Lott & Fischer is an intellectual property law firm in Coral Gables, Florida. The firm concentrates its practice exclusively in intellectual property law, including U.S. and international patent, trademark, copyright, unfair competition, Internet, and entertainment law and related litigation.
By Leslie J. Lott
When you strike at a king, you must kill him.
Ralph Waldo Emerson (1803-1882)
Engaging in trademark parody is a little like striking at a king. You had better be good at it, because if you attempt and fail, you are in trouble.
Parody is a defense to trademark infringement. The theory behind it is that there is no likelihood of confusion because a parody will not be taken seriously. While it must initially bring to mind the original, it must be clever enough to be clear that it is not the original nor connected with the original, but is a parody, a humorous take-off on the original.
II. Good Parody - Getting it Right
In order to be successful as a defense to infringement, trademark parody must have been handled correctly.
The elements of parody are:
i) an original host work;
ii) the original host work must be famous and/or known to the particular target audience;
iii) the creator of the derivative work, the parody, must take only so much of the original work as necessary to bring to mind the original host work; and
iv) the derivative work which conjures up the famous host must result in a new, original work.
Parody, by definition, brings to mind the original. It then spoofs the original in some way. Once the original is brought to mind in connection with a product or name other than the original, one of two things is going to happen, it will either be judged a valid parody, in which case there is no liability, or there will be trademark infringement.
In both cases, the case of valid parody and the case of trademark infringement, the first step is the same, the original is brought to mind. The critical issue then for valid parody, is whether that next step is taken, to so exaggerate or distort the original as to clearly distinguish the parody from the original. If that next step is not taken, there is not a valid parody, but an infringement.
A. A parody must be clever
So, how does one avoid falling into the realm of infringement and place himself within the guidelines for parody? First of all, the parody should be clever, really clever. Any good parody is witty or it will not work. Parody is based on humor. It must make the observer think of the original, but the humor lies in the take-off on the original, generally by flipping the image and coming up with something that is the opposite of the original.
There is “a need to evoke the original work being parodied.” However, a successful parody actually avoids or reduces a likelihood of confusion because the intent is to emphasize the distinction between the original and the parody. Unless there is a clear distinction, the parody isn’t funny...it fails.
i. A parody must be clever enough to avoid a likelihood of confusion
If the parody calls the original to mind, but doesn’t adequately distinguish it, the result is trademark infringement. No amount of wit or humor will save a parody which is likely to cause confusion.
This was the decision of the Eighth Circuit in the, now legendary, Mutual of Omaha case. Mutual of Omaha Insurance Company held 35 year old trademark registrations for its insurance services and for the “Mutual of Omaha’s Wild Kingdom” television show it sponsored. The marks included a well-known Indian head logo.
The defendant, a designer, created a line of products including coffee mugs, buttons, caps, sweatshirts and tee shirts with the term “Mutant of Omaha,” a profile of an emaciated human head wearing an Indian war bonnet and the words “Nuclear Holocaust Insurance,” or bearing the words “Mutant Kingdom” or “Mutant of Omaha’s Mutant Kingdom.”
Based in part on survey evidence, the court found a likelihood of confusion among consumers that the products were, in fact, approved or authorized by Mutual of Omaha, as a statement against nuclear weapons. The court held that there could indeed be confusion that Mutual of Omaha was behind the anti-nuclear protest. The parody aspect of the message was insufficient to overcome a likelihood of confusion.
In 1994, the Southern District of New York made a similar finding in the case of “Dom Popignon Champop.” The plaintiff produced Dom Perignon champagne and held a United States trademark registration for “Cuvee Dom Perignon” and for the label bearing those words on a shield design directly above a horizontally striped star. The trademark registrations were over 20 years old and, the plaintiff claimed, famous.
The defendant marketed popcorn, which it called “champop,” in a container shaped like a champagne bottle and bearing a label essentially identical to the “Dom Perignon” label, but bearing the words “Dom Popignon” in black script over the horizontally-striped star.
The court held, on the basis of survey evidence, that a number of consumers believed the champagne producers had authorized the popcorn product, and that Dom Popignon was not a sufficiently strong parody to avoid a likelihood of confusion.
