Monday, 25 January 2010

How to Trademark: The Parody Doctrine - What is Fair Use and What is not Fair Use

Parody and Satire may be covered under free speech, but what if someone was infringing on your registered trademark under the guise of parody?  What rights do trademark owners have to protect their interests and what are the guidelines of what is fair use and what isn't fair use under the Trademark Parody Doctrine?  Attorney Daniel Corbett discusses this topic at length.

Announcer: Welcome to Trademark Law Radio, the definitive portal for all trademark matters on the web. Now here is your host, Damien Allen.

Damien Allen: Good morning and welcome to Trademark Law Radio. My name is Damien Allen, and today joining me on the phone is Attorney Daniel Corbett of Elliot & Davis, PC in Pittsburgh, PA. Daniel is an attorney whose practice centers on corporate law, non-profit law, estate planning, and civil litigation, as well as trademark registrations. Good morning, and welcome to the program Daniel.

Daniel Corbett: Good morning, Damien.

Damien Allen: Today we’re going to be discussing trademark parody doctrine and how it applies to fair use doctrine in trademarks. And there’s a lot of different cases that have been going on lately, and a lot of things that have been happening. Lately, you have just done a blog on North Face v. South Butt, and that’s one we’re going to talk about very soon. And there’s another couple cases where people are utilizing the design of a well-known brand and using it, spoofing it, as their saying, and using it in their own materials, and this is causing problems for trademark owners. So, I guess the first question we have to ask is how do we define the trademark parody doctrine in fair use? What is parody?

Daniel Corbett: That’s an excellent question and a great place to start. The trademark parody doctrine, basically it fits within the likelihood of confusion test, which has kind of a way of background. In every trademark infringement case, a court is going to… and you know all of the circuits through the United States use some variation of the likelihood of confusion test, which looks at a bunch of different factors with respect to the allegedly infringing mark and the mark that is allegedly infringed, and what parody does is basically an analysis that the court engages in before going into the likelihood of confusion test. Later on I’ll kind of run through the likelihood of confusion factors and explain how it would apply in case of a parody, but courts have been very clear to note that there can still be a likelihood of confusion, meaning trademark infringement even in the case of a parody.

Damien Allen: Previous cases that come to mind, such as Mattel v. MCA Records, with the song by Aqua called Barbie Girl.

Daniel Corbett: True.

Damien Allen: There was another case a ways back where Jim Henson Productions was being pursued by Hormel Foods Corporation, the makers of Spam, for a character that they had put in one of their Muppet movies.

Daniel Corbett: Correct, yeah, the Hormel Food v. Jim Henson Productions case was one that came up in the 2nd Circuit, started in the 7th District of New York, and that case has been a classic parody analysis where basically there is a Muppet character, it was a Wart hog by the name of Spa’am who appeared in the movie “Muppet Treasure Island”, and the Hormel Foods Corporation was upset about the use of the name Spa’am for this character and decided to sue. And what the courts basically held there was that there was a valid parody, and then it ran through the likelihood of confusion factors and concluded that there was no likelihood of confusion among consumers between Spam the lunch meat, on the one hand, and Spa’am the Muppet character, on the other hand. There’s also another case, more recently, that came before the 4th Circuit in Virginia which involved Louis Vuitton, the maker of the famous hand bags, and a small pet toy company called Haute Diggity Dog, LLC who made a squeak toy called “Chewy Vuiton”, and the court there held similarly that there was a valid parody. It ran through all of the likelihood of confusion factors, and they concluded that there was no likelihood of confusion between Louis Vuitton Handbags and Chewy Vuiton pet toys. What the court did basically in laying out the parody doctrine, turning to other cases, the court noted that a valid parody involves use of a famous trademark “just enough of the original design to allow consumers to appreciate the point of the parody that’s stopping well short of appropriating the entire mark.” So, that’s really the tension here when you’re talking about a trademark parody. If you think of it, if you’re going to parody a famous brand, you know you’re going to need to invoke the brand obviously; otherwise no one gets the joke. To bring it back to the South Butt, North Face case, the South Butt has used enough of the logo, they’ve used similar coloring, instead of north, they have south, instead of face, they have butt…they have enough to make it clear that they’re making fun of the North Face or spoofing it, but they’re trying to make it different enough that would fall within that sweet spot and be entitled to valid parody defense, and it will be interesting to see what happens in this case. So that’s really sort of the paradox that’s involved with a valid trademark parody, because if it looks too much like the famous mark and there’s no distinction, it’s obvious it’s a likelihood of confusion which would trigger trademark infringement and subject the parodist to a trademark infringement liability. So, it’s kind of about threading that needle is really how it works.

