This is quite a collection of art pieces, inspired by some pretty recognizable candy bar brands:
The fine print reads: “Each handmade . . . sculpture is a real working whistle!” Parodies, anyone?
Here’s a question, does the functionality of these pieces make them any less expressive as art, any more likely to be confused, any more likely to dilute, any less First Amendment worthy?
A couple of weeks back, I captured this image from a t-shirt for sale in Starbucks’ backyard — at a shop in the Pike Place Market area of Seattle:
One of the things it brought to mind for me is the dozen year long trademark dilution case that Starbucks lost, over and over, a few years back, against a New Hampshire coffee roaster, who lawfully continues to sell its Charbucks coffee blend of beans.
It also brings to mind the difficulty of predicting the outcome of a trademark parody defense, especially since the case Tim wrote about earlier this year, highlighting Louis Vuitton’s inability to prevail in the recent My Other Bag case.
Last, at least for now, it also brings to mind the moving target of the legality of marijuana, at least at the state level, especially recognizing that Starbucks’ backyard happens to be a safe haven for doobie lovers.
Back in the day, associating the visual identity of a famous brand owner with an illegal product, was quite helpful in proving up tarnishment type damage, remember the Enjoy Cocaine posters?
Yet, with the ever-changing environment of what is legal and where, at what point will the tarnishment argument become tainted, especially with the apparent growth of First Amendment defense successes in trademark cases?
In the end, given the utter prevalence of Coca-Cola script inspired Enjoy Cocaine t-shirts available for sale online (a substance legal in no state), is the most logical explanation for a famous brand owner’s apparent tolerance best explained by the Wack-a-Mole pest and problem?
Earlier this month the Southern District of New York granted the defendant’s Motion for Summary in Louis Vuitton Malletier, S.A. v. My Other Bag , Inc. The fashion giant had brought suit against a California company over its sales of a canvas tote bag that included an image that “evoked” Louis Vuitton’s classic handbag design. An image of the Defendant’s products is shown below and you can read more about the Motion for Summary Judgment here.
Fresh off their victory, the Defendant My Other Bag (“MOB”) filed a Motion for Attorney’s fees just last week. MOB claims that the facts of the case render it an “exceptional” case under the Lanham Act and therefore request an award of $398,821.
In its Memorandum, MOB acknowledges that the Second Circuit normally requires a showing of “bad faith” before awarding attorney fees. However, the Supreme Court’s ruling in Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014) rejected this interpretation of the term “exceptional,” instead finding that an exceptional case is merely one that stands out from others due to the relative merits of the claims or the litigation conduct of the parties. Although the case involved a claim of patent infringement, much of the language in the Patent Act mirrors the language of the Lanham Act and, as a result, courts regularly rely on decisions interpreting provisions of one act to interpret the other. Indeed, the Third, Fourth, and Sixth Circuits (and numerous district courts) have all recognized the applicability of Octane Fitness to requests for attorney fees under the Lanham Act.
Does MOB have a winning claim? MOB won on summary judgment on all three claims. That’s helpful, but does not mean that Louis Vuitton’s claims were weak enough to justify an award of attorney fees. Moreover, defenses of fair use or parody are particularly difficult to evaluate as courts frequently reach different conclusions on similar facts. In fact, Louis Vuitton successfully sued Hyundai Motor Co. in the same district under arguably less favorable facts (as MOB points out in its motion, though, Hyundai Motors undermined its own case with some poorly worded testimony).
Predictably, MOB also throws out the “bully” label. This is by far the first time the label has been thrown at Louis Vuitton. MOB argues that Louis Vuitton has pursued numerous “weak” claims, including a law school symposium’s use of the LV design on a promotional poster, a “Chewy Vuitton” dog toy, a Danish artist who placed a photograph of a child refugee holding a Louis Vuitton bag on a t-shirt (and then the painting of that photograph), other art exhibits, and the appearance of a character named “Lewis Vuitton” in the movie The Hangover II. It certainly can’t help that Louis Vuitton appears to wear these tactics as a badge of honor, alleging in its own pleadings that it “actively and aggressively” enforces its trademark rights.
