(Winter 1997)
Barney, that purple, saccharine dinosaur on kids' TV, has struck a sour note. Last month, his owners filed a trademark and copyright infringement suit against The Famous San Diego Chicken. His act at professional sporting events involves assaulting a Barney-like purple dinosaur. Barney seeks an injunction plus $100,000 per performance. The Chicken argues that "poking" fun is a fair use, a parody.
You smile. But the stakes are higher than you think. The California Trial Lawyers (excuse me, "Consumer Attorneys") Ass'n is thinking of offering their members' services free to the highest bidder. Animal rights groups, moreover, after initial debate about losing their objectivity in aligning with one (pseudo) species against another, are siding with Barney. Our cub lgp@law® reporter has procured an early draft of their amicus brief. "Dinosaurs may be extinct, but they still need protection," it begins, without explanation. Well, there it is.
Smelling a ripe opportunity, the World Boxing Ass'n, International Boxing Ass'n, Universal Boxing Ass'n and Don King Inter-Galactic Boxing-Diving Ass'n will soon jump into the ring, supporting The Chicken. Latrell Sprewell has been contacted to reenact his trademark choke hold against a Barney clone. It's a natural: the dinosaur is already purple.
Not that Barney doesn't have a cogent argument. Kids are his business and his customers. Repeated acts involving pummelling of this Barney look-alike "dilutes the distinctive quality of the valuable Barney trademark."
Dilution is a new federal concept, involving blurring or tarnishing the luster of a famous trademark by other's use of a similar mark, even if no consumer confusion exists. Thus, we see the growing tension between the long-standing parody defense in trademark law and the new federal dilution law.
Note also the irony. If Barney is portrayed as a wimp, is that consistent with his TV persona? If so, does it tarnish or reinforce? (Why don't I get cases like this?) We also have the intriguing dilemma of focusing on surveys of children as the possibly relevant consumer group and their reliability.
When can you make fun of a famous mark, if in fact such fun "tarnishes" the distinctive quality and goodwill associated with of the mark? Maybe you should ask your children.