Damien Allen: Right now there is company called Kerusso that is doing what their calling parody versions of brands such as the Guitar Hero brand. I saw an instance, on one of your blogs, of a knock-off of the Guitar Hero shirt, which for the youth of today and for pretty much anybody who’s engaged in popular culture whatsoever, the Guitar Hero logo, the Guitar Hero design, the shirts are everywhere. Most people are aware of what they look like. Kerusso has gone about lampooning or parodizing this particular brand with a shirt saying God Is My Hero. If you looked at it quickly, if you just glanced at it, it goes, oh, a Guitar Hero shirt, but if you actually stop and look at it, it says, God Is My Hero. The logo and design are very similar, and I can see where the people who have designed Guitar Hero might have problems with it. Where is the line being drawn in this case?

Daniel Corbett: That’s an interesting point, and to my knowledge there has been no litigation, yet with respect to Kerusso’s designs. I think a lot of brand owners are holding off on suing Kerusso and similar parodists just because there’s a risk of alienating Christian consumer groups. So, there’s always kind of public relations you have to keep in mind if you’re a brand owner, but sort of applying the parody test and the likelihood of confusion factors here, you would look at, first, the first factor is basically the similarity between the two marks. So, in this case, if you would run a Google search, and I’ve actually blogged about this on my blog pittsburghtrademarklawyer.com, and you can actually see the God Is My Hero images, and like you said, Damien, it does look incredibly similar, so, normally, in a trademark infringement case, a lot of similarity between marks is going to be something that favors the plaintiff. You know it’s more likely that there’s infringement if the marks look very similar, but as the court in the Chewy Vuiton case noted with respect to that likelihood of confusion factor, the similarity of the marks actually favors the defendant in some cases when there is a valid parody. Because like I said, a valid parody requires the need to invoke the famous brand, otherwise no one gets the joke. That could be a factor that would favor Kerusso or a similar parodist ??? in the South Butt case. And I’m looking at maybe some other factors, the famousness of the mark, of another one of the likelihood of confusion factors. Generally, the more famous a mark is - you know, if you’re Apple Computers or Microsoft, generally, people are familiar with your mark – it’s more likely that you can find infringement just because consumers are already familiar with it. If someone else is using kind of a knock-off brand, that’s going to favor you if you are Microsoft or Apple, but in the trademark context, which the Chewy Vuiton court noted that, again, the famousness of the mark actually favors the parodist in the case of a valid parody, and, again, for similar reasons. People like to make satire and commentary about famous brands. It’s funnier because people can relate to it, so, in the case of a valid parody, those two factors, the famousness of the allegedly infringed mark, and the similarity of the marks, can actually favor the parodist. So, that’s sort of an interesting application, and I think one of the things it really comes down to in a lot of cases is the similarity of products, because if you look at the Hormel case, you had Muppet Character and potted luncheon meat, which couldn’t be more different. In the Chewy Vuiton case you had luxury handbags and squeak toys for pets. Again, two very, very different products, so, that might be a way where you can say there’s no economic harm and it’s more likely to be a parody. And, it will be interesting to see what happens with the South Butt litigation simply because the South Butt is marketing the exact same products as the North Face, namely t-shirts, arctic fleece jackets, and the like. So, that will be interesting to see how important the similarity of the product factor is in the context of this litigation. There’s also another case between a small coffee company in New Hampshire who makes the blend of coffee called “Charbucks”, and that’s ongoing in the 2nd circuit; Starbucks has sued. So, again, both parties are selling coffee. So, it will be interesting with these two ongoing litigations to see how courts treat that factor, the similarity of products involved.