The chances of the court not adopting Octane Fitness are low, but the better question is whether the court considers the facts of the case to justify an award. It will also be interesting to see what consideration the court gives to Louis Vuitton’s perceived “bullying” tactics. When granting the Motion for Summary Judgment, the court did not seem particularly impressed with Louis Vuitton’s claims as it wondered whether the company “just cannot take a joke.” Maybe a $400,000 bill would be the perfect punchline.
Louis Vuitton is no stranger to trademark disputes. As a a manufacturer of handbags, wallets, and other luxury goods, the company has its hands full just addressing counterfeit products. However, like any other company, there is concern not just with “fakes,” but other products and services that may otherwise infringe or dilute Louis Vuitton’s trademark rights (anyone hungry for luxury waffles?). The company takes an admittedly “aggressive” approach to enforcement, sometimes resulting in criticism. For example, Louis Vuitton created controversy in the legal world with a cease and desist letter to a law school over a fashion law symposium flyer that riffed off of the LV handbag motif. While Louis Vuitton has won many legal battles, it has also lost a few, too. Last week, the Southern District of New York added another tally to the loss column, granting summary judgment to the defendant, My Other Bag, Inc. (“MOB”) (decision available here).
Louis Vuitton sued MOB in 2014. MOB created a line of canvas tote bags that sell in the range of $30 – $55. The founder of the company provides an origin story for the brand on its website:
One fine day in sunny Los Angeles, California a designer handbag junkie found herself walking out of a grocery store with an arm full of perishables and a burning question: “if I don’t want to stuff my produce in my Prada, where can I find a stylish, Eco-conscious reusable bag?” Underwhelmed with her options, she took it upon herself to create My Other Bag: a line of Eco-friendly, sustainable tote bags playfully parodying the designer bags we love, but practical enough for everyday life.
On one side of the canvas tote bag appears the phrase “My other bag…” and on the other side appears a cartoon of a luxury handbag (with some changes to the shapes, and replacement of the LV with MOB). The bag that formed the basis for this suit is shown below (and is still up for sale on MOB’s website):
Louis Vuitton sued MOB, alleging trademark infringement, trademark dilution, false designation of origin, and copyright infringement. MOB moved for summary judgment on all counts, claiming that MOB’s use of an image that invoked the Louis Vuitton design was a parody and therefore a fair use.
A claim of “parody” is not a defense in and of itself, but generally qualifies as a type of fair use for copyright infringement and for claims of dilution. Section 43(c)(3) of the Lanham Act also specifically identifies “fair use” to include uses that are “parodying, criticizing, or commenting upon [a] famous mark.” With regard to trademark infringement, while there isn’t a strict “parody as fair use” defense, courts generally rely on the “defense” as a means of concluding that consumers are not likely to be confused. Defendants and applicants frequently claim that their reference to a famous mark qualifies as a fair use, with mixed results (for example, here, here, and here).
One decision frequently cited by courts to evaluate a parody defense involves a familiar name , Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). In Haute Diggity Dog, the Fourth Circuit affirmed a finding that a pet toy manufacturer’s use of CHEWY VUITTON in connection pet chew toys constituted a parody that did not infringe Luis Vuitton’s trademark rights. That decision, and the court here, identified a parody as a work that (1) references the original/famous brand, (2) but makes clear that the work is not the original/famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement.
Here, the court had no trouble concluding that MOB’s bags constituted a parody. The tote clearly referenced the Louis Vuitton product through the similar design. However, MOB’s bag made clear that the bag was not a Louis Vuitton bag. As the judge noted, “the whole point is to play on the well-known “my other car . . .” joke by playfully suggesting that the carriers’ “other bag” – that is, not the bag that he or she is carrying – is a Louis Vuitton bag.”
