Monday, July 13, 2015

Recommended Reading: William McGeveran, "The Imaginary Trademark Parody Crisis (And The Real One)"

Professor William McGeveren of the University of Minnesota School of Law, in an enjoyable and informative article, discusses the current state of trademark parody law in "The Imaginary Trademark Parody Crisis (And The Real One)," 90 Wash. Law. Rev. 713 (2015). [Follow him on Twitter: @BillMcGev.]

Abstract: In the two decades since the Supreme Court protected a crude rap spoof from copyright liability in Campbell v. Acuff-Rose Music, Inc., courts have grown to understand the great value of parodic expression in trademark cases as well. Today, plausible claims of parody almost always prevail over trademark rights in judicial rulings. This Article demonstrates that it is simply wrong to suggest, as commentators often do, that we face a crisis in the results of trademark parody cases. That distortion is harmful because it distracts reform efforts and it lends credence to overbroad assertions of trademarks against parody and other speech. Demand letters and other pre-litigation maneuvering by markholders exemplify the real crisis in the law of trademark parody. Reform should concentrate on making excessive threats against speech less effective. I argue that fast-lane defensive doctrines that reduce the burden of litigating parody cases, such as safe harbors and a broad artistic relevance test, are more important than perfecting substantive parody doctrine. Meanwhile,we should shout the truth from the rooftops: Markholders who sue legitimate parodies lose.Their threats are empty.

Read comments and post your comment here

TTABlog comment: Parody does not fare well at the TTAB. Witness the SEX ROD, THE HOUSE THAT JUICE BUILT, JUST JESU IT, and a string of other decisions. In fact, as I sit here at my kitchen table (watchful of possible falling ice blocks), I can't think of a TTAB case upholding a parody claim.

Text Copyright John L. Welch 2015.


At 8:14 AM, Anonymous Anonymous said...

About your comment, John . . . isn't this merely another facet of the disparagement issues discussed so much in recent months? Ability to USE a parody/disparaging/offensive term in commerce (Yay First Amendment!) vs. REGISTRATION of such a mark?

One could make the argument that parody use in the actual marketplace is a relatively short-term nuisance. But once a mark has been registered, it becomes institutionalized, hulking on the register like some sort of silent dilution-magnet.

At 10:34 AM, Anonymous Roberto Ledesma said...

I recently researched the parody defense at the TTAB. My findings correspond with John's comment -- the TTAB has never upheld a parody defense/claim. In the dilution context, the TTAB's recent "The House that Juice Built" and "Crackberry" decisions hold that the act of seeking registration at the USPTO will preclude an applicant from relying on the parody defense listed as a fair use exclusion in the dilution statute. In the likelihood of confusion context, parody is just one of the factors to consider in the LOC analysis and no defense if the marks are otherwise confusingly similar.

Parody defendants have fared better in federal court (see Chewy Vuitton, Charbucks, etc.). In its "Crackberry" decision, the TTAB offered the following reasoning: "when this Board is asked the narrower question of applicants’ right to registration under Section 2(d) of the Lanham Act, the First Amendment claim is not as strong as with issues of restraint on use."

I wonder if that is still true post-B&B (now that TTAB decisions can be used to restrain use)? Perhaps the Board should give more weight to a parody claim in balancing the likelihood of confusion factors. (I may write a blog post on this)

At 11:17 AM, Blogger John L. Welch said...

Hey, Roberto. Sounds like a topic for a TM Reporter commentary.

At 2:20 PM, Anonymous Rob said...

PCTAB - Political Correctness Trial and Appeal Board. Who knew that the PCTAB's jurisprudence states that trademark law was not designed primarily to protect IP, but to protect feelings from being hurt? There should be at least two sensitivity and diversity specialists in any board panel.


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