2000 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

4-28-2000

Times Mirror Magazines v. Las Vegas Sports News

Precedential or Non-Precedential:

Docket 99-1299

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Recommended Citation

"Times Mirror Magazines v. Las Vegas Sports News" (2000). 2000 Decisions. Paper 86.

http://digitalcommons.law.villanova.edu/thirdcircuit_2000/86
Filed April 28, 2000 

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT 

No. 99-1299 

TIMES MIRROR MAGAZINES, INC. 

v. 

LAS VEGAS SPORTS NEWS, L.L.C., 

d/b/a LAS VEGAS SPORTING NEWS, 

 Appellant. 

On Appeal from the United States District Court 

for the Eastern District of Pennsylvania 

(D.C. No. 98-cv-05768) 

District Judge: Honorable Bruce W. Kauffman 

Argued: January 13, 2000 

Before: Alito, Barry and Aldisert, Circuit Judges. 

(Filed: April 28, 2000) 

 Malcolm J. Gross (Argued) 

 Gross, McGinley, LaBarre & Eaton 

 Allentown, PA 

 Attorney for Appellee 

 Diane S. Danoff (Argued) 

 Dechert, Price & Rhoads 

 Philadelphia, PA 

 Attorney for Appellant 
OPINION OF THE COURT 

ALDISERT, Circuit Judge. 

The issue on appeal is whether the district court erred by 

preliminarily enjoining Las Vegas Sports News, L.L.C., 

d/b/a Las Vegas Sporting News ("LVSN"), from using the 

phrase "Sporting News" in connection with its weekly 

sports-betting publication under the Federal Trademark 

Dilution Act of 1995, 15 U.S.C. S 1125(c) ("FTDA" or "Act"). 

The district court concluded that Times Mirror Magazines 

Inc., owner of the federally registered mark "The Sporting 

News," was likely to succeed on the merits of its dilution 

claim against LVSN, because the mark was "famous" in its 

niche market and LVSN's use of the title Las Vegas Sporting 

News on its publication diluted the Times Mirror's mark by 

blurring its distinctiveness. 

The district court had jurisdiction over the dilution 

claims pursuant to 15 U.S.C. S 1121(a) and 28 U.S.C. 

S 1338. We have jurisdiction pursuant to 28 U.S.C. 

S 1292(a)(1). This appeal by LVSN was timelyfiled under 

Rule 4, Federal Rules of Appellate Procedure. 

LVSN contends that the district court erred by granting 

Times Mirror preliminary injunctive relief because Times 

Mirror failed to establish a likelihood of success on the 

merits of its dilution claim or immediate irreparable harm. 

We must decide whether the district court erred by holding 

that (a) the mark "The Sporting News" was famous in the 

sports periodicals market; (b) LVSN's use diluted the 

strength of Times Mirror's mark by blurring its 

distinctiveness and (c) Times Mirror's 15-month delay in 

bringing suit did not preclude a finding that LVSN's use 

would immediately cause irreparable harm to Times Mirror. 

In reviewing the grant or denial of a preliminary 

injunction, we consider the following: 

 1. The law has entrusted the power to grant or 

 dissolve an injunction to the discretion of the trial 

 court in the first instance, and not to the appellate 

 court. 

 2 
 2. Unless the trial court abuses that discretion, 

 commits an obvious error in applying the law or 

 makes a serious mistake in considering proof, the 

 appellate court must take the judgment of the trial 

 court as presumptively correct. 

 3. This limited review is necessitated because the 

 grant or denial is almost always based on an

 abbreviated set of facts, requiring a delicate 

 balancing of the probabilities of ultimate success at 

 final hearing with the consequences of immediate 

 irreparable injury which could possibly flow from 

 the denial of preliminary relief. 

 4. In exercising its limited review of the grant or 

 denial of preliminary injunctive relief, the appellate 

 court asks: (a) Did the movant make a strong

 showing that it is likely to prevail on the merits? (b) 

 Did the movant show that, without such relief, it 

 would be irreparably injured? (c) Would the grant 

 of a preliminary injunction substantially have 

 harmed other parties interested in the proceedings? 

 (d) Where lies the public interest? 

 5. The applicant for a preliminary injunction bears 

 the burden of establishing that a right to such 

 injunctive relief and that irreparable injury will 

 result to him of it is not granted. Moreover, we 

 have emphasized the elementary principle that a 

 preliminary injunction shall not issue except under 

 a showing of irreparable injury. 

A.O. Smith Corp. v. FTC, 530 F.2d 515, 525 (3d Cir. 1976); 

see Loretangeli v. Critelli, 853 F.2d 186, 193 (3d Cir. 1988). 

I. 

In 1886, the phrase "The Sporting News" was granted

federal trademark registration and since that time has been 

the banner headline on a weekly publication, entitled The 

Sporting News. The mark's present owner, Times Mirror 

Magazines, Inc., publishes The Sporting News and operates 

an internet website devoted to its publication at 

<http://www.sportingnews.com>. 

 3 
The Sporting News provides its readers with information 

on baseball, basketball, football and hockey, and has a 

weekly circulation of approximately 540,000 in the United 

States and Canada. The Sporting News does not provide 

any information on gambling, because Times Mirror 

"believe[s] that there is a portion of the population that is 

adamantly opposed to gambling and that they would not 

look favorably on any of [its] products if they thought [the 

magazine was] promoting gambling in any way." D. Ct. Op. 

at 2 (alteration in original). The magazine is advertised on 

television, in direct mail solicitations, in promotions and 

occasionally on the radio. It is typically sold for $2.99, but 

nine special content issues are sold each year for $3.99. 

Over the last several years, Times Mirror has invested 

millions of dollars in The Sporting News in an attempt to 

improve the quality of its magazine and to increase

readership. 

LVSN publishes Las Vegas Sporting News, which 

contains articles, editorials and advertisements on sports 

wagering "for the sports gaming enthusiasts or individuals 

that like to take a risk." App. at 41 (Testimony of LVSN 

publisher, Dennis Atiyeh). Las Vegas Sporting News is 

published 45 times a year and generally has a circulation 

of 42,000, but some special editions have had a circulation 

of up to 100,000. The publication is sold for $2.99 at 

several hundred newsstands across the country, but most 

copies are given away in gambling casinos free of charge. 

In 1997, LVSN publisher Dennis Atiyeh changed the 

name of his publication from Las Vegas Sports News to Las 

Vegas Sporting News. The publisher says that he changed 

the publication's title for two reasons: (1) the previous 

publisher of Las Vegas Sports News had a poor reputation, 

having fallen into disrepute with gambling casinos and (2) 

the term "sporting" more accurately reflected the 

publication's content, because the publication was a"sports 

gaming" publication, and not purely a "sports publication." 

D. Ct. Op. at 3. Atiyeh admits that at the time he changed 

the name of his publication, he was familiar with Times 

Mirror's publication The Sporting News. Since the 1997 

name change to Las Vegas Sporting News, circulation of the 

publication has increased, but not substantially. 

 4 
Times Mirror first learned that LVSN was publishing Las 

Vegas Sporting News in August 1997. On September 24, 

1997, Times Mirror sent LVSN a cease and desist letter, 

which read in part: 

 It has recently come to my attention that your 

 company is marketing a sports magazine entitled Las 

 Vegas Sporting News. Apparently, this is a relatively 

 recent change, since the masthead page of your 

 magazine makes reference to Las Vegas Sports News, 

 stating, in part, that, "Las Vegas Sports News . . . is 

 published weekly . . . ." 

 . . . . It would appear that your company is 

 attempting to unlawfully appropriate the good will that 

 is associated with our federally registered trademark. 

 In view of the likelihood of consumer confusion, we 

 hereby demand that you (1) immediately cease and 

 desist from any further use of the term "Las Vegas 

 Sporting News," and (2) select a name to identify your 

 product that is not confusingly similar to our "The 

 Sporting News" trademark. 

App. at 263-264 (citations omitted). 

LVSN had not ceased using the phrase "Sporting News" 

in connection with its weekly publication. In October 1998, 

after settlement negotiations between Times Mirror and 

LVSN proved unsuccessful, Times Mirror retained Glenn 

Hauze, a private investigator in Pennsylvania, "to gain as 

much information as possible regarding the availability of 

the Las Vegas Sporting News," in anticipation of litigation. 

App. at 31. Hauze began his investigation by visiting three 

newsstands in or around Lehigh Valley, Pennsylvania. The 

first newsstand he visited was in Plumsteadville, and it 

carried both The Sporting News and Las Vegas Sporting 

News. Las Vegas Sporting News "was up on the shelf with 

the other sporting magazines," but The Sporting News "was 

down amongst the tabloids." D. Ct. Op. at 6. The following 

day, Hauze found copies of Las Vegas Sporting News for 

sale at newsstands in Allentown and Quakerville. At the 

Allentown newsstand, Las Vegas Sporting News and The 

Sporting News were displayed within inches of each other in 

 5 
a bay window in front of the store, along with a large 

number of other sporting type publications. 

John Kastberg, vice-president of Times Mirror's The

Sporting News, conducted his own investigation in 

December 1998, during which he visited three newsstands 

in New York City: 

 I went to a newsstand in Penn Station which is a train 

 terminal in New York, I went to Barnes & Noble in New 

 York and I went to a newsstand in Grand Central 

 Terminal which is another train station in New York. 

