'Parody As Brand' (Stanford Public Law Working Paper No. 2170498) by Stacey Dogan and Mark Lemley
comments (and subsequently available
here) that
[US] Courts have struggled with the evaluation of parody under trademark law. While many trademark courts have protected parodies, there are a surprising number of cases that hold obvious parodies illegal. The problem is particularly severe with respect to parodies that are used to brand products, a growing category. The doctrinal tools that generally protect expressive parodies often don't apply to brand parodies. Our goal in this paper is to think about what circumstances (if any) should lead courts to find parody illegal. We conclude that, despite courts’ increasing attention to speech interests in recent years, the law’s treatment of parody reflects too much uncertainty, leaving would-be parodists vulnerable to threats of legal action by trademark holders. In particular, given the flexibility of likelihood of confusion analysis, parodists’ fate is usually determined by the subjective judgment of courts, whose treatment of parody often seems to turn on instinct rather than trademark principles. We suggest some doctrinal tools that offer greater predictability and quicker resolution of parody cases, while avoiding some of the shortcomings of more traditional infringement analysis. …
Parodies make fun of a thing by copying enough of it to make it recognizable while subverting the message of the original. Most people don’t like being made fun of. Some of those people turn to intellectual property (IP) law in an effort to suppress those parodies.
When IP owners use copyright law to suppress parodies, the courts have generally rejected those claims. The Supreme Court in Campbell v. Acuff-Rose Music, Inc. gave parody a fairly wide exemption under the fair use doctrine, at least where the parody didn’t substitute for the original work (as it almost never will). More recently, the Seventh Circuit held in a case involving a South Park episode that parody could defeat a copyright claim on a motion to dismiss, because the court needed only to compare the copyrighted work with the parody in order to resolve the fair use issue.
While copyright law gives broad rights of control over the creative work itself, trademark law protects consumers from confusion about the source of products. Given that, it might stand to reason that rejecting legal attacks on parodies is even more straightforward under trademark law; the interest of trademark law seems less connected to the suppression of parody than does copyright law.
Nonetheless, courts have struggled with the evaluation of parody under trademark law. While many trademark courts have protected parodies, there are a surprising number of cases that hold obvious parodies illegal. Our goal in this Article is to understand why, and to think about what circumstances (if any) should lead courts to find parody illegal. We conclude that, despite increasing attention to speech interests in recent years, the law’s treatment of parody reflects too much uncertainty, leaving would-be parodists vulnerable to threats of legal action by trademark holders. In particular, given the flexibility of likelihood of confusion analysis, parodists’ fate is usually determined by the subjective judgment of courts, whose treatment of parody often seems to turn on instinct rather than trademark principles. We suggest some doctrinal tools that offer greater predictability and quicker resolution of parody cases, while avoiding some of the shortcomings of more traditional infringement analysis.
