Parody Defense: To Laugh or Not to Laugh (Part 1)
Updated: May 29, 2022
TRADEMARK PARODY involves the appropriation of another’s mark as a well- known element of popular culture, and then building on it to contribute something new for humorous effect or social commentary.
I would say that anyone should think at least twice before infringing upon another trademark thinking that you can protect yourself under the parody defense. What can be said with certainty is if you intend to use a trademark parody in your business, you must be prepared to be sued.
PARODY use of trademarks is common in our society. 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. 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. Parody “seeks to ridicule sacred verities and prevailing mores” and that in doing so, “it inevitably offends others.”
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.
In re Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (“Louis Vuitton”), the Fourth Circuit issued a very important parody decision because it provided a detailed analysis of the parody defense to trademark infringement claims. The court took a two- step analysis: (1) the first question was whether or not CHEWY VUITON was a trademark parody, and (2) the second questions was whether Haute Diggity Dog’s parody infringed upon Louis Vuitton’s trademark rights. Because of the dissimilarity of the products, facilities where the products are sold as well as the advertising channels, the Court found that Haute Diggity Dog did not infringe upon Louis Vuitton’s trademark.
In re. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc. (588 F.3d 97, 2nd Cir. 2009), the Second Circuit found that the use of the CHARBUCKS mark on coffee could not escape liability for diluting the famous STARBUCKS mark based on a parody defense because CHARBUCKS was used as a source identified and was too subtle to constitute a parody.
Another interesting case in this area is the decision in re. Wendy’s International, Inc. v. Big Bite Inc. (576 F. Supp. 816 (S.D. Ohio 1983). The court decided that the advertising campaign of a competing local fast food restaurant chain utilizing the famous fast food chain’s freckle-faced red-headed girl trademark and slogan to refer to Wendy’s, was not clearly a satire. The Court found that Big Bite had failed to “rebut the inference of consumer confusion.” If this decision had been appealed, it would have been decided by the Sixth Circuit