L.L. Bean, Inc. v. Drake Publishers, Inc.

• Decision Date: 12 February 1987
• Docket Number: N,No. 86-1202,86-1202
• Citation: 811 F.2d 26
• Parties: , 13 Media L. Rep. 2009 L.L. BEAN, INC., Plaintiff, Appellee, v. DRAKE PUBLISHERS, INC., et al., Defendants, Appellants. o. 86-1203.
• Court: U.S. Court of Appeals — First Circuit

Page 26

811 F.2d 26

1 U.S.P.Q.2d 1753, 13 Media L. Rep. 2009

L.L. BEAN, INC., Plaintiff, Appellee, v. DRAKE PUBLISHERS, INC., et al., Defendants, Appellants.

No. 86-1202, No. 86-1203.

United States Court of Appeals, First Circuit.

Argued Sept. 12, 1986.

Decided Feb. 10, 1987.

As Amended Feb. 12, 1987.

Norman S. Beier with whom Lawrence E. Abelman, Abelman, Frayne, Rezac & Schwab, New York City, Elliott L. Epstein, Robert S. Hark and Isaacson, Hark & Epstein, Lewiston, Me., were on brief, for defendants, appellants.

George S. Isaacson with whom Alfred C. Frawley and Brann & Isaacson, Lewiston, Me., were on brief, for plaintiff, appellee.

Before CAMPBELL, Chief Judge, COFFIN and BOWNES, Circuit Judges.

BOWNES, Circuit Judge.

Imitation may be the highest form of flattery, but plaintiff-appellee L.L. Bean, Inc., was neither flattered nor amused when High Society magazine published a prurient parody of Bean's famous catalog. Defendant-appellant Drake Publishers, Inc., owns High Society, a monthly periodical featuring adult erotic entertainment. Its October 1984 issue contained a two-page article entitled "L.L. Beam 's Back-To-School-Sex-Catalog." (Emphasis added.) The article was labelled on the magazine's contents page as "humor" and "parody." The article displayed a facsimile of Bean's trademark and featured pictures of nude models in sexually explicit positions using "products" that were described in a crudely humorous fashion.

L.L. Bean sought a temporary restraining order to remove the October 1984 issue from circulation. The complaint alleged trademark infringement, unfair competition, trademark dilution, deceptive trade practices, interference with prospective business advantage and trade libel. The United States District Court for the District of Maine denied Bean's request for a temporary restraining order. Thereafter, both parties sought summary judgment. The district court granted summary judgment in favor of Drake on the claims for trade libel and interference with prospective business advantage. It denied summary judgment to both parties on Bean's claims for trademark infringement, unfair competition and deceptive trade practices, leaving the factual question of "likelihood of confusion" for resolution at trial. L.L. Bean, Inc. v. Drake Publishers, Inc., 625 F.Supp. 1531 (D.Me.1986).

The district court did, however, grant Bean summary judgment with respect to the trademark dilution claim raised under Maine law. Me.Rev.Stat.Ann. tit. 10, Sec. 1530 (1981). ¹ It ruled that the article had tarnished Bean's trademark by undermining the goodwill and reputation associated with the mark. Relying on two affidavits presented by appellee, the district court found that Bean had suffered harm from the publication of the article. The court rejected Drake's claim that the Maine statute did not encompass allegations of tarnishment caused by parody. The court also held that enjoining the publication of a parody to prevent trademark dilution did not offend the first amendment. An injunction issued prohibiting further publication or distribution of the "L.L. Beam Sex Catalog." L.L. Bean v. Drake Publishers, 625 F.Supp. at 1530. After its motion for reconsideration was denied, Drake appealed the order enjoining further publication of the Sex Catalog.

Since there are no Maine cases delineating the scope of the Maine anti-dilution statute, we do not, at this time, review the district court's ruling on the reach of the statute. Because we think it would be inappropriate for us to construe the statute in the first instance, we shall confine our review to whether the injunction offends the first amendment.

In reviewing an appeal from an entry of summary judgment, the record must be viewed in the light most favorable to the party opposing the motion. King v. Williams Industries, Inc., 724 F.2d 240, 241 (1st Cir.), cert. denied, 466 U.S. 980, 104 S.Ct. 2363, 80 L.Ed.2d 835 (1984); Hahn v. Sargent, 523 F.2d 461, 464 (1st Cir.1975), cert. denied, 425 U.S. 904, 96 S.Ct. 1495, 47 L.Ed.2d 754 (1976). Where, as here, both parties have moved for summary judgment, a court separately evaluates the two motions, in each instance drawing factual inferences most favorable to the opposing party. 10A C. Wright, A. Miller & M.K. Kane, Federal Practice and Procedure Sec. 2720, at 23-24 (2d ed. 1983). Since the district court rejected defendant's position that a trademark parody constituted a defense to a claim based on the anti-dilution statute, we assume, as we must for purposes of this appeal, that the article is a trademark parody.

I.

