examined under a likelihood of confusion, mistake, or deception standard,40 right of publicity cases are examined under a test of identifiability.41 Also, a trademark identifies the goods of a manufacturer or merchant, distinguishing them from those manufactured or sold by others, but the right of publicity identifies the “persona” of a single human being.42 Notably, this does not mean that a persona cannot serve as both a trademark and a property interest under the right of publicity.43 Rather, this distinction only gives rise to “parallel legal theories protecting different aspects of the same indicia [that are] not inconsistent in any way.”44 As such, “a given plaintiff might well have a claim for infringement of both a trademark or service mark and of the right of publicity.”45

III. The Various Tests

Because of the confusingly similar rights and the complex issues involved, circuit courts historically have divided over how to balance the First Amendment and the Lanham Act. Three tests deserve note. First, the Likelihood of Confusion Test applies the traditional trademark likelihood of confusion factors with very little regard for the free speech concerns of the artist, and if a likelihood of confusion exists, the case will survive summary judgment and go to trial.46 Second, the Alternative Avenues Test provides no First Amendment protection if the artist could have used alternate, non-infringing means to convey the same message.47 Third, the Artistic Relevance Test denies First Amendment protection if the use of the mark has no artistic relevance to the underlying content of the work, or if it does have artistic relevance, if the use proves explicitly misleading as to content or endorsement.48

Each test builds upon its predecessors, and because these cases are brought under trademark law, the likelihood of confusion factors is a staple of each.49 Despite this similarity, each test has developed with a forgivably limited amount of foresight. The Alternative Avenues Test recognizes the need to protect speech in an increasingly commercial environment, yet it asks too much of a judge and provides too little guidance for an artist. The best balancing of these concerns occurs under the Artistic Relevance Test. However, as highlighted by Parks, even this test proves inadequate when applied to the title of an artistic work.50

A. The Likelihood of Confusion Test

The Likelihood of Confusion Test applies trademark law’s traditional likelihood of confusion factors and attempts to balance that likelihood of confusion against the defendant’s First Amendment rights.51 Though the factors involved in analyzing the likelihood of confusion differ according to jurisdiction, “there is little substantive distinction in the various versions applied by the courts.”52 Currently only the Tenth Circuit employs the Likelihood of Confusion Test.53

In Cardtoons, L. C. v. Major League Baseball Players Ass ‘n, the Tenth Circuit used that test to determine whether Cardtoons violated the trademark and publicity rights of the player-members of the Major League Baseball Players Association (MLBPA) by using their likenesses on parody trading cards.54 After learning of Cardtoons’s intention to produce trading cards presenting parodies of famous Major League Baseball players, the MLBPA wrote cease and desist letters to both Cardtoons and the company hired to print the cards.55 Cardtoons filed suit seeking a declaratory judgment that the cards did not violate any rights of the MLBPA.56 Ultimately, after referral to a magistrate and two opinions, the district court held that a fair use analysis of the Oklahoma right of publicity statute required the recognition of a parody exception and issued a declaratory judgment in favor of Cardtoons.57

Cardtoons dealt more explicitly with the right of publicity than with the trademark aspects of the case58 because Cardtoons’s playing cards were an obvious parody of the players’ likenesses and common media representations.59 In fact, beginning with the first sentence of the opinion, the court refers to the cards exclusively as “parody trading cards.”60 In upholding the district court’s determination that the cards did not violate the MLBPA’s trademark rights under the Lanham Act, the court relied on the fact that the cards were parodies, noting that “Cardtoons’ success depends upon the humorous association of its parody cards with traditional, licensed baseball cards, not upon public confusion as to the source of the cards.”61

Further, Cardtoons did not detail the application of the Likelihood of Confusion Test.62 For a more detailed analysis of the application of the Likelihood of Confusion Test in a similar situation, the Ninth Circuit’s decision in Dr. Seuss Enterprises, L.P. v. Penguin Books63 proves useful,64 even though the Ninth Circuit later abandoned this approach.65 There, the court decided to use an eight-factor test in determining whether a likelihood of confusion existed between the work in question and the existing trademark.66 The eight factors consisted of: “(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; (8) likelihood of expansion of the product lines.”67 The court noted that several other variations of this test had arisen within the Ninth Circuit, most consisting of fewer factors, but chose the eight-factor test “simply to be over-inclusive.”68 The court also recognized three types of proof of likelihood of confusion: “(1) survey evidence; (2) evidence of actual confusion; and (3) an argument based on an inference arising from a judicial comparison of the conflicting marks themselves and the context of their use in the marketplace.”69 The court further observed that under the Likelihood of Confusion Test “doubts are resolved in favor of the senior user.”70

In applying the enumerated factors, the court agreed with the district court’s conclusions that the results were indeterminate and that questions remained for litigation.71 The trademarks enjoyed wide recognition, there existed substantial proximity and similarity between the marks and the infringing items, and the infringing user could have planned the similarity of the marks to entice customers and attract consumer attention. Because of the injunction, though, no evidence of actual confusion existed, and marketing channels and likely expansion of the product lines could not be assessed, rendering the application of the Likelihood of Confusion Test indeterminate at the preliminary injunction stage of the trial.72 As such, the court refused to disturb the district court’s injunction.73