Even absent confusion evidence, a Washington District Court rejected a parody defense in the “Hard Rock Cafe” case. A Washington State maker of transfers for tee shirts created a design with the words “hard rain” in the center of a circle with the word “cafe” under them. The design was essentially identical to the “Hard Rock Cafe” logo which the defendant admitted was famous. The defendant claimed that the design was intended only as a parody on the plaintiff’s design, which tourists to Washington State would find humorous because of the almost constant hard rain that falls in Washington. The court rejected this argument, saying that the copying was not slight nor the subject social commentary. Although the court did not use the word “misappropriation,” it stressed that virtually the entire Hard Rock Cafe logo had been used, solely for commercial gain.
Generally, however, an absence of likelihood of confusion results in a permissible parody and a finding of no trademark infringement. For example, the Ninth Circuit failed to find confusion with the use of the mark “Bagzilla” on “monstrously strong” garbage bags despite the objections from the owner of the movie monster character mark “Godzilla.” A florist’s use of “This Bud’s For You” for fresh-cut flowers was held not to infringe Anheuser Busch’s slogan as there was no likelihood of confusion. Finally, “Lardashe” as a mark for large size women’s pants was determined, by the federal court in New Mexico, not to infringe the “Jordache” mark because of a lack of likelihood of confusion.
ii. No sex, drugs or bugs
A parody which calls to mind the original, but then relates the original to matter which is distasteful, is also inherently dangerous. Humor at the expense of the trademark owner, that assaults the wholesome image of a product has, in most cases, been unsuccessful in court. The offensive nature of the parody in this context has turned into an important factor in denying the defense of parody.
The difficulty lies in assessing what is offensive and what is not. The offensive nature of one parody may amuse some and assault others. Consider, for example, an advertisement for insecticide referencing the familiar “Where there’s life, there’s Bud” slogan, or a sexually explicit movie featuring the Dallas Cowboy cheerleaders’ uniforms, or an Internet site under the address “candyland.com” directing users to sexually explicit material. At first glance, the claimed parodies immediately call to mind the original marks, but does the unwholesome context created by these parodies harm the trademark owner?
The maker of an insecticide was enjoined from using the slogan “Where there’s life ... there’s bugs,” a spin-off version of the well-known Budweiser beer slogan. The defendant used the slogan to advertise insecticidal floor wax products. The court implicitly, without the benefit of an anti-dilution statute, recognized a dilution theory in finding that “the value and effectiveness of plaintiff’s prior advertising is impaired” by the parody use. The court considered that a public, long immersed in “Where There’s Life There’s Bud,” would understandably be put off by the distasteful association of bugs and beer.
The United States Court of Appeals for the Second Circuit found a likelihood of confusion in the use of the Dallas Cowboy cheerleading uniforms in the sexually explicit film, “Debbie Does Dallas”. The last several minutes of the film depicted a cheerleader engaged in various sexual escapades. The defendant argued that the film was merely a parody protected by the Constitution. The court disagreed, stating “that the defendant’s movie may convey a barely discernible message does not entitle them to appropriate plaintiff’s trademark in the process of conveying that message.”
In a more recent case, the U.S. District Court for the Western District of Washington granted a preliminary injunction against defendants’ use of “candyland.com” as an Internet domain name to identify a sexually explicit internet site. The court determined that use of this domain name tarnished and diluted Hasbro’s “Candy Land” trademark, registered since 1951 for a child’s game. The court relied on the public interest favoring the preliminary injunction and the probable harm to Hasbro from defendant’s conduct outweighing any inconvenience that defendants would experience if they were required to stop using the “candyland” name.
B. Beware “famous” marks
As discused above, a parody must be obvious enough that consumers will not assume the original trademark owner is connected with or approved the parody, but will realize that it is a “take off” on the original. If not, a likelihood of confusion might be demonstrated, in which case the defense of parody is defeated. Secondly, a parody must be clever enough to avoid dilution of “famous” marks.
In 1996, Congress enacted the Federal Trademark Dilution Act (FTDA) , which made it possible for mark-holders to obtain injunctions against the use of their marks, even if there is no trademark infringement. Relief based on dilution requires neither competition between the parties’ goods or services, nor a likelihood of confusion. To be entitled to such broad protection, however, the mark-holder must establish that its mark is “famous.”