Louis Vuitton argued that MOB’s bags do not criticize or disparage the Louis Vuitton brand and therefore cannot be a parody. Louis Vuitton relied upon an unpublished decision in which Louis Vuitton successfully defeated a parody claim asserted by Hyundai Motor for its use of a similar design motif on a basketball in a car commercial. In that case, Louis Vuitton elicited testimony from Hyundai Motor in which it admitted that Hyundai did not intend to criticize or make fun of Louis Vuitton. The court distinguished that case (and noted that it would have declined to follow the decision any way), concluding that even vague critiques or general commentary can be sufficient to establish a parody.
In the end, the court granted summary judgment to MOB on all of its claims. The successful parody defense defeated Louis Vuitton’s claims of copyright infringement and dilution. With regard to trademark infringement, the court concluded that the parties’ products targeted different customers, were not competitive, that the purchasers of Louis Vuitton bags were sophisticated, the channels of trade distinct, and that there was a lack of any actual confusion. In summarizing the factors, the court reasoned that the “purchasing public must be credited with at least a modicum of intelligence” and concluded that the joke was so “obvious” that there could be no mistake as to source or affiliation.
This decision demonstrates the subjective nature of evaluating parody and fair use defenses. Two courts in the same district with very similar facts reached completely opposite conclusions. At first glance, I would have expected a two second clip of a basketball with a similar design in a car commercial to have a stronger argument for a parody defense than a canvas tote bag displaying a similar design (that is actually being sold). Stay tuned for coverage of any appeal, but for now, it looks like the score is Louis Vuitton 1 : Parody 2.
A good general business practice is to apply to register trademarks early. You’ll find out if there is an issue. You’ll have time to change rather than having to take everything off the shelf under the threat of a lawsuit. Yet a recent decision from the Trademark Trial and Appeal Board in New York Yankees Partnership v. IET Products and Services, Inc. presents a good example of when you’re better off avoiding the application process all together. It also raises some interesting questions in light of the B&B Hardware ruling (doesn’t everything these days?)
At issue were two applications, a standard character mark for the phrase THE HOUSE THAT JUICE BUILT along with a design logo of a syringe wearing an Uncle Sam hat (shown below, left). Both applications identified apparel and baseball caps. The New York Yankees opposed, asserting claims of likelihood of confusion, false association, and dilution by blurring based upon prior rights in the phrase THE HOUSE THAT RUTH BUILT along with the logo of a baseball bat wearing an Uncle Sam hat (shown below, right).
In case you’re not up to date on your slang, “juice” is hip way to reference steroids. So when you hear that an athlete is “juicing,” it’s likely a reference to allegations or admissions that the athlete has used steroids (although there’s an outside chance they recently purchased a new blender). A discussion of the steroids problem in baseball could fill a number of pages (enough for a congressional report, perhaps). While the problem was rampant among players for all teams, some of the most well-known players during the steroid era played for the New York Yankees, including Roger Clemens, Andy Pettitte, Gary Sheffield, David Justice, Jose Canseco, Jason Giambi, and, most recently, Alex Rodriguez.
The applicant’s primary defense was that its marks were a parody of the Yankees logo and stadium nickname, and therefore were protected by Section 43(c)(3) of the Lanham Act, which provides that:
The following shall not be actionable as dilution by blurring . . . any fair use . . . of a famous mark by another person other than as a designation of source for the person’s own goods or services.”
The Board took this opportunity to clarify the case law regarding the use of the parody defense in Trademark Trial and Appeal Board proceedings. In the Board’s 2012 decision of Research in Motion Ltd. v. Defining Presence Marketing Group Inc., the Board had stated that it would “assess an alleged parody as part of the circumstances to be considered for determining whether the [opposer] has made out a claim for dilution by blurring.” In doing so, the Board relied upon the Fourth Circuit decision of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC.