In Mattel, Inc. v. MCA Records, Inc.,14 the Ninth Circuit limited the application of this test by determining that it did not apply when a trademark owner “asserts a right to control how we express ourselves.”75 The court distinguished the case from Dr. Seuss by noting that the song “does not rely on the Barbie mark to poke fun at another subject but targets Barbie herself,” unlike The Cat NOT in the Hat!, which “borrowed Dr. Seuss’s trademarks and lyrics to get attention rather than to mock The Cat in the Hat!”76 According to this analysis, ignoring the expressive value that some marks assume77 could allow trademark rights to encroach upon the zone protected by the First Amendment.78 In response to these concerns, the Ninth Circuit adopted the Artistic Relevance Test for addressing literary titles.79 It would appear, however, that the Likelihood of Confusion Test still applies to cases similar to Dr. Seuss, in which the alleged infringing use of the trademarks and copyrights has no critical bearing on the substance or style of the senior use and as such does not warrant First Amendment protection.80 Notably, this distinction requires a determination as to whether the artistic work’s content has a critical bearing on the substance or style of the senior use.

B. The Alternative Avenues Test

According to Mutual of Omaha Insurance Co. v. Novak,81 the Alternative Avenues Test denies First Amendment protection to a trademark infringement “under circumstances where adequate alternative avenues of communication exist.”82 Currently, only the Eighth Circuit uses the Alternative Avenues Test.83 In Mutual of Omaha, Mutual of Omaha Insurance Company (Mutual) brought suit against Novak, an individual, for trademark infringement and disparagement.84 At the heart of the suit resided a design, reminiscent of Mutual’s trademarks, that used the words “Mutant of Omaha” and presented “a side view of a feather-bonneted, emaciated human head.”85 Novak initially used the logo on t-shirts, and later expanded its use to sweatshirts, caps, buttons, and coffee mugs.86 He sold these products at retail shops, exhibitions, and fairs, as well as through advertisements on television and in newspapers and magazines.87 The district court ruled that Novak had infringed Mutual’s trademarks and permanently enjoined Novak from using the violative marks.88 The Eighth Circuit then upheld this determination.89 On appeal, Novak argued that “his use of the design in question [was] an exercise of his right of free speech and [was] protected by the First Amendment.”90 Noting that the injunction in no way “infringe[d] upon the constitutional protection the First Amendment would provide were Novak to present an editorial parody in a book, magazine, or film,” the court concluded that the injunction “deprive[d] neither Novak nor the public of the benefits of his ideas.”91

The dissent in Mutual argued that Novak’s First Amendment rights were implicated by the decision.92 Relying on scholarly discussions of the topic, the dissent argued that:

[T]he property metaphor, useful in other contexts, completely distorts the analysis, causing courts to hold . . . that the parodist’s rights must yield to property rights whenever the parodist has adequate alternative avenues of communication. This notion derives from the Supreme Court’s decision in Lloyd Corp. v. Tanner. There the Court held that the owner of real property has the right to exclude unwelcome speakers from that property. But in the Lloyd situation, the owner’s enforcement of its property rights restricts only the place where the speaker’s expression may occur. .. . Application of this rule is distinctly inappropriate, however, when the property involved is not real estate but a trademark-a form of intangible property that itself conveys or symbolizes ideas. Because a parodist expresses ideas through the use of another’s trademark, the owner’s attempt to enjoin the parody goes to the content of the speech and not merely to the time, place, or manner of its delivery.93

Therefore, according to the dissent, the Alternative Avenues Test should not apply to a trademark’s use as parody.94

The Eighth Circuit nonetheless has continued to apply this test, as evidenced by Anheuser-Busch, Inc. v. Balducci Publications.95 In Anheuser-Busch, the district court initially dismissed Anheuser-Busch’s (A-B) federal and state trademark infringement claims, as well as its trademark dilution and unfair competition claims, arising from a fictitious advertisement for “Michelob oily.”96 Balducci Publications (Balducci) published a humor magazine, Snicker, for two years before placing the “advertisement” in question on the back cover of the April 1989 issue.97 The ad parody showed cans and bottles of Michelob beer pouring oil onto the eagle of the “A and Eagle Design,” and bore the slogan, “At the rate it’s being dumped into our oceans, lakes and rivers, you’ll drink it oily sooner or later, anyway.”98 In the bottom right-hand corner of the ad parody, in extremely small print, Balducci placed a disclaimer characterizing the ad parody as an editorial.” A-B conducted a survey at St. Louis shopping malls and entered evidence at trial that six percent of those surveyed thought the ad parody was an actual A-B advertisement.100

At a bench trial, the district court dismissed all of A-B’s claims against Balducci, holding that Balducci’s use of the marks did not create a likelihood of confusion.101 The district court also affirmed that the First Amendment had played a large role in this determination.102 The Eighth Circuit found this reasoning faulty and instead asserted that the district court should have viewed First Amendment protection as an entirely separate matter than likelihood of confusion.103

