The reworked “fair use” defense has provoked debate because it provides excessively broad immunity to certain types of parodies and other expressive uses of trademarks.1 This Article will explore whether the Trademark Dilution Revision Act (TDRA) promotes a flawed treatment of parodies with regard to sub-clauses that provide selective shelter, and exonerating some parodies from liability while impugning others.2 The principal flaw that is discussed in this Article relates to the parody provision and its application of the trademark use test for determining whether a parody is fair. The provision is pliable in that it can be both lenient and strict on parodies.
I. Trademark Dilution Revision Act
The language of the TDRA appears to implicitly divide parodies into two distinct groups: source denoting parodies and non-source denoting parodies. Non-source denoting parodies are artistic parodies- that are not used as trademarks and are treated with leniency, whereas source-identifying parodies generally receive strict treatment3. A plain reading of the provision appears to confer blanket immunity to all parodies as long as they are not being utilized as indicators of source(s) for goods or services4. On the other hand, it imposes liability on parodies that function as trademarks without suitable inquiry into the nature or impact of the parody in question.5,6 This parody approach fails to adequately assess forms of harm since it focuses exclusively on the classification of the parody’s status, rather than the effect.
The focus of inquiry should be on the effect of the parody in relation to the original trademark’s distinctive quality or reputation, with consideration regarding the investment to establish such distinctiveness, and not just on the status and presence of commercial or trademark use. However, this is not the case because the TDRA’s fair use provision fails to appropriately distinguish parodies that convey an artistic or social message from those that tarnish a senior mark.7 The broad language of the exception allows tarnishing use to be exempt from liability so long as the parody in question is not utilized as a source indicator.8 The “fair use” provision appears to provide automatic immunity to non-source denoting parodies, as it stipulates that only these types of parodies that do not function as designators of source, are eligible for exemption under the provision.9 The exemption is justified by the First Amendment.
II. Exploring the TDRA Flaw
Parodies are expressive by nature.10 For this reason, some parodist choose to present their parodies as “works of art” to the public; such representations can be made without any connection to goods or services, and occasionally, without the expectation of commercial gains.11
Still, these parodies can be harmful to the original trademark owner when free-riding occurs, or some harm to the goodwill of the mark because of confusion or false misrepresentation. Free-riding occurs when the parodist receives a benefit from the association between their mark and the well-known mark12. Although some have argued these actions are permissible because they align with the First Amendment justification, and ensure that the original owner shall not be able to monopolize the famous creation, this view fails to consider the investment the original owner sacrificed to establish the identity of being “well-known” or “famous.” As a result, parodists can reap where they have not sown.
Courts have confirmed that the TDRA applies different treatments to parodies based on their categorial status. The TDRA enactment amended the fair use defense by adding an expressed defense for noncommercial use; this plain language of the provision explicitly excluded source denoting parodies. Therefore, courts relied on the main dilution factors provided by the Act, instead of the fair use exception, to immunize source denoting parodies from liability. 13
In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, the court confirmed that the parody clause in the fair use provision is not exhaustive in its coverage of non-dilutive parodies.14 This case set a precedent which allows parodies that are being used as a trademark to sell goods in commerce to be exempted from liability for dilution, in certain circumstances.15 The court’s analysis indicates that a parody does not necessarily need to satisfy the fair use provision in order to be exonerated from liability.16
The courts affirmations justify the concerns with the TDRA’s fair use parody clause, as it demonstrates that the provision is both too broad in some respects, but also too narrow in others.17 The provision is broad as it largely immunizes all non-source denoting parodies from liability without assessing the message communicated by the parody and its effect on the reputation of the mark. If the message promotes a negative impact on the goodwill of the original trademark owner or free-riding occurs, the original owner will have no claim against the parodist, and the First Amendment justification trumps the original owner’s interest or disfavored effects. On the other hand, the provision is too narrow because it excludes certain source-denoting parodies that may not be deserving of protections because of the extraordinary investments original owners take to establish a specialized distinction for the mark.
