Andrew Vasicek
Paper Outline and Bibliography
Outline
I.
II.
Tentative Title:
Trademarks and the right to freedom of speech:
When a parody isn’t funny, you could be in big trouble.
Quick introduction/overview of trademark laws’ general purpose and potential
conflicts that could arise with parodies
a. Value of protecting TMs for consumers/mark holders vs. expression of ideas and
criticism
i. Freedom of speech – 1st Amendment
ii. 15 U.S.C.A. §1125(c)(4)(B)
Example cases that come out in favor of the parody, i.e. no infringement found
a. Cliff’s Notes
i. Appears to be more subjective than Mutual
ii. Parodies are expected to be very similar to original
1. parody can succeed even with some confusion
iii. Parody must be “good” to succeed?
b. Charles Atlas
i. Lanham Act is construed narrowly when unauthorized use of trademark is
made not for identification of product origin but rather for expressive
purposes of comedy, parody, allusion, criticism, news reporting and
commentary
ii. Balance public interest in speech against avoiding confusion
1. Confusion here was unlikely
c. Yankee Pub.
i. Court looks at the whole context more than in Mutual
ii. Confusion analysis with modified factors
1. Mark strength/similarity/intent to copy are not as important
iii. But user didn’t need these marks to make his point…
d. Cardtoons
i. 1st A. rights outweighed the players’ right to publicity
ii. Not commercial speech even though they are sold – commercial speech is
expression related solely to economic interests of speaker/audience
iii. Disagrees with White v. Samsung
iv. Adequate alternatives analysis doe not sufficiently accommodate the
public’s interest in free expression
1. Instead perform direct balancing of the two sets of rights
e. Mattel v. MCA
i. Use not intended to identify source but in public discourse
1. Title also simply describes the underlying work
ii. Also looks at dilution, but dismisses
iii. Parody use outweighs commercial use
iv. We shouldn’t punish a parody for being too good
f. Jordache
III.
i. No confusion/dilution
ii. Intent to parody existing trademark does not support inference of
likelihood of confusion, as intent to parody is not an intent to confuse the
public
iii. Parody actually would increase awareness of Jordache mark
iv. The benefit to the one making the parody, however, arises from the
humorous association, not from public confusion as to the source of the
marks. A parody relies upon a difference from the original mark,
presumably a humorous difference, in order to produce its desired effect.
g. Hormel
i. No likelihood of confusion or dilution
ii. Clear parody – no evidence of bad faith
1. Parody was obvious (lack of subtlety)
iii. User frequently parodies famous marks/celebrities
1. Muppet itself did not cause confusion by appearance; different
contexts
2. No evidence of bridging the gap into muppet performances for
Hormel
Example cases that come out in favor of the original, i.e. infringement found
a. Anheuser-Busch
i. Likelihood of confusion analysis
ii. Ad was too much like a real ad; no disclaimers, etc.
iii. No absolute right to use parody or to stop parody
iv. Still must weigh value of parody against consumer confusion
b. Mutual of Omaha
i. Traditional likelihood of confusion analysis used
ii. Adequate alternative avenues of expression
iii. Using their property to criticize an unrelated thing
iv. Parody must be distinguishable
c. PETA
i. Parody must convey two simultaneous and contradictory messages: that it
is the original, but also that it is not the original
1. The domain name does not convey anything except that it is
related to PETA
2. The content of the website is not simultaneous to the domain name
a. Seeing name and accessing website are not simultaneous?
ii. User was also indirectly using the site to sell a book
iii. Parodies cannot use the same exact name as the TM
d. Eli Lilly v. Natural Answers
i. Confusion and dilution found
ii. A "parody" is a humorous or satirical imitation of a work of art that
creates a new art work that makes ridiculous the style and expression of
the original
iii. PROZAC is fanciful and gets higher protection
iv. Natural Answers does not even attempt to point out any humor or satire in
its imitation of the PROZAC mark. More important, even if a junior mark
IV.
meets the definition of a parody, it still runs afoul of the trademark laws if
it is likely to confuse consumers
e. Elvis Presley Enterprises
i. Parody is one of the factors to consider in likelihood of confusion analysis
ii. In case of standard likelihood-of-confusion analysis in trademark
infringement case, successful parody of original mark weighs against
likelihood of confusion because, even though it portrays the original, it
also sends message that it is not the original and is a parody, thereby
lessening any potential confusion.
iii. Parody of faddish bars of the sixties did not require use of "Elvis Presley"
or "Elvis" marks, because it did not target Elvis Presley
f. ETW
i. Use of professional athlete's trademarked name on back of envelope
containing artist's print and in narrative description of the print was
noninfringing fair use; use was purely descriptive and there was no
evidence of bad faith.