The Board reasoned that because the Lanham Act’s fair use defense is limited to use “other than as a designation of source,” it would be “virtually impossible to conceive of a situation where a parody defense to a dilution claim can succeed in a case before the Board” (But you’re saying there’s a chance?). As a result, the Board rejected the defense and found the applied-for marks to be likely to dilute the Yankees’ marks.
The case was submitted on brief on June 12, 2014, well before the B&B Hardware decision. Yet the Board did not issue its decision until nearly a year later on May 8, 2015, approximately a month and a half after the Supreme Court issued the B&B Hardware ruling. In light of this timing, the B&B decision may not have played a role in the outcome of this decision.
However, it is worth noting that the Board declined to reach the Yankees’ likelihood of confusion claim, instead issuing a ruling on the claim of dilution by blurring. It is often the reverse, because the evidentiary standards involved in a claim of a likelihood of confusion claim are easier to meet than the standards for a dilution claim. This is particularly true with respect to the evidentiary showing required to establish fame for dilution. In light of B&B Hardware, will the Board be more likely to abstain from reaching likelihood of confusion claims in the future?
Also, the Board seemed to make a concerted effort to identify the facts and issues which it did not consider in reaching its decision. The result is that if the Yankees sue the applicant for trademark infringement, the applicant need not be concerned about a preclusive ruling from the Board regarding likelihood of confusion or the applicability of the parody defense to the claim of dilution.
It appears that the Board may be taking care to provide clear guidance on the issues that were (and weren’t) decided. While we’ve certainly been critical of the B&B decision on this blog, perhaps there is a silver lining after all.
This past weekend one of my sons said, “Dad, I have a good blog topic for you.” After he explained, it was clear, yes, son you do! So, he sent me the photo to the left. It is one that he recently snapped at a place that sells Halloween costumes.
As an aside, I love it when family members, friends, colleagues, our wonderful guest bloggers, and you dear readers, send potential blog ideas and topics! So, please keep them coming!
Anyway, my son’s photo reminded me of a similar t-shirt and I now remember seeing it worn by some folks during the Minnesota State Fair a few weeks ago. Since I captured no photos at the time, I had forgotten about it until now. As it turns out, you can buy the shirt I saw online.
The Etsy site where it is being sold describes the above shirt to the right this way:
“This t-shirt reads Zombies Eat Flesh and is shaped like a very famous sub logo. This decal measures approximately 11 x 13 inches and is great for all you zombie lovers!”
So, I’m left wondering why hasn’t Subway jumped on this zombie with both boots? After all, we don’t only have a famous mark targeted by this parody, but a very famous mark, thanks Etsy.
And, Subway ought to have some free time on its hands now that the FOOTLONG trademark debacle is behind it, unless it is still working on removing those millions of false TM notices.
Or, perhaps Subway just hasn’t gotten around to Etsy yet, as another online seller has indicated his Eat Fresh parody shirts are: “NO LONGER FOR SALE DUE TO THE MAN.”
I’m thinking that whoever created and is using the stylized ZOMBIES EAT FLESH trademark has zero chance of successfully registering it (no surprise, no application has been filed, to date), I just can’t see the USPTO allowing it, can you?
TTAB cases involving a discussion of parody — in the context of likelihood of confusion — include at least the following:
As if that isn’t enough, couldn’t you see this well-settled TTAB precedent being relied on by the USPTO during ex parte examination or by the TTAB during an inter partes proceeding?
But, if Subway were to actually bring a trademark infringement and/or trademark dilution action in federal district court, would that be a walk in the park with this zombie, or the cemetery?
I’m thinking that the federal district court takes a much closer look at the parody defense and pays more attention to First Amendment concerns. Do you agree that the zombie has a better than zero chance of successfully defending on parody grounds?
If so, doesn’t this example help make the point, again, about the difference between the right to use and the right to register? They aren’t necessarily coextensive rights are they?
