Finally, Yankee argues that New York's cover was inherently misleading and therefore not entitled to First Amendment protection as suggested in the Rogers v. Grimaldi opinion. See 875 F.2d at 999, n.5. I find no basis for this argument. The takeoff was neither intended to mislead nor, in the court's view, did it mislead.
New York's anti-dilution statute, General Business Law § 368-d provides:
Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.
The elements of a cause of action under this statute and the factors to be considered have been discussed in a number of cases. While dilution, even without confusion, can sustain a cause of action under the New York statute, the factors are, on the whole, quite similar to those involved in a federal cause of action under the Lanham Act. See, e.g., Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625-26 (2d Cir. 1983); Miss Universe, Inc. v. Patricelli, 753 F.2d 235, 238 (2d Cir. 1985); Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 369 N.E.2d 1162, 399 N.Y.S.2d 628 (1977); Hester Industries, Inc. v. Tyson Foods, Inc., 1990 U.S. Dist. LEXIS 7965, 16 U.S.P.Q.2d 1275, 1278 (N.D.N.Y. 1990). For the reasons discussed at length above, I conclude that Yankee has not suffered dilution, watering down, or weakening of its mark resulting from New York's cover. See Conan Properties Inc. v. Mattel Inc., 712 F. Supp. 353, 362-63 (S.D.N.Y. 1989) (dismissal of Lanham Act claim for failure to demonstrate likelihood of confusion warranted dismissal of common law unfair competition claim as well); see also Robert C. Denicola, "Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols," 1982 Wis. L. Rev. 158, 188 ("the use of famous marks in parodies causes no loss of distinctiveness, since the success of the use depends upon the continued association of the mark with the plaintiff") (footnote omitted). In any event, the same First Amendment considerations that limit a cause of action under the Lanham Act apply also to a cause of action under New York law.
To prevail on a claim of unjust enrichment, plaintiffs must show that the defendant has been enriched at plaintiffs' expense "under such circumstances that in equity and good conscience he ought not retain." Miller v. Schloss, 218 N.Y. 400, 113 N.E. 337 (1916). Yankee has failed to show that New York reaped any unjust enrichment.
Plaintiffs have failed to show that defendant's use of a recognizable imitation of plaintiffs' trade dress caused any significant likelihood of confusion. In any event, defendant's right of free speech in the exercise of comic commentary outweighs any minor injury that may have been caused to plaintiffs' trademark rights.
Judgment shall be entered for the defendant.
Dated: New York, N.Y.
December 17, 1992
Pierre N. Leval, U.S.D.J.
[SEE APPENDICES IN ORIGINAL]