court case re right of publicity and fair use

8/14/2019 Court Case Re Right of Publicity and Fair Use

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Wwe v. Big Dog Holdings, Inc., 280 F.Supp.2d 413 (W.D. Pa., 2003)

280 F.Supp.2d 413

WORLD WRESTLING FEDERATION ENTERTAINMENT, INC., a Delaware corporation, Plaintiff,

v.

BIG DOG HOLDINGS, INC., a Delaware corporation, Defendant.

No. 01-CV-394.United States District Court, W.D. Pennsylvania.

March 10, 2003.

I. INTRODUCTIONThe Worldwide Wrestling Federation

Entertainment, Inc. ("WWE") filed a seventeen (17)count Amended Complaint asserting claims againstBig Dog Holdings, Inc. ("Big Dog") for copyrightinfringement (Counts I through VI), trademarkinfringement under Section 32 of the Lanham Act, 15U.S.C. 1114, (Count VII), trademark infringementand false designation of origin under Section 43(a) of

the Lanham Act, 15 U.S.C. 1125(a), (Count VIII),trade dress infringement under Section 43(a) of theLanham Act, 15 U.S.C. 1125(a), (Count IX),misappropriation and unfair competition underSection 43(a) of the Lanham Act, 15 U.S.C. 1125(a), (Count X), trademark dilution under Section43(c) of the Lanham Act, 15 U.S.C. 1125(c),(Count XI), violation of the Pennsylvania anti-dilution statute, 54 PA. CONS. STAT. ANN. 1124(Count XII), violation of Pennsylvania fair tradepractices statutes, 73 PA. CONS. STAT. ANN. 201-2 and 201-3 (Count XIII), unfair competitionunder the common law of Pennsylvania (Count XIV),

and violation of the right of publicity under thecommon law of Pennsylvania (Counts XV, XVI, andXVII).

Following the close of discovery, Big Dog fileda Motion for Summary Judgment pursuant to Rule 56of the Federal Rules of Civil Procedure. WWE hasresponded and the motion is now before the Court.

II. STATEMENT OF THE CASEA. The ContestantsWWE is an integrated media and entertainment

company engaged in the development, promotion andmarketing of television programming, pay-per-view

programming and live arena events, and the licensingand sale of branded consumer products. (Am.Cmplnt. 11 and 16). WWE has been involved inthe sports entertainment business for over twenty (20)years and has developed story lines based around itswrestling characters. (Am. Cmplnt. 17 and 18).Currently, WWE produces five television programseach week: (i) "Raw" and "War Zone" shownconsecutively on Monday nights and known as "Rawis War"; (ii) "WWF Smackdown!" on Thursday

nights; (iii) "Live Wire" on Saturday mornings; (iv)"Superstars" on Sunday mornings; and (v) "Heat" onSunday nights. (Am. Cmplnt. 17).

Through its programming, described by WWEas "... action-packed episodic drama ... akin to anongoing, ever-developing soap opera," WWE hasdeveloped popular wrestling characters appearingunder unique names and portrayed with unique

persona, history relationships, music and visualappearance, and behavior. (Am. Cmplnt. 17 and19). A principal component of WWE's business is themerchandising and licensing of branded consumer products depicting these characters' names,likenesses, signature phrases, as well as depictingWWE's programming. (See Appendix to WWE'sOpposition to Big Dog's Motion for SummaryJudgment Exhibit R) (hereinafter "WWE Exhibit ___"). These branded consumer products aremarketed and sold through two separate operations:(1) WWE direct merchandising, which refers toWWE's own design, production and sale of product

principally through WWE's internet website,semiannual catalogs and sales at live events; and (2)licensing, which refers to WWE's licensing of itsintellectual property by category (i.e., t-shirts, tradingcards, posters, action figures, etc.) to third-partycompanies that pay royalties to WWE on productsales.1 (WWE Exhibit T, p. 6 lines 7-22). WWE, inturn, pays royalties to the individual portraying thecharacter based on revenues from the sales of products depicting the individual's WWE character.(WWE Exhibit Q, 6).

Through predecessor companies, Big Dog has

been in business since 1983, and its first full year ofoperations under current ownership was in 1993. (BigDog Exhibit G, 1). Big Dog develops, markets, andretails a branded lifestyle collection of unique, highquality, popular priced consumer products, includingactive wear, casual sportswear, accessories and gifts.(Big Dog Facts 18). Big Dog has registeredtrademarks in both "Big Dogs" and its famous dogdesign logo. (Big Dog Facts 35). Its merchandise issold solely through its own Big Dog stores, its

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catalogs, and through Big Dog's website. (Big DogFacts 19). It is Big Dog's contention that it hasalways developed certain graphics as parodies ofpopular culture which poke fun at what is going on inthe world. (Big Dog Exhibit F at pp. 13 and 18; BigDog Exhibit J). Big Dog further contends that thedepiction of the Big Dog character over and over indifferent contexts is part of a long-running joke thatconsumers have come to identify with the Big Dogbrand. (WWE Exhibit A, p. 110:lines 1-12).

Big Dog contends that its Big Dog character isintended to be irreverent, funny, and not afraid tomake fun of "overinflated aspects of our society."(WWE Exhibit A, p. 92: lines 15-18). Moreover, BigDog alleges that its t-shirts appeal to customers whoenjoy mocking "over-promoted pop phenomena" thatare prevalent in today's media. (Big Dog Facts 32).The Big Dog graphics ridicule, poke fun at, and mockthese self-serious icons by characterizing them asdogs, particularly associating them with the Big Dog

character, giving them humorous names, and"dogifying" them. (WWE Exhibit A, p. 68: lines 18-25; p. 69: lines 1-6). A Big Dog graphic artistdescribed "dogify" as a means "to satirize a givenentity by giving him big floppy ears, a big silly tail,turning him into this variety of dog that we turneverything into." (WWE Exhibit B, p. 12: lines 5-8).The dog graphic essentially is a caricature of theintended subject, copying elements of the subject soin satirizing a particular person or thing, it isrecognizable to the public. (WWE Exhibit B, p. 15:lines 1-16). Big Dog continues its long-running dogjoke parody by always inserting the dog and showing

the Big Dog character in many different contexts.(WWE Exhibit A, p. 110: lines 1-12)

B. WWE's Intellectual Property"THE ROCK", portrayed by Dwayne Johnson,

"STONE COLD STEVE AUSTIN", portrayed bySteve Williams, and the "UNDERTAKER", portrayedby Mark Calloway, have been three of the WWE'smost popular wrestling characters over the past five(5) years. (WWE Exhibit Q, 7 and 8). WWEalleges that it has developed and promoted THEROCK since 1997, and has created and developed aunique trademarked name, persona and trade dress

for THE ROCK. (Am. Cmplnt. 27 and 28).Similarly, a unique trademarked name, persona andtrade dress has been created, developed and promotedby WWE for STONE COLD STEVE AUSTIN since1996, and the UNDERTAKER since 1990. (Am.Cmplnt. 47, 48, 67, 68 and 69). WWE furthercontends that it owns trademarks and service marksin THE ROCK, STONE COLD STEVE AUSTIN,and the UNDERTAKER.2 (Am. Cmplnt. 42, 61and 80; WWE Appendix Exhibit EE). In addition,

WWE claims ownership in trademarks and servicemarks for: (1) registrations for WWF; (2) the WWFscratch logo; (3) WWF Smackdown! design mark;and (4) AUSTIIN 3:16. (Am. Cmplnt. 21, 22, 24,61, 88, and 89; WWE Appendix Exhibits DD andEE).

In conjunction with its registration of THEROCK mark, WWE alleges that it has acquiredcommon law trademarks in THE ROCK's signaturecatch phrases and slogans: "Know Your Role";"Jabroni"; and the "Brahma Bull". (Am. Cmplnt.40-43). WWE also contends it has acquired acommon law trademark in THE ROCK's BrahmaBull design mark. (Am.Cmplnt. 43).

Integral to WWE's portrayal of the STONECOLD STEVE AUSTIN character is the use of catchphrase slogans and symbols, including: "Open Up aCan of Whoop Ass"; "Austin 3:16"; "Rattlesnake"3;"Cause Stone Cold Said So"; and the Skull design.(Am.Cmplnt. 59). WWE contends that it has

acquired a common law trademark in the "Open Up aCan of Whoop Ass," "Rattlesnake," and the "CauseStone Cold Said So" marks and the Skull designmark. (Am.Cmplnt. 63).

In addition to their unique persona andcharacter, WWE has portrayed THE ROCK, STONECOLD STEVE AUSTIN and the UNDERTAKERcharacters with unique and distinctive trade dress. Acentral component of THE ROCK's trade dress is theBrahma Bull symbol. Not only is THE ROCK oftenreferred to as the "Brahma Bull," but he has a tattooof a Brahma Bull on his right arm, and his clothing,including his wrestling trunks, t-shirts and black

leather jacket, bear the image of a Brahma Bull.(Am.Cmplnt. 31). THE ROCK is generallyportrayed wearing tinted sunglasses, which are oftentipped down to reveal THE ROCK's signature facialexpressions, most notably, the "People's Eyebrow."4(Am.Cmplnt. 31). STONE COLD STEVE AUSTINis generally depicted with solid black wrestlingtrunks, black wrestling boots, no shirt and an openblack leather vest with an image of a white skull onthe left side and the name "AUSTIN" writtenvertically in white lettering down the right side. (Am.Cmplnt. 50).

To further the "menacing persona" of the

UNDERTAKER, he has been generally portrayed inall black clothing with black leather designs on thelegs, a black leather vest with silver buckles, andtattoos covering his body. (Am.Cmplnt. 70). TheUNDERTAKER also wore black elbow pads, blackleather fingerless gloves, black leather boots, andoften entered the ring wearing a long black cape.(Am. Cmplnt. 71). The persona, trade dress andcharacter traits of THE ROCK, STONE COLDSTEVE AUSTIN, and the UNDERTAKER are used

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contends this graphic violates its intellectual propertyrights by, inter alia:

(a) featuring an image of STONE COLDSTEVE AUSTIN wearing STONE COLD STEVEAUSTIN's characteristic trade dress and performing awrestling move. The dog's face is depicted wearing agoatee;

(b) featuring an image of THE UNDERTAKERwearing the characteristic trade dress of THEUNDERTAKER and performing a wrestling move.The caricature has tattoos covering its arms similar toTHE UNDERTAKER. The dog's face is depictedwith long hair;

(c) printing the words "The Underdogger"beside the image of THE UNDERTAKER;

(d) printing the words "Bone Cold StevePawstin" beside the image of STONE COLD STEVEAUSTIN; and

(e) printing "WBDF" in a lettering styleidentical to the WWF scratch logo.

