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Trademark satire is no joke to the City of Atlanta

Posted in Fair Use, Mixed Bag of Nuts, Social Media, Squirrelly Thoughts

Check out this City of Atlanta Facebook page.  The funny thing is that it’s not run by the City of Atlanta.  Although the posts are titled “City of Atlanta” and use the City’s official seal, the page consists of satirical humor composed by Ben Palmer, an Atlanta resident.  Although the first post was only a couple weeks ago, the page is quickly growing in popularity, with over 27,000 likes as of today.  For example, see the most recent post by the “City of Atlanta” about building another football stadium:

Atlanta Facebook Satire Photo1

Here are a couple other examples:

“We have invested 90 million dollars in a trolley system that will allow citizens to travel 10 whole blocks in a total of 3 hours.”

“Our homicide investigation unit has relocated to the inside of Kroger, next to the sample lady. Please be mindful of this as you do your grocery shopping.”

Two days ago, the actual City of Atlanta informed Ben Palmer that it did not find his page very funny.  More specifically, the City sent a demand letter to Mr. Palmer, informing him that the City had requested Facebook to remove any use of the City’s seal.  The City’s seal is a federally registered trademark (Reg. No. 3089604):

City of Atlanta Seal

The Facebook page uses a modified version of the seal, with the addition of a stylish top hat and a monocle:

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The City’s demand letter stated:

“The owner of the satirical City Facebook page was not authorized to use the City’s trademark. We are working with Facebook to remove the City Seal and any other information on the Facebook page that might confuse or mislead the public into believing that the page or its contents represent the positions, policies or practices of Atlanta City Government.”

Mr. Palmer responded with some more tongue-in-cheek satire on the Facebook page, referring to his commonly invoked criticism of the city trolley:

“If you make a satirical Facebook page mocking the city of Atlanta, you will be charged with a serious crime that is punishable up to 3-5 years in prison or be force[d] to ride the trolley.”

In the two days since the City’s demand letter, Mr. Palmer has continued to use the City’s seal.  If the City decides to file an infringement lawsuit, it will raise interesting questions regarding satirical or parodying uses of trademarks.

In some courts, trademark parody or satire is not a defense per se to trademark infringement, but rather something to consider in the likelihood-of-confusion analysis.  For example, one court held that a trademark parody of baseball cards did not infringe because the effect was “to amuse rather than confuse,” and no one would mistake the Major League Baseball Player’s Association (MLBPA) “as anything other than the targets,” not the origin, of the parody cards.  Cardtoons, L.C. v. Major League Baseball Players’ Ass’n, 95 F.3d 959, 967 (10th Cir. 1996). Another court has stated that “[t]he strength and recognizability of the mark may make it easier for the audience to realize that the use is a parody and a joke on the qualities embodied” in the trademark. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002).  See also, for example, MasterCard Int’l Inc. v. Nader 2000 Primary Comm., No. 00 Civ. 6068, 2004 WL 434404 (S.D.N.Y. Mar. 8, 2004) (concluding that Ralph Nader’s “priceless” political ads did not infringe MasterCard’s trademarks).

Other courts apply a parody/satire distinction similar to the fair use analysis in copyright cases (see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577–78 (1994)), under which courts may hold that parodies are less likely to infringe a trademark than satires.  Some commentators have criticized the creep of the Campbell copyright fair use test into trademark case law, stating that “reliance on Campbell to aid trademark infringement analysis tends to obscure the ultimate issue in any infringement case: the likelihood of confusion.”  Bruce P. Keller & Rebecca Tushnet, Even More Parodic than the Real Thing: Parody Lawsuits Revisited, 94 Trademark Rep. 979-1016 (2004).  Keller and Tushnet further explain:

“[T]he parody/satire divide is unhelpful in addressing the central question in trademark infringement cases: whether the defendant’s use is likely to cause confusion among a substantial number of consumers. If a joke is recognizable as a joke, consumers are unlikely to be confused, and whether the butt of the joke is society at large, or the trademark owner in particular, ought not to matter at all.”

Here, it appears that Mr. Palmer’s Facebook page could have elements of both parody (modifying the City’s seal by adding a top hot and a monocle) and satire (making humorous criticisms of the City through the posts), which could lead to an interesting analysis if a lawsuit arises.  Stay tuned to see how this situation develops.