 . . . [W]hen I went to Penn Station I asked the guy "Do 

 you have the Las Vegas Sporting News," and he 

 handed me the Times Mirror Sporting News. . . . I went 

 to the Barnes & Noble, asked the same question, got 

 Times Mirror Sporting News and the same thing 

 happened at Grand Central. All three times I was 

 handed the Times Mirror Sporting News when I asked 

 for Las Vegas Sporting News. 

App. at 24-25. 

Two weeks after Hauze's investigation, Times Mirrorfiled 

a complaint in district court, charging LVSN with infringing 

Times Mirror's registered mark in violation of section 32 of 

the Lanham Act, 15 U.S.C. S 1114(1); with false designation 

of origin in violation of section 43(a) of the Lanham Act, 15 

U.S.C. S 1125(a); with trademark dilution in violation of 

section 43(c) of the Lanham Act, 15 U.S.C. S 1125(c); and 

with common law unfair competition and infringement. 

On December 3, 1998, both parties participated in an 

evidentiary hearing on Times Mirror's motion for a 

preliminary injunction, in which it sought to enjoin LVSN 

from using the phrase "Sporting News" on its publication. 

In its March 4, 1999 Order and Memorandum Opinion, the 

district court concluded that Times Mirror was likely to 

succeed on the merits of its federal trademark dilution 

claim and consequently granted Times Mirror's request for 

a preliminary injunction, thereby enjoining LVSN from 

using the phrase "Sporting News" in connection with its 

weekly publication. The district court granted the 

preliminary injunction solely on trademark dilution by 

blurring grounds and did not consider Times Mirror's other 

 6 
claims. The parties subsequently agreed inter alia that the 

preliminary injunction would be stayed pending appeal to 

this court. 

II. 

The Federal Trademark Dilution Act of 1995 provides: 

 The owner of a famous mark shall be entitled, 

 subject to the principles of equity and upon such terms 

 as the court deems reasonable, to an injunction 

 against another person's commercial use in commerce 

 of a mark or trade name, if such use begins after the 

 mark has become famous and causes dilution of the 

 distinctive quality of the mark, and to obtain such 

 other relief as is provided in this subsection. 

15 U.S.C. S 1125(c)(1). 

The federal cause of action for trademark dilution grants 

extra protection to strong, well-recognized marks even in 

the absence of a likelihood of consumer confusion--the 

classical test for trademark infringement--if the defendant's 

use diminishes or dilutes the strong identification value 

associated with the plaintiff 's famous mark. 4 McCarthy on 

Trademarks and Unfair Competition S 24:70 (4th ed. 1997). 

The dilution doctrine is founded upon the premise that a 

gradual attenuation of the value of a famous trademark, 

resulting from another's unauthorized use, constitutes an 

invasion of the senior user's property rights in its mark and 

gives rise to an independent commercial tort for trademark 

dilution. Id. 

To establish a prima facie claim for relief under the 

federal dilution act, the plaintiff must plead and prove: 

 1. The plaintiff is the owner of a mark that qualifies 

 as a "famous" mark in light of the totality of the 

 eight factors listed in S 1125(c)(a), 

 2. The defendant is making commercial use in

 interstate commerce of a mark or trade name,

 3. Defendant's use began after the plaintiff 's mark 

 became famous, and 

 7 
 4. Defendant's use causes dilution by lessening the 

 capacity of the plaintiff 's mark to identify and 

 distinguish goods or services. 

See 4 McCarthy, supra, S 24:89; see also Hershey Foods 

Corp. v. Mars, Inc., 998 F. Supp. 500, 504 (M.D. Pa. 1998) 

(quoting 4 McCarthy, supra). A court may consider the 

following eight non-exclusive factors in determining the 

famousness vel non of a mark: 

 (A) the degree of inherent or acquired distinc tiveness 

 of the mark; 

 (B) the duration and extent of use of the mark in 

 connection with the goods or services with which the 

 mark is used; 

 (C) the duration and extent of advertising and 

 publicity of the mark; 

 (D) the geographical extent of the trading are a in 

 which the mark is used; 

 (E) the channels of trade for the goods and se rvices 

 with which the mark is used; 

 (F) the degree of recognition of the mark in t he 

 trading areas and channels of trade used by the 

 marks' owner and the person against whom the

 injunction is sought; 

 (G) the nature and extent of use of the same o r 

 similar marks by third parties; and 

 (H) whether the mark was registered under the Act of 

 March 3, 1881, or the Act of February 20, 1905, or 

 on the principal register. 

15 U.S.C. S 1125(c)(1)(A)-(H). 

The district court held Times Mirror established a 

likelihood of success on the merits of its federal dilution 

claim against LVSN, because (1) Times Mirror's mark"The 

Sporting News" was famous; (2) LVSN made commercial use 

in interstate commerce of the name "Las Vegas Sporting 

News"; (3) Times Mirror's mark became famous before LVSN 

began using the name "Las Vegas Sporting News" and (4) 

LVSN's use of that name diluted the strength of"The

 8 
Sporting News" mark. Because Appellant only challenges 

the first and last prongs of Times Mirror's prima facie claim 

for dilution, we focus our attention on the district court's 

findings that "The Sporting News" is a famous mark under 

the Act and that LVSN's use diluted the strength of Times 

Mirror's mark. 

III. 

LVSN argues that the district court erred in granting 

Times Mirror a preliminary injunction because its mark 

"The Sporting News" is not famous and because the court 

did not make a separate finding as to the distinctiveness of 

Times Mirror's trademark. 

A. 

Appellant contends that "The Sporting News" cannot be 

famous under the Act because it is not famous to the 

general public, and "substantial case law indicates that 

marks famous in a specialized market, rather than wellknown to the general public, should not be considered 

`famous' under the federal dilution statute." Appellant Br. 

at 23 (citing Washington Speakers Bureau, Inc. v. Leading 

Authorities, Inc., 33 F. Supp.2d 488, 503 (E.D. Va. 1999)). 

However, in the case Appellant cites for its theory, the court 

did not specifically adopt or reject a niche market theory for 

fame. See Washington Speakers Bureau, Inc., 33 F. Supp.2d 

at 503 ("In the instant case, it is ultimately unnecessary to 

resolve this still-unsettled question, since even if fame in a 

niche market were sufficient to establish fame under the 

Act, consideration of the statutory factors reveals that [the 

plaintiff] has failed to make even this demonstration."). 

Thus, this case is not particularly helpful to our analysis. 

We recognize that not all courts' decisions have been 

precise in addressing the question whether a mark can be 

famous in a niche market. The Court of Appeals for the 

Seventh Circuit has addressed the niche market debate: 

 At an initial glance, there appears to be a wide 

 variation on this issue [of whether a mark famous in a 

 niche market is entitled to protection under the FTDA]. 

 9 
 Some cases apparently hold that fame in a niche 

 market is insufficient for a federal dilution claim, while 

 some hold that such fame is sufficient. However, a 

 closer look indicates that the different lines of authority 

 are addressing two different contexts. Cases holding 

 that niche-market fame is insufficient generally 

 address the context in which the plaintiff and 

 defendant are using the mark in separate markets. On 

 the other hand, cases stating that niche-market 

 renown is a factor indicating fame address a context 

 . . . in which the plaintiff and defendant are using the 

 mark in the same or related markets. 

Syndicate Sales, Inc. v. Hampshire Paper Corp. , 192 F.3d 

633, 640 (7th Cir. 1999) (internal footnotes omitted); see 

also Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 222 (2d 

Cir. 1999) ("[D]ilution can occur where the[defendant's] use 

competes directly with the [plaintiff 's] as well as where the 

[defendant] is in a non-competing market. In general, the 

closer the products are to one another [in the marketplace], 

the greater the likelihood of both confusion and dilution."). 

The Restatement (Third) of Unfair Competition lends

further support to the theory that niche market fame is 

sufficient to protect a mark from dilution within that 

market: 

 A mark that is highly distinctive only to a select class 

 or group of purchasers may be protected from diluting 

 uses directed at that particular class or group. For 

 example, a mark may be highly distinctive among 

 purchasers of a specific type of product. In such 

 circumstances, protection against a dilution of the 

 mark's distinctiveness is ordinarily appropriate only 

 against uses specifically directed at that particular 

 class of purchasers . . . . 

Restatement (Third) of Unfair Competition S 25 cmt. e (1995 

Main Vol.); see 4 McCarthy, supra,S 24:112. We are 

persuaded that a mark not famous to the general public is 

nevertheless entitled to protection from dilution where both 

the plaintiff and defendant are operating in the same or 

related markets, so long as the plaintiff 's mark possesses 

a high degree of fame in its niche market. 

 10 
The district court determined that Times Mirror and

LVSN competed in the same, or at least significantly 

related, markets--namely, the sports periodicals market. 

LVSN contends that its readers, who essentially are

interested in wagering on sports, are distinct from the 

readers of The Sporting News, who are interested in sports 

generally. We find such a distinction to be without merit. 

Surely many, if not the vast majority, of those individuals 

who gamble on sports in Las Vegas also follow the sports 

on which they are wagering. We conclude therefore that the 

district court did not err by finding that LVSN and Times 

Mirror shared a common market. Because a mark can be 

famous in a niche market where the mark has a high 

degree of distinctiveness within the market and where the 

plaintiff and defendant operate within or along side that 

market, we hold that the district court did not commit an 

obvious error by holding that the mark "The Sporting News" 

was famous in its niche and therefore entitled to protection 

under the FTDA against LVSN's use of a similar mark in 

the same market. 

