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Parody Use of Trademarks

Parody usage of trademarks is quite prevalent in our society, for a wide variety of uses.  However, with a large number of cases litigated, it is inevitable that courts would apply judicial standards inconsistently.

The Trademark Act of 1946 (the Lanham Act) states that the test for trademark infringement is whether the junior mark “is likely to cause confusion, or to cause mistake, or to deceive” with regard to the original trademark.  The Southern District of New York stated that a parody contains language which closely imitates or mimics another work for comic effect or ridicule.  Generally, good parody should lead to the antithesis of confusion, as its intent is to mock the original mark in its similarity to the mark, with enough differences to clearly indicate that it is in no way related to, or a product of, the original mark holder.  The courts, in defining parody, cite either the dictionary or the works of classical authors, stating, in one instance, that parody “seeks to ridicule sacred verities and prevailing mores” and that in doing so, “it inevitably offends others.”  Courts, then, in ruling against the creator of the parody, have ruled either that the use is not to be considered parody at all, or that the parody created is not strong enough to overcome the likelihood of confusion with the original mark.  A third set of cases, acknowledging the usage of parody, nonetheless ruled against the parody’s creator because the court found that the use of the parody would dilute the owner’s trademark.

The first line of cases is those determining that the infringing use does not contain parody at all.  One of the most frequently-cited cases of this type is the “Debbie Does Dallas” case (467 F. Supp. 366 (S.D.N.Y. 1979)), in which a pornographic film scandalously featured the world-famous uniform worn by the Dallas Cowboy Cheerleaders and made reference to a Dallas football club.  As an apparent afterthought, the defendants tried in vain to argue that their film was making a statement on the inherently ironic use of sex to promote professional athletics.  However, the court, which defined parody as a work imitating or mimicking another work closely for comic effect or ridicule, emphatically stated that the film at issue could not conceivably be considered parody, as the movie’s purpose had nothing to do with humor or commentary, and that the movie existed mainly to depict sex acts.   Additionally, the film used the uniform of the Dallas Cowboys Cheerleaders, not to parody the squad, but to exploit its popularity and attract more customers.  Several other federal cases which found that the uses did not rise to the level of parody each stated that the likelihood of confusion was apparent, because the usage lacked parody.

A second line of cases which found for the original mark holder determined that the secondary use was truly a parody, but that the particular cases of parody were not strong enough to dispel the likelihood of confusion among consumers.  One indicative case of this type is Wendy’s International, Inc. v. Big Bite Inc. (576 F. Supp. 816 (S.D. Ohio 1983)).  The court conceded that the advertising campaign of a competing local fast food restaurant chain, which utilized, among other famous fast food trademarks, the freckle-faced red-headed girl and a slogan which obviously satirized one used in advertisements for Wendy’s, was clearly a “light-hearted spoof” and “mildly entertaining.”   Yet, the court found that Big Bite had failed to “rebut the inference of consumer confusion.”  Similarly, “Gucchi Goo” diaper bags were determined to be too similar to Gucci handbags for the parody usage to be protected.

In yet another line of cases, although the parody element was found not to cause a likelihood of confusion, nonetheless, the courts found for the plaintiffs, relying on the state or the federal anti-dilution statutes.  The Trademark Anti-Dilution Act of 1996 allows owners of trademarks to receive injunctive relief to prevent their marks from dilution, defined by the Act as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of--(1) competition … or (2) likelihood of confusion.”  This Act is frequently used to safeguard the reputation of a mark.  An early case in this line of cases is the “Enjoy Cocaine” case, Coca-Cola Co. v. Gemini Rising (346 F. Supp. 1183 (E.D.N.Y. 1972)), in which the court enjoined defendant’s poster bearing that phrase, stating that, although there was no confusion of goods or passing off, plantiff’s trademark would be impaired as a result of defendant’s use.  In American Express Company v. Vibra Approved Laboratories Corp. (1989 U.S. Dist. LEXIS 4377 (S.D.N.Y. April 19, 1989)), the court issued a preliminary injunction to American Express against usage of the America Express “condom card” (“Never Leave Home Without It”).  Although the plaintiff had failed to prove a likelihood of confusion, the court found that allowing the “predatory intent” behind the marketing of the cards would “result in the whittling away of the distinctiveness of plaintiff’s marks” in violation of New York ’s Anti-Dilution statute.