As such, the court examined the case anew and found that a likelihood of confusion did exist.104 The court then considered Balducci’s claims to First Amendment protection.105 In determining that Balducci’s ad did not deserve protection, the court applied the alternative avenues portion of its analysis by finding that Balducci’s First Amendment rights did not protect him because the “near Iy unaltered appropriation of Anheuser-Busch’s marks . .. conveys that it is the original, but the ad founders on its failure to convey that it is not the original. Thus, it is vulnerable. . . since the customer is likely to be confused.”106 Despite this strong language, the court did note that this extensive borrowing did not amount to a per se violation,107 and further explained that Balducci might have escaped liability by “taking steps to insure that viewers adequately understood this was an unauthorized editorial.”108 The court even suggested that the ad could have survived scrutiny if it were the only way to present the desired point.109 The court then explained that Balducci should have used an obvious disclaimer, positioned the parody in a less confusing location, or altered the protected marks in a meaningful way.110 Beneath this analysis lies the idea that Balducci might have had a better way to convey his message that would have been less violative of A-B’s trademarks. This proposition comprises the heart of the Alternative Avenues Test.111 Judicial inquiry into the appropriateness of the speaker’s mode of communication as a means of granting or denying protection to potentially protected expression only occurs after a finding of likelihood of confusion, making the Eighth Circuit’s approach a separate test.

C. The Artistic Relevance Test

The second Circuit created the third test in Rogers v. Grimaldi.112 Under this Artistic Relevance Test, the Lanham Act will not impose liability unless the title has absolutely no artistic relevance to the underlying work, or if it does have artistic relevance, unless the title explicitly misleads as to the source or the content of the work.113 Recently, other circuits have increasingly adopted this test.114

In Rogers, actress Ginger Rogers, most famous for her performances in Hollywood musicals with Fred Astaire, brought suit against the producers and distributors of the movie Ginger and Fred, a film directed by Italian filmmaker Federico Fellini.115 She claimed that the use of her name in the title of the film was a violation of the Lanham Act and infringed her common law rights of publicity and privacy, but the district court disagreed and dismissed her claims on summary judgment.116 The Second Circuit affirmed this decision, although it articulated slightly different reasoning than the district court.117

The movie told the story of two fictional Italian performers who, when popular, were known across Italy as “Ginger and Fred.”118 The film focused on a televised reunion of these two performers many years after their retirement, and the appellees described it as a satire of contemporary television variety shows.”9 In light of the content and focus of the film, the district court held that “the speech at issue [was] not primarily intended to serve a commercial purpose, the prohibitions of the Lanham Act do not apply, and the Film is entitled to the full scope of protection under the First Amendment.”120 The second Circuit determined that the district court had overstated the appropriate level of protection121 and that a more refined test was needed.122

In articulating the Artistic Relevance Test, the court took into account many issues of policy and practicality.123 First, the court noted that even though movies, plays, books, and songs are works of artistic expression, they are sold and marketed in the commercial marketplace and, as such, create a concern of consumer deception.124 Second, the court noted that artists may vindicate their property rights against other artists.125 The court justified this assertion by explaining an artist’s entitlement to protect the right to receive compensation for artistic work, which encourages free expression.126 Third, the court described the hybrid nature of titles as “combining artistic expression and commercial promotion.”127 Fourth, the court rejected application of the Alternative Avenues Test, asserting that it unduly restricted literary expression.128 In light of these considerations, the court determined that an Artistic Relevance Test would most adequately balance the public interest in avoiding consumer confusion against the public interest in protecting free speech.129

The court provided examples of how it would apply the test in various hypothetical situations.130 For example, books with titles such as “Nimmer on Copyright,” or books that contain a phrase in the title or subtitle, such as “an authorized biography,” would not merit First Amendment protection if such an association did not in fact exist.131 The court, however, determined titles that some people might find confusing, but that do not imply authorship or endorsement, should merit protection.132 The court also asserted that if a title included specific statements about the content of a work, and those statements were false, the First Amendment should not protect these works if the factfmder made a determination of falsity.133 The court retreated from this seemingly broad statement, however, by acknowledging that many titles make no explicit statement that the work is overtly about that person, but rather imply some sort of oblique meaning only discernable upon closer inspection.134 In these cases, the court suggested that “the consumer interest in avoiding deception is too slight to warrant application of the Lanham Act.”135 Ultimately, “[w]here a title with at least some artistic relevance to the work is not explicitly misleading as to the content of the work, it is not false advertising under the Lanham Act.”136 This provision of the test has led to the problem of judicial determinations of artistic content and merit.

The Fifth Circuit has also adopted this Artistic Relevance Test.137 In Westchester Media v. PRL USA Holdings, Inc.,138 Polo Ralph Lauren (PRL), the owner of a popular line of clothing and other lifestyle products such as cologne, brought suit against the publishers of POLO magazine, the official publication of the United States Polo Association, alleging an infringing use of its trademark in the word POLO.139 Employing the Artistic Relevance Test, the court found that the magazine’s use of the POLO name did violate PRL’s trademark, but that the remedy could be adapted to better insulate and protect free speech concerns. 140 Interestingly, the magazine held the sole trademark for the use of the word POLO on a publication concerning the sport of polo and its surrounding lifestyle.141 Also, the magazine existed peacefully with PRL for many years, even carrying PRL advertisements in its lifestyle pages.142

