On My Mind Blog

You might want to use someone else’s content, or their trademark, to joke about, comment on or criticize either their work or mark or society in general.  Or someone else might want to make a similar use of your work or mark.  Can this be found to be an infringement of intellectual property rights?  Is it protected by the U.S. Constitution’s right of free expression?

There are a few guiding principles to consider.  However, their application is hard to predict in a particular case.

Copyright

For almost 40 years, creative works have been protected by copyright in the U.S. automatically, from the moment of fixation in a tangible medium of expression.  Many older works also are similarly protected.

When you reproduce or copy all or a significant part of someone else’s copyrighted work, you generally are an infringer. 

A major exception is the “fair use” defense, which flexibly weighs factors including

--how transformative your use is compared to the purpose and character of the original,

--whether your use is for a commercial or nonprofit educational purpose,

--whether the original is creative or factual,

-- how significant, quantitatively and qualitatively, the part you used is compared with the original as a whole, and

--how much your use may affect the potential market for or value of the original.

One form of “fair use” is called “parody” – targeting the original work by commenting on it or making fun of it, which may be permissible.  This is distinguishable from “satire” – using the original to say something about society in general, which is less favored.  Whether or not a parody is found to be a fair use may depend on whether more is borrowed from the original than is necessary to make the parodic point, and how likely the use is to have an economic impact on the original, by serving as a market substitute.  If a parody harms the market for the original by effectively holding it up to ridicule, such market harm does not weigh against fair use.   

For example, the U.S. Supreme Court found that 2 Live Crew’s parody of the song “Oh Pretty Woman” could be a permissible parody because it mocked the innocence of the Roy Orbison original, although lower courts had waffled because of the parody’s commercial nature.  Compare this with a book named “The Cat Not in the Hat! A Parody by Dr. Juice,” about the O. J. Simpson case, that mimicked the literary style of Dr. Seuss but, its subtitle notwithstanding, did not target the Dr. Seuss works themselves, and was held to be infringing by the Ninth Circuit Court of Appeals.

Trademark

Trademark rights exist from the moment a mark is first used, and many marks get even earlier protection through the filing of intent to use applications for U.S. registration followed by use in commerce which may be lawfully regulated by Congress, or through foreign filings that can be a basis of U.S. registration even without use in commerce.

When you use someone else’s trademark in a way that is likely to cause confusion or to tarnish or dilute the distinctiveness of the original, you may be an infringer. 

Here, there also is a “fair use” exception as long as the mark is used

--to identify the original product or service only to the extent reasonably necessary to refer to or to conjure up the original, and

--does not suggest an endorsement or sponsorship of your own products or services.

Paradoxically, the better a trademark is known, the more likely it is that the parody will be found to be lawful by a court in an infringement case because the audience will recognize that the parody did not come not from the original owner.  However, the analysis is very fact-specific and judges can be particularly reluctant to permit parodies in the context of sex and drugs.  Furthermore, in registrability cases before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, parody defenses are rarely if ever successful because the Board usually will not consider the context in which a mark is used. 

For example, the Second Circuit Court of Appeals upheld the parody defense and permitted the continued sale of CHARBUCKS coffee in an infringement case brought by Starbucks.  In contrast, in a trademark opposition proceeding brought by Starbucks, the TTAB refused to allow LESSBUCKS to be registered as a trademark for coffee despite the applicant’s assertion that its mark was a parody.

Conclusion

Parody can be a successful defense to a copyright or trademark infringement action if the use is not just for general satiric purposes and does not take more from the original than is necessary to make the point, although trademark registrations generally are not granted to “parody trademarks.”

For further information, please contact William M. Borchard or your CLL attorney.

This ON MY MIND™ Blog post © 2016 by Cowan, Liebowitz & Latman, P.C., New York, NY. 

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