(Am.Cmplnt. 100).The fifth Big Dog graphic is a caricature of THE

ROCK, again the WWE wrestling character isdepicted as a dog, wearing sunglasses and a leatherjacket with the name "The Rock-weiler" at the top ofthe graphic and the phrase "Know Your Role, JaBONEil" at the bottom of the graphic. Also, at the bottom of the graphic are the words "BIG DOGSPORTSWEAR. THIS IS A PARODY." (Big DogExhibit K).

WWE contends this graphic violates its intellectualproperty rights by, inter alia:

(a) featuring an image of THE ROCK wearingthe trade dress of THE ROCK, specifically a blackleather jacket with the image of the BRAHMA BULLdesign on the sleeve. The dog's face is shown givingthe "People's eyebrow," and the nose is the outline ofa Brahma Bull;

(b) printing the words "The Rock-weiler" acrossthe top of the graphic with the word Rock printed inlarger size block letters that appear to be made out ofstone; and

(c) printing the words "Know Your Role,JaBONEil" at the bottom of the graphic.

(Am.Cmplnt. 94).

The sixth Big Dog graphic has "WBDF" inscratch lettering at the top of the graphic and the phrase "Smackdown" at the bottom. Between thephrases is an image of two hands smashing a foldingchair, with the words "Big Dogs" on it, into the faceof a dog with the outline of the dog's face appearingon the seat of the chair. Also, at the bottom of thegraphic are the words "BIG DOG SPORTSWEAR.THIS IS A PARODY." (Big Dog Exhibit K). WWE

contends this graphic violates its intellectual propertyrights by, inter alia:

(a) printing the letters "WBDF" in red lettersacross the top of the graphic in a lettering style likethe WWF scratch letter logo;

(b) printing WWE's "Smackdown" in lettersacross the bottom of the graphic in the same letteringof WWE's "WWF SMACKDOWN!" design mark;and

(c) featuring between the above mentionedwritings an image of two hands smashing a foldingchair, similar to the chairs used as props on WWEprogramming, into the face of a dog with the outlineof the dog's face appearing through the smashedchair.

(Am.Cmplnt. 95).The next Big Dog graphic is a caricature of

STONE COLD STEVE AUSTIN, again the WWEwrestling character is depicted as a dog, wearing blue jeans and a black t-shirt with the phrase "Pawstin

3:16" printed on the t-shirt. The figure also has a tailwhich is wrapped with a bandage. Below the figureare two rattlesnakes, each facing a skull that has dogears and a tire tread across the face. On and amongthe snakes is the name "Bone Cold Steve Pawstin,"and below the name is the phrase "Because BoneCold Said So!" Also, at the bottom of the graphic arethe words "BIG DOG SPORTSWEAR. THIS IS APARODY." (Big Dog Exhibit K). WWE contends thisgraphic violates its intellectual property rights by,inter alia:

(a) featuring an image of STONE COLDSTEVE AUSTIN wearing STONE COLD STEVE

AUSTIN's characteristic trade dress, specifically ablack t-shirt with "Pawstin 3:16" printed in white onthe front. The dog's face has a goatee, and a goldhoop earring in his left dog ear;

(b) printing the words "Bone Cold StevePawstin" underneath the image of STONE COLDSTEVE AUSTIN in stylized letters in connectionwith the image of the rattlesnake and the skull designmark; and

(c) printing the words "Because Bone Cold SaidSo!" across the bottom of the graphic, a reference toWWE's common law trademark phrase.

(Am.Cmplnt. 97).

The final graphic complained of is a designbased upon a poster promoting a movie that was to be(and was) released in May of 2001, "The MummyReturns." The graphic depicts five (5) charactersfrom the movie caricatured as dogs: (a) "BrendanFurasier as Rick O'Collie," (b) "Evelyn Caninevon,"(c) "Ardeth Stray," (d) "Imhotdog," and (e) "ScorpionK-9." At the bottom of the graphic are the words"THE DOGGY RETURNS." Situated among thecharacters is the Big Dog character wrapped like a

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mummy, and the words "Big Dogs" are printed on theforehead of the "Ardeth Stray" character. Also, at the bottom of the graphic are the words "BIG DOGSPORTSWEAR. THIS IS A PARODY." (Big DogExhibit K). Dwayne Johnson, who portrays WWE'sTHE ROCK character, plays the part of the ScorpionKing in the movie. WWE contends the depiction ofthe Scorpion K-9 on the graphic exploits itsintellectual property rights in THE ROCK. (Am.Cmplnt. 113, 114). WWE, further, contends thisgraphic violates its intellectual property rights by,inter alia:

(a) "depicting THE ROCK with a dog's face insuch a way as it appears THE ROCK is making hissignature facial expression, the People's Eyebrow";and

(b) printing the words "The Rock-Weiler as theScorpion K-9" next to the caricature of THE ROCK.5

(Am.Cmplnt. 114).Big Dog also produces, markets and sells the

following products which WWE contends unlawfullyexploits and trades on WWE's intellectual property:

(a) a beanie doll toy called "The Rockweiler"which depicts a dog dressed in what WWE contendsis THE ROCK's characteristic trade dress;

(b) a beanie toy called "Steve Pawstin" whichdepicts a dog dressed in what WWE contends isSTONE COLD STEVE AUSTIN's characteristictrade dress;6

(c) a coffee mug which contains the same imageas the "Big Dogs of Wrestling" graphic;

(d) a sports bottle which contains the sameimage as the "Big Dogs of Wrestling" graphic;

(e) a sports cap which contains the same imageas the Rock-weiler graphic; and

(d) a sticker which contains the same image asthe Rock-weiler graphic.

(Am.Cmplnt. 105, 107-110).WWE argues that Big Dog has blatantly

exploited and traded on the intellectual propertyowned, marketed and licensed by WWE. Big Dogcontends that the WBDF merchandise qualifies asparodies or some other form of expressive statementsabout WWE and its wrestling characters that entitleBig Dog to First Amendment protection in the Court'sanalysis under copyright and trademark law. Further,

Big Dog contends that, whether analyzed undertrademark, dilution, copyright or right of publicitylaw, the WBDF merchandise constitutes apermissible means of expression, and it is entitled tojudgment as a matter of law.

III. LEGAL STANDARD FOR SUMMARYJUDGMENT

Pursuant to FED. R. CIV. P. 56(c), summaryjudgment shall be granted when there are no genuine

issues of material fact in dispute and the movant isentitled to judgment as a matter of law. To supportdenial of summary judgment, an issue of fact indispute must be both genuine and material, i.e., oneupon which a reasonable fact finder could base averdict for the non-moving party and one which isessential to establishing the claim. Anderson v.Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91L.Ed.2d 202 (1986). When considering a motion forsummary judgment, the court is not permitted toweigh the evidence or to make credibilitydeterminations, but is limited to deciding whetherthere are any disputed issues and, if there are,whether they are both genuine and material. Id. Thecourt's consideration of the facts must be in the lightmost favorable to the party opposing summaryjudgment and all reasonable inferences from the factsmust be drawn in favor of that party as well.Whiteland Woods, L.P. v. Township of WestWhiteland, 193 F.3d 177, 180 (3d Cir.1999), Tigg

Corp. v. Dow Corning Corp., 822 F.2d 358, 361 (3dCir. 1987).

When the moving party has carried its burdenunder Rule 56(c), its opponent must do more thansimply show that there is some metaphysical doubt asto the material facts. See Matsushita Elec. Indus. Co.v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct.1348, 89 L.Ed.2d 538 (1986). In the language of theRule, the nonmoving party must come forward with"specific facts showing that there is a genuine issuefor trial." FED. R. CIV. P. 56(e). Where the recordtaken as a whole could not lead a rational trier of fact

to find for the nonmoving party, there is no "genuineissue for trial." Matsushita Elec. Indus. Co. v. ZenithRadio Corp., 475 U.S. at 587, 106 S.Ct. 1348.

The Second Circuit is instructive in applyingthese principles to the question of "fair use" in thecontext of copyright analysis. See Maxtone-Grahamv. Burtchaell, 803 F.2d 1253, 1257-58 (2d Cir.1986),cert. denied, 481 U.S. 1059, 107 S.Ct. 2201, 95L.Ed.2d 856 (1987). Although "fair use is a mixedquestion of law and fact," Harper & Row Publishersv. Nation Enterprises, 471 U.S. 539, 560, 105 S.Ct.2218, 85 L.Ed.2d 588 (1985), on more than one

occasion courts in the Second Circuit have resolvedfair use determinations at the summary judgmentstage. See, e.g., Maxtone-Graham, 803 F.2d 1253;Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2dCir.), cert. denied, 379 U.S. 822, 85 S.Ct. 46, 13L.Ed.2d 33 (1964); Time Inc. v. Bernard GeisAssocs., 293 F.Supp. 130 (S.D.N.Y.1968). "The merefact that a determination of the fair use questionrequires an examination of the specific facts of eachcase does not necessarily mean that in each case

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involving fair use there are factual issues to be tried."Maxtone-Graham, 803 F.2d at 1258 (quotingMeeropol v. Nizer, 417 F.Supp. 1201, 1208(S.D.N.Y.1976), rev'd in part on other grounds, 560F.2d 1061 (2d Cir.1977), cert. denied, 434 U.S. 1013,98 S.Ct. 727, 54 L.Ed.2d 756 (1978)). The fact-driven nature of the fair use determination suggeststhat a district court should be cautious in grantingRule 56 motions in this area; however, it does not protect the copyright holder from summarydisposition of its claims where there are no materialfactual disputes. Wright v. Warner Books, Inc., 953F.2d 731, 735 (2d Cir.1991).

In the trademark context, if the record containsno evidence of actual confusion between the parties'marks, the Court can conclude that "no likelihood ofconfusion exists as a matter of law." See generally VSecret Catalogue, Inc. v. Moseley, 2000 WL 370525,2000 U.S. Dist. LEXIS 5215 (W.D.Ky.2000).