B. 

LVSN also argues that "The Sporting News" is not famous 

because it is merely a descriptive mark and does not satisfy 

the eight statutory factors for fame listed in 15 U.S.C. 

S 1125(c)(1)(A)-(H). Because Appellant disputes the district 

court's factual findings with regard to fame and its 

application of the S 1125(c)(1) fame factors, we review each 

factor of the district court's analysis and will not reverse 

unless the district court committed an obvious error in 

applying the law or made a serious mistake in considering 

the proof presented. See A.O. Smith, 530 F.2d at 525. 

The district court concluded that "The Sporting News" 

mark was famous under S 1125(c)(1) for the following 

reasons: 

 First, "The Sporting News" is a federally registered 

 trademark. Because a mark does not qualify for federal 

 trademark registration unless it is distinctive, see 15 

 U.S.C. S 1052, federal registration goes a long way 

 toward proving that the mark has inherent or acquired 

 11 
 distinctiveness. Second, "The Sporting News" has been 

 used on the magazine's banner headline since 1886. 

 Third, The Sporting News is advertised on television, in 

 direct mail solicitations and promotions, and, 

 occasionally, on the radio. In recent years, Times 

 Mirror has spent millions of dollars improving the 

 magazine. Fourth and finally, Times Mirror uses"The 

 Sporting News" trademark throughout the United 

 States and Canada and on the internet. 

D. Ct. Op. at 8-9 (internal quotation marks, footnotes and 

citations omitted). We now review the district court's 

analysis of the famousness of the mark "The Sporting 

News" and its application of the eight non-exclusive 

statutory factors for famousness set forth in Part II, supra. 

1. 

Applying the first factor under 15 U.S.C. S 1125(c)(1), the 

district court determined that "The Sporting News" had a 

high degree of distinctiveness in the sports periodicals 

market. Although the district court did not elaborate on 

this finding, its factual conclusion was not erroneous. 

The degree of acquired or inherent distinctiveness of a 

mark bears directly upon the issue of whether that mark is 

famous. See 15 U.S.C. S 1125(c)(1)(A). The mark "The 

Sporting News" is not inherently fanciful or creative, and 

thus the mark does not have a high degree of inherent 

distinctiveness. We must therefore examine the degree to 

which the mark has acquired distinctiveness by gaining 

secondary meaning over time in the marketplace. To 

determine whether a trademark has acquired 

distinctiveness by the attachment of secondary meaning, 

we examine the following considerations: (1) the length or 

exclusivity of use of the mark; (2) the size or prominence of 

the plaintiff 's enterprise; (3) the existence of substantial 

advertising by the plaintiff; (4) established place in the 

market and (5) proof of intentional copying. I.P. Lund 

Trading v. Kohler Co., 163 F.3d 27, 42 (1st Cir. 1998). The 

district court concluded that "The Sporting News," although 

not a fanciful or arbitrary trademark, has acquired

secondary meaning, and thus distinctiveness in the sports 

 12 
periodicals market, because it has been used in commerce 

since 1886 and because Times Mirror has expended 

millions of dollars in advertising and promoting their mark 

through various media outlets. Times Mirror presented 

evidence to support several of the considerations for 

acquired distinctiveness set forth in I.P. Lund . We therefore 

conclude that the district court did not err byfinding that 

"The Sporting News" had gained secondary meaning and a 

high degree of distinctiveness in its market. 

2. 

The district court also found that the second statutory 

factor--extent and duration of use of the mark--weighed in 

favor of finding the mark famous, because The Sporting 

News has been continuously published since 1886. See 

S 1125(c)(1)(B). We find that the district court did not err in 

this respect. 

3. 

The district court found that the third statutory factor-- 

extent and duration of advertising--weighed in favor of 

finding the mark famous, because Times Mirror presented 

credible proof of extensive advertising and additional 

publicity from the Internet. See S 1125(c)(1)(C). Here, too, 

the district court did not err. 

4. 

The fourth factor is the geographical extent of the trading 

area in which the mark is used. See S 1125(c)(1)(D). Since 

1886, The Sporting News has grown to a circulation of over 

540,000 in both Canada and the United States, as well as 

a recent internet site. The district court found this evidence 

supported a finding that the mark was famous and we will 

not disturb it. 

5. 

The fifth and sixth factors for fame are the degrees of 

recognition of the mark in its channels of trade and the 

 13 
degree of recognition of the mark in the trading areas, see 

S 1125(c)(1)(E)-(F), and the seventh factor is the nature and 

extent of the use of a same or similar mark by third parties, 

see S 1125(c)(1)(G). The district court did not explicitly 

address these factors in its opinion. Nevertheless, the FTDA 

does not require that courts strictly apply every factor in 

the statute. See S 1125(c)(1) (providing that "a court may 

consider factors such as, but not limited to") (emphasis 

added). It was not an abuse of its discretion for the court 

to omit explicit discussion of these factors in its analysis, 

because the majority of the other fame factors weighed in 

favor of finding the mark famous. 

6. 

Finally, the district court determined that the eighth 

factor--whether the mark was registered--favored Times 

Mirror, because "The Sporting News" was registered in 

1886. See S 1125(c)(1)(H). 

Accordingly, we hold that the district court did not err by 

concluding that "The Sporting News" mark was famous in 

the sports periodicals market. 

IV. 

As a final argument against the district court'sfinding 

that "The Sporting News" mark was famous, LVSN contends 

that S 1125(c)(1) requires that a mark be subject to a test 

for fame and a separate test for distinctiveness under the 

FTDA. Although some courts agree with Appellant's 

contention,1 we are persuaded that this interpretation is 

inconsistent with the language and construction of the 

statute. 

To be sure, S 1125(c)(1) does state that a court may 

consider eight statutory factors, among others,"[i]n 

determining whether a mark is distinctive and famous." 15 

_________________________________________________________________ 

1. See, e.g., Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216 n.2 (2d 

Cir. 1999) ("McCarthy's treatise contends that the statute does not 

include an independent requirement of distinctiveness. . . . We 

disagree.") 

 14 
U.S.C. S 1125(c)(1) (emphasis added). We believe, however, 

that "distinctiveness" as used in S 1125(c)(1) is only a 

synonym for "fame." Any other reading of the statutory 

language will result in the statute being redundant because 

the first statutory factor for fame is "the degree of inherent 

or acquired distinctiveness" of the mark. See S 1125(c)(1)(A); 

see also 4 McCarthy, supra, S 24:91 ("[T]here is . . . no 

separate statutory requirement of `distinctiveness,' apart 

from a finding that the designation be a `mark' that is 

`famous.' `Distinctiveness' is used here only as a synonym 

for `fame.' ").2 If a mark is famous, then it is presumed 

distinctive. See Viacom, Inc. v. Ingram Enterprises, Inc., 141 

F.3d 886, 890 n.6 (8th Cir. 1998). We conclude that there 

is no separate statutory requirement of distinctiveness 

apart from a finding of fame. 

V. 

LVSN argues also it was obvious error for the district 

court to apply Judge Sweet's test for "dilution by blurring" 

found in Mead Data Central, Inc. v. Toyota Motor Sales, Inc., 

875 F.2d 1026, 1035 (2d Cir. 1989) (Sweet, J., concurring). 

Before discussing the mechanics of Judge Sweet's Mead 

Data test for dilution, we first explain how trademark 

dilution can occur. A trademark can be diluted two 

different ways: by blurring or by tarnishment. Only dilution 

by blurring is at issue in this appeal. "Blurring" in this 

context means "to make dim, indistinct or indefinite." 

Webster's Third New International Dictionary 243 (1968). 

Blurring occurs when the defendant's use of its mark 

causes the public to no longer associate the plaintiff 's 

famous mark with its goods or services; the public instead 

begins associating both the plaintiff and the defendant with 

the famous mark. See I.P. Lund, 163 F.3d at 47-48; 4 

_________________________________________________________________ 

2. The Trademark Review Commission Report, the impetus behind the 

FTDA, stated: "The same type of evidence which is traditionally used to 

prove distinctiveness can be used to prove fame. Although the registrant 

is not required to prove distinctiveness apart from the import of 

registration, any additional evidence of distinctiveness will ordinarily 

be 

entitled to substantial weight." Report of the Trademark Review 

Commission, 77 Trademark Rep. 375, 459-460 (1987). 

 15 
McCarthy, supra, S 24:70. Dilution by blurring takes place 

when the defendant's use of its mark causes the identifying 

features of the plaintiff 's famous mark to become vague 

and less distinctive. To prove dilution by blurring, the 

owner of a famous mark must prove that the capacity of its 

mark to continue to be strong and famous would be 

endangered by the defendant's use of its mark. See 4 

McCarthy, supra, S 29:94. 

