Tabberone is pronounced tab ber won
not tay ber own
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Tabberone is pronounced tab ber won |
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| This information is taken directly from the court opinion. It is not taken out of context nor is it altered. |
| From Westchester Media Co., L.P. v. PRL USA Holdings, Inc, 214 F.3d 658 (5th Cir. 2000) |
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Insofar as the purpose of a remedy for trademark infringement is to eliminate the likelihood of confusion between the holder of the mark and the interloper, the
remedy might in a particular case require suppression of otherwise constitutionally protected speech. See, e.g., Dr. Suess Enters., L.P. v. Penguin Books USA, Inc.,
109 F.3d 1394 (9th Cir. 1997); Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979). Like fraudulent speech, speech
that misleads or creates confusion is not protected under the First Amendment. See Better Business Bureau, 681 F.2d at 404. Where the allegedly infringing
speech is at least partly literary or artistic, however, and not solely a commercial appropriation of another's mark, the preferred course is to accommodate trademark
remedies with First Amendment interests. One obvious mode of accommodation is a disclaimer that will officially dissociate the junior user of the mark from the senior
user's product. Disclaimers have frequently been approved by this court and others when trademark and First Amendment interests intersect. See, e.g.,
Better Business Bureau, 681 F.2d at 405; Consumers Union, 724 F.2d at 1053; Twin Peaks Productions, 996 F.2d at 1379. 19
Even in this case, the court issued a preliminary injunction requiring Westchester to publish the New POLO magazine with a disclaimer of any relation to PRL.
When the court ultimately rejected a disclaimer, it took insufficient account of Westchester's continuing First Amendment interests -- in both the use of the title and content of its ongoing publication -- and failed to implement the general rule that an equitable remedy should be no broader than the scope of the violation. |