IV. DISCUSSIONA. WWE's Copyright ClaimsWWE contends that Big Dog violated the

Copyright Act of 1976 by infringing upon WWE'scopyrighted property associated with THE ROCK,STONE COLD STEVE AUSTIN, and theUNDERTAKER. (Am. Cmplnt. Counts I throughVI). Copyright infringement is established if the plaintiff proves: (1) that it owned the copyrightedmaterial; and (2) that the copyrighted material wascopied7 by the defendant. Ford Motor Co. v. SummitMotor Products, Inc., 930 F.2d 277, 290 (3d

Cir.1991); Whelan Associates v. Jaslow DentalLaboratory, 797 F.2d 1222, 1231 (3d Cir.1986);Major League Baseball Promotion Corp. v. Colour-Tex, Inc., 729 F.Supp. 1035, 1039 (D.N.J.1990). Forthe purpose of this Motion for Summary Judgmentonly, Big Dog assumes that WWE has established theelements required to prove copyright infringement, but contends that any use of WWE's allegedintellectual property was lawful.

Federal copyright law provides an exception tothe prohibition on reproduction of a copyrightedwork where the reproduction qualifies as "fair use."17 U.S.C. 107. The fair use doctrine was fashioned

as a "guarantee of breathing space" within theconfines of copyright that allows for newtransformative works that further the public discourseand the free exchange of ideas in order to promotescience and the arts. See Campbell v. Acuff-RoseMusic, Inc., 510 U.S. 569, 579, 114 S.Ct. 1164, 127L.Ed.2d 500 (1994). As Justice Story recognized,

in truth, in literature, in science and in art, thereare, and can be, few, if any, things, which in theabstract sense are strictly new and original

throughout. Every book in literature, science and art,borrows, and must necessarily borrow, and use muchwhich was well known and used before.

Emerson v. Davies, 8 F. Cas. 615, 619(C.C.D.Mass.1845) (No. 4,436). Application of thefair use doctrine "always depends on consideration ofthe precise facts at hand." Lucent InformationManagement v. Lucent Technologies, 5 F.Supp.2d238, 242 (D.Del.1998) (citing American GeophysicalUnion v. Texaco, Inc., 60 F.3d 913, 916 (2ndCir.1995).) The factors that a court should considerwhen determining whether use of a work in aparticular case is a fair use under the statute are:

(1) the purpose and character of the use,including whether such use is of a commercial natureor is for nonprofit educational purposes;

(2) the nature of the copyrighted work;(3) the amount and substantiality of the portion

used in relation to the copyrighted work as a whole;and

(4) the effect of the use upon the potentialmarket for or value of the copyrighted work.

See 17 U.S.C. 107.Big Dog argues that its graphics are entitled to a

measure of protection under the fair use doctrine asparodies of the WWE property. Although the statutedoes not specifically list parodies among thecategories of potentially "fair" uses, the SupremeCourt has authoritatively confirmed the applicabilityof the fair use doctrine to parodies. Campbell v.Acuff-Rose Music, Inc., 510 U.S. at 579, 114 S.Ct.1164. In Campbell, the Court initially noted that"parody may or may not be fair use," id. at 581, 114

S.Ct. 1164, and "parody, like any other use, has towork its way through the relevant factors." Id.Specifically relating its first-factor analysis toparodies, the Court stated, "the heart of any parodist'sclaim to quote from existing material is the use ofsome elements of a prior author's composition tocreate a new one that, at least in part, comments onthat author's works." Id. at 580, 114 S.Ct. 1164.

(1) The Purpose and Character of the UseThe first factor in this fair use analysis requires

an examination of two aspects, the character and thepurpose, of the Big Dog graphics. Prior to Campbell,

courts over emphasized the purpose of the use,finding "every commercial use of copyrightedmaterial [to be] presumptively an unfair exploitationof the monopoly privilege that belongs to the ownerof the copyright." Sony Corp. of America v.Universal City Studios, Inc., 464 U.S. 417, 451, 104S.Ct. 774, 78 L.Ed.2d 574 (1984). The SupremeCourt in Campbell, however, has definitively heldthat a finding of fair use is not barred by thecommercial nature of the work. In so holding, the

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Court stated "the statute makes clear that thecommercial or nonprofit educational purpose of awork is only one element of the first factor enquiry..." Campbell v. Acuff-Rose Music, Inc., 510 U.S. at584, 114 S.Ct. 1164. There is no issue herein withregard to the commercial purpose of Big Dog'sgraphics. The Court will therefore move on to thecharacter of the works and whether they are in factparodies.

A critical inquiry regarding this first fair usefactor is whether the second work "adds somethingnew, with a further purpose or different character,altering the first with new expression, meaning, ormessage; it asks, in other words, whether and to whatextent the new work is `transformative.'" Campbell,510 U.S. at 579, 114 S.Ct. 1164. With respect toparody, the Supreme Court concluded:

Parody has an obvious claim to transformativevalue, as Acuff-Rose itself does not deny. Like lessostensibly humorous forms of criticism, it can

provide social benefit, by shedding light on an earlierwork and, in the process, creating a new one... Thus,... parody, like other comment or criticism, may claimfair use under 107.

Id.; see also Fisher v. Dees, 794 F.2d 432 (9thCir.1986) (finding a parody entitled "When SonnySniffs Glue" to be a fair use of the song, "WhenSunny Gets Blue"); Elsmere Music, Inc. v. NationalBroadcasting Co., 482 F.Supp. 741 (S.D.N.Y.), aff'd,623 F.2d 252 (2d Cir.1980) (finding "I Love Sodom,"a Saturday Night Live parody, to be a fair use of "ILove New York"). The Big Dog graphics thereforemust alter WWE's intellectual property with new

expression, meaning or message.It is undisputed that in creating Big Dog's

WBDF graphics, the artist used photographicreferences of WWE's wrestling characters. (WWEExhibit B, p. 25: lines 18-25; p. 26: lines 1-2; p. 29:lines 5-21). Specifically, the artist would get a seriesof pictures of the wrestlers, generally frommagazines, and using all the pictures as a reference,the artist would sketch caricatures of the wrestlersand scan them into the computer for further design.(Id.). Because the new work must reference thecopyrighted material, a "[p]arody needs to mimic anoriginal to make its point, and so has some claim to

use the creation of its victim's (or its collectivevictims') imagination ..." Campbell, 510 U.S. at 580-581, 114 S.Ct. 1164. Moreover, to qualify as a parodyunder the Supreme Court's definition, the newlycreated work must comment upon or criticize theoriginal copyrighted work.

WWE argues that the Big Dog graphics are not parodies because they do not comment on theoriginal copied works. In response to WWE'sinterrogatories requesting Big Dog to identify and

explain in detail the comment or criticism Big Dogcontended was made by the WBDF merchandise, BigDog responded with the following answer for each ofthe alleged infringing graphics: "Said product provides social commentary and humorouscommentary on, and ridicule and poke fun at, thelarger-than-life, intimidating, self-serious fierce andviolent images and persona of WWF professionalwrestling." (WWE Exhibit AA). WWE further arguesthat such answers act as a concession that Big Dog'sWBDF merchandise makes no comment or criticismon the original works. In essence WWE contends thatBig Dog admits its alleged parodic caricature of THEROCK makes no comment specific to WWE'soriginal works depicting THE ROCK and/or THEROCK character itself; that Big Dog's alleged parodiccaricature of STONE COLD STEVE AUSTIN makesno comment specific to WWE's original worksdepicting STONE COLD STEVE AUSTIN and/orthe STONE COLD STEVE AUSTIN character itself;

that Big Dog's alleged parodic caricature of theUNDERTAKER makes no comment specific toWWE's original works depicting the UNDERTAKERand/or the UNDERTAKER character itself; etc.

The Court finds WWE's interpretation of BigDog's interrogatory responses unreasonably narrow,and its argument untenable. There is adequatedeposition testimony from Big Dog indicating thenature of the commentary relative to the WBDFmerchandise.8 (See e.g. WWE Exhibit A, pp. 64-78;WWE Exhibit B, pp. 29-50; WWE Exhibit C, pp. 77-91). A visual examination of the graphics themselvesis evidence of the humor, ridicule, and/or comment

on the over-hyped world of professional wrestling.The graphics depict dogs in wrestling garb, withbeards and goatees, one dog wearing an earring, withtattoos, wearing leather jackets and vests, wearingsunglasses, smashing each other with chairs, and infact, wrestling. The WBDF merchandise can certainly be perceived as commenting, through mockery orderision, on "... the larger-than-life, intimidating, self-serious fierce and violent images and persona ofWWF professional wrestling." In Tommy HilfigerLicensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d410 (S.D.N.Y.2002), Hilfiger argued that the NatureLabs alleged parody regarding pet perfume made no

comment about Hilfiger, and was therefore notentitled to First Amendment protection fromHilfiger's trademark infringement claim. TommyHilfiger Licensing, Inc. v. Nature Labs, LLC, 221F.Supp.2d at 415. Similarly, Hilfiger argued that thegeneral partner of Nature Labs, John Harris, wasunable to point to a specific comment about Hilfigermade by its products. The court stated that"[a]lthough Harris had difficulty expressing the

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parodic content of his communicative message,courts have explained that:

`Trademark parodies ... do convey a message.The message may be simply that business and product images need not always be taken tooseriously; a trademark parody reminds us that we arefree to laugh at the images and associations linkedwith the mark. The message also may be a simpleform of entertainment conveyed by juxtaposing theirreverent representation of the trademark with theidealized image created by the mark's owner.'"

Id. citing L.L. Bean, Inc. v. Drake Publishers,Inc., 811 F.2d 26, 34 (1st Cir.1987); see alsoAnheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d316, 321 (4th Cir. 1992).

The threshold question when fair use is raised indefense of parody is whether the parodic charactercan be perceived. Campbell, 510 U.S. at 582, 114S.Ct. 1164. While the Court has no comment on thequality of the humor, it can certainly perceive the

WBDF merchandise as commenting on, orcriticizing, the original works. Big Dog transformsthe pseudoferocious nature of professional wrestlinginto a humorous "dog-fight." Moreover, there is noissue of fact regarding whether the WBDFmerchandise refers to the original, or to whether themerchandise pokes fun at the original works. Inaddition, the sale of the parodic WBDF merchandisefor their own sake is entitled to more indulgence thatan original work used to advertise a product.Campbell, 510 U.S. at 585, 114 S.Ct. 1164. TheCourt will therefore weigh the first factor in favor ofBig Dog.