To determine whether LVSN's use blurred, and therefore 

diluted, Times Mirror's mark for "The Sporting News," the 

district court applied the dilution factors set forth in Judge 

Sweet's concurrence in Mead Data: 

 1. similarity of the marks 

 2. similarity of the products covered by the marks 

 3. sophistication of consumers 

 4. predatory intent 

 5. renown of the senior mark 

 6. renown of the junior mark 

Mead Data, 875 F.2d at 1035 (Sweet, J., concurring); see 

D. Ct. Op. at 10-11. 

Several courts and commentators have criticized Judge 

Sweet's dilution test as the offspring of classical likelihood 

of confusion analysis and not particularly relevant or 

helpful in resolving issues of dilution by blurring. See, e.g., 

4 McCarthy, supra, S 24:94.1; see also, e.g., I.P. Lund, 163 

F.3d at 49-50 (reiterating the criticisms of Judge Sweet's 

dilution by blurring test). Instead of outright rejection of the 

Sweet factors, most courts have improved upon the test's 

shortcomings by supplementing the Sweet test with other 

considerations more pertinent to the issue of dilution. See, 

e.g., Nabisco, 191 F.3d at 227 ("We think it would be a 

serious mistake at the outset of our consideration of the 

new federal antidilution statute to limit ourselves to these 

six factors or to any other putatively definitive list."). In 

Nabisco, the Court of Appeals for the Second Circuit 

articulated a more complete set of factors for dilution by 

blurring, including 

 16 
 actual confusion and likelihood of confusion, shared 

 customers and geographic isolation, the adjectival 

 quality of the junior use, and the interrelated factors of 

 duration of the junior use, harm to the junior user, 

 and delay by the senior user in bringing the action. 

Id. at 228. Because we consider the dilution analysis in 

Nabisco helpful, we apply it to facts found by the district 

court. 

The district court concluded that 

 [t]his criticism [of Judge Sweet's dilution test] 

 notwithstanding, blurring sufficient to constitute 

 dilution requires a case-by-case factual inquiry, and in 

 this case, the Court finds that the Sweet factors are 

 useful in evaluating the likelihood that LVSN's use of 

 Las Vegas Sporting News lessens the capacity of The 

 Sporting News to identify and distinguish Times 

 Mirror's goods or services. 

D. Ct. Op. at 11-12 (internal quotation marks and citations 

omitted). Applying the Sweet factors, the district court 

concluded that Times Mirror was likely to prevail on its 

dilution claim based on the following facts: 

 First, the two marks are similar. Not only do the two 

 marks use dominant identical words, i.e., the words 

 "Sporting News," but they both print those words in 

 red lettering on a single line that spans horizontally 

 across the publication's cover, which generally features 

 a well-known sports figure. Las Vegas Sporting News 

 and The Sporting News use different type styles, and 

 LVSN outlines its mark in black whereas Times Mirror 

 outlines its mark in black and white. The lettering thus 

 is distinguishable, but similar nevertheless. Second, 

 both LVSN and Times Mirror use their mark to cover a 

 weekly publication. Third, the undisputed testimony 

 indicated that consumers do not purchase [these] 

 publications in a sophisticated manner, but tend to 

 select their purchase on "impulse," largely based on 

 the publication cover rather than the content. Fourth, 

 the similarity of the marks and their placement on the 

 publication cover might be coincidental, but the 

 evidence showed that the publisher of Las Vegas 

 17 
 Sporting News was aware of The Sporting News at the 

 time he changed the name of his periodical. Finally, 

 The Sporting News is well known, whereas Las Vegas 

 Sporting News is not. 

D. Ct. Op. at 12-13. We hold that the district court did not 

make an obvious error in applying these facts to Judge 

Sweet's factors. Although the district court applied Judge 

Sweet's test and did not explicitly adopt the Nabisco factors 

or any other supplemental dilution factors, our application 

of the Nabisco dilution factors to the facts supports the 

district court's conclusion that LVSN diluted "The Sporting 

News" mark by blurring its distinctive qualities. 

Actual confusion has been shown to exist among those 

selling the two publications, even though no consumer 

surveys were submitted to the district court during the 

preliminary injunction hearing. The evidence presented at 

the hearing supports the finding that a strong likelihood of 

confusion is present, because LVSN's mark and publication 

cover are very similar to Times Mirror's mark and the cover 

of The Sporting News. Sufficient evidence supports a finding 

that customers who purchase these sports publications 

are "unsophisticated consumers," because they often

buy on impulse and because the publications are 

relatively inexpensive. Unsophisticated buyers lack the 

discrimination and "are more vulnerable to confusion, 

mistake and misassociations against which the trademark 

protects." Nabisco, 191 F.3d at 220. Furthermore, LVSN 

has a short duration of use because its first use of its new 

publication name was in 1997. 

Finally, Times Mirror did not unreasonably delay in

brining an action against LVSN. Times Mirror first 

discovered the publication Las Vegas Sporting News in 

August 1997. One month later, Times Mirror sent LVSN a 

cease and desist letter, thereupon triggering a series of 

correspondence and negotiations between the parties. 

Times Mirror's delay was attributable to its belief that LVSN 

would change the name of its publication. Once 

negotiations failed, Times Mirror filed suit. Thus, Times 

Mirror did not unduly delay filing an action against LVSN. 

After weighing the dilution factors from Judge Sweet's 

Mead Data concurrence as supplemented by the Nabisco 

 18 
analysis, we conclude that the district court did not err by 

finding that Times Mirror was likely to prevail on the merits 

of its dilution claim. 

VI. 

LVSN contends also that the district court erred by

granting the preliminary injunction, because Times Mirror 

failed to show that it would suffer irreparable harm if the 

injunction was not issued. On this point, the district court 

stated: 

 In the trademark context, irreparable harm may be 

 shown even in the absence of actual injury to 

 plaintiff 's business based on plaintiff 's demonstration 

 of a likelihood of success on the merits of its claim. The 

 Court therefore finds that in the absence of an 

 injunction, Times Mirror will suffer irreparable harm. 

D. Ct. Op. at 13-14 (internal quotation marks and citations 

omitted). 

We have held that a lack of control over the use of one's 

own mark amounts to irreparable harm. See Opticians

Ass'n v. Independent Opticians, 920 F.2d 187, 195 (3d Cir. 

1990) (stating that potential damage to a mark holder's 

reputation or goodwill or likely confusion between parties' 

marks constitute irreparable injury for the purpose of 

granting a preliminary injunction). LVSN argues that the 

15-month delay, beginning when Times Mirror was on 

notice of the new name of LVSN's publication and ending 

when Times Mirror filed suit against LVSN, necessarily 

shows that Times Mirror's injury, if any, is not immediate 

and irreparable. This argument does not persuade us, 

because the 15-month delay was attributable to 

negotiations between the parties. We conclude that the 

district court did not err by determining that Times Mirror 

would be irreparably harmed if the preliminary injunction 

did not issue. 

* * * 

We have also considered Appellant's contentions that the 

district court erred by determining that the benefits from 

 19 
preliminary injunctive relief outweighed the injury such 

relief would cause LVSN and that the public interest would 

be served by granting Times Mirror's motion for a 

preliminary injunction. Neither contention has sufficient 

merit to warrant further discussion. 

The judgment of the district court will be affirmed. 

 20 
BARRY, Circuit Judge, Dissenting. 

How famous a mark must be before it can be afforded

protection under the Federal Trademark Dilution Act

("FTDA") is a question of first impression in this Circuit, a 

question which implicates the expansion of trademark 

rights under the Lanham Act and one which has received 

much judicial attention elsewhere since the passage of the 

FTDA. The correct answer to this question is of critical 

importance in order that an appropriate balance between 

free competition and property rights be maintained. 1 The 

majority holds that the District Court did not err in finding 

that "The Sporting News" mark was sufficiently famous to 

merit protection under the FTDA. Because I conclude that 

Times Mirror has not shown and, in my view, cannot show 

that it is likely to satisfy the threshold fame requirement, I 

respectfully dissent. 

I. 

Fame means FAME 

The FTDA offers little guidance as to what is required to 

find a mark famous. Thus, courts must rely on legislative 

history and, where helpful, look to dilution theory which 

has developed over years of judicial interpretation of state 

anti-dilution statutes. Dilution theory in the United States 

emanated from a 1927 Harvard Law Review article which 

posited that protection against dilution would fill the gap in 

trademark law left by infringement theory which only 

provided protection when a junior user applied a 

deceptively similar mark to similar goods to confuse a 

competitor's consumers about the source of the goods. See 

_________________________________________________________________ 

1. Commentators have warned that expansion of a dilution cause of 

action could harm competition. See, e.g. , Mark A. Lemley, The Modern 

Lanham Act and the Death of Common Sense, 108 Yale L. J. 1687 (May 

1999); Glynn S. Lunney, Jr., Trademark Monopolies, 48 Emory L. J. 367 

(Spring 1999); William Marroletti, Dilution, Confusion, or Delusion? The 

Need for a Clear International Standard to Determine Trademark Dilution, 

25 Brook. J. Int'l L. 659 (1999); Robert N. Klieger, Trademark Dilution: 

The Whittling Away of the Rational Basis for Trademark Protection, 58 U. 

Pitt. L. Rev. 789 (Summer 1997). 

 21 
Frank I. Schechter, The Rational Basis of Trademark

Protection, 40 Harv. L. Rev. 813, 825 (1927). In the absence 

of a dilution cause of action, trademark law was unable to 

protect mark owners from the unauthorized use of a 

deceptively similar mark placed upon dissimilar or noncompeting goods. Before passage of the FTDA, state antidilution statutes attempted to fill this gap in trademark 

law. However, because truly famous marks -- and"truly" 

will become the operative word here -- are ordinarily used 

on a nationwide basis but only half of the states provided 

remedies for dilution, Congress recognized the need for a 

federal anti-dilution statute. See H.R. Rep. No. 104-374, at 

4 (1995), reprinted in 1995 U.S.C.C.A.N. 1029. Accordingly, 

the FTDA was passed to fill the gap and "to bring 

uniformity and consistency to the protection of famous 

marks." See id. at 3. 