Damien Allen: Now, we’ve been discussing cases that involve, or for the most part involve, actual physical products, something you go out and purchase that are tied to trademark. But, the other side of the coin is not only is parody being used in these things, but there’s a lot of money involved corporate-wise in advertising a particular mark, so, let’s say, the Diary Council went and spent millions of dollars on a Got Milk? campaign and it’s either a commercial, the visual medium is a television commercial where you have a young child going, well, you know, you’re beautiful and you’re this, that and I’m only six years old, but I’m drinking milk and some day, and as their going through the ad this kid grows up to be your classic Greek god type person who’s going to end up getting the girl because he’s drinking milk. On the second hand of that, people were lampooning or satirizing that by doing a Saturday Night Live, Mad TV, or any one of the comedy shows, “Got Beer?”, “Got Tequila?”, “Got whatever?”, “Got whatever this?”. In doing that, does that draw the same kind of ire as If I was to actually do a Got Beer? commercial the same way a Got Milk? commercial was done?

Daniel Corbett: That’s an excellent question and it really, it really depends. So, you’re suggesting some sort of an advertising campaign that would be sort of a spoof of the Got Milk? campaign. It’s difficult to really get at the relevant products here. I think if it’s more of a free speech concerning what’s done in the context of a program like Saturday Night Live, or if it appears on t-shirts, or if it’s referenced in a magazine or a book, you’re bringing in sort of some free speech concerns which really you talked about the Mattel case involving the song Barbie Girl. I think what is really the motivating factors ?? case where Judge Kozinski wrote the opinion in, one of the motivating factors in that case was first amendment/free speech concerns. So, when you’re discussing, when you’re making a parody kind of in the media, it seems like you might have a better argument for the parody defense and the free speech sort of arguments, but if you were bringing in products that were directly competitive with the famous mark, I think that would create some problems. It’ll be interesting to see what happens with these two litigations that I’ve mentioned. One thing that, I guess, would make sense to bring in now would be the dilution claim, which is always possible and it’s been discussed in all of the cases we’ve mentioned so far, the Chewy Vuiton case and the Hormel case. Dilution is still in play and under the Trademark Dilution Revision Act, there doesn’t need to be a likelihood of confusion. Actually, the trigger is whether there is an association between the marks and whether the paradizing mark would blur or tarnish the reputation. And, that’s actually one of the issue on appeal in the Charbucks case, but basically the idea with blurring is that the person marking a parody is sort of weakening the brand equity of a famous mark holder and causing it to be less distinctive. It’s a somewhat looser standard than likelihood of confusion, and tarnishment would be kind of exposing a famous brand in a bad light, which you know, in the case of Got Milk? being used, you know similar slogan being used to promote alcohol, I would think that the Dairy Council would maybe have a good argument for tarnishment there just because they’re promoting a healthy lifestyle and then someone is using a mark that at least creates an association in a way that might tarnish or harm the reputation of the brand. That’s kind of another thing you have to consider when you’re looking at these cases is you’ve got the parody doctrine which fits into likelihood of confusion, which is the basic test for infringement, but then you have a separate cause of action for trademark dilution and then it can be dilution by blurring or dilution by tarnishment. So, that’s sort of your arsenal if you are a famous mark holder and also the things that you need to be aware of if you would like to engage in parody.

Damien Allen: Dilution is definitely one of the points of some of these cases. What are the points I’m going to have watch for if I am going to create something as a parody. What are the three things I need to keep in mind if I’m going to do a parody of somebody else’s creation?