(2) The Nature of the Copyrighted WorkThe second statutory factor, "the nature of the

copyrighted works," 17 U.S.C. 107(2), recognizesthat some works are closer to the core of intendedcopyright protection than others, and therefore fairuse is more difficult to establish when those worksare copied. Campbell, 510 U.S. at 586, 114 S.Ct.1164. This Court certainly questions the originalityand creativity of the WWE characters and storylines.The good guys against the bad guys certainlyprecedes the establishment of professional wrestling,and regarding wrestling's "original" characters, THEROCK followed "Hulk Hogan" who followed "the

Macho Man" who followed "the Sheik" whofollowed "Andre the Giant," etc. We are not talkingabout the literary works of Victor Hugo. However, itis not disputed that WWE has spent time and efforton the development of its characters, storylines andpersona, and the Court does not question its right toprotection. Because "parodies almost invariably copy publicly known, expressive works," this factorprovides little help in determining whether the parodyis a fair use of the original. Campbell, 510 U.S. at

586, 114 S.Ct. 1164, Leibovitz v. Paramount PicturesCorp., 137 F.3d 109, 115 (2d Cir. 1998), Dr. SeussEnterprises, L.P. v. Penguin Books, 109 F.3d 1394,1402 (9th Cir. 1997). Drawing all reasonableinferences from the facts in favor of WWE, the Courtfinds the second factor favors WWE, but onlyminimally.

(3) The Amount and Substantiality of thePortion Used in Relation to the Copyrighted Work asa Whole

The third factor asks whether "the amount andsubstantiality of the portion used in relation to thecopyrighted work as a whole," 17 U.S.C. 107(3),are reasonable in relation to the purpose of thecopying. As a general rule: "a work composedprimarily of an original, particularly its heart, withlittle added or changed, is more likely to be a merelysuperseding use, fulfilling demand for the original."Campbell, 510 U.S. at 588-589, 114 S.Ct. 1164. Theapplication of this guideline to parody, however, is

particularly difficult. The Supreme Court has stated:Parody's humor, or in any event its comment,

necessarily springs from recognizable allusion to itsobject through distorted imitation. Its art lies in thetension between a known original and its parodictwin. When parody takes aim at a particular originalwork, the parody must be able to "conjure up" at leastenough of that original to make the object of itscritical wit recognizable.

Id.; see e.g. Rogers v. Koons, 960 F.2d 301, 310(2d Cir.), cert. denied, 506 U.S. 934, 113 S.Ct. 365,121 L.Ed.2d 278 (1992)("We have consistently heldthat a parody entitles its creator under the fair use

doctrine to more extensive use of the copied workthan is ordinarily allowed ...."); Elsmere Music, Inc.v. National Broadcasting Co., 623 F.2d 252 (2dCir.1980)("An author is entitled to more extensiveuse of another's copyrighted work in creating aparody than in creating other fictional or dramaticworks."); Berlin v. E.C. Publics., Inc., 329 F.2d 541,545 (2d Cir.1964) (holding that because defendantshad taken no more of the original songs than wasnecessary to "recall or `conjure up' the object of hissatire" and because the parody had "neither the intentnor the effect of fulfilling the demand for theoriginal," no infringement had taken place).

There is no dispute that Big Dog used actualphotographs to copy the recognizable characteristicsof THE ROCK, STONE COLD STEVE AUSTIN,and the UNDERTAKER. The question is whether BigDog took more than was reasonably required to"conjure up" the characters and persona of WWE'sprofessional wrestling. The Supreme Court instructs,however, that a parodist's copying of more than isnecessary to conjure up the original will notnecessarily tip the third factor against fair use.

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Campbell, 510 U.S. at 588, 114 S.Ct. 1164. Once BigDog has taken enough to assure identification withthe WWE property, the reasonableness of takingadditional aspects of the original property depends onthe extent to which the overriding purpose andcharacter of the WBDF merchandise is to parody theoriginal, as well as "the likelihood that the parodymay serve as a market substitute for the original." Id.,see also Leibovitz v. Paramount Pictures Corp., 137F.3d at 116. Based on the foregoing, even if Big Doghas "copied every recognizable characteristic" of theWWE characters, this third factor carries very little,if any, weight against fair use when the first andfourth factors favor the parodist. See Leibovitz v.Paramount Pictures Corp., 137 F.3d at 116.

(4) The Effect on the Potential Market for orValue of the Copyrighted Work

The fourth fair use factor is "the effect of the useupon the potential market for or value of thecopyrighted work." 17 U.S.C. 107(4). Because

parody must be a transformative use, a parody isunlikely to serve as a market substitute for theoriginal. Campbell, 510 U.S. at 592, 114 S.Ct. 1164("It is more likely that the new work will not affectthe market for the original in any way cognizableunder this factor, that is, by acting as a substitute forit (superseding its objects). This is so because theparody and the original usually serve different marketfunctions.") (internal quotation marks and citationsomitted).

Numerous courts have relied on this recognitionthat separate markets exist in concluding that a parody inflicted no harm on the market for a

particular original. For example, in Fisher v. Dees,794 F.2d 432, 438 (9th Cir.1986), the court held thatdemand for the song, "When Sunny Gets Blue," anostalgic reminiscence about lost love, was notsupplanted by the parody "When Sonny Sniffs Glue,"a song describing the physical aftermath of glue-sniffing. Similarly, in Eveready Battery Co. v. AdolphCoors Co., 765 F.Supp. 440, 448 (N.D.Ill.1991), thedistrict court held that a beer commercial that parodied a battery commercial did not usurp themarket for the first commercial. See also ElsmereMusic, Inc. v. National Broadcasting Co., 482F.Supp. 741, 747 (S.D.N.Y.), aff'd, 623 F.2d 252 (2d

Cir.1980) (finding that the song, "I Love Sodom," didnot have an impermissible market effect on thedemand for the song, "I Love New York.").

WWE argues that the WBDF merchandisecircumvents the legal standards for licensing of itsintellectual property and, therefore, substantiallyharms one of WWE's significant revenue streams.9WWE however is not entitled to a licensing fee for awork that otherwise qualifies for the fair use defenseas a parody. See Leibovitz v. Paramount Pictures

Corp., 137 F.3d at 117. The Court finds the fourthfactor in favor of Big Dog.

Based on the foregoing, it is not difficult todetermine that the balance in this instance markedlyfavors Big Dog. The Court finds that the Big Dog'sgraphics are parodies of the WWE property, entitledto fair use under the statute. As such, Big Dog isentitled to summary judgment on WWE's copyrightinfringement claims set forth at Counts I through VIof the Amended Complaint.

B. WWE's Claims Under the Lanham ActTo prove unfair competition under Sections 32

or 43(a) of the Lanham Act, 15 U.S.C. 1051 et seq.,WWE must prove that (1) it owns the mark inquestion; (2) the mark is valid and legallyprotectable; and (3) Big Dog's use of the mark toidentify goods or services is likely to createconfusion concerning their origin. See CheckpointSys., Inc. v. Check Point Software Techs., Inc., 269

F.3d 270, 279 (3d Cir.2001), A & H Sportswear v.Victoria's Secret Stores, 237 F.3d 198, 210 (3d Cir.2000). Though Big Dog does not concede thatWWE's alleged marks are valid and entitled to protection under the law, for the purpose of thisMotion for Summary Judgment only, Big Dog asksthe Court to assume that WWE has valid protectablerights in the trademarks, trade dress and rights ofpublicity alleged in the Amended Complaint. Becausethe first and second elements are undisputed, thequestions herein involve the delineation andapplication of standards for the third factor, theevaluation of likelihood of confusion.

WWE argues that the WBDF merchandisecreates a likelihood of confusion as to WWE'ssponsorship or approval of the Big Dog merchandise.Big Dog essentially defends on two fronts: (1) theBig Dog graphics are parodies or some other form ofexpressive statements about the WWE and itswrestling characters and are protected under the FirstAmendment; and (2) Big Dog's parodies of WWE'salleged intellectual property are not likely to causeconfusion in the marketplace. This Court has foundherein that Big Dog's graphics are parodies, however,we cannot allow First Amendment principles to usurpFederal trademark law. In fact, trademark law

permissibly regulates misleading commercial speech.See Tommy Hilfiger Licensing, Inc. v. Nature Labs,LLC, 221 F.Supp.2d at 415 (citations omitted).

Because Big Dog contends it is merely engagingin a parody of WWE's marks, mixed elements oftraditional trademark analysis and free speech policies are involved in the overall analysis. "In atraditional trademark infringement suit founded onthe likelihood of confusion rationale, the claim ofparody is not really a separate `defense' as such, but

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merely a way of phrasing the traditional response thatcustomers are not likely to be confused as to source,sponsorship or approval." 3 J. THOMASMCCARTHY, MCCARTHY ON TRADEMARKSAND UNFAIR COMPETITION 31:153 (4thed.2002). Parody, therefore, is not an affirmativedefense, but only another factor to be considered indetermining the likelihood of confusion.10 Whether acustomer is confused is the ultimate question. If BigDog employs a successful parody, the customerwould not be confused, but amused. See JordacheEnters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486(10th Cir.1987). The keystone of parody is imitation, but must convey two simultaneous andcontradictory messages:

that it is the original, but also that it is not theoriginal and is instead a parody. To the extent that itdoes only the former but not the latter, it is not only apoor parody but also vulnerable under trademark law,since the customer will be confused.

Nike, Inc. v. Just Did It Enters., 6 F.3d 1225,1228 (7th Cir. 1993) quoting Cliffs Notes, Inc. v.Bantam Doubleday Dell Publishing Group, 886 F.2d490, 494 (2d Cir.1989). As a practical matter, wemust simply ask whether a retail customer buying a t-shirt from Big Dog with the dog/wrestler caricaturesand/or the WBDF logo or scratch logo design wouldlikely believe that it is in some way related to,connected or affiliated with, or sponsored by, WWE.

"To prove likelihood of confusion, plaintiffsmust show that `consumers viewing the mark wouldprobably assume the product or service it representsis associated with the source of a different product or

service identified by a similar mark.'" CheckpointSys., Inc. v. Check Point Software Techs., Inc., 269F.3d 270, 280 (3d Cir.2001)(quoting Scott Paper Co.v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3dCir.1978)). The Third Circuit Court of Appealsdevised a non-exhaustive list of ten factors,commonly known as the "Lapp" factors, to considerin determining whether there is a likelihood ofconfusion between marks. Interpace Corp. v. Lapp,Inc., 721 F.2d 460, 462 (3d Cir.1983). These factorsare used to test for likelihood of confusion for goodsthat directly compete with each other, as well as fornon-competing goods. A & H Sportswear, Inc. v.