Historically, the Lanham Act has attempted to balance 

the two competing goals of protecting consumers and

protecting a trademark owner's investment. The FTDA, 

however, is concerned only with the latter: 

 It does not have those twin public policy goals of the 

 laws of trademark infringement[.] As a result there may 

 be a kind of judicial restraint about the new law. The 

 perception may be that it does not carry any

 compelling need to protect the public, and that it 

 benefits only a coterie of American business elite, not 

 the general public. 

Jerome Gilson, 2 Trademark Protection & Practice (1999) 

S 5.12[1][e] at 5-272 to 5-273 (hereinafter "Gilson"). 

Moreover, there can be little doubt that Congress sought to 

protect only a select and narrow class of truly famous and 

well-recognized marks. "Without such a requirement, an 

anti-dilution statute becomes a rogue law that turns every 

trademark, no matter how weak, into an anti-competitive 

weapon." 4 J. Thomas McCarthy, McCarthy on Trademarks 

and Unfair Competition, (4th ed. 1999) S 24:108 at 24-210 

(hereinafter "McCarthy"). "To save the dilution doctrine from 

abuse by plaintiffs whose marks are not famous and 

distinctive, a large neon sign should be placed adjacent 

wherever the doctrine resides, reading: `The Dilution Rule: 

Only Strong Marks Need Apply.' " 4 McCarthy S 24:108 at 

 22 
24-209; see also 2 Gilson S 5.12[1][b] at 5-260 (referring to 

class of trademarks protected by FTDA as "Supermarks"). 

The legislative history of the Act is crystal clear that 

Congress intended courts to be highly selective in 

determining which marks are famous and accorded those 

truly famous marks an unprecedented degree of protection. 

A 1987 Report of the Trademark Review Commission of the 

United States Trademark Association (USTA) emphasized 

how limited this universe should be: "We believe that a 

limited category of trademarks, those which are truly 

famous and registered, are deserving of national protection 

from dilution[.] We therefore urge the adoption of a highly 

selective federal dilution statute[.]" Trademark Review 

Commission, Report & Recommendations, 77 Trademark 

Rep. 375, 455 (1987).2 The Report of the Senate Judiciary 

Committee on the precursor to the FTDA stated that the 

1988 bill 

 creates a highly selective federal cause of action to 

 protect federally registered marks that are truly famous 

 from dilution of the distinctive quality of the mark. The 

 provision is specifically intended to address a narrow 

 category of famous registered trademarks where the 

 unauthorized use by others, on dissimilar products for 

 which the trademark is not registered, dilutes the 

 distinctiveness of the famous work[.] 

 Section 43(c) of the Act is to be applied selectively and 

 is intended to provide protection only to those marks 

 which are both truly distinctive and famous, and 

 therefore most likely to be adversely affected by 

 dilution. To protect these special marks, and to ensure 

 that the bill does not supplant the current protection of 

 trademarks based on the likelihood of confusion, the 

 committee amended the legislation to place greater 

 emphasis on the factors the courts must weigh in 

 determining whether a mark possesses a sufficient 

_________________________________________________________________ 

2. In 1988, legislation based on the Commission's proposal for a dilution 

statute limited only to "famous marks" was approved by the Senate, but 

did not survive in the House of Representatives. Subsequently, the 

Commission's proposal became, in large part, the basis for the FTDA. 

See 4 McCarthy S 24:87. 

 23 
 level of fame and distinctive quality to qualify for 

 federal protection from dilution. 

S. Rep. No. 100-515 (reproduced in 6 McCarthy App. A5, at 

41-42)(emphasis added). Examples of truly famous marks 

cited in a House Report on the FTDA included "Buick", 

"Dupont", and "Kodak". See H.R. Rep. No. 104-374, at 4 

(1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1031. In a 

nutshell, the legislative history amply supports the 

conclusion that the FTDA should be restricted to a narrow 

category of marks, ensuring that it does not swallow 

infringement law by allowing mark owners to end-run a 

likelihood of confusion analysis which they fear-- or, 

indeed, know -- they cannot win. 

Despite Congressional intent that the FTDA protect only 

a narrow category of truly famous marks, some early

judicial interpretations of the Act granted dilution 

protection after engaging in only a cursory analysis (or no 

analysis at all) of the fame of the mark. See , e.g., Gazette 

Newspapers, Inc. v. New Paper, Inc., 934 F. Supp. 688, 

696-97 (D. Md. 1996)(no separate analysis of fame);

Hasbro, Inc. v. Internet Entertainment Group, Ltd. , No. 96- 

130, 1996 WL 84853 (W.D. Wash. Feb. 9, 1996)(entering 

preliminary injunction on dilution claim without discussing 

fame). Little if any analysis, of course, would be required to 

find marks such as "Buick", "Dupont" or "Kodak" truly 

famous or, in the context of sports with which we deal here, 

that the mark "New York Yankees" is so famous that even 

non-sports fans are well aware of it. If, however, marks 

which are not such household names can be protected by 

the Act -- and, in my view, that is a big "if " -- those marks 

must be subjected to a rigorous analysis. As one 

commentator has noted with some alarm: 

 [C]ourts thus far have shown little inclination to limit 

 protection to the truly famous marks envisioned by the 

 drafters of the [FTDA]. Instead, the courts, when they 

 acknowledge the fame requirement at all, simply state 

 a mark's fame in conclusory terms without attention to 

 the eight fame factors. Unless courts strictly adhere to 

 the admittedly vague dictates of the federal dilution 

 statute, federal dilution protection will surely give rise 

 to a broad regime of trademark rights in gross. 

 24 
Robert N. Klieger, Trademark Dilution: The Whittling Away 

of the Rational Basis for Trademark Protection, 58 U. Pitt. L. 

Rev. 789, 68 (Summer 1997). 

This concern has not gone unnoticed, and courts are now 

taking pains to emphasize the rigor of the fame 

requirement. For example, the Ninth Circuit recently set 

itself apart from the expansive interpretations of the FTDA 

by other courts by vacating a permanent injunction after 

finding that plaintiff 's trademarks were not sufficiently 

famous for FTDA protection and remanding with 

instructions to enter summary judgment for defendant. See 

Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 

1999). There, Avery Dennison, the seller of office supplies 

and industrial fasteners, sued an Internet e-mail business 

which offered "vanity" e-mail addresses, alleging that 

defendant's maintenance of the domain name registrations 

 and <dennison.net> diluted Avery Dennison's 

trademarks. The "Avery" mark had been in continuous use 

since the 1930s and had been registered since 1963. The 

"Dennison" mark had been in continuous use since the late 

1800s and registered since 1908. See Avery Dennison, 189 

F.3d at 873. Avery Dennison's annual advertising 

expenditures exceeded $5 million, and its annual sales 

reached $3 billion (although no evidence indicated what 

percentage of these dollar figures applied exclusively to the 

"Avery" or "Dennison" trademarks as opposed to the 

company's other marks). See id. Avery Dennison also

maintained its own website. 

After reviewing dilution theory and the legislative intent 

behind the FTDA, the Court emphasized the role of the 

fame requirement in "reinstating the balance" in the 

Lanham Act to avoid "over-protecting trademarks, at the 

expense of potential non-infringing uses." Id . at 875. 

Despite the fact that the registered marks had acquired 

distinctiveness and that four of the eight statutory fame 

factors favored a finding that the marks were famous, the 

Ninth Circuit held that, as a matter of law, Avery Dennison 

had failed to meet its burden of proving fame for two 

reasons. Id. at 876-77. First, while recognizing that fame in 

a "specialized market segment" might be adequate if the 

"diluting uses are directed narrowly at the same market 

 25 
segment," the Court noted that Avery Dennison provided no 

evidence of customer overlap or that defendant's customers 

possessed any degree of recognition of plaintiff 's marks. Id. 

at 877-78. Second, widespread third-party use of the 

names "Avery" and "Dennison" undermined the famousness 

of the marks. Id. at 878. Thus, the Court held that the 

marks were not entitled to protection under the FTDA. See 

also I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 46 

& 49 (1st Cir. 1998)(finding mark not famous and noting 

"mark [must] be truly prominent and renowned"; "courts 

should be discriminating and selective in categorizing a 

mark as famous"); G. Kip Edwards, Developments in 

Dilution Law, 579 PLI/Pat 209, 217 (Nov.-Dec. 1999)(noting 

that many early judicial interpretations of the FTDA 

neglected to heed Congressional intent that the Act be 

applied sparingly to truly famous marks and mistakenly 

granted protection to marks that were "famous" only within 

a specialized market niche (citing Gazette Newspapers), but 

noting that the "pendulum may be swinging back toward 

protection only of truly famous marks" (citing Avery 

Dennison)). 

If one heeds the legislative history, it is simply beyond 

the pale to find "The Sporting News" mark to be another 

"Buick", "Dupont", or "Kodak", names which have long been 

associated in the public's eye with a particular company or 

a particular product and which immediately strike one as 

being truly famous. Stated somewhat differently, tofind 

that "The Sporting News" mark meets the fame 

requirement, thus entitling it to the extraordinary

protection the FTDA provides -- a nationwide injunction -- 

would defeat Congress's deliberate design. 

II. 

