Trademark Parody
Leslie J. Lott*
Brett M. Hutton**
I. Introduction
Engaging in trademark parody is a little like shooting at the king. You
had better be good at it, because if you attempt and fail, you are in
big trouble.
Parody is a defense to trademark infringement.1 The defense is that there
is no likelihood of confusion because the 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 be 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 you have brought the original 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 do you avoid falling into the realm of infringement and place
yourself squarely 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 ten years ago 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 such as 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.
More recently, 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, that
Dom Popignon was not a sufficiently strong parody to avoid 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, a
parody 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 in any manner 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 was using this slogan for advertising
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 the defendant's
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 of "famous" marks
First, a parody must be clever enough or witty enough so that customers
will not assume the original trademark owner is connected with or approving
of the parody. In cases where a likelihood of confusion is demonstrated,
the defense of parody is defeated. Secondly, a parody must be clever enough
to avoid dilution of "famous" marks.
Effective January 1996, there is a Federal Trademark Dilution Act which
provides for an injunction against the use of another's mark, notwithstanding
a lack of competition between the parties' goods or services, and notwithstanding
no likelihood of confusion, provided the mark is "famous".
Even prior to the federal law, a number of states have had anti-dilution
laws which generally require only that a mark be "distinctive"
to be protected, and not necessarily famous. In any event, the anti-dilution
laws 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.
i. blurring
Blurring, or diminution, involves the gradual whittling away of the identity
and distinctiveness of the mark or name by its use upon non-competing
goods. The use of the altered mark poses a risk of impairing the identification
of the trademark with its 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 mark owner as the source
of goods or services. In fact, it may even come to identify the other
party as the primary provider of certain different goods or services.
Therefore, the trademark owner must establish the fact that the distinctiveness
of the owner's mark would likely be diluted by a third party's use.
Such dilution by blurring was not found in a case, decided in July of
1996, involving the use of "The Greatest Bar on Earth" by a
bar located on the 107th Floor of the World Trade Towers in New York.
Employing a six-factor test for dilution, the court found the marks and
products dissimilar, a lack of 'predatory intent' and long-standing third
party uses resulting in the denial of a motion for preliminary injunction
in favor of Ringling Brothers. The court found no likelihood of dilution.
In August of 1996, solely on the basis of the federal anti-dilution statute,
the Northern District of California issued a temporary restraining order
in favor of Anheuser-Busch Inc., against the defendant's distribution
of tee shirts bearing the word "Buttwiser." The court held that
Anheuser-Busch's marks were "unquestionably famous" and that
the tee shirts would dilute these marks. Now showing of likelihood of
confusion was required.
These decisions, under the new Federal Trademark Dilution Act of 1995,
fall squarely in line with much earlier case law under state anti-dilution
statutes. Under such a state statute, a Boston restaurant was enjoined
from using the New York jeweler's mark, "Tiffany." The injunction
was entered on the basis that such use would weaken the unique association
of the mark with the trademark owner, notwithstanding the absence of competition
and no likelihood of confusion.
ii. tarnishment
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.
In one of the first well-known cases of this nature, 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 another Budweiser slogan, "This Bud's
for You," was also subjected to the realm of parody. The defendant
used the slogan as a parody advertisement for flowers. Unlike beers and
bugs, the florist court found a satisfying 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. Beware of "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 a celebrity the exclusive ability to commercially exploit that
identity, which includes their voices, names, signatures, photographs
or likenesses. The unauthorized use of this identity by another in promoting
products, or any other commercial endeavor, violates the right of publicity.
The commercial exploitation of a celebrity's identity is violated even
if the use does not explicitly use the celebrity's "name or likeliness."
The right of publicity, as we have stated, is that a celebrity has 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 his "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 John 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" for a play title 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 trademark parody case,
its analysis was relevant in the fact that the right of publicity claim
does not require proof of likelihood of confusion, but rather the unauthorized
use of a party's name or image.
A more recent case involving the manufacturers of trading cards of active
major league baseball players contains 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.
II. Related Issues
Assuming you are able to run the gauntlet of trademark law and prevail
on dilution and right of publicity issues, you are still not home free.
There are a number of other concerns you have to 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
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 in working up 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."
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 Cowboy 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 by 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 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, 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 the story of two struggling dancers in Italy who sometimes
imitate the stars Ginger Rogers and Fred Astaire. 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 issue of whether the
application of the anti-dilution statute violates the parodist's First
Amendment rights. The First Circuit, in the L.L. Bean case, 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 the
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.
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