This аppeal in a trademark case presents a rarely litigated issue likely to recur with increasing frequency in this era of head-to-head comparative advertising. The precise issue, arising under the New York anti-dilution statute, N.Y.Gen.Bus.Law § 368-d (McKinney 1984), is whether an advertiser may depict an altered form of a competitor’s trademark to identify the competitor’s product in a comparative ad. The issue arises on an appeal by defendant-appellant MTD Products, Inc. (“MTD”) from the August 9, 1994, order of the United States District Court for the Southern District of New York (Lawrence M. McKenna, Judge) granting a preliminary injunction to plaintiff-appellee Deere & Company (“Deere”) and Deere’s cross-appeal to broaden the scope of the injunction beyond New York State,
Although a number of dilution cases in this Circuit have involved use оf a trademark by a competitor to identify a competitor’s products in comparative advertising,
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as
Background
Deere, a Delaware corporation with its principal place of business in Illinois, is the world’s largest supplier of agricultural equipment. For over one hundred years, Deere has used a deer design (“Deere Logo”) as a trademark for identifying its products and services. Deere owns numerous trademark registrations for different versions of the Deere Logo. Although these versions vary slightly, all depict a static, twо-dimensional silhouette of a leaping male deer in profile. The Deere Logo is widely recognizable and a valuable business asset. 3
MTD, an Ohio company with its principal place of business in Ohio, manufactures and sells lawn tractors. In 1993, W.B. Doner & Company (“Doner”), MTD’s advertising agency, decided to create and produce a commercial — the subject of this litigation — that would use the Deere Logo, without Deere’s authorization, for the purpose of comparing Deere’s line of lawn traсtors to MTD’s “Yard-Man” tractor. The intent was to identify Deere as the market leader and convey the message that Yard-Man was of comparable quality but less costly than a Deere lawn tractor.
Doner altered the Deere Logo in several respects. For example, as Judge McKenna found, the deer in the MTD version of the logo (“Commercial Logo”) is “somewhat differently proportioned, particularly with respect to its width, than the deer in the Deere Logo.” Doner also removed the name “John Deere” from the version of the logo used by Deere on the front of its lawn tractors, and made the logo frame more sharply rectangular.
More significantly, the deer in the Commercial Logo is animated and assumes various poses. Specifically, the MTD deer looks over its shoulder, jumps through the logo frame (which breaks into pieces and tumbles to the ground), hops to a pinging noise, and, as a two-dimensional cartoon, runs, in apparent fear, as it is pursued by the Yard-Man lawn tractor and a barking dog. Judge McKenna described the dog as “recognizable as a breed that is short in stature,” and in the commercial the fleeing deer appears to be even smaller than the dog. Doner’s interoffice documents reflect that the animated deer in the commercial was intended to appear “more playful and/or confused than distressed.”
MTD submitted the commercial to ABC, NBC, and CBS for clearance prior to airing, together with substantiation of the various claims made regarding the Yard-Man lawn tractor’s quality and cost relative to the corresponding Deere model. Each network ultimately approved the commercial, though ABC reserved the right to re-evaluate it “should there be [a] responsible complaint,” and CBS demanded and received a letter of indemnity from Doner. The commercial ran from the week of March 7, 1994, through the week of May 23, 1994.
On appeal, MTD argues that the anti-dilution statute does not prohibit commercial uses of a trademark that do not confuse consumers or result in a loss of the trademark’s ability to identify a single manufacturer, or tarnish the trademark’s positive connotations. Deere cross-appeals, contending that injunctive relief should not have been limited to New York State. We affirm both the finding of likely dilution and the scope of the injunction. 5
Discussion
Section 368-d, which has counterparts in more than twenty states, reads as follows:
Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.
N.Y.Gen.Bus.Law § 368-d (McKinney 1984). The аnti-dilution statute applies to competitors as well as noncompetitors,
see Nikon Inc. v. Ikon Corp.,
In order to prevail on a section 368-d dilution claim, a plaintiff must prove, first, that its trademark either is of truly distinctive quality or has acquired secondary meaning, and, second, that there is a “likelihood of dilution.”
Sally Gee,
MTD does not dispute that the Deere Logo is a distinctive trademark that is capable of dilution and has acquired the requisite secondary meaning in the marketplace.
See Allied Maintenance Corp. v. Allied Mechanical Trades, Inc.,
Likelihood of Dilution.
Traditionally, this Court has defined dilution under section 368-d “as either the blurring of a mark’s product identification or the tarnishment of the affirmative associations a mark has come to con
In previous eases, “blurring” has typically involved “the whittling away of an established trademark’s selling power through its unauthorized use by others upon dissimilar products.”