The much more prevalent, especially in more recent times, line of cases are those in which the court ruled in favor of the creator of the parody.  In each case, the court found that the parody was strong enough to overcome the likelihood of confusion, even in those cases where the original marks were placed in an unfavorable light.  In fact, one court stated that parody tends to increase public identification of the marks with the plaintiff, most likely by drawing attention to plaintiff’s brand through humor.  On a related note, courts have upheld parody usage of marks, even given likelihood of confusion, on First Amendment grounds.  By and large, the courts understand the importance which parody and satire play in our society and are willing to safeguard it, even when it is not merely for social commentary, but also for commercial purposes.  Just a small sample of the plethora of cases utilizing this rationale will suffice.  One of the earliest cases involves the publishing of a poster showing an obviously pregnant very young woman wearing a Girl Scout uniform with the slogan “Be Prepared” written underneath.  The court stated that no evidence had been shown supporting an allegation of confusion, or that anyone actually believed that the Girl Scouts published or sponsored the poster.  Failure to prove likelihood of confusion caused courts to protect parodists in the area of a Wacky Packages product spoof, an L.L. Bean look-alike catalog of sexual products in an adult magazine, a sophisticated spoof of students’ resource Cliff Notes parodying “savvy, urban novels … of post-adolescent angst of the 1980’s”, perfume for dogs bearing names which played on famous designer brands, and, most recently, a movie mocking the clothing line FUBU.  Each of these cases found that defendants, by the strength of their parody, had decreased the likelihood of confusion to a sufficient degree that the court did not consider such instances trademark infringement.

On October 6, 2006, the Trademark Dilution Revision Act of 2006, amending the Trademark Anti-Dilution Act of 1996, was signed into law.  This legislation codifies the common law distinction between “tarnishment” and “blurring”, both of which are ways in which use of another’s well-established mark may dilute such mark, even for non-competing products or services.  Section 3 of the Act lists exclusions to the reach of the injunctive relief afforded under the law.  Specifically, one subsection lists fair use in connection with “identifying and parodying, criticizing or commenting upon the famous mark owner or the goods or services of the famous mark owner,” while Section 3(C) excludes any “noncommercial use of a mark.”  With the passage of this Act, many of the defendants in the cases described above would be protected, however, the courts must still evaluate the quality of the parody, in order to assess whether the use would be protected under the revised Anti-Dilution Act.  A bald assertion of parody rights would not be excluded.  Under the noncommercial exclusion, at least three parody cases would likely have fallen within the exemption, perhaps preventing the plaintiff initially from even commencing litigation.  The protestors who tried to block the Olympic Village in Lake Placid because the site would be used as a high-security prison would have been protected in using the Olympic interlocking rings.  Similarly, the union leaflets utilizing the Wildhorse Saloon logo to draw attention to health violations, and the political television advertisement which used a distinctive duck quack to criticize an opponent would both be excluded from the reach of the revised Trademark Anti-Dilution Act.

Although recently courts have been far more sympathetic to third parties creating parodies of famous trademarks and service marks, a review of cases over the past thirty-five years indicates that courts did not always rule in favor of the defendants.  At times, the courts found that the usage was not a sufficiently strong parody to dispel the possibility of consumer confusion, while in other instances, courts did not find parody at all, or found that a jurisdiction’s anti-dilution laws favored plaintiff’s interest in maintaining the goodwill of the mark being parodied.  Recently-enacted federal legislation may clarify certain protections afforded to parodists, as well as protecting non-commercial usage of marks, but may still leave open certain issues, such as the parameters of a parody usage to be afforded protection.

The author is a Manager of Legal Affairs for The Beanstalk Group, the world’s leading independent strategic brand licensing consultancy.  The author wishes to thank Michael S. Stone, President and CEO of The Beanstalk Group, and Richard Bergovoy, Associate VP of Legal Affairs for The Beanstalk Group, for their comments and suggestions on an earlier draft of this article.

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