ii. Fact that expressive materials are sold does not diminish degree of
protection to which they are entitled under First Amendment
iii. Where false endorsement defendant has articulated colorable claim that
use of celebrity's identity is protected by First Amendment, likelihood of
confusion test is not appropriate; rather, in such cases, public interest in
free expression prevails if use of celebrity's image has artistic relevance,
unless it is used in such a way that it explicitly misleads as to source of
work
g. Harley-Davidson
i. Not a parody
1. Infringing mark was used to support competing business, as
manufacturer had its group of authorized repairers, and
commentary upon original trademark necessary to have parody
was missing
2. Intention to confuse
h. Dallas Cowboys Cheerleaders
i. Association of uniforms in film with plaintiff would cause confusion/hurt
plaintiff’s business reputation
1. Typical type of confusion analysis
2. Primary purpose of TM laws is to prevent confusion
ii. This did not qualify as a parody
1. Barely conveys any message and certainly many ways to do so
Comparison between the two categories
a. Similarities in the analyses employed?
i. They all tend to apply the standard factored tests for likelihood of
confusion/dilution
1. But weigh the factors differently
b. Can the different outcomes be reconciled?
i. Is there actually one standard or are courts being inconsistent?
V.
1. Does the standard allow for too much subjectivity on the part of
judges?
c. Is there a better standard out there; one that doesn’t allow judges as much wiggle
room?
i. Require more evidence of actual confusion
1. Require ultimate confusion, not just initial interest
2. Could result in much less protection for mark holders
ii. Higher burdens placed on the potential infringer/presumption in favor of
mark holder
1. Treat TMs as property (departure from consumer driven theories)
2. Could result in much less protection for freedom of speech by
parody
d. Is the current analysis working, would these new ideas help?
i. This is a very delicate balancing situation
ii. Are courts even adequately equipped to decide these kinds of artistic
issues?
Conclusion
a. It seems that a move toward requiring more objective proof of confusion is
consistent with the stated goals of TM law. That is, when a parody does not
confuse consumers as to the origin of the product, it should, more often than not,
be allowed. Generally speaking I feel that it should be more important to protect
freedom of expression than the exclusivity of a mark holders right to use the TM.
Bibliography
Articles
Blanke, Jordan M. VICTOR'S LITTLE SECRET: SUPREME COURT DECISION MEANS MORE
PROTECTIONFOR TRADEMARK PARODY 2003.
Goldstein, Adam. ICANNSUCKS.BIZ (AND WHY YOU CAN'T SAY THAT): HOW FAIR USE OF
TRADEMARKS IN DOMAIN NAMES IS BEING RESTRAINED 2002.
Keller, Bruce P. and Rebecca Tushnet. EVEN MORE PARODIC THAN THE REAL THING: PARODY
LAWSUITS REVISITED 2004.
McCarthy, J. Thomas. McCarthy on Trademarks and Unfair Competition, Fourth Edition, Chapter
31. Defenses to Infringement of Trademarks V. THE FREE SPEECH DEFENSE B. PARODY 2005.
Phelps, William G. PARODY AS TRADEMARK OR TRADENAME DILUTION OR INFRINGEMENT 179
ALR Fed. 181.
Sarno, Gregory G. PARODY AS COPYRIGHT INFRINGEMENT OR FAIR USE UNDER FEDERAL
COPYRIGHT ACT (17 U.S.C.A. §§ 101 ET SEQ.) 75 ALR 822.
Schlosser, Sarah Mayhew. THE HIGH PRICE OF (CRITICIZING) COFFEE: THE CHILLING EFFECT
OF THE FEDERAL TRADEMARK DILUTION ACT ON CORPORATE PARODY 2001.
Cases
Anheuser-Busch v. Balducci Pub.
Cardtoons v. MLBPA.
Charles Atlas v. DC Comics
Cliff’s Notes v. Bantam Doubleday Dell
Dallas Cowboys Cheerleaders v. Pussycat Cinema
Eli Lilly v. Natural Answers
Elvis Presley Enterprises v. Capece
ETW Corp. v. Jireh Pub.
Harley-Davidson v. Grottanelli
Hormel Foods v. Jim Henson Productions
Jordache v. Hogg Wyld
Lamparello v. Falwell
L.L. Bean v. Drake Pub.
Lyons v. Giannoulas
Mattel v. MCA
Mattel v. Walking Mountain
Mutual of Omaha
Nike v. “Just Did It” Enterprises
No Fear v. Imagine Films
New York Stock Exchange v. New York, New York Hotel
PETA v. Doughney
White v. Samsung Electronics America
WWF Entertainment v. Big Dog Holdings
Yankee Pub. v. News America