In 2006, partly as a result of the jurisprudential ambiguity and inconsistency that resulted from the FTDA’s failure to define “famous” (or, more specifically, “the level of fame a trademark had to possess to be protected”), Congress passed the Trademark Dilution Revision Act (TDRA) . The TDRA states that in order to be considered famous, a mark must be “widely recognized by the general consuming public.” The Act also provides four factors that courts are to consider in determining a mark’s fame: (1) the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered. Importantly, the TDRA has effectively shrunk the class of marks that can be considered “famous.” This is because “regional or niche fame . . . does not qualify under the TDRA.” Rather, a mark must enjoy nationwide recognition in order to be considered famous. Coca-Cola is an example.
However, even prior to the federal laws, a number of states had enacted anti-dilution statutes which generally required that a mark be “distinctive” to be protected, but not necessarily “famous.” In any event, both the TDRA and state-anti-dilution laws now protect marks from two forms of injury: blurring of the distinctiveness of the mark, and therefore its advertising value; and tarnishment, actually damaging the reputation of the mark by connecting it with an inferior product or showing it in a distasteful light.
Blurring, or diminution, involves the gradual whittling away of the identity and distinctiveness of the mark or name by its use on non-competing goods. Such use poses a risk of impairing the identification of the trademark with the trademark owner’s products and the hold on the public mind that a well-known mark will have. The distinctiveness of the mark is lost because the mark will no longer exclusively identify the trademark owner as the source of goods or services.
The TDRA defines dilution-by-blurring as “an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”
The Act also provides six factors that courts may consider in determining whether a mark is likely to cause dilution-by-blurring: (1) the degree of similarity between the mark or trade name and the famous mark; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.
Tarnishment, on the other hand, generally arises when a plaintiff’s trademark is linked to products of inferior quality or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner’s product. Generally, tarnishment has been found in cases where a distinctive mark is depicted in a context of sexual activity, obscenity or illegal activity. The TDRA defines tarnishment as an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”
In one of the first well-known cases of this nature (and prior to the passage of the TDRA), the District Court for the Eastern District of New York enforced the Coca Cola Company’s famous trademark, originally registered in 1893, against a poster imitating the distinctive flowing cursive style and color scheme of the “Enjoy Coca Cola” slogan, but suggesting that customers “Enjoy Cocaine.” The court failed to find the humor, and determined that Coca Cola’s cultural status as an international icon would be damaged by the poster parody linking this symbol to the enjoyment of drugs:
To associate such a noxious substance as cocaine with plaintiff’s wholesome beverage as symbolized by its “Coca-Cola” trademark and format would clearly have a tendency to impugn that product and injure plaintiff’s business reputation, as plaintiff contends.
Without engaging in overly deep analysis of the issue, the court found likelihood of confusion as well as dilution under the New York anti-dilution statute, noting the familiarity of the Coca-Cola trademark and disapprovingly commenting on the defendant’s “predatory intent.” Several commentators have expressed a belief that the court relied more on the imminent danger to the trademark reputation than on traditional likelihood of confusion.
Tarnishment was not found when the above-mentioned Budweiser slogan, “This Bud’s for You,” was subjected to the test for parody in a a florist’s advertising. Unlike beer and bugs, the court found a harmless association between beer and flowers.
Yet another beer parody, however, was found to create tarnishment. A parody advertisement for “Michelob Oily,” accompanied with the slogan “One Taste and You’ll Drink It Oily,” was shown on the back cover of a humor magazine named “Snicker.” The court found that the mock advertisement created a significant likelihood of confusion based on the location of the ad where the plaintiff’s advertisements often appeared and use of identical versions of the plaintiff’s mark. The court was further convinced by the fact that a majority of the persons surveyed construed the parody as suggesting that beer contained oil.
C. Dilution and Parody Post-2006
One of the most significant changes to federal dilution law was the TDRA’s creation of an express exemption for parodies. Before the TDRA, parodies were protected by the FTDA’s “non-commercial use” defense, a catchall exclusion which courts interpreted to include a broad range of uses of another’s mark, “from negative commentary on a personal website, to use of trademarks in political campaigns, to parody and artistic expression.”