Shouldn’t a federal district court who is asked to decide likelihood of confusion and likelihood of dilution — with injunctive relief, damages, and other monetary relief hanging in the balance (instead of just the right to register) — have the authority and obligation to consider these issues fresh, without having its hands tied by a earlier TTAB decision affirming a registration refusal or granting an opposition to register on likelihood of confusion grounds? There is simply more at the stake when the right to use is challenged and monetary relief is sought, it seems to me.
Moreover, I can’t believe that the TTAB wants the pressure of having its decisions also determine liability for trademark infringement and trademark dilution claims in the federal district courts.
So, let’s hope the U.S. Supreme Court gets it right and recognizes the difference between the right to register and the right to use, in the upcoming B & B Hardware case!
Please join me and the renown Bill Barber of the Pirkey Barber firm discuss these important issues at the Midwest IP Institute in Minneapolis on Thursday.
A sense of humor and a little lack of respect: that’s what you need to make a legend survive.
–Karl Lagerfeld on his “winning formula”
Sometimes there is a news story that neatly weaves a bunch of DuetsBlog posts together like a Bottega Veneta shoe fabric design. Sometimes that story comes from hard-hitting news authority TMZ, founded by attorney and former People’s Court analyst Harvey “I’m a lawyer” Levin.
Last week, fashion icon Karl Lagerfeld was sued by American athletic shoe company New Balance for copying its legendary athletic shoes, like the classic 574 model and the 620 model.
For those of you who follow me on Twitter, you may have seen me suggest last week that, absent other indicia demonstrating Lagerfeld as the source, the shoes could have been from athletic shoe rival K-Swiss.
Even back in the 1980s, New Balance implemented what I consider to be a smart and advisable two-pronged IP strategy for product design: applying for design patent protection and later seeking trademark protection through a non-traditional product configuration application where the design has become source indicative, often due to an innovative marketing strategy emphasizing design in developing brand recognition. New Balance was granted D258,772 for the classic design in 1981.
Although the design patent has since expired (design patents only have a term of 14 years), New Balance still has protection over the overall look and feel of its shoes because of its product configuration trademark registrations below, US Reg. Nos. 1,308,133 and 1,344,589.
Unfortunately for New Balance, the expiration of the patent prevents them from seeking damages based on patent infringement, and we have seen how lucrative that has been for design patent savvy companies like Apple. Even so, New Balance’s trademark complaint was interesting for a couple of reasons. The trademark infringement standard is a likelihood of confusion analysis, which considers a number of factors, including the similarity of the marks, the similarities of the goods, and the similarities of trade channels. First, despite seemingly being just a running shoe, the complaint includes evidence of coverage in high fashion magazines like Vogue. It also includes evidence of celebrities who have been seen wearing the New Balance shoes – suggesting that the shoe is not just for athletic purpose but also high fashion. Finally, it also discusses New Balance’s and Karl’s history of collaborations with other brands. The complaint mentions New Balance collaborated with J. Crew, which were featured in Vogue and GQ. It also mentions Kaiser Karl‘s propensity for design collaborations with companies such as Coca-Cola. He also has a history of designing for companies like H&M. These facts are used to suggest a likelihood of confusion between Lagerfeld’s sneaker and the New Balance shoe design and that it may have a dilutive effect in the marketplace.
While Lagerfeld hasn’t answered the complaint yet, one wonders if he will attempt to use a defense of parody for the shoe spoof. I’ve blogged on parody a couple times, with respect to Moschino and a growing trend of t-shirts spoofing luxury brands. But could Czar Karl seek a parody defense here? Likely not. Despite his formula for success including humor and a little lack of respect hinting at a propensity for indulging in parody, New Balance probably isn’t seeing any humor here. As we have discussed, a parody must do two contradictory things simultaneously: it must evoke the original and at the same time convey that it is not original by communicating some element of satire, joke or amusement. I like to think that I have a great sense of humor (well at least most of the DuetsBlog bloggers around will laugh at my admittedly poor jokes maybe just to be polite), I’m not seeing the humor here, unlike Moschino and some of the t-shirts mentioned in my prior blog posts. I imagine Pope Karl has an excellent dry sense of humor, which I enjoy, but I’m still not seeing it. Are you?