Insufficient evidence of fame 

The majority, after paying lip service to the fame 

requirement, holds that the District Court did not err by 

concluding that "The Sporting News" mark is famous in the 

sports periodicals market, a "niche market". I disagree. For 

starters, the legislative history does not mention much less 

 26 
embrace a so-called "niche market" theory of fame.3 Beyond 

that, the niche market theory risks lowering the bar for 

trademark protection unless it is applied prudently to cases 

which clearly call for such an analysis, and this is not one. 

For one thing, The Sporting News is directed at the general 

public via subscriptions and at newsstands, thereby

begging the question: is not the general public the

appropriate universe for assessing the fame of the mark? 

But even if fame exclusively within the sports periodicals 

market would be enough to establish fame under the FTDA, 

the paltry evidence here does not permit any suchfinding. 

Moreover, I take issue with the rather cursory discussion 

by the majority, and by the District Court, of the eight 

statutory factors for fame. 

The fundamental problem with the majority's application 

of the niche market theory, sometimes known as the"big 

fish in a small pond theory," to the facts of this case is that 

it is hard to conceive of any consumer goods or services 

that are not in a narrow market of some type, be it luxury 

cars, cameras, or sporting publications. 

 Courts approving the "big fish in a small pond" theory 

 of trademark dilution fail to recognize that it threatens 

 to overrun trademark infringement law. Trademark 

_________________________________________________________________ 

3. The only reference in the legislative history that even comes close to 

suggesting a so-called "niche-market" theory is found in a discussion of 

the degree of a mark's recognition, where the Trademark Review 

Commission noted that dilution might occur with respect to one universe 

of consumers, but not necessarily to another. "For example, if a mark is 

famous at the industrial level but not at the consumer level, protection 

may be appropriate at the industrial level but not at the consumer level." 

77 Trademark Rep. at 461. This reasoning may provide the basis for the 

application of a niche market theory within a specialized industrial 

niche. See, e.g., Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 

633, 640 (7th Cir. 1999)(finding niche market fame sufficient under 

circumstances in which both parties operated within the narrow 

wholesale market for plastic baskets used for funeral floral bouquets); 

Avery Dennison, 189 F.3d at 877-78 (involving markets for office 

products, industrial fasteners and e-mail addresses); Teletech Customer 

Care Management (California), Inc. v. Tele-Tech Co., Inc., 977 F. Supp. 

1407 (C.D. Cal. 1997)(involving "teleservicing industry" where both 

parties provided services for large corporate clients). 

 27 
 infringement law permits similar, or even identical, 

 marks to coexist on non-competing goods. If even a 

 locally famous mark can preclude all other marks in 

 every channel of trade, then conceivably every 

 trademark can be used to create a monopoly in a word 

 or symbol -- a proposition clearly contrary to the intent 

 and practice of trademark law. It is possible tofind 

 virtually any mark to be "famous" within some market, 

 depending on how narrowly that market is defined. 

Courtland L. Reichman, State and Federal Trademark 

Dilution, 17 Franchise L. J. 111, 133 (Spring 1998). 

If marks can be "famous" within some market, depending 

on how narrowly that market is defined, then the FTDA will 

surely devour infringement law. Indeed, the unauthorized 

use of a mark in the same or a similar market is precisely 

what good old-fashioned infringement principles have 

traditionally been there to remedy once actual confusion or 

likelihood of confusion has been shown, and there is simply 

no need for dilution principles. Can one imagine a clearer 

case for application of those principles than if one were to 

begin manufacturing automobiles and calling those 

automobiles "Buick"? Similarly, if the parties here operate 

within the sports periodicals market, then this case, at 

least in my view, is a garden variety infringement case, and 

the complaint alleges just that. 

Congress was quite clear, however, that the FTDA was 

not designed for situations in which ordinary infringement 

law provided a remedy but, rather, for those situations in 

which a truly famous mark on dissimilar products deserves, 

but cannot receive, protection under infringement law -- 

those situations in which, for example, no one would ever 

confuse that truly famous mark with the goods or services 

to which it has been wrongly attached. Congress was

explicit as to where protection was warranted: "DUPONT 

shoes, BUICK aspirin, and KODAK pianos." H.R. Rep. No. 

104-374, at 4 (1995), reprinted in 1995 U.S.C.C.A.N. at 

1030. The extensive relief the FTDA authorizes, which gives 

the owner of the famous mark a virtual monopoly by 

precluding all others from using the mark "regardless of the 

presence or absence of . . . competition between the owner 

of the famous mark and other parties, or likelihood of 

 28 
confusion," is itself something federal trademark law had 

not before seen, and surely was not meant to be accorded 

to any marginally "famous" mark. 15 U.S.C.S 1127. It 

follows inexorably that if a mark is famous in the general 

public, it is also famous in its niche market and, in such a 

case, dilution and infringement theories need not be 

mutually exclusive. Before, however, a Court categorically 

adopts the theory that a mark that is not generally

renowned, but famous only in its niche market, is entitled 

to protection under the FTDA, the evidence of fame should 

be rigorously examined. Had such an examination been 

performed here, only one conclusion could have been

reached: the evidence of fame is woefully lacking. 

A. Factor (F) 

The FTDA lists eight non-exclusive statutory factors for 

fame which a court may but is not required to consider. 

The "may" is important because it would make little sense 

to require that a mark which immediately strikes one as 

truly famous -- again, "Buick", "Dupont", or "Kodak" -- be 

analyzed for fame in accordance with these factors,

although certainly such an analysis would confirm the 

immediate impression of fame. The less truly famous a 

mark is, however, the more rigorous the analysis of the 

statutory factors must be in light of the evidence of record. 

It is Factor (F), "the degree of recognition of the mark in 

the trading areas and channels of trade used by the marks' 

owner and the person against whom the injunction is

sought," which gives the FTDA's fame requirement its 

"teeth." As the majority notes, however, the District Court 

did not explicitly address this factor -- and neither did the 

majority. 

The guidance which Factor (F) affords to courts is 

somewhat murky. The Act, for example, does not define 

"channels of trade," although presumably that phrase 

means the chain of distribution of the goods featuring the 

mark in question, i.e. the route by which the goods travel 

to the ultimate consumer -- here, from the publisher to the 

reader. Importantly, although Factor (F) focuses the 

analysis on the channels of trade in which the parties 

 29 
operate, it does not dictate the conclusion that fame solely 

within those channels of trade is enough for protection 

under the FTDA. 

According to the legislative history, a finding of fame 

"requires substantial renown or fame within both the 

trading area of the mark and the trading area of the other 

party to the dilution suit." S. Rep. No. 100-515 (reproduced 

in 6 McCarthy App. A5, at 43)(emphasis added); see also 77 

Trademark Rep. at 461 (advocating that a mark"should be 

well known to a substantial portion of the relevant

purchasers of the goods or services.")(emphasis added). 

This, I note, is a higher standard than the"appreciable 

number of persons" standard applied in an infringement 

action in which a plaintiff may prevail only if it shows that 

an appreciable number of ordinarily prudent purchasers of 

the type of product in question are likely to become 

confused as to the source of the goods by the defendant's 

use of the mark. See 77 Trademark Rep . at 461; 4 

McCarthy S 24:92 at 24-163. 

The crux of any discussion of Factor (F) is whether Times 

Mirror is likely to prove that its mark is recognized by a 

substantial portion of LVSN's potential consumers. Again, 

the FTDA does not quantify the requisite "degree of

recognition". Consequently, some commentators have called 

for a clear percentage cut-off for consumer recognition. 

McCarthy, for example, recommends that a plaintiff 's mark 

must be known by more than 50% of the defendant's 

potential customers in order to be considered "famous". See 

4 McCarthy S 24:92 at 24-164; see also Xuan-Thao N.

Nguyen, The New Wild West: Measuring and Proving Fame 

and Dilution Under the Federal Trademark Dilution Act, 63 

Albany L. Rev. 201, 233 (1999)(advocating a 40% rate of 

recognition among defendant's potential customers in a 

nationwide survey). While I am not wed to any specific 

minimum percentage for consumer recognition, I do take 

issue with the fact that Times Mirror has been granted a 

preliminary injunction without offering any evidence 

whatsoever of consumer recognition in LVSN's channel of 

trade.4 

_________________________________________________________________ 

4. The majority averts its gaze from what little evidence does exist 

relating to either party's channel of trade. The majority of LVSN copies 

 30 
In the absence of evidence indicating that consumers in 

LVSN's channel of trade recognize Times Mirror's mark, it 

was wrong, in my view, for the District Court and the 

majority to conclude that the publications share a common 

market and that the mark is famous within that market. 

The Sporting News, moreover, is available at newsstands to 

members of the general public, just as Buick automobiles 

and Kodak film are available to the general public.

Accordingly, to be entitled to a preliminary injunction, it 

was incumbent upon Times Mirror to demonstrate that it is 

likely to succeed in proving that its mark is truly famous 

among members of the general public and, although this 

should follow almost automatically, that its mark is 

recognized by a substantial portion of LVSN's consumers -- 

those who like to gamble, who read gambling publications, 

or who frequent casinos. Such a showing is typically 

achieved through a properly-conducted recognition survey.5 

_________________________________________________________________ 

(approximately 22,000 out of 42,000 in circulation) are made available at 

no charge in Nevada. Many others are available at no charge at casinos 

in Mississippi, Louisiana, Atlantic City, New Jersey and Foxwood, 

Connecticut. Only a small percentage of copies is sold at newsstands. Of 

the approximately 10,000 to 11,000 copies sent to a couple of hundred 

newsstands in a handful of states, only approximately 1,500 are actually 

sold; the rest are returned to the publisher. By contrast, The Sporting 

News is available nationwide through subscriptions and at newsstands. 