Congress’ passage of the TDRA essentially codified the judiciary’s recognition of parody as a protected species of “fair use.” As one commentator put it, the TDRA “significantly expand[ed] the scope of exceptions for fair use, explicitly naming parody as non-actionable under the dilution statute.” However, the TDRA’s parody exemption does not give carte blanche to would-be users of others’ trademarks; simply crying “parody!” does not provide immunity. Although parodies now enjoy explicit statutory protection, it is important to note that the TDRA’s ‘fair use’ “…defense of parody is not available if the [user’s] challenged use is a ‘trademark’ use: a use as ‘a designation of source.’” Nevertheless, recent cases have held that under certain circumstances, such uses can nonetheless be non-diluting.
i. Chewy Vuiton
In one of the first federal dilution cases to be decided after the passage of the 2006 TDRA, the Fourth Circuit found that the Act’s parody defense does not protect those who use a parody of another’s mark as a designation of source for the parodist’s products. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, French fashion house Louis Vuitton sued a maker of dog toys that parodied various well-known brands (e.g., Chewnel #5, Dog Perignon, Sniffany & Co., etc.). The products at issue in the case were a line of dog beds and stuffed toys that imitated the Louis Vuitton logo and handbag design, and which were sold under the name “Chewy Vuiton.”
Louis Vuitton alleged that the defendant’s products, in addition to infringing Louis Vuitton’s trademarks, also caused dilution by both blurring and tarnishment. Though the court held that the TDRA’s parody exception did not apply, because the defendant was using the parody “as a trademark for its own products,” it nonetheless found that the defendant’s products were non-diluting. After dismissing the tarnishment claim for want of evidence, the court evaluated Louis Vuitton’s blurring claim, considering the TDRA’s six “blurring” factors (discussed supra), finding the defendant’s parody to be “relevant to that analysis.” Though there was a likelihood of association between the parties’ products, and the parodist had an intent to create such an association, the court ultimately concluded that “Chewy Vuiton” did not blur the distinctiveness of Louis Vuitton’s mark; that the dog toys conveyed just enough of original design so that consumers could appreciate the point of parody – but stopped well short of appropriating the mark. In other words, “there was no likelihood of blurring because an obvious parody” (like this one) “causes no loss of distinctiveness of the famous mark . . . .” In fact, the court noted, “a successful parody might actually enhance the famous mark’s distinctiveness by making it an icon.”
In 2001, Starbucks Corporation sued Wolfe’s Borough Coffee Inc., owner of The Black Bear Micro Roastery, for the latter’s use of “CHARBUCKS BLEND” and “MISTER CHARBUCKS,” claiming trademark infringement and dilution of the iconic STARBUCKS mark. Black Bear was using the CHARBUCKS marks in connection with a blend of ultra-dark roasted coffee, featuring the slogan “You wanted it dark…You’ve got it dark!” underneath the CHARBUCKS marks.
The U.S. District Court for the Southern District of New York eventually dismissed Starbucks’ claim for dilution by blurring, finding that CHARBUCKS and STARBUCKS were not substantially similar. The court explained that “[t]his dissimilarity alone is sufficient to defeat [Starbucks’] blurring claim . . . .”
On appeal, the Second Circuit reversed and remanded on the issue of blurring, finding that the district court had erred in the weight it gave to the similarity between the marks: “Consideration of a ‘degree’ of similarity as a factor in determining the likelihood of dilution does not lend itself to a requirement that the similarity between the subject marks must be ‘substantial’ for a dilution claim to succeed.” The Second Circuit recognized that the district court’s requirement of substantial similarity was largely due to the lack of statutory guidance prior to the passage of the TDRA. The court explained that under the TDRA there need not be substantial similarity in order for a blurring claim to succeed; that the degree of similarity is not, by itself, dispositive. Rather, it is one of six factors to be considered under the statute (discussed supra).
The Second Circuit affirmed, however, the district court’s dismissal of Starbucks’ dilution by tarnishment claim. Starbucks argued that CHARBUCKS “‘damages the positive reputation of Starbucks by evoking both “Starbucks” and negative impressions in consumers, including the image of bitter, over-roasted coffee.’” The district court rejected this argument, finding that no tarnishment had occurred because the reputation of the STARBUCKS mark had not suffered by a possible association of the mark with CHARBUCKS. The court explained: “that the Charbucks line of coffee is marketed as a product of ‘[v]ery high quality’ -- as Starbucks also purports its coffee to be -- is inconsistent with the concept of tarnishment.”