While the complaint only deals with the shoe designs described above, Lagerfeld is also selling the shoe below. Does it remind you of any other shoes?
And as long as we’re talking about icons like Karl, and I’m writing from Minneapolis near the cleansing waters of Lake Minnetonka, and I just watched the finals of the French Open, and I’m kind of hungry for pancakes…I’m going to leave this here for your Wednesday amusement. Pardon the French, but Prince is the $#!%.
Recently, a new Verizon commercial caught my eye. Perhaps you’ve seen it:
This immediately reminded me of a circa 1993 (has it really been that long?) De Beers commercial (seen here). Apparently, this is one of at least two Verizon commercials intended to "spoof" some of the classic, well-known commercials from our past. My immediate reaction, to these commercials was to start brainstorming all of the conceivable bases on which Verizon might be liable given the similarity of its commercials to clearly recognizable commercials from the past. Under the right factual circumstances, I could see all sorts of claims for unfair competition, trademark infringement, copyright infringement, misappropriation, etc. (not saying those facts exist here).
AdFreak, a blog which I just recently became aware, described these commercials as "parody." However, I seriously question whether these commercials would be able to successfully meet the legal requirements for a parody fair use defense. The fair use defense is a relatively difficult defense to establish, particularly where the "parody" is being used for commercial benefit.
Moreover, parodies are generally understood by the law to be a criticism of something represented by the underlying material, not merely a clever transformative use. Compare the above Verizon "spoof" to this, where the use is plainly intended to comment on De Beers alleged enabling of the "conflict diamond" trade. Or compare it to this "vicious" (WARNING: GRAPHIC AND DISTURBING CONTENT) parody of "overwrought De Beers jewelry commercials." Each of these uses is categorically different from Verizon’s use here. So, I hope Verizon had something else in its bag of tricks besides the "parody" argument before running these commercials.
Ultimately, the moral is that its important to always recognize the danger in "borrowing" someone else’s marketing concept or intellectual property, no matter how limited or transformative the use. Additionally, its important to recognize the fair use defense is not always the best shield to protect yourself, particularly if you’re involved in commercial advertising.
Couldn’t be more pleased and thankful to collaborate and share insights on the timely topic of Trademarks, Parody, and the First Amendment, with esteemed Professor of Law Christine Farley during our upcoming Strafford webinar on Tuesday July 25, 2023, at 1 PM ET, check out the details here, hope you can join us!
Last Friday, the Supreme Court decided it will hear the Brunetti case, and take a closer look at Section 2(a) of the Lanham Act, the portion forbidding federal registration of trademarks having matter that is scandalous or immoral.
So, it appears my big prediction for 2019 is pointing in the affirmative direction:
“In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.”
Now that the Court has decided to review Brunetti, it will be the one to decide whether the “scandalous” and “immoral” bars to registration violate the First Amendment, not the Court of Appeals for the Federal Circuit.
So, perhaps Chief Justice John Roberts was foreshadowing a review of Brunetti, when he was speaking in Minneapolis, and said: “Obviously, if any court finds an Act of Congress unconstitutional, we will take it . . . .”
To piggyback on what I wrote back in October:
“There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).”
“If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued ‘in the name of the United States of America‘ — won’t be some uninteresting and ignored ‘nuance’ of trademark law to the justices.”
You may recall, I previously said this about the Federal Circuit’s overreach in Brunetti:
“What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.”
“The CAFC did not decide whether the ‘scandalous and immoral’ clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.”
“The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.”
I’m thinking the Court will decide that the Federal Circuit went too far in Brunetti, and it will find a way to retain the “scandalous” bar to federal registration, though I’m doubting the “immoral” bar will survive, so stay tuned.
What are your predictions dear readers?