Victoria's Secret Stores, Inc., 237 F.3d at 215. Thefactors are:

(1) The degree of similarity between the owner'smark and the alleged infringing mark;

(2) the strength of the owner's mark;(3) the price of the goods and other factors

indicative of the care and attention expected ofconsumers when making a purchase;

(4) the length of time the defendant has used themark without evidence of actual confusion;

(5) the intent of the defendant in adopting themark;

(6) the evidence of actual confusion;(7) whether the goods, though not competing,

are marketed through thePage 432same channels of trade and advertised through thesame media;

(8) the extent to which the targets of the parties'sales efforts are the same;

(9) the relationship of the goods in the minds ofconsumers because of the similarity of the functions;and

(10) other facts suggesting that the consumingpublic might expect the prior owner to manufacture aproduct in the defendant's market or that he is likelyto expand into that market.

Id. at 215; Fisons Horticulture, Inc. v. VigoroIndus., Inc., 30 F.3d 466, 473 (3d Cir.1994); ScottPaper Co., 589 F.2d at 1231. Application of the Lapp

factors is a qualitative inquiry. A & H Sportswear,Inc. v. Victoria's Secret Stores, Inc., 237 F.3d at 215.The Court must utilize the appropriate factorsrelevant to the instant case, and may properly accorddifferent weight to different factors depending on theparticulars of the action. Id.

(1) Similarity of the MarksThe test for mark similarity is "whether the

labels create the same overall impression whenviewed separately." Fisons Horticulture, Inc. v.Vigoro Indus., Inc., 30 F.3d at 476 quoting Banff,Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486,492 (2d Cir.1988). Courts must "compare the

appearance, sound and meaning of the marks,"Harlem Wizards Entm't Basketball, Inc. v. NBAProps., Inc., 952 F.Supp. 1084, 1096 (D.N.J.1997), todetermine whether the "average consumer, onencountering one mark in isolated circumstances ofmarketplace and having only [a] general recollectionof the other, would likely confuse or associate thetwo." Checkpoint Sys., Inc. v. Check Point SoftwareTechs., Inc., 269 F.3d at 281; Fisons, 30 F.3d at 477-78. When a parody is at issue however, "[i]f thedifference in wording or appearance of thedesignation together with the context and overallsetting is such as to convey to the ordinary viewer

that this is a joke, not the real thing, then confusion asto source, sponsorship, affiliation or connection isunlikely." 5 J. THOMAS MCCARTHY,MCCARTHY ON TRADEMARKS AND UNFAIRCOMPETITION 31:155 (4th ed.2002).

There is no dispute that the graphics of theWBDF merchandise are similar to the WWE marks.That is inherent in the character and purpose of theBig Dog graphics. To be effective as a parody, theBig Dog graphics must convey that the caricatures

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are WWE wrestling characters, and that they are notthe original characters. WWE argues that Big Doguses several of its marks without alteration, such asthe KNOW YOUR ROLE and WWFSMACKDOWN11 marks, and the BRAHMA BULLand RATTLESNAKE design marks, and theremainder with little or "barely imperceptible"alterations, such as OPEN A CAN OF WHOOP ASS(used as "Open a Can of Woof Ass"), BECAUSESTONE COLD SAID SO (used as "Because BoneCold Said So"), AUSTIN 3:16 (used as "Pawstin3:16"), JABRONI (used as "JaBONEi"), and theUNDERTAKER (used as the "Underdogger"). Inaddition, WWE contends that the marks are used inconjunction with other identifiers of WWE, includingimages and characters.

The Court, however, cannot look at theindividual marks and design marks as they stand, butmust consider the overall impression of the graphics.First let us examine Big Dog's "Bone Cold Steve

Pawstin" graphic that is on the back of a t-shirt filedwith the Court as Big Dog Exhibit L. The t-shirtcontains the "Big Dog" trademark and dog designlogo on the front left of the t-shirt, as well as on theneck label, with the graphic on the back of the t-shirtfeaturing a dog caricature of the STONE COLDSTEVE AUSTIN character with the words "`BoneCold' Steve Pawstin" at the top of the graphic and thephrase "Open Up a Can of Woof Ass!" at the bottom.(Big Dog Exhibits L and K). The phrase is an obvious"dog" pun of Austin's "Open Up a Can of WhoopAss!" phrase. Comparing the graphic to the images ofSTONE COLD STEVE AUSTIN at document nos.

WWFE 01554 and WWFE 01569 of WWE ExhibitU, as well as with the photographs contained inWWE Exhibit O, it must be noted first that WWE'simages are photographs, while Big Dog's caricature isan obvious sketch. In the WWE photographs ofSTONE COLD STEVE AUSTIN, Austin is in avariety of poses. The majority show him facing thecamera wearing a black vest and a heavy gold chain.Austin has an earring in his left ear in some thepictures and no earring in others. The black vest he iswearing has the words "AUSTIN" vertically downthe right side of the vest, an image of a skull on theupper left side, and lettering on the bottom left12. In

the Big Dog graphic, Pawstin is a dog with floppyears, a nose in the vague outline of a bull's head, agoatee and its hands, or modified paws, on its hips.Pawstin is facing forward with its head is cocked tothe right showing more of the left side of its head andface. Pawstin is wearing a black vest with the words"PAWSTIN" down the right side of the vest and adoggie skull, a skull featuring floppy ears and a nosesimilar to Pawstin's, on the left side of the vest. Thedoggie skull is surrounded by the words "BIG

DOGS," and the skull itself has obvious differencesfrom the one on AUSTIN's vest, as well asdifferences from the many SKULLS depicted in theWWE merchandise catalogs. (See WWE Exhibit U).Moreover, the coloring of the lettering is dissimilar.Austin is wearing a gold chain around his neck and insome of the photographs, a large ring on the ringfinger of his right hand. Pawstin is also wearing agold chain around its neck, but Pawstin's chainfeatures an attached dog bone charm. Pawstin has anearring in its floppy left ear, and Pawstin is wearing abelt with "WBDF" on the buckle.

We can make a similar comparison of Big Dog's"Pawstin 3:16" graphic that is on the back of a t-shirtfiled with the Court as Big Dog Exhibit L. The t-shirtcontains the graphic on the back of the t-shirt againfeaturing STONE COLD STEVE AUSTIN depictedas a dog, and wearing blue jeans with a black t-shirtwith the phrase "Pawstin 3:16" printed on the t-shirt.The figure also has a tail which is wrapped with a

bandage. Below the figure are two rattlesnakes, eachfacing a skull that has dog ears, a dog tongue and atire tread across the face13. On and among the snakesis the name "Bone Cold Steve Pawstin," and belowthe name is the phrase "Because Bone Cold Said Sol"(Big Dog Exhibits K and L). Again, there are manydissimilarities with the WWE's STEVE AUSTINphotographs. None of the photographs represent anexact model for the "Pawstin" graphic.

The written marks utilized by the parties are alsovery similar, with Big Dogs' phrases having obviouscanine connotations; Big Dog using "Pawstin" forAUSTIN and the phrase "Woof Ass" as a humorous

take on the phrase "Whoop Ass" used by WWE. TheBig Dog phrase "Open Up a Can of Woof Ass!" isalso an obvious play on Austin's allegedly popular"Because Stone Cold Said So!" There are alsodissimilarities in the coloring and the typeface of thephrases. Further, at the bottom of the graphic are thewords "BIG DOG SPORTSWEAR. THIS IS APARODY."

As another example, the Court will examine BigDog's "Rock-weiler" graphic that is on the back of at-shirt filed with the Court as Big Dog Exhibit L. Thet-shirt contains the "Big Dog" trademark and dogdesign logo on the front left of the t-shirt, as well as

on the neck label, with the graphic on the back of thet-shirt featuring dog a caricature of THE ROCK,wearing sunglasses and a leather jacket with thename "The Rock-weiler" at the top of the graphic andthe phrase "Know Your Role, Ja BONEi!" at thebottom of the graphic. (Big Dog Exhibits K and L).Further, at the bottom of the graphic are the words"BIG DOG SPORTSWEAR. THIS IS A PARODY."The Court could not find any pictures of THE ROCKin either WWE Exhibit O, WWE Exhibit U, or WWE

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Exhibit X that could have served as a precise modelfor Big Dog's Rockweiler graphic. Therefore, theCourt compared the Big Dog graphic to pictures ofthe Rock and associated phrases in the WWEcatalogs (WWE Exhibt U), the video, (WWE ExhibtY), and the included magazine pictures and articles.(WWE Exhibits O and X).

Again, the most obvious difference is thatWWE's images of THE ROCK are photographs ofDwayne Johnson, while Big Dog's "Rock-weiler"graphic is a sketch of a dog caricatured as the WWEcharacter. Again, the dominant portion of the "Rock-weiler" graphic, like all of Big Dog's graphics, is thefact that the image is a dog portraying a wrestler. Thedog is wearing sunglasses and appears to be raisingan eyebrow. WWE complains that the eyebrow is oneof THE ROCK's facial expressions. It may be true,but it remains obvious that the Big Dog graphic is adog, not THE ROCK.

WWE also complains that Big Dog used the

BRAHMA BULL design mark without alteration. Areview of WWE's exhibits however show a brahmabull in more than one style. There is a style that looksvery similar to the image of the National BasketballAssociation's Chicago Bulls' emblem, and there is anoutline of a bull that looks similar to the emblem ofthe University of Texas. Further, there are alsocaricatures of bulls, one of which is a caricature ofTHE ROCK with a head of a brahma bull. (WWEExhibt U document no. WWFE 01560).

WWE also contends that Big Dog is using manyof its trademark phrases with little or no alteration.As mentioned above, Big Dog uses obvious canine

connotations in putting its own spin on the WWE'sphrases. The Court of Appeals for the Seventh Circuithad to make a determination regarding the likelihoodof confusion of similar marks on apparel in Nike,Inc., supra. In making a determination whetherapparel with the word MIKE along with the familiar Nike "whoosh" emblem created confusion withconsumers looking to buy "Nike" apparel with the"whoosh" emblem, the Seventh Circuit stated:

After examining the size of the word MIKE andthe mail-order form used for customer purchasing,we cannot conclude ... that as a matter of law theparody and trademark are so similar as to confuse the

consumer. Yes, they are similar; but similarity alonedoes not end the inquiry. A jury could find that MIKEand NIKE, in text, meaning, and pronunciation, arenot so similar as to confuse consumers, especiallywhen making the decision to purchase or not topurchase.