For purposes of a parody analysis, it is important to note that although the Second Circuit affirmed the district court’s dismissal of Starbucks’ tarnishment claim, the court rejected Black Bear’s argument that its use of the CHARBUCKS marks was protected by the TDRA’s parody exception. As in Louis Vuitton, the court found that the parody exception did not apply because Black Bear was using the CHARBUCKS marks as trademarks for its own products. As the court stated, “Black Bear’s use of the Charbucks Marks cannot qualify under the parody exception because the Charbucks Marks are used ‘as a designation of source for [Black Bear’s] own goods [i.e., the Charbucks line of coffee].’” However, unlike the CHEWY VUITON marks, the Second Circuit found that the CHARBUCKS marks did not even qualify as a parody of the STARBUCKS mark: “Black Bear’s use of the Charbucks Marks is, at most, a subtle satire of the Starbucks Marks.”
Parodies do not always arise from a sense of humor. Charles Smith hated Wal-Mart. He believed it had a destructive effect on communities, and on the United States in general. He likened the corporation to the Nazi regime. Smith developed anti-Wal-Mart designs such as “WAL*OCAUST” and “WAL-QUAEDA.” Visitors to his website could purchase posters and souvenir items featuring the designs. After receiving a cease and desist letter from Wal-Mart, Smith brought an action for declaratory judgment of non-infringement of Wal-Mart’s trademarks. Wal-Mart counterclaimed for trademark infringement, cybersquatting, and dilution by tarnishment, alledging “…that Smith’s Walocaust and Wal-Qaeda web sites and products, by associating Wal-Mart with ‘the perpetrators of such atrocities as the Holocaust and the attacks of September 11, 2001, unquestionably tarnish the Wal-Mart marks.’” The court rejected Wal-Mart’s argument, finding that Smith’s use of “Walocaust” and “Walquaeda” were valid parodies.
Noting that “dilution applies only to purely commercial speech,” the court explained that “Smith’s parodic work is considered noncommercial speech and therefore not subject to Wal-Mart’s trademark dilution claims, despite the fact that Smith sold the designs to the public on t-shirts and other novelty merchandise.” The court explained that even though Smith had used his marks in commerce, such use qualified for protection under the TDRA’s parody exception because commercial success was not Smith’s primary motive; “Smith primarily intended to express himself with his Walocaust and Wal-Qaeda concepts.” Thus, if commercial success is only a secondary motivation, parodies may still enjoy statutory protection against dilution claims.
C. Beware “famous” people - Right of publicity Issues
Yet another bullet that a parodist must dodge is the right of publicity celebrities have in their identities. The right of publicity essentially provides celebrities the exclusive ability to commercially exploit their identities, which include their voices, names, signatures, photographs and likenesses. The unauthorized use of a celebrity’s identity by another in promoting products, or other commercial endeavor, violates the right of publicity even if the use does not explicitly include the celebrity’s name or likeness. A celebrity’s right of publicity is a protected pecuniary interest in the commercial exploitation of his identity. If the celebrity’s identity is commercially exploited, there has been an invasion of his right whether or not the celebrity’s name or likeness is used.
A defendant’s use of the mark “Here’s Johnny ... The World’s Foremost Commodian” for portable toilets was found to invade Johnny Carson’s right of publicity. The court determined that Carson’s legal right of publicity was invaded because his identity was intentionally used for commercial purposes, despite the fact that use of Carson’s name or likeness was not associated with the portable toilets. The focus was primarily on the intentional appropriation for commercial purpose of a slogan which identified the comedian, by the portable toilet company.
Another well-known celebrity, Ginger Rogers, alleged that the use of “Ginger and Fred” as the title of a play violated her common law right of publicity by falsely implying that the play was about her and that she endorsed the play. The movie actually depicted two struggling dancers in Italy in the 1940s. The dancers were known to their audience as “Ginger and Fred” and sometimes imitated Ginger Rogers and Fred Astaire. The court held that the right of publicity claim would not “bar the use of a celebrity’s name in a movie title unless the title was ‘wholly unrelated’ to the movie or was ‘simply a disguised commercial advertisement for the sale of goods or services’” or a collateral commercial product. Although, technically, the Rogers case was not a parody case, its analysis is relevant because it illustrates that right of publicity claims do not require proof of likelihood of confusion, but only the unauthorized use of a party’s name or image.