Daniel Corbett: Taking that question which is probably one on a lot of people’s minds. If they’re listening to this podcast, so what are bright-line rules that I can take away if I want to parody something. Sort of the things that you want to think about if you’re wanting to make a parody would be first using some sort of a different name or logo. I think it’s kind of worth mentioning that in the Louis Vuitton and Chewy Vuiton case, not only where the words Louis and Chewy different but Chewy Vuiton actually spelled the Vuitton portion of the mark with only one t whereas Louis Vuitton spells it with two t’s, and similarly, in the Hormel v. Henson case, the Muppet character spelled his name with two a’s and with an apostrophe in the middle, so, and obviously, somewhat different from the famous Spam mark for lunchmeat. So, little distinctions are very important because, you know, like I talked about earlier, it’s really all about threading the needle. You want to really have enough similarities for people to get the joke, but you do want to distinguish yourself in such a way that you’re not creating a risk of trademark infringement. Secondly, another thing that might be worth bearing in mind would be to sort of avoid rude or controversial humor. A lot of comedians and people engaged in parody might not want to do it because they may make a career in being rude and irreverent and so forth, but I like I mentioned, trademark dilution is always in play and you know when there is a claim for dilution by tarnishment, you have some sort of unsavory or inappropriate reference and then you’re invoking a famous brand. That’s creating a great risk for dilution by tarnishment. You kind of want to be careful around that. And then kind of one of the more interesting factors I think is avoiding similar products. So, in the Chewy Vuiton case, you have luxury handbags and squeaky dog toys, couldn’t be more different. In the North Face/South Butt case, you have very similar products, so, we’ll see how that factor is dealt with but kind of a rule of thumb, you know, to really avoid you know the uncertainty there, don’t put the parody on the same products as the company you’re parodying. So, this is kind of the three take away points: distinguish yourself in the mark; sort of avoid rude or offensive humor; and then be careful about putting the parody on similar products or services. This will be sort of the take away for anyone wanted to engage in a parody.

Damien Allen: Is there anything coming up in the courts that will give a clear set of guidelines that will allow trademark owners to feel more secure in the way that this is being figured out? Parody is always going to exist, satire is always going to exist. It’s not only part of our basic human rights of free speech, but there’s always going to be somebody who has an opinion on something else, but trademark owners spend a lot of money on getting their product placed, that brand has to be out there, they want it to be recognizable. Is there going to be a more clear and defined set of rules that make the playing field a little easier for everybody?

Daniel Corbett: I think one of the efforts of the trademark dilution revision act was to sort of add some clear guidelines around, you know, what constitutes trademark dilution. There is the likelihood of confusion factors are basically the same in every circuit, courts kind of apply in somewhat differently. Intellectual property and trademark law, in particular, you know, often involve a lot of gray areas, and if you’re a business trying to manage risk effectively, you really…you have to look at, first of all, you know, call up your lawyer and consult with them about what is the likelihood of this trademark infringement litigation going through. There’s so many gray areas in the law. So, it doesn’t take away points for famous mark owners because the law can be applied in different ways. It’s hard to say which case is a winner and which case is a loser but sort of the take away point would be to pick your battles if you are the owner of a famous mark just because, and like I mentioned there are some public relations considerations that you have to think about. You don’t want to sue somebody who’s making it very popular parody because it may make you look like the bad guy. And we’ve actually seen interestingly in the Mattel/MCA case involving the Barbie Girl song, we’ve seen Mattel up in arms years ago about the Barbie Girl song and now they’ve actually come back and licensed the use of Aqua’s song Barbie Girl for a promotional campaign for Barbie Dolls. We’ve seen them come back around in a sort of if you can’t beat them, join them kind of idea. So, really I think it’s really about assessing risk, figuring out how good is your case for infringement and then bouncing it against the PR considerations. Are we going to lose customers by suing somebody, are we going to be unpopular for what we do? So really it’s hard to give a bright-line rule because there are a lot of gray areas, but really it’s a balancing test between protecting brand equity and managing your public relations if you’re the owner of a famous mark.

Damien Allen: I would like to thank you for joining us today and discussing this with us. There’s, as you say, a lot of gray areas and lot of interesting cases out there and it’s going to be interesting to see how it shakes out in the end.

Daniel Corbett: Absolutely, thank you very much for having me Damien, I appreciate it.

Damien Allen: It’s been a pleasure. You’ve been listening to Trademark Law Radio. My name is Damien Allen. Everybody have a great afternoon.

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