Allowing protection under these circumstances, permits the parodist to take advantage of trademark owners marketing investments and efforts they may have taken years to establish. Further, the treatment permits free riding. Consequently, the approach to the treatment of parodies effectively ‘dilutes’ trademark owners of the right to obtain an appropriate remedy against parodist who have tarnished their marks by engaging in an unfair or offensive comparison, and parodist who has benefited from the original owner’s investments.
An example of these effects is demonstrated in Mattel, Inc. v. Walking Mountain Productions. In this case, the parodist is an artist who posed nude Barbie dolls in photographs that displayed Barbie getting attacked by vintage household appliances.18 Although the artist failed to use the term “Barbie,” the art itself irrefutably involved the trademarked doll and the titles reflected that fact.19 The message of the parody meant to diminish the Barbie persona that was established by Mattel through successful marketing.20 Mattel had purportedly established Barbie as “the ideal American woman” and a symbol of “American girlhood.”21 Is it unfair for a parodist to attempt to destroy the goodwill or reputation of the mark? The law certainly does not think so because such actions are viewed as an exercise of the First Amendment right.
But what if the only reason the parodist receives an audience or attention is because of “Barbie.” Is the original owner now entitled to a claim? Had it not been for the original owner, the parody would likely have never been created, nor would the parody have received the level of attention attained. But for the original owner’s investments toward establishing the mark’s goodwill, it is likely the parody would be non-existent, or at the very least would not have obtained the level of attention it received. If these photos only receive attention because of “Barbie,” does that mean the parodist is permitted to free-ride off of the famous mark owner’s marketing efforts and investments that may have taken the owner years to establish? Trademark law is permitting parodist to reap what the original owners have taken years to sow! It could take a trademark-owner years to establish a distinct attractiveness in the marketplace. However, a parodist need only use the famous mark under the guise of a parody and receive the same benefits of attractiveness through association, at a fraction of the time and monetary investment that was devoted by the original owner.
Under these protections lays the question of fairness, which arises when there is harm from the parodist belittling the reputation of the mark that is being ridiculed.22 Still, the current parody provision does not possess sufficient nuance to assess the type or extent of damage inflicted on the senior mark, caused by the tarnishing effects of the parody.23 Particularly, it fails to provide guidance on the level and quality of ridicule that is considered “acceptable” for a parody.24 This raises some concerns; virtually many cases of non-trademark expressive use would receive protection under the Act. The TDRA arguably tilts the balance too far in favor of non-trademark use parodies.
1 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 90 (2012).
2 Id. at 92.
3 Id.
4 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 92 (2012); Justin Gunnell, Evaluation of the Dilution-Parody Paradox in the Wake of the Trademark Dilution Revision Act of 2006, 26 CARDOZO ARTS & ENTERTAINMENT 441, 455 (2008).
5 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 92 (2012).
6 It’s the courts duty to inquire about the nature or impact of the parody which is determined through the infringement factors discussed in the following section.
7 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 93 (2012).
8 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 93 (2012); Justin Gunnell, Evaluation of the Dilution-Parody Paradox in the Wake of the Trademark Dilution Revision Act of 2006, 26 CARDOZO ARTS & ENTERTAINMENT 441, 455 (2008).
9 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 92-93 (2012).
10 Id. at 84.
11 Id. at 89.
12 Iowa State University, Trademark Legal Basics, (Apr. 1, 2019), https://www.trademark.iastate.edu/basics .
13 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 99 (2012).
14 Id. at 97.
15 Id. at 96.
16 Id.
17 Id. at 97.
18 Mattel Inc. v. Walking Mountain Prods., 353 F. 3d 792 (9th Cir. 2003).
19 Id.
20 Successful marketing requires a huge investment of time, money, and consistency over a period of time.
21Mattel Inc. v. Walking Mountain Prods., 353 F. 3d 792 (9th Cir. 2003).
