18
Feb/06

Will "Where's The Beef?" Become Actionable Under Proposed Dilution Law?


wheresbeef.jpg
This is the proposed fair use passage of H.R. 683, the Trademark Dilution Revision Act:
`(3) EXCLUSIONS- The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
`(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
`(B) Fair use of a famous mark by another person, other than as a designation of source for the person’s goods or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
`(C) All forms of news reporting and news commentary.
A group of organizations including the American Library Association, Electronic Frontier Foundation, National Video Resources, Professional Photographers of America, Public Citizen, Public Knowledge, and Society of Children’s Book Writers and Illustrators, have written a letter to the Senate Judiciary Committee, arguing in part that the amendment ‘would:
– eliminate the protection in current law for non-commercial use of a mark (section
43(c)(4)(B) of the Lanham Act); and
– change the application in current law of all the defenses in section 43(c)(4) so
that none of them apply to claims of “unfair competition” under section 43(a). ‘
The letter concludes that this amendment would, for example:
“Walter Mondale’s put-down of Gary Hart during the 1984 primaries, using the Wendy’s
slogan “Where’s the Beef,” could be actionable as dilution under the bill as passed by the House. ”
OK. Accepting for this hypo that ‘Where’s the Beef’ was a famous mark at the time, Walter Mondale was not using the mark as a designation of source. However, the letter points out, he is not commenting on beef. Or does this fact pattern get knocked out under the Falwell and Mosely cases in that this is simply not trademark use?
Not mentioned in the letter, but a seemingly more likely prospect, would be the reversal of the BARBIE GIRL case. Could it be argued that the band Aqua used BARBIE GIRL as a designation of source?
So what say you:
Would Mondale’s use of ‘Where’s The Beef’ be actionable?
Would Aqua’s use of ‘Barbie Girl’?

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