Mead Data,
“Tarnishment” generally arises when the plaintiffs trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner’s product. 7 In such situations, the trademark’s reputation and commercial value might be diminished because the public will associate the lack of quality or lack of prestige in the defendant’s goods with the plaintiffs unrelated goods, or because the defendant’s use reduces the trademark’s reputation and standing in the eyes of consumers as a wholesome identifier of the owner’s products or services.
At the hearing on Deere’s application for a temporary restraining order, the District Court initially suggested that there was neither blurring nor tarnishment as those terms have been used, and consequently no dilution of the Deere Logo. The Court observed that MTD’s commercial “makes it clear that Deere is a distinct product coming from a different source than Yard-Man,” and does not “bring the plaintiffs mark into disrepute.” However, in its preliminary injunction ruling, the Court found that Deere would probably be able to establish a likelihood of dilution by blurring under section 368-d; tarnishment was not discussed.
The District Court noted that “the instant case [wa]s one of first impression” because it involved a defendant’s use of a competitor’s trademark to refer to the competitor’s products rather than to identify the defendant’s products. For this reason, the traditional six-factor test for determining whether there has been dilution through blurring of a trademark’s product identification was not fully applicable.
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Focusing only on the alteration of the static Deere Logo resulting from MTD’s animation, the Court concluded that MTD’s version constituted dilution because it was likely to dimmish the strength of identification between the original Deere symbol and Deere products,
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and to blur the distinc
The District Court’s analysis endeavored to fit the MTD commercial into one of the two categories we have recognized for a section 868-d claim. However, the MTD commercial is not really a typical instance of blurring,
see, e.g., Toys “R” Us, Inc. v. Canarsie Kiddie Shop, Inc.,
In giving content to dilution beyond the categories of blurring or tarnishment, however, we must be careful not to broaden section 368-d to prohibit all uses of a distinctive mark that the owner prefers not be made. Several different contexts may conveniently be identified. Sellers of commercial products may wish to use a competitor’s mark to identify the competitor’s product in comparative advertisements.
See, e.g., R.G. Smith v. Chanel, Inc.,
Sellers of commercial products who wish to attract attention to their commercials or products and thereby increase sales by рoking fun at widely recognized marks of noncompeting products,
see, e.g., Eveready Battery Co., Inc. v. Adolph Coors Co.,
Whether the use of the mark is to identify a competing product in an informative comparative ad, to make a comment, or to spoof the mark to enliven the advertisement for a noncompeting or a competing product, the scope of protection under a dilution statute must take into account the degree to which the mark is altered and the nature of the alteration. Not every alteration will constitute dilution, and more leeway for alterations is appropriate in the context of satiric expression and humorous ads for noneompeting products. But sоme alterations have the potential to so lessen the selling power of a distinctive mark that they are appropriately proscribed by a dilution statute. Dilution of this sort is more likely to be found when the alterations are made by a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration.
We need not attempt to predict how New York will delineate the scope оf its dilution statute in all of the various contexts in which an accurate depiction of a distinctive mark might be used, nor need we decide how variations of such a mark should be treated in different contexts. Some variations might well be de minimis, and the context in which even substantial variations occur may well have such meritorious purposes that any diminution in the identifying and selling power of the mark need not be condemned as dilution.
Wherever New York will ultimately draw the line, we can be reasonably confident that the MTD commercial challenged in this case crosses it. The commercial takes a static image of a graceful, full-size deer — symbolizing Deere’s substance and strength — and portrays, in an animated version, a deer that appears smaller than a small dog and scampers away from the dog and a lawn tractor, looking over its shoulder in apparent fear. Alterations of that sort, accomplished for the sole purpose of promoting a competing product, are properly found to be within New York’s concept of dilution because they risk the possibility that consumers will come to attribute unfavorable characteristics to a mark and ultimately associate the mark with inferior goods and services.
See Merriam-Webster, Inc. v. Random House, Inc.,
Significantly, the District Court did not enjoin accurate reproduction of the Deere Logo to identify Deere products in comparative advertisements. MTD remains free to deliver its message of alleged product superiority without altering and thereby diluting Deere’s trademarks. The Court’s order imposes no restriction on truthful advertising properly comparing specific products and their “objectively measurable attributes.” FTC Policy Statement on Comparative Advertising, 16 C.F.R. § 14.15 n. 1 (1993). In view of this, the District Court’s finding of a likelihood of dilution was entirely appropriate, notwithstanding the fact that MTD’s humorous depiction of the deer occurred in the context of a comparative advertisement.