22 Id. at 93.
23 Id.
24 Id.
Min
The article emphasizes the limited legal remedies and protections owners of famous trademarks face against non-commercial use parodists who use their image fairly freely under the TDRA. The broad and vague application of the fair use exception for parodied trademarks offers parodists various ways to benefit from and/or damage the senior mark’s reputation without any penalty. On the other hand, owners of the senior mark must meet a high bar to protect themselves and their mark under the TDRA. At a minimum, they must show that their mark is famous and not merely distinctive, the parody is source denoting and used for commercial purposes, and the parodist’s willful intent to harm the reputation of the famous mark. The First Amendment freedom of expression clause adds another layer of protection for the parodists.
I agree with the article that the statutory language in TDRA and the fair use exception is more than insufficient to protect the owners of famous senior marks and is inconsiderate of their effort, time, and financial investment put in to build their mark’s recognition over time. It is fair for the court to protect and promote people’s right to expression. However, shouldn’t courts also protect and respect the rights of people who worked hard to create, develop, and attain fame for their mark or brand? When the owner of the mark asks for injunctive relief, courts should not only be concerned about whether the parodist used the mark for amusing and non-commercial purposes and/or what impact the expression has on the public. The courts should also consider and measure how much damage it may bring to the use, purpose, history, and ownership of the mark. As demonstrated by the Mattel, Inc. v. Walking Mountain Productions case from the article, especially if a mark is closely associated with a brand, the consequences may be dire to the owner and the brand. As the TDRA and the history of trademark law is fairly new, a clearer language and guidance will be necessary for the courts to make a fair and balanced decision on parodied famous marks.
Jieshi
This article brings up some interesting points about parodies and the potential harm that they may cause to the trademarks that they are parodying. I understand the concerns of the senior mark holders because some of them spend a lot of effort and money on building up the reputation of their trademarks and the companies that they are associated with. However, I believe being lenient with parodies when determining fair use is important in protecting parody artists and their freedom of expression. This article brought up an interesting example in Mattel, Inc. v. Walking Mountain Productions, where a parody artist posed nude Barbie dolls in photographs that displayed Barbies getting attacked by vintage household appliances. Although it is true that Mattel’s sales might have been adversely affected by the photographs, the artist argued that the photographs were a criticism of Barbie’s image of being an “All-American Girl.” In my opinion, parodies are very similar to the works of critics. For example, movie critics make money off the names of the movies that they review. Movie critics can also adversely affect a movies’ viewership if they give a movie a bad review. Strictly enforcing copyrights against parody works may create a slippery slope where copyright holders may attack the critics of their works. Overall, I believe parody works can operate a lot like critical works and should be afforded proper protection under the First Amendment.
Sarah
This article offers an interesting argument as to the insufficient protections that the TDRA provides for trademark owners. Particularly, the main flaw that the author notes is that the trademark use test for determining the fairness of a parody, under the parody provision of the Act, focuses too much on classification of the parody rather than the impact that the parody has on the trademark. I understand both sides — that is, the need to protect trademark owners who invest significant time and effort into the trademark, versus the First Amendment and the free expression that parodies represent.
Some parodies, such as “Weird Al” Yankovic’s renditions of famous songs like Michael Jackson’s “Bad,” have been welcomed by the original creator and offer a source of entertainment for many. Some parodies, however, such as the nude Barbie doll photographs at the center of Mattel, Inc. v. Walking Mountain Productions, are representative of something quite different. While both of these parodies reflect artistic expression, the Barbie images seem to have had a greater intention to make a point, particularly in a negative way, against the trademark. It is interesting to wonder, as the author ponders, if the specific use of Barbie makes a difference even if the word Barbie is not included in the art. If the photographer used a generic doll, would it make the same point? Both sides may be argued, but I think Barbie’s face is unique enough that the dolls will be recognized. This makes me think that the use of Barbie was intentional, because these dolls may have contributed to, or inspired, the shift in American beauty standards that any subsequently created dolls may represent. Of course, free expression to challenge society’s idea of the “ideal American woman” is something that we generally value and want to protect in the US. But, this clearly has the potential to cause more harm, since it has the effect of tarnishing the trademark. Because of this, the author’s assertion that the TDRA trademark test is insufficient, is convincing. It should not be about the category of parody alone, but rather, the intent of the parody AND the effects it causes. While even a less “negative” parody such as Weird Al’s songs arguably cause damage because of his profits off of the hard work and time put into the creation of the trademark, it is a different type of damage than active harm to the reputation of the trademarked thing and potentially its associated company.