In addition, the record does not evidence much if any overlap in 

advertising revenues or readership. Because LVSN is given away at 

casinos, it survives primarily on its advertising revenues. LVSN's 

advertisers tend to be "casinos, paging companies, [and] handicappers." 

Times Mirror, 1999 WL 124416, *2. The Sporting News, on the other 

hand, advertises, inter alia, sports memorabilia, collectibles, 

commemorative collections, apparel, sporting equipment, tobacco 

products and automobiles. LVSN's competitors for advertising dollars 

and readership are not sports magazines, but gambling publications, 

such as Gaming Today, Atlantic City Magazine and Casino Player. The 

Sporting News reports on the six major spectator sports; LVSN reports 

not only on sports gambling, but also on gambling on horse racing, car 

racing, roulette, craps, blackjack, slots -- and presidential elections. 

5. See, e.g., Star Markets, Ltd. v. Texaco, Ltd., 950 F. Supp. 1030, 1033 

& 1035 (D. Haw. 1996)(secondary meaning survey found 75% of 

respondents associated mark "Star" with plaintiff 's grocery stores; 

recognition survey found that over 96% of respondents recalled 

 31 
Certainly, Times Mirror had ample time and notice (sixteen 

months passed between its discovery of LVSN's title and the 

preliminary injunction hearing) to conduct a recognition 

survey of its mark and/or a survey to determine whether its 

mark would be affected by the presence of LVSN's title in 

the marketplace.6 

Assuming, arguendo, that a showing of fame only within 

the sports publication market suffices for protection under 

the FTDA, Congress's intent to reserve dilution protection 

for a select and narrow category of truly famous marks 

cannot be glossed over, as the majority has done, by an 

unsupported finding that "The Sporting News" mark is 

famous within its niche and recognized by a significant 

portion of Las Vegas Sporting News readers."A preliminary 

injunction may not be based on facts not presented at a 

hearing, or not presented through affidavits, deposition 

testimony, or other documents, about the particular

situation [ ] of the moving part[y]." Adams v. Freedom Forge 

Corp., 204 F.3d 475, 487 (3d Cir. 2000). Times Mirror has 

simply not come forward with any evidence of "the degree 

of recognition of the mark in the trading areas and

channels of trade used by the marks' owner and the person 

against whom the injunction is sought." 15 U.S.C. 

S 1125(c)(1)(F). This failure weighs formidably against any 

conclusion that Times Mirror is likely to succeed on its 

dilution claim. 

_________________________________________________________________ 

plaintiff 's mark when asked to name any grocery store); Ringling Bros.- 

Barnum & Bailey Combined Shows, Inc. v. Utah Div. Of Travel 

Development, 955 F. Supp. 605, 612 n.4 (E.D. Va. 1997)(40% of 

respondents to recognition survey associated phrase"Greatest Show on 

Earth" with plaintiff 's circus), aff 'd, 170 F.3d 449 (4th Cir. 1999), 

cert. 

denied, 120 S. Ct. 286 (1999); Hershey Foods Corp. v. Mars, Inc., 998 F. 

Supp. 500, 517 (M.D. Pa. 1998) (94% of respondents recognized orange, 

brown and yellow packaging of non-labeled peanut butter candy as 

Reese's brand). 

6. Between 1997 and 1998, The Sporting News spent $500,000 to study 

the market's perception of its title. See"In Brief: The More, The 

Merrier," 

Media Daily, Mar. 2, 1998. The results of this study were not, however, 

introduced into evidence. 

 32 
B. The remaining factors 

Examination of the remaining statutory factors 

underscores the inadequacy of the evidence offered by 

Times Mirror. Factor (A), the degree of inherent or acquired 

distinctiveness of the mark, encompasses more than simply 

whether "The Sporting News" mark has inherent 

distinctiveness or has acquired distinctiveness through 

secondary meaning, as it must to be eligible for protection 

under the Lanham Act. This factor suggests that the degree 

of the mark's distinctiveness is relevant to the fame inquiry. 

As discussed below with regard to Factor (G), the degree of 

a mark's distinctiveness is weakened by third party use of 

the mark and by the descriptive nature of the mark.

Therefore, while this factor favors Times Mirror, it does so 

only slightly. 

Factor (B), the duration and extent of the use of the 

mark, means more than simply the length of time"The

Sporting News" mark has been in use, but also the breadth 

of its distribution. Times Mirror did not introduce evidence 

of The Sporting News's sales figures either in toto or broken 

down by source, i.e. newsstand, subscription, advertising, 

or Internet, relying only on its weekly circulation of half a 

million copies in Canada and the United States. It cannot 

be seriously argued that this weekly circulation is not small 

relative to other major publications, including sports 

magazines, and not small period given the population of 

those countries.7 Thus, despite over one hundred years of 

publication of an inexpensive product distributed in 

countries in which there is a huge interest in, and

concomitant market for, anything to do with sports, the 

relatively limited extent of The Sporting News 's circulation 

certainly does not compel the conclusion that the mark has 

generated a mental association among consumers sufficient 

to support a finding of fame. 

_________________________________________________________________ 

7. See Bill Wallace, "Web Hits Becomes Baseball's New Statistic, KnightRidder Tribune Business News, Feb. 22, 2000, available at 2000 WL 

14920170 (comparing distribution rates of sports publications -- 3.2 

million weekly distribution of Sports Illustrated, for example -- and 

noting "second-tier" Sporting News's half million "static circulation" 

rate.) 

 33 
Factor (C) addresses how widely and frequently a mark 

has been advertised or publicized which, in turn, suggests 

the public's familiarity with the mark. See 4 McCarthy 

S 24:92. Times Mirror presented evidence that it advertises 

primarily by direct mail, but also on television and 

"occasionally" on the radio in "selected markets". It did not, 

however, provide evidence of its annual advertising

expenses, nor did it detail where, when, or how the mark 

has been advertised. Moreover, the unadorned fact that 

Times Mirror has an Internet website, a fact the majority 

noted, is of little significance because there is no evidence 

regarding the extent of sales or advertising on the Internet, 

nor is there any evidence regarding, for example, the 

number of "hits" received from visitors to the website which 

would assist in determining the degree of consumer 

recognition of the mark.8 

The FTDA, I note, does not specify quantitative 

measurements for Factors (B) and (C), such as a basic 

minimum for sales or advertising. When, however, the 

evidence supporting these factors in this case is compared 

to that in dilution cases in which the mark has been 

deemed "famous", Times Mirror's evidence of sales revenue 

and advertising expenditures falls short.9 

_________________________________________________________________ 

8. The District Court's fame analysis appears to have added an 

additional factor to the eight statutory factors in emphasizing that 

"Times Mirror has spent millions of dollars improving the magazine." 

Times Mirror, 1999 WL 124416, *5. Large expenditures aimed at 

retooling a product do not contribute to establishing fame unless it can 

be shown that those efforts were effective among the relevant group of 

consumers. While it is possible that a company's investment in its 

product may result in the heightened fame of its mark, it is far from 

clear whether that has occurred here. 

9. See, for example: Eli Lilly & Co. v. Natural Answers, Inc., ___ F. 

Supp. 

2d ___, No. 99-1600, 2000 WL 223585, *2, 16 (S.D. Ind. Jan. 20, 

2000)(finding "Prozac" famous; $12 billion in sales over twelve year 

period and "massive" unsolicited publicity rendering mark part of the 

"popular lexicon"); Planet Hollywood (Region IV), Inc. v. Hollywood Casino 

Corp., 80 F. Supp. 2d 815, 840 (N.D. Ill. 1999)(finding "Planet 

Hollywood" mark famous and noting annual sales of more than $195 

million in merchandise bearing mark); NBA Properties v. Untertainment 

Records, L.L.C., No. 99-2933, 1999 WL 335147, *7 (S.D.N.Y. May 26, 

 34 
Factor (G) clearly favors LVSN. Factor (G) takes into 

account the possibility that third party use of the mark or 

elements of the mark has already diluted the mark's

strength, thereby rendering the mark less famous. See 77 

Trademark Rep. at 461 ("Third party uses of the same or 

similar marks are relevant in determining the fame and 

distinctiveness of the mark, since the mark must be in 

substantially exclusive use. If a mark is in widespread use, 

it may not be famous for the goods or services of one 

business.").10 

_________________________________________________________________ 

1999)(finding NBA logo famous; logo appeared on $1.6 billion of 

merchandise over three year period and mark was widely promoted); 

Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999) (finding 

Pepperidge Farm Goldfish crackers famous; $120 million three year 

marketing campaign and $200 million annual net sales); Ringling Bros., 

955 F. Supp. at 609 (finding slogan "Greatest Show on Earth" famous; 

over $103 million in annual sales derived from goods bearing slogan and 

over $19 million in annual advertising expenditures); American Exp. Co. 

v. CFK, Inc., 947 F. Supp. 310, 312 (E.D. Mich. 1996)(finding slogan 

"Don't Leave Home Without It" famous; over $600 million in marketing 

expenditures over six years). 

10. See, e.g., Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 

1999); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 

1261, 1271 (S.D. Fla. 1999)("the word `fun' is used by many other 

businesses in the travel, gaming, and entertainment industries . . . 

cut[ting] against Carnival's dilution claim"); Michael Caruso & Co., Inc. 

v. 

