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Attorney General Nominee Mukasey on Trademarks and the First Amendment

In doing some research on the new Attorney General nominee, I discovered that he was the judge who penned the opinion in Tommy Hilfiger v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002).

In that case, Nature Labs produced a line of “pet perfumes” whose names parodied some of the higher-end human smell-good products. Judge Mukasey wrote a well-reasoned, thoughtful, and funny (as far as a trademark opinion can be funny) opinion.

[E]ven without recourse to the First Amendment, Nature Labs’ comical adaptation is still relevant to the extent the joke is clear enough to result in no confusion under the statutory likelihood of confusion analysis. In such cases, “parody is not really a separate ‘defense’ as such, but merely a way of phrasing the traditional response that customers are not likely to be confused as to source, sponsorship or approval.


Because defendant’s “theme and pun on the [Hilfiger] marks are obvious, even a minimally prudent customer would not be confused by the source or affiliation of [defendant’s products]. The purchasing public must be credited with at least a modicum of intelligence.

Hilfiger fails to see the humor in all of this. In support of its dour position on the subject, it cites two opinions in which dog treats parodying human food items were found to infringe on the owner’s marks

Hilfiger, and perhaps some others, would do well to read McCarthy on the subject:: “No one likes to be the butt of joke, not even a trademark. But the requirement of trademark law is that a likely confusion of source, sponsorship, or affiliation must be proven, which is not the same thing as a ‘right’ not to be made fun of.” McCarthy § 31:155; see also Anheuser-Busch, 962 F.2d at 322 (“The purpose of the Lanham Act is to eliminate consumer confusion, not to banish all attempts at poking fun or eliciting amusement. . . [or] deprive the commercial world of all humor and levity.”). Although Hilfiger is unamused, it has not offered evidence on the issue of confusion that would justify denying Nature Labs’ motion for summary judgment. That motion therefore is granted.

For the reasons set forth above, defendant’s motion for summary judgment is granted. As the Ninth Circuit recently counseled both parties in a bitterly contested trademark parody case, plaintiff is “advised to chill.”

Although this single case doesn’t necessarily predict how Mukasey will treat First Amendment issues as Attorney General, it is warming to see that the man has respect for our constitutional keystone. I hope that this translates into some re-prioritizing at the Department of Justice. Gonzalez was just way too much of a lapdog to the social conservatives and anti-constitutionalists. See First Amendment? No thanks, this is Alberto Gonzalez Land.

If nothing else, it is good to see that we have a nominee with intelligence and a sense of humor.

Of course, A-Gonz was funny and smart too, just a different kind of funny and a different kind of smart.

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