Problems arose upon the sale and re-launch of the magazine as two separate publications in 1997.143 These publications reflected the same content as the old magazine, but separated the lifestyle section into a new magazine called POLO that carried the tagline “ADVENTURE * ELEGANCE * SPORT” and Polo Players Edition, which consisted exclusively of content related to the sport of polo.144 The new ownership sent free copies of the first issue of the new POLO, which carried a picture of model Claudia Schiffer on the cover, to Neiman Marcus customers.145 This provoked PRL to sue for two reasons. First, Neiman Marcus represented one of PRL’s largest distributors.146 second, Claudia Schiffer had served as PRL’s premier model for the previous year’s advertising campaign.147

The trial court initially issued a preliminary injunction and required the magazine to publish a disclaimer clarifying that the magazine had nothing to do with any of PRL’s enterprises.148 After trial, the court issued a permanent injunction against the magazine’s use of the title POLO, but not against Polo Player’s Edition.149 Though the circuit court upheld the trial court’s determination of trademark infringement, it rejected the remedy and remanded the case for imposition of different measures.150

In examining the trademark infringement claim, the Fifth Circuit presented a concise analysis of the issues involved. Initially, the court determined whether a likelihood of confusion did in fact exist.151 Only after finding the existence of a likelihood of confusion did the court examine the infringing user’s claim of First Amendment protection.152 The court then noted that the Fifth Circuit had adopted the Artistic Relevance Test.153 The precedent cited for this conclusion did not explicitly adopt this test, though, instead using other language identical to that found in the second Circuit’s formulation of the test.154 In any event, by its treatment of the subject in this case, the court made it clear that the Fifth Circuit follows the Artistic Relevance Test.155 Noting that the content of the magazine explicitly related to the title,156 as required by the content prong of the test, the Fifth Circuit found that the likelihood of confusion as to association of the entities amounted to an infringement of PRL’s marks.157

Despite the similarity of this analysis to other cases that have addressed the issue, the Fifth Circuit distinguished itself by addressing the practical implications of its decision and suggesting appropriate remedies.158 In addressing remedies, the court was careful to note that a finding of likelihood of confusion does not eliminate the First Amendment concerns present in these cases.159 Because of the possibility of the broad injunction issued by the lower court dictating both the title and content of the magazine,160 the Fifth Circuit remanded the case and ordered that the lower court reconsider disclaimer relief.161

The court highlighted four factors in recommending disclaimer relief over injunctive relief. First, as discussed above, the court noted the possible intrusions into content inherent in the enforcement of the injunction.162 second, the court addressed PRL’s attempt to police the use of the word “polo” in light of the fact that the sport itself provided the original air of affluence surrounding the word.163 Third, the court noted that PRL offered no evidence of actual confusion after publication of the magazine with disclaimers.164 Fourth, the court noted that the presumably sophisticated nature of buyers of both PRL’s products and Westchester’s POLO magazine presented a favorable environment for the imposition of disclaimer relief.165

Upon remand, the lower court followed the order of the circuit court and reconsidered disclaimer relief.166 Specifically, the district court determined that, despite a lack of direct precedent on the subject, Westchester carried the burden of proof of establishing the effectiveness of any proposed disclaimer,167 and that the prior court-imposed disclaimer did not adequately do so.168 The court went on to mandate an exceptionally adequate disclaimer that stated “Not affiliated with Polo Ralph Lauren” in 16-point font, in a white box with a black border placed immediately adjacent to and below the magazine’s title.169 One is reminded of the Surgeon General’s Warning appearing on and consuming one entire side of a pack of cigarettes. The Fifth Circuit affirmed this remedy without opinion.170

A district court in the Third Circuit has applied the Artistic Relevance Test as well. In Seale v. Gramercy Pictures,171 Bobby Seale, a founding member of the Black Panther Party in the late 1960s, sued Gramercy Pictures for the use of his name and image in the promotion of a film about the Black Panther Party and the accompanying soundtrack.172 Initially, Gramercy moved for summary judgment against Scale’s right of publicity and trademark claims concerning both the movie and the soundtrack.173 The district court held that Scale’s claims could continue only with respect to the soundtrack and granted Gramercy’s motions with respect to the movie.174 In so doing, the district court applied the Artistic Relevance Test.175 Applying the test to the movie, the court held that as a matter of law, because Seale’s name and likeness were related directly to the content of the movie and because the promotional materials made no explicit suggestion of sponsorship or endorsement, the movie merited First Amendment protection from a suit under the Lanham Act.176 The court did allow Seale to continue with his suit over the soundtrack’s use of his name and likeness, though, finding that such use did not relate to the content of the work.177

At the trial on these issues, the district court held that the use of Seale’s name and likeness in the marketing of the soundtrack did not constitute false advertising under the Lanham Act.178 In so holding, the court noted that Seale never presented proof that the use of his likeness on the packaging of the soundtrack created consumer confusion.179 As examples of what sort of proof might satisfy this requirement, the court stated that if the defendant’s use of the mark is not clearly an endorsement, the plaintiff “must produce evidence, usually in the form of market research or consumer surveys, showing exactly what message customers received from [the] defendant’s ad.”180 One can only speculate on whether the court would have held differently had Seale produced such evidence, or just how much confusion would have been required.

