But For Trademark Parody – Jovial Jabs or Bad for the Brand?

In the somewhat murky world of trademark parody disputes, various courts often are torn as to how to best reach the appropriate decision. Such uncertainty, among other PR and business considerations, often leads some plaintiffs to ponder whether they might have been better off having a good chuckle and ignoring tongue-in-cheek brands in their space rather than marching into court.

However, since lawyers typically aren’t paid for public relations consultations, judge for yourself how these parties faired as we look at some common themes of interesting trademark parody cases decided over the past few years worth some light-hearted discussion.  If you don’t crack a smile reading about these cases, and the creative minds behind them, definitely stick to reading legal treatises.

At the outset, it is important to distinguish between what is parody and what is not.  Although sometimes confused with sarcasm and/or satire, both of which lean toward derision, parody is different and often looked upon more favorably in our culture, likely due to its joviality.  Where trademark law often becomes intertwined, is that for parody to work it necessarily relies upon an interrelationship to a prior known object or text giving meaning and the basis for the presumed humor.  However, those prior known text/object owners often choose not to laugh off the jovial jab, instead bringing trademark infringement suits claiming likelihood of consumer confusion.

To begin our analysis of this unique brand of cases, we need look no further than the recent final appeal decision that concluded a 12-year dispute between Starbucks and Black Bear Micro Roastery’s “Charbucks” blend.  Impressively, the defendant weathered the bitter battle and prevailed, with the 2nd U.S. Circuit Court of Appeals determining there was no sufficient finding of likelihood of consumer confusion through blurring of Starbucks brand.  See Starbucks Corp., et al. v. Wolfe’s Borough Coffee, Inc. d/b/a Black Bear Micro Roastery (2nd Cir. 2013).  In the final analysis, a survey of 600 people became a key piece of evidence showing that less than 5 percent of consumers thought they could actually buy “Charbucks” blend at Starbucks stores.

One case worth noting that slid past most people — although it is admittedly somewhat juvenile and without rulings on the merits — illustrates what may come of similar disputes between parties with significant market disparity.  Not long ago, a teenage boy had a great idea.  What if he mocked some really popular clothing brand, and then sold it to those amused by the obviously humorous contrast?  Brilliant!  Sort of.  As evidenced in The North Face Apparel Corp. v. The South Butt, initiated in 2009, a teenager did just that and started a clothing brand by flipping the iconic half-dome curves of the North Face logo upside down.  The North Face was not amused.

After several cease-and-desist letters did not garner the desired effect, nor did their success in an opposition to prevent The South Butt from gaining trademark registration, The North Face sued The South Butt in the U.S. District Court for the Eastern District of Missouri alleging trademark infringement in addition to drawing sizable amounts of public awareness.  In The South Butt’s answer to the complaint, the teenager’s lawyers somewhat accurately quipped “[b]ut for the actions of North Face, the South Butt saga might have been relegated to local Friday fish-fry banter.”

The case did not get to the merits before a confidential settlement was worked out in 2010 and The North Face made it go away.  However, one wonders if The North Face would have been better off laughing this one off after a quiet victory at the trademark office, particularly once articles about the lawsuit made national news and the company ended up filing another suit a few years later to enforce the settlement because The South Butt’s product apparently was still in demand.

A more recent battle, where the humorist ultimately won the war, is the Facebook-Lamebook dispute.  Graphic designers in Austin, Texas, established Lamebook to out all those who end up oversharing (i.e., TMI) on Facebook.  The idea behind the launch of the site was to showcase the funniest and lamest of Facebook and get public feedback, arguably as a means for social commentary of modern society.  As with The South Butt dispute, Facebook went after Lamebook by alleging trademark infringement and dilution and requesting that Lamebook cease and desist.  However, Lamebook took the offensive in the U.S. District Court for the Western District of Texas and filed a declaratory judgment that it did not violate Facebook’s rights. Lamebook claimed it was protected as a parody under the First Amendment.  Ultimately, the two came to an agreement in 2011 allowing the Lamebook site to continue its mission and provide revenues to its founders, albeit without its own federal registrations and with a disclaimer on its homepage.

What can we glean from these and other similar cases?  Parody is not really an affirmative defense to trademark infringement, although it may be a means to show lack of likelihood of confusion. Rather, parody is an assertion of First Amendment rights concerning noncommercial speech for the most part.   Thus, one should pay careful attention to the reasons and target chosen to be mocked.

Trademark infringement issues surrounding confusion are more likely to be excused where there is an artistic or social message behind the parody and not mere commercial interests.  Further, the allegedly infringed mark itself ideally should be the interrelated element for the parody defense under the First Amendment.  Despite the above, it would appear the courts do not take themselves too seriously on the matter with various circuits taking slightly different approaches to get to the most amicable results.

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