Nike, Inc. v. Just Did It Enters., 6 F.3d at 1230.The same is evident here. Is it possible for thephrases "JaBONEi" to be confused with "JABRONI,"for "Bone Cold Steve Pawstin" to be confused with

"STONE COLD STEVE AUSTIN," for the"Underdogger" to be confused with the"UNDERTAKER," or for "Pawstin 3:16" to beconfused with "AUSTN 3:16"? Yes, it is certainly possible, especially when viewed from a distance.However, the difference in wording and appearanceof the phrases together with the use of dogs aswrestling characters conveys to the ordinaryconsumer that this is an obvious joke.

Moreover, a consumer would certainly notconfuse the block lettered "WBDF" with the blocklogo "WWF." Nor are the scratch lettered "WBDF"confusingly similar to WWE's scratch logo. The"WWF" scratch logo is very distinct, it is a large "W"with a smaller "W" tucked inside the larger "W" andthe "F" is made up of the right wing of the "W" withtwo horizontal slashes across it to form the "F". ThisCourt does not believe that a consumer would beconfused when making a decision to purchase or notto purchase the goods of either party.

After a comparison of all Big Dog's graphicswith the WWE property, the Court has come tosimilar conclusions. All of the names and phrasingused by Big Dog are modified to make obviousreferences to dogs. Viewed in their totality, Big Dog'sgraphics, though similar, are not sufficiently similarto WWE's in appearance, sound or meaning to createa likelihood of confusion. "[W]hile the similarity ofthe words used in the mark[s] would support aninference of likelihood of confusion, ... the strikingdissimilarities in design outweigh any similarities."Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828F.2d 1482, 1485 (10th Cir.1987).

(2) Strength of the Owner's MarkThere is no dispute that WWE's marks are well

known, well recognized and popular. Usually, such astrong mark would favor the plaintiff in a trademarkcase.14 The general argument is that because WWE'smarks are deeply implanted in the consumers' minds,it is more likely that Big Dog's marks will conjure upthe image of WWE's products instead of Big Dogs'.See, e.g., Hormel Foods Corp. v. Jim Henson Prods.,73 F.3d 497, 503 (2d Cir.1996); McGregor-DonigerInc. v. Drizzle Inc., 599 F.2d 1126, 1132 (2dCir.1979); MGM-Pathe Communications Co. v. PinkPanther Patrol, 774 F.Supp. 869, 874 (S.D.N.Y.

1991). However, it is the strength of WWE's markswhich make them objects of Big Dog's parodies.

Big Dog's parodic use, therefore, does notnecessarily lead to confusion. In Yankee PublishingInc. v. News America Publishing Inc., 809 F.Supp.267, 273 (S.D.N.Y.1992), the District Court stated"where the plaintiff's mark is being used as part of a jest or commentary ... [and] both plaintiff['s] anddefendant's marks are strong, well recognized, andclearly associated in the consumers' mind with a

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particular distinct ethic ... confusion is avoided ...."Obviously, Big Dog's mark has its own strength inthe market place. They have been in business forseveral years, and have designed and sold a multitudeof irreverent, humorous graphics over the years. (SeeBig Dog Facts 17, 21 and 22, Big Dog Exhibits Jand R, and WWE Exhibits E, I and CC). The WBDFmerchandise is simply another in a long line of BigDog jokes. Moreover, this brand of humor has become associated with the Big Dog brand.Therefore, consumers of Big Dog's WBDFmerchandise, all of which display the words "BIGDOG SPORTSWEAR. THIS IS A BARODY," arelikely to see the graphics as the jokes they wereintended.

Therefore, the clarity of Big Dog's parodicintent, and the widespread familiarity and strength ofWWE's marks, weigh against the likelihood ofconfusion as to source or sponsorship between BigDog's WBDF merchandise and WWE's intellectual

property.(3) The Price of the Goods and Other Factors

Indicative of the Care and Attention Expected ofConsumers When Making a Purchase

It is undisputed that goods at issue are relativelyinexpensive, the most expensive being t-shirts sellingfor $19.95. (WWE Exhibits u and CC). Where therelevant products are expensive, or the buyer classconsists of sophisticated or professional purchasers,courts have generally not found Lanham Actviolations. Versa Prods., 50 F.3d at 204 ("Inexpensivegoods require consumers to exercise less care in theirselection than expensive ones. The more important

the use of the product, the more care that must beexercised in its selection.") Obviously, the pricelevels are important in determining the amount ofcare the reasonably prudent buyer will use. "If thegoods or services are relatively expensive, more careis taken and buyers are less likely to be confused asto source or affiliation." 5 MCCARTHY ONTRADEMARKS, 23:95; see also Astra Pharm.Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d1201, 1206-07 (1st Cir.1983) (expensive health careequipment elevated concern of purchasers).

Similarly, where the relevant buyer class iscomposed solely of professional, or commercial

purchasers:[I]t is reasonable to set a higher standard of care

than exists for consumers. Many cases state thatwhere the relevant buyer class is composed ofprofessionals or commercial buyers familiar with thefield, they are sophisticated enough not to beconfused by trademarks that are closely similar. Thatis, it is assumed that such professional buyers are lesslikely to be confused than the ordinary consumer.

3 MCCARTHY ON TRADEMARKS, 23:101;see also Ford Motor Co., 930 F.2d at 293("Professional buyers, or consumers of veryexpensive goods, will be held to a higher standard ofcare."); Perini Corp. v. Perini Constr., Inc., 915 F.2d121, 128 (4th Cir.1990) ("In a market with extremelysophisticated buyers, the likelihood of consumerconfusion cannot be presumed on the basis of thesimilarity in trade name alone."); Oreck Corp. v. U.S.Floor Sys., Inc., 803 F.2d 166, 173-74 (5th Cir.1986)(business purchasers of expensive products not likelyto confuse goods with similar marks).

Though WWE admits its fans are extremelyknowledgeable about the storylines and personalitiesof the WWE wrestling characters (Big Dog Facts 41), the Court cannot classify them as "sophisticated"purchasers.15 At best, the purchasing class may beclassified as mixed. In that case, the Third Circuitwould not hold the general class to a high standard ofcare. Ford Motor Co., 930 F.2d at 293 ("When the

buyer class is mixed, the standard of care to beexercised by the reasonably prudent purchaser will beequal to that of the least sophisticated consumer inthe class."). Though it seems highly unlikely, it is notinconceivable that a WWE fan would confuse WBDFmerchandise as affiliated with WWE. Although thefan would have to wander into a Big Dog retailestablishment or the Big Dog internet site to comeacross the merchandise. The third Lapp factor willtherefore be weighed in favor of WWE.

(4) and (6) The Length of Time the Mark wasUsed Without Evidence of Actual Confusion, andEvidence of Actual Confusion

Evidence of actual confusion is not required toprove likelihood of confusion. Checkpoint Sys., Inc.v. Check Point Software Techs., Inc., 269 F.3d at 291citing Versa Prods., 50 F.3d at 205; Fisons, 30 F.3d at476 ("While evidence of actual confusion wouldstrengthen plaintiff's case, it is not essential."). TheThird Circuit recognizes the difficulty in findingevidence of actual confusion, therefore, any evidenceof actual confusion is highly probative of thelikelihood of confusion. Checkpoint Sys., Inc. v.Check Point Software Techs., Inc., 269 F.3d at 291;see also Tisch Hotels, Inc. v. Americana Inn, Inc., 350F.2d 609, 612 (7th Cir.1965) ("Since reliable

evidence of actual confusion is difficult to obtain intrademark and unfair competition cases, any suchevidence is substantial evidence of likelihood ofconfusion.").

However, evidence of "isolated" or "idiosyncratic" incidents of actual confusion need notbe given much weight; "ownership of a trademarkdoes not guarantee total absence of confusion in themarketplace." A & H Sportswear v. Victoria's SecretStores, 237 F.3d at 227 (quoting Scott Paper Co. v.

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Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231 (3dCir.1978)). Further, the Third Circuit allows that ifBig Dog's WBDF merchandise has been sold for anappreciable period of time without evidence of actualconfusion, "... one can infer that continued marketingwill not lead to consumer confusion in the future. Thelonger the challenged product has been in use, thestronger this inference will be." Id. quoting VersaProds., 50 F.3d at 205.

The parties herein agree that there is noevidence of actual confusion. It is also undisputedthat WWE was not aware of the WBDF merchandisefor several years after it was introduced into themarketplace. WWE's Vice President of Consumerproducts, Donna Goldsmith, WWE's Chief MarketingOfficer, Julie Hoffman, and THE ROCK, DwayneJohnson, had not seen any of the WBDF merchandiseuntil their depositions in November and December of2001. (Big Dog Facts 45 and 47). Tellingly, in theplaces a consumer has to look to purchase Big Dog

merchandise, the consumer would find the WBDFmerchandise alongside other Big Dog merchandisewhich parody several other popular entities, includingcelebrities, sports figures, movies, etc. Not only doesthis alert the consumer that the WBDF merchandiseis a lampoon, but it is also strong evidence adverse toa likelihood of confusion. Therefore, because there isno evidence of actual confusion, and based upon thepermitted inference regarding Big Dog's marketing ofthe WBDF merchandise for a considerable period oftime without confusion, the Court will weight thisfactor in Big Dog's favor.16

(5) Big Dog's Intent in Adopting the Mark

The "intent" inquiry in a "Lapp" analysis is onlyrelevant to the extent it bears on the likelihood ofconfusion. A & H Sportswear v. Victoria's SecretStores, 237 F.3d at 225. The Third Circuit has heldthat "a defendant's intent to copy, without more, isnot sufficiently probative of the defendant's successin causing confusion to weigh such a finding in theplaintiff's favor; rather defendant's intent will indicatea likelihood of confusion if an intent to confuseconsumers is demonstrated via purposefulmanipulation of the junior mark to resemble thesenior." Id. at 225-226. Moreover, the weight of thisfactor is somewhat diminished in the context of

parody as all parodists of consumer products "intendto select" the products' mark to make their comments.Mattel, Inc. v. MCA Records, Inc., 28 F.Supp.2d1120, 1151 (C.D.Cal.1998) aff'd 296 F.3d 894 (9thCir.2002); see also, Jordache Enterprises, 828 F.2d at1486; Cliffs Notes, Inc. v. Bantam Doubleday DellPublishing Group, 886 F.2d at 494 (recognizing theneed to balance First Amendment interests againstlikelihood of confusion, in part because it "allowsgreater latitude for works such as parodies, in which

expression, and not commercial exploitation ofanother's trademark, is the primary intent").

The record is replete with evidence of Big Dog'sintent to parody the WWE. Further, each of Big Dog'sgraphics contain the Big Dog trademark and/or itsfamous dog design logo, as well as the disclaimer"THIS IS A PARODY." Based on the foregoing, theCourt must weigh factor (5) in favor of Big Dog.