Most recently, in Parks v. LaFace Records,181 the Sixth Circuit affirmed its adoption of the Artistic Relevance Test.182 In Parks, civil rights icon Rosa Parks brought suit against the rap band OutKast and affiliated defendants for using her name as the title of a song on their album Aquemini.183 Parks asserted that the band’s use of her name constituted false advertising under the Lanham Act and intruded on her common law right of publicity.184 The district court applied the Artistic Relevance Test and concluded that, as a matter of law, the First Amendment served as a defense to Parks’s Lanham Act and right of publicity claims and granted summary judgment for the defendants.185 With respect to the Lanham Act claim, the Sixth Circuit determined that although the song’s title did not explicitly mislead as to the content of the work, the finder of fact must determine whether the title has artistic relevance to the content of the song.186 Accordingly, the court reversed the grant of summary judgment for the defendants on the Lanham Act claim and remanded the case for jury consideration.187 For the same reasons, the court also reached this result with respect to the right of publicity claim.188

The Sixth Circuit’s application of the test in Parks seems to be a little more watered down than the second Circuit’s in Rogers. This conclusion stems from dicta in Rogers suggesting that a title that includes a well-known name without any overt indication of authorship or endorsement should not be subject to the Lanham Act.189 Perhaps the real difference arises in the test as applied and not as articulated. The basic difference between the two holdings is that the second Circuit was willing to hold as a matter of law that the title was artistically relevant, but the Sixth Circuit determined this same question to be an issue of fact.190 A further difference surfaces in the second Circuit’s willingness to hold as a matter of law that the use of a name alone does not imply endorsement.191 This difference has been articulated by practitioners as a difference in the balancing test employed.192 This analysis focuses on the language employed, “explicitly misleading” as opposed to “particularly compelling,” but does not speculate about what practical effect, if any, this difference will have on how cases are decided, only noting that it illustrates a general shift toward First Amendment protections in this area.193

D. How the Artistic Relevance Test Has Moved to the Front of the Pack

Despite the presentation of these tests as three independent logical structures, some assert that they actually represent an evolution, culminating in the Artistic Relevance Test.194 No matter which interpretation proves more accurate, the Artistic Relevance Test has become the dominant analysis.195 Recent commentary has attributed the development and increasing popularity of the Artistic Relevance Test to a general swing of the “First Amendment pendulum” away from markholders and toward artistic expression.196 In support of this view, these commentators note that the Alternative Avenues Test almost invariably favors the markholder, while the increasingly popular Artistic Relevance Test typically favors the artists.197

According to Kerry Timbers and Julia Huston, who present a very concise history of the development of case law in this area, the Alternative Avenues Test at first enjoyed a position of prominence among courts considering trademark infringement cases that prompted First Amendment defenses.198 They describe one of the more famous cases of this era, Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd.,199 as representative of this judicial approval of the Alternative Avenues Test.200 As evidence of the shift away from the Alternative Avenues Test, they cite L.L. Bean, Inc. v. Drake Publishers, Inc. ,201 a case involving a parody of L.L. Bean’s mail order catalog found within the pages of the pornographic magazine High Society.202 According to their analysis, however, the First Circuit’s approach did not have much of an impact on the general case law of the area because the court “explicitly limited its holding to non-confusing non-commercial parodies, and made no attempt to articulate a broader rule.”203 They assert that true change began to occur as a result of the development of the Artistic Relevance Test by the Second Circuit in Rogers v. Grimaldi.204

Timbers and Huston describe two versions of the Artistic Relevance Test: the original, “explicitly misleading” test, developed in Rogers; and a newer, “particularly compelling” test, developed by the second Circuit in two later cases, Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc.,205 and Twin Peaks Productions, Inc. v. Publications International, Ltd206 Under the “particularly compelling” variant articulated in Twin Peaks, the court should not determine if the title is “explicitly misleading as to source or content,” but instead should apply the likelihood of confusion factors fundamental to trademark law and determine if they are “particularly compelling” when balanced against the First Amendment issues of the case.207 Under this Note’s analysis, the “particularly compelling” variant is discussed as a straightforward application of the Likelihood of Confusion Test, and not as a variant of the Artistic Relevance Test.208

Despite naming conventions, Timbers and Huston assert that the Tenth and Fifth Circuits have adopted this “particularly compelling” variant of the Artistic Relevance Test in Cardtoons209 and Westchester Media210 respectively.2″ They then assert that the Ninth and Sixth Circuits have adopted the more rigorous “explicitly misleading” variant.212 For the Ninth Circuit, the authors point to Mattel,213 and for the Sixth Circuit, they point to two cases, ETW Corp. v. Jireh Publishing, Inc.214 and Parks.215 From this analysis, and in reliance on their assertion of the increasing popularity of the Artistic Relevance Test, they conclude that “[r]egardless of which formulation of the Artistic Relevance Test becomes more prominent, . . . it is clear that the days of the plaintiff-friendly Alternative Avenues Test are long gone.”216

IV. A Proposal for the Elimination of the Content Prong of the Artistic Relevance Test When a Title Is Itself Expressive

A. Parks Presents a New Scenario

Cases such as Parks present an entirely different situation than those previously encountered because the title in Parks does not “strictly ‘relate’ to or describe the artistic content of the work except in a very tenuous fashion.”217 Courts generally have not looked favorably upon artists’ claims of First Amendment protection in these specialized situations.218 According to Timbers and Huston, “In order to find such titles ‘artistically relevant’ to the content, courts would have to apply the Artistic Relevance Test even more broadly than the circuit courts have done to date.”219 But instead of broadly expanding the Artistic Relevance Test in order to protect titles that are in and of themselves expressive, courts should create a separate, narrow standard to apply to this small class of cases. Specifically, courts should not look for artistic relevance to the underlying content of the work, but only for a misrepresentation of sponsorship or endorsement. Courts should dispose of the artistic relevance prong, and only analyze such cases on whether they explicitly mislead as to sponsorship or endorsement.