Estefan Enterprises, Inc., 994 F. Supp. 1454, 1463 (S.D. Fla. 

1998)(extensive third party use of word "bongo" undermines inherent 

distinctiveness of mark), aff 'd without opinion, 166 F.3d 353 (11th Cir. 

1998); Hershey, 998 F. Supp. at 517 (finding trade dress not sufficiently 

famous and noting several examples of third party's trade dress in food 

industry similar to plaintiff 's color combination and lettering); Sports 

Authority v. Abercrombie & Fitch, Inc., 965 F. Supp. 925, 941 (E.D. Mich. 

1997)(third-party use of "authority," whether or not in the relevant 

market, diminishes any distinctive or famous aspects of mark rendering 

it "not so famous as to deserve protection" under the FTDA); Trustees of 

Columbia University v. Columbia/HCA Healthcare Corp. , 964 F. Supp. 

733, 744 & 750 (S.D.N.Y. 1997)(fame of mark "Columbia" for healthcare 

services "has been seriously undermined by third party use of the same 

or similar marks" both within the health care industry and in other 

industries); Star Markets, 950 F. Supp. at 1035 (noting multiple third 

party uses of "Star" and "Star Markets" in food industry and unrelated 

industries); Golden Bear Int'l, Inc. v. Bear U.S.A., Inc., 969 F. Supp. 

742, 

749 (N.D. Ga. 1996)(third parties extensively used both the word "bear" 

and a bear design in connection with the sale of sporting goods and 

clothes). 

 35 
The words "sporting" and "news" are commonplace words 

in our vocabulary appearing on many items, not only

publications. The majority does not acknowledge that at 

least six other publications use the word "sporting" in their 

titles: Grays Sporting Journal, Southern Sporting Journal, 

Sporting Thoughts, The Sporting Scene, The Sporting Life 

and Sporting Green. LVSN's use of the word"sporting" in its 

title describes the magazine's content. "Sporting" is defined, 

in this record, as "involving betting or gambling as sporting 

men. Involving or inducing the taking of risk as a sporting 

proposition." In Viacom, Inc. v. Ingram Enters., 141 F.3d 

886 (8th Cir. 1998), the Eighth Circuit held that while the 

trademark "Blockbuster" for a chain of video stores was 

strong for purposes of an infringement analysis, the mark's 

strength was not necessarily sufficient to sustain a claim 

for dilution-by-blurring due to the ordinariness of the word 

"Blockbuster". See 141 F.3d at 891-92. The court noted 

that "the fact that Viacom is seeking a complete monopoly 

on the use of a rather common word with multiple 

meanings would make us hesitate to uphold summary 

judgment on its dilution-by-blurring claim." Id. (citing 3 

McCarthy S 24:114 at 24-208) (dilution"is a potent legal 

tool, which must be carefully used as a scalpel, not a 

sledgehammer."). Third party use of the commonplace

elements of Times Mirror's mark weakens its fame. Factor 

(G), therefore, strongly favors LVSN. 

The legislative history indicates that the eight factors 

should be weighed independently "and it is the cumulative 

effect of these considerations which will determine whether 

a mark qualifies for federal protection from dilution." S. 

Rep. 100-515 (reproduced in 6 McCarthy App. A5, at 42). 

Moreover, the factors should be interpreted flexibly "so that 

their relative weight in any given case can be balanced." 

Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 504 

(M.D. Pa. 1998). In Hershey, for example, the District Court 

found that even though six of the eight enumerated 

statutory factors favored Hershey (inherent distinctiveness, 

degree of consumer recognition, duration and extent of use, 

advertising and publicity, geographical extent of trading 

area and widespread distribution channels), Hershey's 

trade dress was unlikely to meet the statute's stringent 

fame requirement because of third party use of the same 

 36 
aspects of the trade dress and because it was not 

registered. Here, Factors (B), (D) and (H) favor Times Mirror 

because "The Sporting News" is a registered mark used 

continuously for over 100 years nationwide. However, there 

is little evidence going to Factor (B)'s extent of sales. Times 

Mirror has offered little or no evidence going to factors (C), 

(E) and (F). Factor (G) weighs strongly against Times Mirror. 

Finally, because third party use and the descriptive nature 

of the mark tend to weaken its distinctiveness, Factor (A) 

only slightly favors Times Mirror. 

In my view, the District Court failed to sufficiently 

evaluate the mark -- it did not consider several of the 

statutory factors, nor did it qualitatively weigh those factors 

it did consider. Even if a mark not immediately recognizable 

by the general public can, nonetheless, meet the fame 

requirement of the FTDA, and I do not believe it can, at this 

preliminary stage, based upon the inadequate record before 

us, I cannot agree that Times Mirror is likely to succeed in 

proving the fame of its mark.11 

_________________________________________________________________ 

11. My disagreement with the majority rests primarily on my conclusion 

that Times Mirror has not come close to satisfying the threshold 

requirement of fame to qualify for protection under the FTDA. It goes 

without saying, therefore, that I would also disagree that Times Mirror 

was likely to prevail on its dilution claim. One observation: the majority 

holds that the District Court did not err in applying what have become 

known as the "Sweet factors" to determine whether LVSN's use blurred 

and, therefore, diluted, Times Mirror's mark for"The Sporting News". In 

addition to the Sweet factors, which have been roundly criticized, the 

majority appears to have adopted the multiple factor test articulated in 

Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999), which 

includes the factor of likelihood of confusion, a factor which is required 

in a standard infringement analysis, but not in a dilution analysis. While 

I have no difficulty with adopting an appropriate list of factors for 

consideration, I note that we are the only Circuit to have considered the 

applicability of the Sweet factors -- and the Nabisco factors -- which has 

not articulated a specific critique or rejected some or all of the 

factors. 

We should do so as well. 

The majority also holds that the District Court did not err in finding 

that irreparable injury may be shown even in the absence of actual 

economic harm, presumably siding with the Second Circuit and rejecting 

the Fourth Circuit's position on the issue. Compare Ringling Bros.- 

 37 
III. 

Conclusion 

The FTDA grants broad discretion to the federal courts 

and, as one commentator has remarked, "it is up to the 

judiciary to apply such potent laws with care and common 

sense lest they damage the competitive systems they are 

designed to enhance." 4 McCarthy S 24:114 at 24-222. Lax 

interpretation of FTDA requirements forecasts easier 

lawsuits for trademark owners who will use a dilution 

cause of action as a "tack-on" to an infringement claim in 

the event that likelihood of confusion cannot be shown, and 

even when, as perhaps here, it can. See Klieger, Trademark 

Dilution, 58 U. Pitt. L. Rev. at 64 ("It may just be a matter 

of time before dilution eclipses confusion as the gravamen 

of most federal trademark actions and trademark rights in 

gross displace consumer protection as the defining feature 

of United States Trademark law."); I.P. Lund Trading ApS v. 

Kohler Co., 163 F.3d 27, 48 (1st Cir. 1998)("Dilution laws 

are intended to address specific harms; they are not 

intended to serve as mere fallback protection for trademark 

owners unable to prove trademark infringement."). 

Naturally, when a court rules on a motion for a 

preliminary injunction, it makes an initial judgment based 

on an incomplete factual record; its findings of fact and 

conclusions of law are subject to revision based on

additional discovery. The stakes are, nonetheless, high; 

here, for example, had the injunction not been stayed with 

the consent of the parties, lowering the bar for the fame 

_________________________________________________________________ 

Barnum & Bailey Combined Shows, Inc. v. Utah Div. Of Travel 

Development, 170 F.3d 449, 461 (4th Cir. 1999), cert. denied, 120 S. Ct. 

286 (1999), with Nabisco, 191 F.3d at 223-24. I agree, and note only that 

it would be well-nigh impossible for a widely sold product such as Kodak 

to show that its sales have been impacted by a diluting use of its mark. 

Indeed, Kodak's sales might well be increasing even as the 

distinctiveness of its truly famous mark is being whittled away by an 

unauthorized user. See S. Rep. No. 100-515, at 108 (noting that 

distinctive quality of a mark "could be materially reduced during a period 

of rising sales"). 

 38 
requirement would have forced LVSN to alter its publication 

at great cost or cease publishing altogether.12 

Yet again, we have recently stressed our respect for the 

extraordinary nature of the preliminary injunction power 

and the fact that "the use of judicial power to arrange 

relationships prior to a full determination on the merits is 

a weighty matter" to be reserved for extraordinary 

situations. Adams v. Freedom Forge Corp., 204 F.3d 475, 

487 (3d Cir. 2000). This is surely not such a situation. I 

would vacate the preliminary injunction. 

A True Copy: 

Teste: 

 Clerk of the United States Court of Appeals 

 for the Third Circuit 

_________________________________________________________________ 

12. A District Court's review of the merits of a dilution claim at the 

preliminary injunction stage may also be significant because, as at least 

one court has held, the cause of action is essentially equitable in nature 

and may not provide a right to a jury trial. See Ringling Bros., 955 F. 

Supp. 598, 605 (E.D. Va. 1997), aff 'd on other grounds, 170 F.3d 449 

(4th Cir. 1999)(reserving constitutional issue for another day), cert. 

denied, 120 S. Ct. 286 (1999); see also 25 U.S.C. SS 1116(a), 1117(a), 

1118; 2 Gilson S 5.12[1][c][vii]. 

 39