Legal Fixation

Pink Pantha Patrol

The Fens is an area in Boston not far from Fenway Park, the MFA, and the Gardner Museum. It is known for it's community gardens and tall reeds. The maze of reeds have long provided seclusion for people looking for anonymous sex. The Fens has not been immune to Boston's increase in violent crime over the past few years. A small citizen's group calling itself the Pink Pantha Patrol has begun to keep watch on the park. What interests me is the following quote from the article:

The Pink Panther Patrol began in New York City in the 1980s as a community patrol to stop anti gay violence. But the group was sued for trademark infringement by MGM Studios , who argued that they control the Pink Panther name, and the group lost. So Wozniak tweaked the name with a Boston accent.

The New York group was enjoined from using the name after MGM brought a trademark infringement suit. This Times article from 1991 briefly outlines Judge Leval's decision to issue a PI against defendants.

"M-G-M uses its mark to promote an image of lighthearted, nonpolitical, asexual, amicable, comic entertainment," Judge Pierre N. Leval wrote. "The patrol's use of the name is associated with political activism, violence, defiance, homosexuality and angry confrontation."

The judge said the public could be confused into thinking that the patrol and the Pink Panther cartoon character were somehow related.

In the decision, Judge Leval does not reach the state dilution claim, it is based solely on likelihood of confusion.

The Patrol's use of this very distinctive and famous name will raise questions in the minds of the public, as to whether the promoters of the comic Pink Panther are engaged in sponsoring the Patrol's cause and efforts. It raises a likelihood that members of the public will in some fashion associate the plaintiff's enterprise with the defendants'. This is the kind of confusion that the trademark laws are designed to avoid. Such confusion would be likely to have an adverse affect on the value of plaintiff's mark. Such harm to the mark would be difficult to measure and to compensate. The likelihood of confusion resulting from defendants' use of so distinctive and famous a mark is substantial and creates a meaningful risk of irreparable harm.

I have a difficult time buying this reasoning. I would have an easier time buying the decision if it were based on dilution by tarnishment. But even then, would the mere association of the term PINK PANTHER with the gay community be enough to "tarnish" the mark. I should think not. Especially when used by a group to purportedly reduce crime.

The Globe article also highlights a common misconception regarding trademarks. The misconception is that there is no infringement so long as the marks are spelled differently.

Marks do not have to be identical in appearance to be infringing. Changing the spelling of a mark to avoid confusion with another mark which is a phonetic equivalent rarely works. PANTHER/PANTHA. The general legal standard is whether or not there is a "likelihood of confusion" between the marks, not whether or not the marks are identical in appearance.

posted by Aaron Silverstein @ 2:05 AM