A 1996 case involving the manufacturers of trading cards of active major league baseball players includes copyright, First Amendment and right of publicity issues. The cards imitated the general style of baseball cards, but the images and the information on the back of the cards were altered significantly and exaggerated, such as “‘Ken Spiffey, Jr.’ of the ‘Mari-Nerds’” and “‘Egosticky Henderson’ of the ‘Pathetics.’” The court reversed an earlier finding that the Cardtoon’s cards violated the right of publicity of the baseball players based on a balancing analysis between the right of publicity and freedom of expression. The court, instead, applied the fair use analysis of the Copyright Act to determine whether the card parody was a fair use of the identity of the players. Ultimately, the court determined that the cards were protected under the First Amendment.
III. Related Issues
Assuming a parodist is able to run the gauntlet of trademark law and to prevail on dilution and right of publicity issues, s/he is still not home free. There are other concerns s/he must face. In fact, of all the areas of trademark law, parody is probably the one with the single largest number of competing concerns which have to be balanced and weighed. In addition to trademark, dilution and right of publicity issues and related issues of passing off, misappropriation, defamation, and disparagement there are issues of copyright infringement and Constitutional law which may also come into play.
A. Copyright law
Because parody frequently resides in written or artistic works, it may give rise to independent issues of copyright infringement. The elements of the parody remain the same:
i) an original host work;
ii) the original host work must be famous and/or known to the particular target audience;
iii) the creator of the derivative work, the parody, must take only so much of the original work as necessary to bring to mind the original host work; and
iv) the derivative work which conjures up the famous host must result in a new, original work.
The issue is whether the creator of the derivative work took only so much of the original work as necessary to bring to mind the original, or did the parody appropriate so much of the host work as to constitute impermissible copyright infringement. The issue generally arises in the context of the statutory “fair use” defense to copyright infringement.
A parody may qualify as “fair use” under the Copyright Act if it draws on the original work to make humorous or ironic commentary about that work, and not just for purposes of getting attention or avoiding the time and effort involved in creating a new composition. A fair use analysis is based on analyzing four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the original work used; and (4) the effect of the parody on the value of or market for the copyrighted work.
The Supreme Court addressed these issues in Campbell v. Acuff-Rose Music, Inc. which involved the controversial rap group 2 Live Crew and their parody of Roy Orbison’s 1964 song “Pretty Woman”. The Court held that a parody may qualify for the fair use defense upon analysis of the foregoing factors, no one of which is determinative. The Court reversed a 6th Circuit ruling that “commercial use” renders a work “presumptively unfair”, finding that there is no such presumption.
If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery of creating something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish).
Relying on the Campbell case, the 9th Circuit reached the opposite conclusion in Dr. Seuss Enterprises L.P. v. Penguin Book USA Inc. The defendant wrote a book “The Cat NOT in the Hat!” mimicking the distinctive style of prose and illustration used by the well-known children’s author Dr. Seuss, but commenting on the O.J. Simpson trial for the Brown and Goldman murders. The defendant’s book was not considered a parody of Dr. Seuss’s “The Cat in the Hat” because it did not satirize or comment on the original work, but on an unrelated event. The copyrighted work itself must be the subject of the parody in order for the taking of the protected expression from that work to be permissible. Therefore, if a defendant does not make fun of the company or product characterized by the symbol, words, or picture taken, a true parody does not exist under principles of copyright law.
[S]atire and parody are generally egregious forms of infringement, taking the best elements of the most expressive works. The choice to take protected elements from a copyrighted work is reasonable and fair only when it is necessary. It is necessary only when one of the targets of the satirist is the work itself, because only then is it fair to presume that the satirist has no alternative to infringement, and only then is it fair to presume that the author would not profit from the granting of a license. The reasonableness extends only to that appropriation of the original that is required to fulfill the parodic purpose.
B. First Amendment
Because parody arises out of the expression of the parodist, First Amendment arguments to protect the parody from liability frequently arise. To protect freedom of speech, courts give “greater latitude” for some parodies “in which expression, and not commercial exploitation of another’s trademark is the primary intent, and in which there is a need to evoke the original work being parodied.” As the District Court for the Southern District of New York has stated:
When another’s trademark (or a confusingly similar mark) is used without permission for the purpose of source identification...the exclusive right guaranteed by the trademark law is generally superior to the general free speech rights of others...[W]hen unauthorized use of another’s mark is part of a communicative message and not a source identifier, the First Amendment is implicated in opposition to the trademark right...[and] the law requires a balancing of the rights of the trademark owner against the interests of free speech.