Predatory Intent.
The District Court recognized that we have not been authorita
Until New York courts clarify the relevance of intent under section 368-d, we prefer to proceed cautiously, eschewing definitive statements that endeavor to characterize a subjective element appropriate for all contexts. 10 In the context of trademark parody or alteration, a modest version of subjective intent can helpfully distinguish uses of trademarks that endeavor to sell products from uses that seek to make a social or political commentary or an artistic expression. To serve this purpose, all that is needed is an intent to promote one’s product. As the District Court found, at least such intent was clearly present in this case.
Scope of Injunction.
Finally, turning to Deere’s objection to the geographic scopе of the injunction, we conclude that the District Court did not exceed its discretion in limiting the scope of relief to New York State.
See Nikon,
Although the record does not clearly reflect the reasons for the limitation, the District Court observed that “the same considerations that led [it] to limit the injunctive relief for the violation of the New York anti-dilution statute to activities originating or having an effect within the boundaries of the state of New York likewise would apply to injunctive relief granted pursuant to Deere’s common law claims of unfair competition and unjust enrichment.”
It is thus clear that the District Court believed it had the power to grant broader injunctive relief but declined to exercise it. In view of the novelty of the issues raised, we cannot say that limiting interim relief to conduct in New York State was beyond “the range of [the District Court’s] decision-making authority,”
Stormy Clime Ltd. v. Pro-Group, Inc.,
Althоugh it is well established that an advertiser may use a competitor’s trademark for the purpose of comparing its products directly to those of the competitor, no uniform rule exists where, as here, the comparative advertiser not only uses the competitor’s mark but alters it. The District Court correctly perceived the instant case to be one of “first impression,” particularly because MTD’s commercial creates a likelihood of dilution involving neither “blurring” nor “tarnishing” as those terms have genеrally been understood.
Moreover, a number of states do not have anti-dilution laws, and even those states with such laws or similar causes of action might not restrict commercial use of trademarks that do not confuse consumers or blur or tarnish the trademark.
Cf. Rosemont Enterprises, Inc. v. Urban Systems, Inc.,
Particularly at this early stage in the litigаtion, where the relief is preliminary, it was proper for the District Court to restrict the reach of the injunction.
See Blue Ribbon Feed Co. v. Farmers Union Central Exchange, Inc.,
Conclusion
The order of the District Court granting a preliminary injunction as to activities within New York State is affirmed.
Notes
.
See, e.g., Diversified Marketing, Inc. v. Estee Lauder, Inc.,
.
See, e.g., McDonald's Corp. v. McBagel’s, Inc.,
. Deere's net sales of equipment bearing the Deere Logo for the fiscal year 1993 exceeded $6.4 billion, and Deere contends that revenues from its financial services and insurance operations, which also utilize the Deere Logo, exceeded $1.1 billion. Deere has spent a substantial amount of money using the Deere Logo to advertise its products and services.
. The Lanham Act requires a showing that "the challenged advertisement is literally false" or that it is "likely to mislead or confuse consumers.”
Johnson & Johnson * Merck Consumer Pharmaceuticals Co. v. Smithkline Beecham Corp.,
. Because we agree with the District Court that the considerations supporting a geographic limitation would apply with equal force to Deere's common law causes of action for unfair competition by misappropriation and unjust enrichment, we do not consider those claims. Deere does not challenge the Court's Lanham Act ruling in its briefs on appeal. The commercial does not appear to be misleading or confusing as to sponsorship, and is in any event not so misleading or confusing as to warrant preliminary injunctive relief as a matter of law. Accordingly, we confine our analysis to the question of dilution under the New York statute.
.
See, e.g., Jordache Enterprises, Inc. v. Levi Strauss & Co.,
.
See, e.g., Coca-Cola Co.,
.
See Mead Data,
. To support its argument that animation does not weaken or dilute a trademark, MTD pointed to examples of entities animating their own trademarks. Indeed, at one point Deere had considered and rejected the possibility of animating its logo. But, as the District Court observed, for purposes of trademаrk law, "there is a vast difference between the holder of a trademark animating its own static mark and a competitor animating the holder’s mark without the owner’s permission.”
. As the District Court noted, our characterization of "predatory intent” as an “element” of an anti-dilution claim in
W.W.W. Pharmaceutical,
. Additionally, at least one state does not apply its anti-dilution law to competitors.
See, e.g., AHP Subsidiary Holding Co. v. Stuart Hale Co.,