(7) Whether the Goods are Marketed Throughthe Same Channels of Trade

Courts have recognized that "the greater thesimilarity in advertising and marketing campaigns,the greater the likelihood of confusion." CheckpointSys., Inc. v. Check Point Software Techs., Inc., 269F.3d at 288 quoting Acxiom Corp. v. Axiom, Inc., 27F.Supp.2d 478, 502 (D.Del. 1998). Applying thisfactor, courts must examine the manner in which theparties market and sell their products.

It is undisputed that WWE merchandise and BigDog merchandise are sold through separate and

distinct channels. WWE merchandise is sold at thevenues of its live shows, through its own website andcatalog, and through selective licensees who placethe merchandise in retail stores such as K-Mart,Costco, Wal-Mart and Target. (Big Dog Fact 8).More importantly, WWE gets extremely broadexposure to its products through its television andpay-per-view programming, and its live arena events.(WWE Additional Material Facts 56 and 61).WWE is the number one pay-per-view provider in theworld with thirty-four (34) million viewers in 2001.(WWE Exhibit R, p. 9). In 2001, WWE held twohundred twelve (212) live events in one hundred

(100) cities throughout the United States, Canada andEngland. These live events were held in forty-seven(47) of the top fifty (50) media markets. (WWEExhibit R, p. 11). WWE publishes two (2) monthlymagazines, "World Wrestling EntertainmentMagazine" and "Raw Magazine," that total over five(5) million readers combined. (WWE Exhibit R, p.10). In addition, its characters have been featured inseveral other magazines and on non-WWE televisionprograms. (WWE Exhibits R, X and Y). There is noevidence in this case that Big Dog has this type ofexposure.

Big Dog sells its WBDF merchandise only in its

Big Dog retail stores, and through its website andcatalog. Each outlet only sells Big Dog merchandise.(Big Dog Fact 19). One would not wander into aWal-Mart and find WBDF merchandise right next toWWE merchandise. Therefore, a consumer mustmake a choice to visit a Big Dog retail, store, go to itswebsite, or order through the Big Dog catalog to purchase WBDF merchandise. Based upon theseparate and distinct channels of trade and the

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disparate marketing exposure, this factor must beweighed against a likelihood of confusion.

(8) The Extent to Which the Targets of theParties' Sales Efforts are the Same

WWE argues that the same consumer market istargeted by both WWE and Big Dog. The ThirdCircuit has recognized that when parties target theirsales efforts to the same consumers, there is astronger likelihood of confusion. Checkpoint Sys.,Inc. v. Check Point Software Techs., Inc., 269 F.3d at289. It is undisputed that the "attitude" and "humor"of both WWE's merchandise and Big Dog'smerchandise are important aspects of their respectivemarkets. It is also not disputed that the products ofboth parties' products are irreverent to certain societalpostures. Though WWE's irreverence and humor aresomewhat base and crude17 when compared to BigDog's, it is not inconceivable that the same consumermarket is targeted. Though the products are notmarketed through the same channels of trade, and

though there is no evidence they are advertised in thesame manner, drawing all reasonable inferences fromthe facts in a light favorable to WWE, the Court willweigh this factor in favor of WWE.

(9) The Relationship of the Goods in the Mindsof Consumers Because of the Similarity of theFunctions

When the relevant goods are similar, there is alikelihood that consumers will assume an affiliationor common source between the products. SeeCheckpoint, 269 F.3d at 287. Nevertheless, when two products serve different functions and are part ofdistinct sectors or niche markets within a broader

product category, they might be sufficiently unrelatedto each other that consumer confusion is less likely.Id. at 287-88. Under this prong, courts examinewhether buyers and users of each parties' goods arelikely to encounter the goods of the other, creating anassumption of common source affiliation orsponsorship. Fisons, 30 F.3d at 481 ("The question iswhether the consumer might ... reasonably concludethat one company would offer both of these relatedproducts."). The test is whether the goods are similarenough that a customer would assume they wereoffered by the same source. Checkpoint Sys., Inc. v.Check Point Software Techs., Inc., 269 F.3d at 286

citing Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187(6th Cir. 1988).

This Court has already found that, thoughsimilarities exist, Big Dog's graphics are notsufficiently similar to WWE's in appearance, soundor meaning to create a likelihood of confusion.18Moreover, based upon the product dissimilarities, thedifferent channels of trade, as well as the extremedisparity in market exposure, this factor is weighed infavor of Big Dog.

(10) Evidence of Converging MarketsUnder this factor, the Court looks not only to

evidence that a plaintiff has actually moved into thedefendant's market, but also to "other facts suggestingthat the consuming public might expect the priorowner to manufacture a product in the defendant'smarket, or that it is likely to expand into that market."Checkpoint Sys., Inc. v. Check Point Software Techs.,Inc., 269 F.3d at 290 quoting Interpace Corp. v. Lapp,Inc., 721 F.2d at 463. There is no evidence in thisaction that the parties' markets are converging. Assuch this factor must be weighed against a likelihoodof confusion.

Totality of the Lapp FactorsBig Dog's humorous word play and the

"dogifying" of the WWE wrestling characters, usedin conjunction with its registered trademark, dogdesign logo, and disclaimer "THIS IS A PARODY,"clearly indicate to the consumer that the WBDFmerchandise is a broad spoof of WWE, its characters

and attitudes. Certainly, there are similarities, andthere must be in order to conjure up thoughts of theoriginal, while clearly not being the original.Moreover, there is no evidence in this action of actualconfusion, nor does the Court find a likelihood ofconfusion in the marketplace between the WWE andWBDF merchandise. Big Dog's graphics spoofing theWWE wrestling characters and phrases are parodiesthat entitle its WBDF merchandise to FirstAmendment protection when analyzing the Lappfactors. Evaluating the Lapp factors, while applyingFirst Amendment principles to Big Dog's parodies ofWWE, the Court finds that the factors favor Big Dog

and that there is no likelihood of confusion

C. Dilution of the WWE MarksThe Federal Trademark Dilution Act of 199519

grants protection to strong, well-recognized markseven in the absence of a likelihood of consumerconfusion, if the defendant's use diminishes or dilutesthe strong identification value associated with the plaintiff's mark. See 4 McCARTHY ONTRADEMARKS AND UNFAIR COMPETITION 24.70. The dilution doctrine is founded upon thepremise that a gradual diminution of the value of afamous trademark, resulting from an unauthorized

use, constitutes an invasion of the senior user'sproperty rights and/or good will in its mark and givesrise to an independent wrong. Id.

To establish a claim for relief under the federaldilution act, WWE must plead and prove: (1) it is theowner of a mark that qualifies as famous; (2) BigDog is making commercial use in interstatecommerce of the mark or trade name; (3) Big Dog'suse began after the WWE's marks became famous;and (4) Big Dog's use causes dilution by lessening the

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capacity of WWE's marks to identify and distinguishgoods or services. See Times Mirror Magazines Inc.v. Las Vegas Sports News, 212 F.3d 157, 163 (3dCir.2000); see also Hershey Foods Corp. v. Mars,Inc., 998 F.Supp. 500, 504 (M.D.Pa.1998) (quoting 4McCARTHY, supra). For the purpose of this Motion,Big Dog asks that the Court assume that the WWEmarks are famous. Additionally, there are no disputesregarding either Big Dog's use in interstatecommerce, or that Big Dog's use of the marks beganafter WWE's use. The only element at issue here iswhether Big Dog's use lessens the distinctiveness ofWWE's marks.

Dilution may occur by "blurring" or "tarnishing"the mark. Dilution by blurring occurs when the use ofthe defendant's mark results in the loss of the abilityfor plaintiff's mark to serve as a unique identifier ofthe plaintiff's product, causing the public to no longerassociate the plaintiff's famous mark with its goods orservices. Times Mirror, 212 F.3d at 168. Moreover,

the defendant's use of the mark causes the identifyingfeatures of plaintiff's mark to become vague and lessdistinctive. Id. Though the Third Circuit in TimesMirror set forth a six (6) factor test to determinewhether use of a mark has caused blurring, 212 F.3dat 168, the Court finds the dilution analyses in casesinvolving parody more instructive. See e.g., HormelFoods Corp. v. Jim Henson Prods., supra.; JordacheEnterprises, Inc. v. Hogg Wyld, Ltd., supra.; Tetley,Inc. v. Topps Chewing Gum, Inc., 556 F.Supp. 785(E.D.N.Y.1983).

In Jordache, the court found that "because of theparody aspect of Lardashe, it is not likely that public

identification of JORDACHE with the plaintiff willbe eroded; indeed, parody tends to increase publicidentification of a plaintiff's mark with the plaintiff."See Jordache Enterprises, 828 F.2d at 1490 (quotingJordache Enterprises, Inc. v. Hogg Wyld, Ltd., 625F.Supp. 48, 57 (D.N.M.1985)). The court furtherfound that "under all the circumstances, the continuedexistence of LARDASHE jeans simply will not causeJORDACHE to lose its distinctiveness as a strongtrademark for jeans and other apparel." Id. In HormelFoods Corp. v. Jim Henson Prods., the court foundthat Henson's obvious parody was similar to the"Tetley Flea Bag" stickers Tetley sought to enjoin in

Tetley, Inc. v. Topps Chewing Gum, Inc., supra.,where "the broad humor ... employed served toprevent the type of blurring which might result froma more subtle or insidious effort at humor at plaintiff's expense." Hormel Foods Corp. v. JimHenson Prods., 73 F.3d at 506, quoting Tetley, Inc. v.Topps Chewing Gum, Inc., 556 F.Supp. at 794, As inthese cases involving spoofs, Big Dog's parody ismore apt to "increase public identification" ofWWE's marks with WWE. See Hormel Foods Corp.

v. Jim Henson Prods., 73 F.3d at 506; JordacheEnterprises, 828 F.2d at 1490.