Parody is a humorous form of social commentary and literary criticism that dates back as far as Greek antiquity. "The rhapsodists who strolled from town to town to chant the poems of Homer," wrote Issac D'Israeli, "were immediately followed by another set of strollers--buffoons who made the audiences merry by the burlesque turn which they gave to the solemn strains." I. D'Israeli, Curiosities of Literature, quoted in D. MacDonald, Parodies: An Anthology from Chaucer to Beerbohm--and After 562 (1960). The Oxford English Dictionary defines parody as "[a] composition in which the characteristic turns of thought and phrase of an author are mimicked to appear ridiculous, especially by applying them to ludicrously inappropriate subjects." Chaucer, Shakespeare, Pope, Voltaire, Fielding, Hemingway and Faulkner are among the myriad of authors who have written parodies. Since parody seeks to ridicule sacred verities and prevailing mores, it inevitably offends others, as evinced by the shock which Chaucer's Canterbury Tales and Voltaire's Candide provoked among their contemporaries.

A trademark is a word, name or symbol adopted and used by a manufacturer or merchant to identify goods and distinguish them from those manufactured by others. 15 U.S.C. Sec. 1127 (1985 Supp.). One need only open a magazine or turn on television to witness the pervasive influence of trademarks in advertising and commerce. Designer labels appear on goods ranging from handbags to chocolates to every possible form of clothing. Commercial advertising slogans, which can be registered as trademarks, have become part of national political campaigns. "Thus, trademarks have become a natural target of satirists who seek to comment on this integral part of the national culture." Dorsen, Satiric Appropriation and the Law of Libel, Trademark and Copyright: Remedies Without Wrongs, 65 B.U.L.Rev. 923, 939 (1986); Note, Trademark Parody: A Fair Use and First Amendment Analysis, 72 Va.L.Rev. 1079 (1986).

The ridicule conveyed by parody inevitably conflicts with one of the underlying purposes of the Maine anti-dilution statute, which is to protect against the tarnishment of the goodwill and reputation associated with a particular trademark. Pignons, S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 494-95 (1st Cir.1981). The court below invoked this purpose as the basis for its decision to issue an injunction. The issue before us is whether enjoining the publication of appellant's parody violates the first amendment guarantees of freedom of expression.

II.

The district court disposed of the first amendment concerns raised in this matter by relying on the approach taken in Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir.1979). In rejecting Drake's claim that the first amendment protects the unauthorized use of another's trademark in the process of conveying a message, the district court cited the following language from Dallas Cowboys Cheerleaders "Plaintiff's trademark is in the nature of a property right, ... and as such it need not 'yield to the exercise of First Amendment rights under circumstances where adequate alternative avenues of communication exist.' Lloyd Corp. v. Tanner, 407 U.S. 551 [92 S.Ct. 2219, 33 L.Ed.2d 131] (1972)."

L.L. Bean v. Drake, 625 F.Supp. at 1537 (quoting Dallas Cowboys Cheerleaders, 604 F.2d at 206).

We do not believe that the first amendment concerns raised here can be resolved as easily as was done in Dallas Cowboys Cheerleaders. Cf. Dorsen, Satiric Appropriation, 65 B.U.L.Rev. at 951; Denicola, Trademarks As Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 Wis.L.Rev. 158, 206 ("the sweeping rejection of the defendant's first amendment claim in Dallas Cowboys Cheerleaders is dangerously simplistic."). Aside from our doubts about whether there are alternative means of parodying plaintiff's catalog, we do not think the court fully assessed the nature of a trademark owner's property rights. A trademark is a form of intellectual property; the Supreme Court case, Lloyd Corp. v. Tanner, 407 U.S. 551, 92 S.Ct. 2219, 33 L.Ed.2d 131 (1972), relied upon by the Dallas Cowboys Cheerleaders court involved a shopping center. The first amendment issues involved in this case cannot be disposed of by equating the rights of a trademark owner with the rights of an owner of real property:

[T]rademark is not property in the ordinary sense but only a word or symbol indicating the origin of a commercial product. The owner of the mark acquires the right to prevent the goods to which the mark is applied from being confused with those of others and to prevent his own trade from being diverted to competitors through their use of misleading marks.

Power Test Petroleum Distributors v. Calcu Gas, 754 F.2d 91, 97 (2d Cir.1985) (emphasis added) (quoting Industrial Rayon Corp. v. Dutchess Underwear Corp., 92 F.2d 33, 35 (2d Cir.1937), cert. denied, 303 U.S. 640, 58 S.Ct. 610, 82 L.Ed. 1100 (1938)). Accord Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., 395 F.2d 457 (3d Cir.), cert. denied, 393 U.S. 934, 89 S.Ct. 293, 21 L.Ed.2d 270 (1968); Lucasfilm Ltd. v. High Frontier, 622 F.Supp. 931 (D.D.C.1985).

The limits on the scope of a trademark owner's property rights was considered recently in Lucasfilm Ltd. v. High Frontier, su...