This does not mean that First Amendment rights will overcome trademark rights in every case, however. Early cases have held that if a defendant has “adequate alternative ways to communicate” his message, he may not infringe the trademark rights of others to do so. Ultimately, the court will balance the interest of the public from confusion against the First Amendment concerns of the parodist.
In the Dallas Cowboys case discussed above, the defendants argued that the First Amendment protected them from liability for their use of the recognizable cheerleader uniforms in the movie. The court denied this protection, stating that: “there are numerous ways in which defendants may comment on ‘sexuality in athletics’ without infringing plaintiff’s trademark.” The court considered the trademark “in the nature of a property right”, and thus one that did not have to yield to First Amendment rights where “alternative avenues of communication exist.”
In the Mutual of Omaha case discussed above, the defendant also raised a First Amendment defense. The defense was also rejected in this case, on the basis that free speech must yield to the valid property rights of others. In the face of a determination of likelihood of confusion, the defendant was not entitled to exercise his right of free speech by utilizing another’s trademark.
There are numerous ways in which [defendant] may express his aversion to nuclear war without infringing upon a trademark in the process. Just as [defendant] may not hold an anti-nuclear rally in his neighbor’s backyard without permission, neither may he voice his concerns through the improper use of Mutual’s registered trademark. Under these facts, the first amendment provides no defense.
Almost a decade later, the Second Circuit, in Rogers v. Grimaldi, supra rejected the argument, based on “alternative means of communications” of the Dallas Cowboys case, for movie titles. Ginger Rogers attempted to prevent the use of the title “Ginger and Fred” for a fictional movie depicting struggling dancers. The court rejected Rogers’ argument that the defendants’ First Amendment rights would not be violated because they could have expressed their message in many other ways. The court stated that “the ‘no alternative avenues’ test does not sufficiently accommodate the public’s interest in free expression”. In place of this test, the court reasoned that the Act should be “construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”
The Eighth Circuit used this balancing test in the Balducci case, discussed above, to reject a First Amendment argument for use of the trademarks in the “Michelob Oily” parody. Balducci claimed that the parody was designed to comment on the effects of environmental pollution and Anheuser-Busch’s brand proliferation. In applying the balancing standard, the court reasoned that the First Amendment “places no bar to the application of the Lanham Act in this case.” The Court created a two-step approach in conducting a confusion analysis when First Amendment issues are present. In the two-step approach, the court first analyzes the likelihood of confusion issue, excluding the First Amendment issue, and, then, severely limits the scope of First Amendment protection if likelihood of confusion is found.
Another First Amendment concern arises from the question of whether the application of the anti-dilution statute violates the parodist’s First Amendment rights. The First Circuit, in L.L. Bean v. Drake Publishers, addressed this concern. The L.L. Bean court also approached the First Amendment argument from a different angle than the “alternative avenues of communication” approach by distinguishing between commercial and noncommercial parody contexts. The court stated that:
Trademark parodies, even when offensive, do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark.
The L.L Bean court held that the Maine anti-dilution statue was unconstitutional when applied to the use of a trademark “in a noncommercial setting such as an editorial or artistic context.” The court felt that a trademark is frequently the most efficient way to conjure up the trademark owner and that an anti-dilution statute to bar an expressive use of a trademark in a noncommercial setting would place a significant burden on the freedom of expression.
This article has attempted to frame the current boundaries of trademark parody jurisprudence, and in so doing shine some light on a complex area of Intellectual Property.
The parodist must walk a fine line. On the one hand, if his or her parody does not call to mind the original, then the public will not get the joke and the parody fails. On the other hand, if the parody does not simultaneously (and somewhat paradoxically) communicate to the public that it is not the original, then the parodist may find him or herself without defense. So, to all would-be parodists, aim well.
Adapted from an article originally written by Leslie J. Lott and Brett M. Hutton. The author gratefully acknowledges the assistance of Stephen D. Lott in revising, editing and updating the information provided herein.
This amendment addressed case law that had recognized “niche fame” in certain market segments and/or discrete geographical areas. Other issues left unresolved by the 1996 Federal Trademark Dilution Act included: what part inherent or acquired distinctiveness played, what was the proper relationship between fame and distinctiveness, did dilution protect trade dress as well as trademarks, was dilution reserved for identical marks, or did it apply to marks that were confusingly similar, did the statute require actual dilution or was likelihood of dilution actionable, could dilution occur by tarnishment or only by blurring, and when was a defendant’s use a “commercial use in commerce”?