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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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