B. The Danger of a Judicial Content Inquiry in cases Like Parks

Judicial inquiry into the merit of an artistic creation, or even the means of an artistic creation, seems a very dangerous endeavor.220 As noted by Justice Holmes when writing in a famous copyright case:

At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Yet if they command the interest of any public, they have a commercial value,-it would be bold to say that they have not an aesthetic and educational value,-and the taste of any public is not to be treated with contempt.221

The tests that rely on such an inquiry, the Alternative Avenues Test and the Artistic Relevance Test, call on the judicial system to inquire into matters of taste, preference, and choice. Presumably, the artist has given these matters much thought.222 The protections afforded parody are an example of the judicial system attempting to step away from inquiring too deeply into an artist’s manner of expression.223 But this retreat is not uniform, as evidenced by the decision in Parks. Whatever the grounds for an artistic choice, such as the ease of drawing or obtaining the logo in question or because a slogan or mark lends itself to alterations that most aptly convey the artist’s message,224 this is not an appropriate area for judicial inquiry. Some courts seemingly desire to decide whether an artist’s stylistic or content choices deserve protection based on the court’s conception of what constitutes art, yet none of the courts will articulate a final standard by which an artist may be assured of protection. This invariably will have the effect of chilling speech that should be protected.

Take Anheuser-Busch, for example, in which the court determined that the use of the confusing trademark was “wholly unnecessary” to the artist’s stated purpose.225 Nowhere in that opinion does the court recognize or make mention of the fact that Michelob Dry was most likely the only beer that could have been used to create this parody. Without knowing exactly how every contemporary beer advertised, it is most likely safe to assume that no other beer provided such a fertile ground for this sort of parody. First, Michelob Dry, a two-word beer name, easily converted into Michelob Oily.226 Second, assuming that other beers met the name requirements (a two-word name), it is likely that none of them had a slogan as easily adaptable as “One Taste and You’ll Drink it Dry” (which the artist changed to “One Taste and You’ll Drink it Oily”).227 Third, the Anheuser-Busch A & Eagle Logo provided another way to present the intention of the parodist by providing an animal that could be shown saying “Yuck!” while covered in oil. Again, it is not likely that many other beers marketed at the time presented such a fitting set of circumstances for adaptation in order to present the artist’s message.228 However, the court did have a common sense argument.229 Balducci would have incurred little expense or degradation of message had he either printed the disclaimer in a larger type or in a more prominent position, or altered the mark by reversing or transposing letters or otherwise altering the spelling and sound of Michelob, much as he did with the A & Eagle logo by placing a Shell symbol above it and redrawing the eagle, thereby explicitly distinguishing it from the real A & Eagle logo.230 But such arguments allow the court to determine the merit of the artistic content.

C. How Parks Highlights the Need for a New Standard

These are hard cases, as evidenced by the promulgation of questionable law. In attempting to protect the interests of both parties, the courts overlook the fact that they are making determinations concerning the content of primarily artistic works. The Sixth Circuit’s decision in Parks illustrates this most effectively, calling for the jury to determine if the title is “used in some symbolic or metaphorical sense,”231 and doubting that the song contains any form of “artistic expression involving Rosa Parks herself.”232 The court based this belief on statements made by the band denying that the song was meant to be about Rosa Parks.233 In light of these statements, the court determined that reasonable people could find that the song presents “nothing more and nothing less than a paean announcing the triumph of superior people in the entertainment business over inferior people in that business.”234 Yet despite the “reasonable persons” language, the court gave away its true view of the issue in the preceding sentences: “The composers did not intend [the song] to be about Rosa Parks, and the lyrics are not about Rosa Parks. The lyrics’ sole message is that OutKast’s competitors are of lesser quality . . . .”235 In response to the assertion that the use of Rosa Parks’s name is symbolic, the court even went so far as to ask “symbolic of what?”236 It further noted that “[i]n lyrics that are laced with profanity and in a ‘hook’ or chorus that is pure egomania, many reasonable people could find that this is a song that is clearly antithetical to the qualities identified with Rosa Parks.”237 In making this statement though, the court implicitly acknowledged that if the case makes it back to trial, and the jury has as much sympathy for Rosa Parks’s cause and qualities as the court does, the jury would be correct in finding that “the use of Rosa Parks’ name as the title to this song was not justified as being metaphorical or symbolic of anything for which Rosa Parks isfamous.”238 By so doing, the court exposed its view that the law should be able to determine what constitutes appropriate symbolism in an artistic work. It is not comforting to speculate that, in light of this ruling, twelve people might be able to decide what this song means. Refusing to employ the content prong of the Artistic Relevance Test in cases involving the use of expressive marks in titles would avoid this sort of inquiry.