While the author’s argument for limitations on free riding is certainly an important consideration, the overall biggest concern, I think, is the parodies that may cause significant direct harm to a company. Profit gained by another off of a parodied trademark does free ride, but it doesn’t necessarily directly take away from the trademark owner in the same way that a parody that causes distaste, distrust, et. cetera, for a certain trademark.
Bodie
In a recent decision by the US Supreme Court, Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U. S. ____, (2023) clarified a contentious issue facing trademark owners and those who wish to parody them. The decision answers, in a way, whether parodies are given protection under the First Amendment or subject to the Lanham Act’s likelihood of confusion inquiry. The decision in Jack Daniel’s Properties, Inc. works to close some of the loopholes found in the TDRA. In Jack Daniel’s v. VIP Products, the Court held that when a defendant uses a trademark as a designation of source for its own goods or services, the Rogers test for trademark infringement claims challenging so-called expressive works does not apply. This means that the defendant cannot argue that its use of the trademark is protected by the First Amendment as a parody or other form of expressive speech. In layman’s terms, if a trademark is used as a trademark, even if it is a parody, it neither qualifies for First Amendment Protection nor will it be subject to the more forgiving Rogers test.
The Court’s decision does leave the Rogers test intact. However, it drastically limits when it can be employed. Now a defendant only qualifies for the Rogers test, when they have used a mark at issue in a non-source-identifying way. While the Court’s decision was unanimous, Justice Sotomayor’s concurring opinion further warns that there is a risk in giving too much weight to surveys when conducting a likelihood of confusion test. She explains that there is a risk involved with cleverly worded surveys around the idea of permissions, and that these cleverly worded surveys could be used to effectively silence mockery. Justice Sotomayor ends with the idea that there must be a careful balancing act between the idea of merchants being able to identify their goods and services and “the needs of society for free communication and discussion.” In addition, Justice Gorsuch advises lower courts to handle the Roger’s test with care and seems to believe that the Supreme Court has not seen the last of the Rogers test.
The Court’s decision will be a significant setback for trademark parodies. Under the TDRA, companies that looked to take advantage of a well established trademark in their parody will find it much more difficult to shrug off a claim of trademark infringement. The decision also means that defendants who use trademarks in parodies will now have to defend their use under the traditional likelihood of confusion test. This test is more difficult to satisfy, and it means that many parodies that would have been protected under the Rogers test will now be vulnerable to trademark infringement claims.
The Court’s decision is also likely to have a chilling effect on the creation of parodies. Parodies will often target larger companies or brands because their parody will reach a larger audience. Creators now may be less likely to use trademarks in their work, if they fear being sued for trademark infringement, especially if the company or brand they are targeting has deep pockets. Many large brands fear trademark dilution and do not like the idea of being made fun of, so it seems like this chilling effect on parodies is a very likely scenario. The Court’s decision could stifle creativity and free speech.
All is not lost, as there are a few exceptions to the Court’s decision. The Rogers test still applies when the trademark is used in a non-commercial context, such as in a political cartoon or a news article.
Overall, the Court’s decision is a setback for trademark parodies. Jack Daniel’s Properties, Inc. will make it more difficult to create and defend parodies that use trademarks. A stifling of parodies will stifle creativity and free speech. The Court’s decision also has the potential to increase the amount of infringement suits. If a trademark holder will no longer be thwarted by the Roger’s test, it stands to reason that trademark owners will be more successful and therefore more likely to bring suit.
The Court’s decision is a complex one with far-reaching implications. In a country that prides itself for granting citizens the ability to speak freely, Jack Daniel’s Properties, Inc., should raise questions and concerns with regards to free speech under the First Amendment. The long-lasting effects will be interesting to see as the decision is interpreted and applied in the years to come.