As a practical matter, however, it is undisputedthat WWE is an integrated media and entertainmentcompany engaged in the development, promotion andmarketing of television programming, pay-per-viewprogramming and live arena events, and the licensingand sale of branded consumer products. (Am.Cmplnt. 11 and 16) WWE has been involved in thesports entertainment business for over twenty (20)years and has developed story lines based around itswrestling characters. (Am. Cmplnt. 17 and 18)Currently, WWE produces five television programseach week: (I) "Raw" and "War Zone" shownconsecutively on Monday nights and known as "Rawis War"; (ii) "WWF Smackdown!" on Thursdaynights; (iii) "Live Wire" on Saturday mornings; (iv)"Superstars" on Sunday mornings; and (v) "Heat" onSunday nights. (Am.Cmplnt. 17). It is undisputedthat WWE's programming, live shows and characters

are extremely popular and successful.In addition to the WWE's television exposure,

its characters have appeared or been featured onnumerous television shows including: The TonightShow with Jay Leno; Live! With Regis and KathieLee; Late Late Show with Craig Kilborn; Late Nightwith Conan O'Brian; Inside Edition; Rikki Lake;Billboard Music Awards; Fox News Live; E! NewsDaily; Access Hollywood; MTV; and Saturday NightLive. (WWE Exhibit Y). Moreover, there is a hugedisparity in marketing exposure as discussed above.(See WWE Exhibit R). It is therefore inconceivableto this Court that a jury could find that Big Dog's

eight (8) graphic designs of dogs caricatured aswrestling characters cause or will cause the public tono longer associate WWE's famous marks with itsgoods or services.

WWE also argues that the WBDF merchandisetarnishes its marks by using them in a manner that isinconsistent, or out-of-keeping, with WWE's image.See Jordache Enterprises, 828 F.2d at 1490.20 WWEargues that tarnishment has occurred here becauseBig Dog has used WWE's marks in ways that are"wholly inconsistent" with WWE's carefullydeveloped portrayal of its characters and marks.

WWE's argument is unavailing. Tarnishment

occurs when the effect of defendant's use of a mark isto dilute by tarnishing or degrading positiveassociations of the mark and diluting the distinctivequality of the mark, 4 McCARTHY ONTRADEMARKS AND UNFAIR COMPETITION 24.95. In Hormel Foods, the Second Circuit observedthat the sine qua non of tarnishment is a finding that plaintiff's mark will suffer negative associationsthrough defendant's use. Hormel Foods Corp. v. JimHenson Prods., 73 F.3d at 506. A mark is tarnished,

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therefore, when it is improperly associated with aninferior or offensive product or service as a result ofthe junior user's mark, "presenting a danger thatconsumers will form unfavorable associations withthe mark." Strick Corp. v. Strickland, 162 F.Supp.2d372, 378 n. 10 (E.D.Pa.2001) (quoting AveryDennison Corp. v. Sumpton, 189 F.3d 868, 881 (9thCir.1999))(emphasis added).

There is no evidence here that Big Dog's WBDFmerchandise is either inferior or offensive. The mostoffensive phrase used by Big Dog is "Open Up a Canof Woof Ass" which is a take-off on WWE's phrase"Open Up a Can of Whoop Ass." Many of WWE's t-shirt graphics contain phrases that are profane,violent or carry sexual connotations, such as: "heywuss-boy"; "after I beat you, I'm gonna take yourgirlfriend"; "KILL `EM ALL! LET STONE COLDSORT `EM OUT"; "Got Head?"; "Venis Envy";"POONTANG PIE"; "If you can't beat it ... SUCKIT"; "Other Side JACKASS"; "TESTICULAR

FORTITUDE"; "Sexual Chocolate;" "SUCK IT"; and"AMERICAN BADASS." (WWE Exhibit U, BigDog Exhibit C). Also found in WWE's catalog arepictures, posters, calendars and videos of semi-nudewomen. (WWE Exhibit U, Big Dog Exhibit C). BigDog graphics, on the other hand are humorous andgenerally appropriate for the entire family, andunlikely to create in the mind of consumers a particularly unwholesome, unsavory, or degradingassociation with WWE's name or marks.

Considering that tarnishment caused merely byan editorial or artistic parody which satirizesplaintiff's product or its image carries the free speech

protections of the First Amendment,21 see 4McCARTHY ON TRADEMARKS AND UNFAIRCOMPETITION 24.105, it is difficult for the Courtto find that WWE's marks have been diluted in anyway. Moreover, the Supreme Court recently stated "...where the marks at issue are not identical, the merefact that consumers mentally associate the junioruser's mark with a famous mark is not sufficient toestablish actionable dilution." Moseley v. V. SecretCatalogue, Inc., 537 U.S. 418, 123 S.Ct. 1115, 155L.Ed.2d 1 (2003). Based upon the foregoing, BigDog will be granted summary judgment on WWE'strademark dilution claim under Section 43(c) of the

Lanham Act. Regarding WWE's dilution claim underPennsylvania law, the wording for the anti-dilution provisions of the Pennsylvania statutes, 54 PA.CONS. STAT. ANN. 1124, is taken almost verbatimfrom the anti-dilution provision in the United StatesCode. Accordingly, there is no appreciable differencein the applicable standard. See Strick Corp. v.Strickland, 162 F.Supp.2d 372, 378 n. 10(E.D.Pa.2001).

D. WWE's Right of Publicity ClaimsAt Counts XV, XVI and XVII of its Amended

Complaint, WWE claims violations of the commonlaw publicity rights on behalf of Dwayne Johnson,who portrays THE ROCK, Steve Williams, whoportrays STONE COLD STEVE AUSTIN, and MarkCalloway, who portrays the UNDERTAKER.

Pennsylvania recognizes the common law rightof publicity, which grants a person an "exclusive rightto control the commercial value of his name andlikeness and to prevent others from exploiting thatvalue without permission." Brockum Co. v. Blaylock,729 F.Supp. 438, 445 (E.D.Pa. 1990) (citationomitted); Eagle's Eye, Inc. v. Ambler Fashion Shop,Inc., 627 F.Supp. 856, 862 (E.D.Pa.1985)("Pennsylvania has recognized the right of publicity...."); Vogel v. W.T. Grant Co., 458 Pa. 124, 327 A.2d133, 136 (1974).

A defendant violates a plaintiff's right of publicity by "appropriating its valuable name or

likeness, without authorization, [and using] it todefendant's commercial advantage." PhiladelphiaOrchestra Ass'n v. Walt Disney Co., 821 F.Supp. 341,349 (E.D.Pa.1993); see also Seale v. GramercyPictures, 964 F.Supp. 918, 929-30(E.D.Pa.1997)(finding no Pennsylvania case lawclearly setting forth the elements for a right ofpublicity claims and predicting that the PennsylvaniaSupreme Court will clarify the law by adopting theRESTATEMENT (THIRD) OF UNFAIRCOMPETITION). Section 46 of the Restatementdefines the right of publicity as follows:

One who appropriates the commercial value of a

person's identity by using without consent theperson's name, likeness, or other indicia of identityfor the purposes of trade22 is subject to liability forthe relief appropriate under the rules stated in 48and 49.

RESTATEMENT (THIRD) OF UNFAIRCOMPETITION 46.

The right of publicity is often invoked in thecontext of commercial speech when the appropriationof a celebrity likeness creates a false and misleadingimpression that the celebrity is endorsing a product.See Waits v. Frito-Lay, Inc. 978 F.2d 1093 (9thCir.1992); Midler v. Ford Motor Co. 849 F.2d 460

(9th Cir.1988). In addressing right of publicityclaims, however, courts have been mindful that theFirst Amendment provides greater protection toworks of artistic expression than it provides to pure"commercial" speech. Seale v. Gramercy Pictures,949 F.Supp. 331, 337 (E.D.Pa.1996). In Cardtoons,L.C. v. Major League Baseball Players Assoc., 95F.3d 959 (10th Cir.1996), the Tenth Circuit held thatthe First Amendment guarantee of freedom ofexpression outweighs the rights of publicity of

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professional baseball players where a trading card producer sold "parody trading cards" containingcartoons of well-known baseball players.Recognizing that the parody cards "are notcommercial speech they do not merely advertiseanother unrelated product," the Court held that theparody cards "are an important form of entertainmentand social commentary that deserve First Amendment protection." Cardtoons, L.C. v. Major LeagueBaseball Players Assoc., 95 F.3d at 970, 976, see alsoSeale v. Gramercy Pictures, 949 F.Supp. at 337.

In Comedy III Productions, Inc. v. GarySaderup, Inc., 25 Cal.4th 387, 106 Cal.Rptr.2d 126,21 P.3d 797 (2001), the California Supreme Courtfound that sketched portraits of The Three Stoogesthat were sold individually and on t-shirts wereexpressive works and not an advertisement for, orendorsement of, a product. Though the works weredone for financial gain, the court held that thedefendant's works did not lose First Amendment

protection because they were produced for profit.Comedy III Productions, Inc. v. Gary Saderup, Inc.,106 Cal.Rptr.2d 126, 21 P.3d at 802. Moreimportantly, the court in Comedy III found that because of the importance celebrities hold in oursociety23, the right of publicity can potentially chillalternative versions of celebrity images that are"iconoclastic, irreverent, or otherwise attempt toredefine celebrity meaning." Id., 106 Cal.Rptr.2d 126,21 P.3d at 803. Such prominence invites comment,and the right to publicity should not be used as ashield to caricature, parody and satire. Id.

There is an obvious tension between forms of

artistic expression protected by the First Amendmentand those that must give way to a celebrity's right of publicity. The California Supreme Court foundcopyright analysis to be instructive, using the firstfair use factor, "the purpose and character of the use"17 U.S.C. 107(1), in reconciling thesecountervailing rights. Comedy III Productions, Inc. v.Gary Saderup, Inc., 106 Cal.Rptr.2d 126, 21 P.3d at808. Whether a work is "transformative" or merelysupersedes the objects of the original creation,therefore, is crucial to this Court's attempt atreconciling the right of publicity with the FirstAmendment.

As this Court has set forth in detail above, theWBDF merchandise parodies the characters andpersona of the WWE. The graphics are not literaldepictions, as the California Supreme Court found inComedy III, but caricatures of WWE's wrestlingcharacters. Big Dog's use of dogs to poke fun atcelebrities and societal icons is an important form ofentertainment and expressive commentary thatdeserves First Amendment protection. There is by nomeans a direct trespass or rip-off of the WWE

wrestling characters, Big Dog has added significantartistic and imaginative expression to its graphics thatoutweighs the state law interest in protecting WWE'srights of publicity. Moreover, the celebrity status ofthe high profile of the WWE characters, which theWWE admits and Big Dog does not dispute, makethem prime targets of satire and parody. Finding noissue of material fact, this Court finds that Big Dog isentitled to judgment as a matter of law on WWE'sclaims for violation of the common law publicityrights of Dwayne Johnson, Steve Williams, and MarkCalloway.

E. WWE's Remaining ClaimsWWE also presents claims for false designation

of origin, misappropriation and unfair competitionunder Section 43(a) of the

court case re right of publicity and fair use

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