D. Modifying the Artistic Relevance Test

A modified Artistic Relevance Test is the most appropriate answer.239 Under the existing formulation, the content prong dives into the deep end of judging the artistic merit of an artist’s work. A more appropriate analysis would only infringe on the rights of an artist who engaged in deceitful or deceptive practices by using a mark or a persona to imply endorsement, sponsorship, or origin of the artistic work. Under this test, the artist would know exactly what the law allows, and the court would not face the need to make a content determination. A similar approach has found favor in other legal systems.240 Australian courts require a finding of false implication of endorsement in order to find liability for the unauthorized use of one’s image, a right analogous to the use of one’s name in a title.241 Authors describing this legal standard have noted that American courts would likely reach a different result than Australian courts because, in America, “[a] mere misappropriation for commercial purposes constitutes a wrong done to the person,” whereas in Australia, “a celebrity is legally wronged only where there has been some deception or misrepresentation.”242

Claims based upon dilution and the right of publicity must overcome broad First Amendment protections.243 The First Amendment protections for artists sued under the Lanham Act are not as broad, though.244 Some have attributed this difference to the narrow pleading requirements and the specificity of the likelihood of confusion standard found in trademark law.245 This fails to note that the pleading of these cases under the Lanham Act is a fairly recent occurrence when compared to the history of their pleading under dilution and the right of publicity.246 As such, the growing trend of broad First Amendment protections for works challenged under the Lanham Act may merely illustrate that cases pleaded under trademark law are finally providing artists the protection they deserve, after an initial period of doctrinal confusion as to the scope of a “new” cause of action.

E. How a New Standard Reflects the Realities of the Marketplace

An analysis devoid of a content inquiry recognizes the realities of the marketplace for artistic content. In today’s society, consumers are able to choose books, music, and movies after obtaining a substantial preview of the material in question.247 Even a consumer purchasing a book over the Internet may be able to read a few pages of its content prior to completing the purchase.248 Similarly, many music stores, both brick and mortar and online, allow customers to listen to an album before they buy it.249 Movies present a harder case in this respect, but the title Ginger and Fred was an acceptable infringing use,250 even though the general public had less of an opportunity to find out what the movie was truly about.251 Because the public has a better chance of being fully informed as to the content of a work that they are buying in the case of a novel or a song, a court should not shy away from allowing the public to be exposed to artistic works that use the name of a celebrity or an expressive mark in a title. If the public finds the title to be distasteful or misleading, it may make its dissatisfaction known at the cash register.

F. Other Solutions and the Problems They Present

Recently, commentators have suggested a more moderate approach than the elimination of the content prong of the Artistic Relevance Test.252 They suggest that in cases such as Parks, a more appropriate inquiry asks whether the title itself should be protected as expression, and not whether the title bears any obtuse “artistic relevance” to the underlying content of the work.253 While this inquiry certainly would afford more protection for the artist in the event of a jury trial, it ignores the fact that the judicial system still gets to make a content determination concerning an artistic work. In fact, this inquiry only emphasizes that a court can determine whether the speech is art. In making this determination, the court has the ability to influence speech by keeping an artist in the judicial process until settlement becomes the only efficient option.

As expressed by Westchester Media, some courts have found that the appropriate solution to this balance lies in the remedy.254 There, the lower court imposed an injunction that allowed Westchester to publish a sports magazine entitled POLO, but not a lifestyle magazine under that title.255 In determining that the injunction ordered by the lower court was inappropriate, the Fifth Circuit noted that Westchester did own a trademark for the publication of a magazine under the title of POLO256 and that the editorial line between the two new magazines was not clear.257 Both of these issues parallel those found in the Parks case. Just as Westchester owned the right to publish a magazine under the name POLO, OutKast has the First Amendment right to create their songs. Additionally, the editorial line between the altering of the title of a song and the altering of the content of a song is not clear. Therefore, in Parks, any injunctive relief would carry a danger of judicially altering the content of the song in question, a concern that has been well expressed by recent commentary.258 This solution fails to acknowledge that if an artist has the right to create a work, that artist should have the right to market it in any appropriate manner.259

G. Wrapping It Up

Music, literature, poetry, sculpture, paintings, and all other forms of artistic expression are inherently open for interpretation. Any interpretation is subject to change and is likely to evolve with the passage of time and the institution of new social norms. Specifically in the fields of literature, poetry, and art, entire careers are spent debating the proper meanings of both popular and classic works. It therefore seems extremely superficial to allow twelve contemporaries of an artist to declare as a matter of law that the artist’s creation means one thing or another, and, in so doing, possibly require the artist to alter that expression, as changing the title of a work surely alters the work itself.260 Often the title of a work serves as a sort of key that may be used to crack the code of the work itself and to focus one’s attention on the artist’s intended meaning.261 Surely Andy Warhol was not trying to sell Campbell’s soup.262 Yet if a suit had arisen because of his painting, could anyone really have claimed to understand what he was trying to do, or if there would have been a “better” way to do it?

The bottom line is that each approach has flaws in dealing with expressive content. Should our society allow as few as twelve people, from one region of the country, to determine if an artist “correctly” used a name as a symbol, as might be done in the Parks case? Or, in the alternative, should our society accept one judge’s view that a title is artistically relevant or not as a matter of law? Settling for this result seems hollow and shameful in a culture that prides itself on freedom of speech.263 Therefore, in attempting to balance an artist’s rights with those of a markholder when viewing the use of an expressive mark in the title of an artistic work, the courts should only look to whether the title misleads as to sponsorship or endorsement, and not adjudicate the appropriateness or meaning of the use in light of what it views as the artist’s purpose or message.

