Caterpillar Versus Disney
Why the First Amendment Does Not Protect the Use of the Bulldozer Company's Logo in George of the Jungle 2

Last Tuesday, October 14, in Peoria, Illinois, Caterpillar, Inc. filed a lawsuit against Disney. Caterpillar alleges that its trademark is diluted by the Disney movie George of the Jungle 2 -- which was released on video and DVD this week. It also claims that the movie violates the law of unfair competition.

Caterpillar also went to court last week to seek a temporary restraining order (TRO) to prevent distribution of the film. The court denied its request for the TRO.

In George of the Jungle 2, George is pitted against an industrialist, Lyle, who seeks to destroy the jungle. In four scenes, Lyle's henchmen are shown driving Caterpillar bulldozers.

The court, in its opinion, explained the specifics of the four scenes. Three of the scenes, it said, "show brief glimpses of the bulldozers moving toward Ape Mountain at various angles in which a viewer could make out the Caterpillar trademarks. However, these scenes are brief, averaging approximately ten seconds apiece."

But the fourth scene is more substantial: It is "a seven minute battle scene between George and his animal allies against these bulldozers driven by Lyle's minions. . .While the action is occurring onscreen, the narrator will occasionally chime in with descriptions of the machines as 'deleterious dozers,' 'maniacal machines' and other similar comments. The bulldozers, however, are not computer animated and look and perform as expected of their type; and it is clear that the bulldozers are operated by Lyle's henchmen. George and his allies manage to decommission these bulldozers in several different ways, generally involving instances of combustible ape flatulence and projectile coconuts and animal feces."

While the Court has a sense of humor about this, one can see why Caterpillar is upset.

To successfully procure a TRO or other preliminary relief, the plaintiff -- here Caterpillar, must prove both that it is likely to succeed on its claims on the merits, and that the "balance of harms" is in its favor. Here, the court found Caterpillar did not satisfy either element of the test.

Caterpillar's trademark dilution test seemed the strongest of its claims, but the court still rejected it at this preliminary stage. To prove trademark dilution, Caterpillar would have to show, first, that it possesses a famous trademark -- as it obviously does. But it would also have to show that Disney caused dilution of the distinctive quality of that trademark. The court, however, was unpersuaded.

Caterpillar argued that the use of its trademarks in the film tarnished the reputation of its business and products. But the court did not agree -- interpreting the film as blaming not the bulldozers themselves, but those operating them, for the environmental damage caused. It judged that "it is clear to even the most credulous viewer or child that the bulldozers in the movie are operated by humans and are merely inanimate implements of Lyle's environmentally unfriendly schemes."

The court also found Caterpillar's unfair competition claim unlikely to succeed. It acknowledged that the purpose behind trademarks is to help consumers select goods, and that the value of a trademark therefore creates "a powerful inducement for or other parties to take a free ride on its fame."

But it pointed out that there was no indication that Disney had intended to "poach or free-ride on the fame or goodwill of Caterpillar's trademarks" -- for example, by using the trademarks to drive its DVD or video sales.

In a footnote, it compared the case to an instance in which a court found a film did try to profit from a trademark it did not own: The 1979 decision of the U.S. Court of Appeals for the Second Circuit in Dallas Cowboys Cheerleaders Inc. v Pussycat Cinema. There, the film "Debbie Does Dallas" was found to be capitalizing on the Dallas Cowboys Cheerleaders trademark in order to drive sales and awareness of the movie.

The court in the Caterpillar case also noted that products with well-known trademarks commonly appear in films -- without triggering any worries about unfair competition. It asked rhetorically, "Is the mere appearance of a Ford Taurus in a garden variety car chase scene sufficient by itself to constitute unfair competition?" And, of course, it strongly implied the answer is no.

The court also found that the balance of harms favored Disney. To apply this factor, the court looks at the world as it is, and the world as it would be if the TRO were granted, and assesses the harms to the parties in each.

In the world as it is, in which George of the Jungle 2 is being released, the court assessed the harm to Caterpillar as slight. It found it unlikely that any consumer would watch the film and then decided not to purchase Caterpillar's primary product: heavy machinery and equipment.

Yet in the world as it would be if the TRO were granted, the court surmised that Disney would be harmed greatly. It would not be able to release its 2.2 million copies of the film as planned, and would lose a great deal of revenue as a result.

The Court did not address First Amendment issues, but they plainly are implicated here -- despite the fact that the film is made-for-profit.

In discussing the case on his blog, Professor Eugene Volokh points out that the film, while commercial, is not commercial advertising -- and thus is fully First Amendment-protected speech.

In support of his point, Volokh notes that the Federal Trademark Dilution Act has an exception for noncommercial uses, and cites the U.S. Court of Appeals for the Ninth Circuit's decision in Mattel v. MCA Records. There, the court held that "[t]rademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view."

In my view, however, this case can be distinguished from Mattel. Mattel rightly made clear that "the trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function." In the Mattel case, that was exactly what the band Aqua Girl was trying to do with Barbie -- using the term not only to identify the doll, but also to say something about it.

But that is not what is going on in George of the Jungle 2. There, the Caterpillar mark serves only its source-identifying function -- to label the machines used as bulldozers. Thus, Disney could have made the same picture, and conveyed the same meaning, without using Caterpillar's trademark. It could have instead used "Big Bulldozer Co." or some name to that effect. Indeed, the circus in Dumbo treats the poor elephant with great cruelty yet the circus is not "Ringling Brothers" but a generic-named one.

For that reason, this case is more similar to the 1997 decision of the Ninth Circuit, in Dr. Seuss Ents., L.P. v. Penguin Books USA, Inc., than it is to Mattel. In the Dr. Seuss case, the court held that the trademark and copyright uses "had no critical bearing on the substance or style of 'The Cat in the Hat'" and thus were not protected by the First Amendment. Here, too, the use of the Caterpillar trademark has no critical bearing on its substance or style.

The law should not let Disney and other creators and disseminators of mass entertainment carelessly use trademarks in which companies have invested. (After all, Disney itself is quick to litigate against a company that harms one of its trademarks and to work to get Congress to extend the duration of its copyrights.) To do so is to begin on a slippery slope to a world in which trademark owners have no control over the use of their trademarks in mass media -- and in which the trademarks therefore lose their distinctiveness and value.

Surely the First Amendment should protect Disney and others when they use trademarks in their films in order to convey points, stories, and messages that could not otherwise be communicated to viewers. But that is not what is happening here.

Here, it is unclear why Disney had to use the Caterpillar mark at all -- as opposed to just using a fictional mark such as "Big Bulldozer Co." If Disney's reason for using the Caterpillar mark was merely carelessness, surely the law should not reward that.