V. What Would This Mean for Parks and Similar Cases?

Someone’s name, standing alone, should not signify endorsement. The Second Circuit in Rogers skirted this very issue by pointing to Estate of Hemingway v. Random House Inc.,264 which held that the estate of Ernest Hemingway did not have a cause of action against the author of a biographical work entitled Papa Hemingway.265 This case and its holding seem to suggest that merely using someone’s name, or a nickname, does not imply endorsement and therefore should not confuse the consumer.266 But that case dealt with a biography, and there existed no question concerning the title’s relevance to the content.267 Furthermore, the case did not explicitly address the use of Hemingway’s name in the title; rather, it focused on the author’s appropriation and use of Hemingway’s utterances over the course of their friendship.268

Whether the Second Circuit’s use of this authority for the proposition that someone’s name in a title does not imply endorsement is the best fit or not, the message is clear. As expressed by Judge Kozinski in Mattel: “A title is designed to catch the eye and to promote the value of the underlying work.”269 He further noted that “[c]onsumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer.”270 “A title tells us something about the underlying work, but seldom speaks to its origin.”271 Judge Kozinski’s explanation of how to distinguish Mattel from earlier cases such as Dr. Seuss seemingly qualifies this point by noting that “where an artistic work targets the original and does not merely borrow another’s property to get attention,”272 it should merit First Amendment protection. He also cited authority for the proposition that “a parodist whose expressive work aims its parodie commentary at a trademark is given considerable leeway, but a claimed parodie use that makes no comment on the mark is not a permitted trademark parody use.”273 Under an analysis devoid of the content inquiry, however, he could avoid distinguishing the cases altogether, because unlike both Parks and Mattel, Dr. Seuss does not involve a protectable interest in something larger than a mere product. The use of the word “Barbie” connotes the image not just of a little girl’s doll, but also of a way of life.274 Similarly, mentioning Rosa Parks evokes the notion of an ideal even more than the image of a discrete person.275 Dr. Seuss concerned a humorist’s appropriation of the title of a discrete protectable work, The Cat in the Hat, and not the use of a word or mark that brings to mind something more than just the work in question. Further, the way the humorist added only one word to the title of the work could have created more of a possibility of confusion as to sponsorship or endorsement.276 Because Dr. Seuss involved only the appropriation of a discrete mark, the title of a literary work, and Mattel involved the use of an expressive mark, the cases should require different methods of analysis.

VI. Conclusion

The Artistic Relevance Test represents an extension of First Amendment protection for artists, but it does not do enough.277 Initially established for the protection of the consumer, trademark law should not be allowed to restrict artistic expressions in media that inherently thrive on consumer discretion278 and allow ample avenues to preview the content of the work.279 In order to protect the public’s ability to make an informed choice as to the products they prefer, the law must protect the public’s ability to have such a choice. In the area of artistic content, this means protecting the artist’s right to expression.

The courts could better protect the interests of the artists involved by doing away with the content prong of the Artistic Relevance Test completely and instead focusing on whether the use of the mark is misleading as to sponsorship or endorsement only.280 This would afford an absolute protection to artistic content that does not attempt to prey on consumers and would provide certainty for all parties.281 In so doing, courts would further protect artistic expression by preventing corporations or celebrities from dragging artists into court for the sole purpose of inducing a settlement, a ploy that inevitably restricts speech through the threat of protracted and expensive legal proceedings.282 Furthermore, this approach is more in line with the general idea behind trademark law, the protection of the consumer.283 It would also avoid the requirement that a judge or jury make a determination as to the meaning of the artistic work. Under the current tests, a judge or jury enjoys too much discretion to force the modification of artistic expression in broad strokes, ignoring the possibility of less intrusive remedies.284

Again, trademark law is primarily employed to protect the rights of the consumer.285 Permitting its use in cases where the element being challenged is itself expressive allows and invites the judiciary to give the plaintiff too many rights and encourages artists to change their works in order to avoid a protracted legal battle. In light of these concerns, trademark law should not be used to vindicate the rights of an individual when doing so adversely affects the public. The song Rosa Parks received a Grammy nomination in 1999,286 and the band won Grammys for Best Rap Duo or Group and Best Rap Album in 2001.287 Most recently, OutKast won another Grammy for Album of the Year in 2003.288 If the public were truly outraged over OutKast’s business practices and artistic choices, would the band have received such awards? Would OutKast have been nominated for a Grammy for Aquemini (the album on which Rosa Parks appears)289 if the voters had thought that the band sold records by preying on unwitting consumers who expected to hear a song about Rosa Parks? In fact, the public does not seem to have been duped into buying Aquemini by the clever use of Rosa Parks’s name as a marketing tool. The band’s current success implies that the public actually likes OutKast’s music. It would be a true shame if OutKast had been forced to either slow or abandon the creative process on their newest Grammy winning album to justify their artistic choices to a judge and jury. The law should endeavor to provide a test that protects speech that is worthy of a Grammy, even if the court dislikes that speech. A test devoid of a content inquiry would accomplish this goal.

Copyright Washington & Lee University, School of Law Summer 2004

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