Friday, August 30, 2013

Fashionable Parodies: Where Does Free Speech End and Dilution Begin?


Where does First Amendment-protected parody end, and trademark dilution and/or infringement begin?


As was mentioned in the WWD article, and has been commented on in fashion blogs such as Stylecaster and Refinery29, I explained that there are two separate legal theories at play here, functioning against the backdrop of the Constitution's guarantee of freedom of speech.

I also explained that these cases are highly fact specific and often depend on both the particular sensibilities of the brand involved, and the message being conveyed.

Likelihood of Confusion:  The first legal test is fairly straightforward, that is, would the ordinarily prudent consumer, when confronted with the accused item, likely believe that it originated from, was sponsored or endorsed by, someone else?  For example, would a prospective consumer confronted with one of Brian Lichtenberg's "FELINE" t-shirts (depicted left), believe that fashion brand Celine was behind it?

Dilution:  The second legal question is, assuming purely for argument's sake that there was NOT a serious likelihood of consumer confusion, is there still a likelihood that a famous brand will be diluted, either through tarnishment or through "blurring" of its ability to continue to function as a trademark?

In other words, the law holds that a famous brand can be diluted, even in the absence of any consumer confusion, if the famous brand is called to mind and tarnished.

An example of a case where federal courts found that harm to the famous Coca Cola brand was indeed likely from tarnishment include the famous "ENJOY COCAINE" poster.  

In that 1972 case which was decided decades before the Federal Anti-Dilution statute was passed by Congress, a New York court held that "to associate such a noxious substance as cocaine with plaintiff's wholesome beverage as symbolized by its "Coca-Cola" trademark and format would clearly have a tendency to impugn that product and injure plaintiff's business reputation, as plaintiff contends."

This holding has long suggested that a key part of the inquiry should focus on whether there is a salacious quality to the parody that injures the brand.

The First Amendment:  However, there is a third critical issue which is the First Amendment guarantees freedom of speech. Courts have long held that commercial activities do not fall within the "core" of political speech that the Founding Fathers intended. Consequently, commercial conduct can be more regulated than purely political speech.


Because the sale of a t-shirt with a parody logo emblazoned on it could function as a form of "speech," the first question looks to what exactly is being communicated by the intent of the parody, and is that message being effectively communicated?


In the case of Brian Lichtenberg's "FELINE" shirts, the shirt clearly is designed to call Celine's brand to mind, but it isn't really clear what the message is.  Merely "mocking" an established brand is not necessarily sufficiently political an act to warrant free speech protection.  Otherwise, the "ENJOY COCAINE" t-shirt would have been protected, and it wasn't.
Not all courts have found that a protected parody requires a clear political "message."

In a 2007 case, Louis Vuitton lost an attempt to stop a small company from selling "CHEWY VUITON" dog toys.  

The Fourth Circuit Court of Appeals in Virginia affirmed the dismissal of that case, holding that:  "[a] parody must convey two simultaneous -- and contradictory -- messages:  that it is the original, but also that it is not the original and is instead a parody.  This second message must not only differentiate the alleged parody from the original but also must communicate some articulable element of satire, ridicule, joking or amusement."  (emphasis added).

The Chewy Vuiton dog toy was not shown to be causing any form of consumer confusion, but was clearly designed to call Louis Vuitton's famous trademark to mind, and mock it.  There was no clear political message, but the absurdity of the item itself functioned as a mockery of the high end luxury brand.

Further, in part because a chewy dog toy is not a salacious item, there was really no "tarnishment" of the brand.  Ultimately, the parody was obvious to the observer, leaving Louis Vuitton without any form of legal remedy.  Indeed, the Chewy Vuiton dog toys are still available for sale on Amazon, and Louis Vuitton seems to have survived.

More troubling for Lichtenberg, however, might be his t-shirt mocking Cartier with "CANNABIS."  (seen left)

Cartier would seem to have a valid claim of dilution, as per the 1972 ENJOY COCAINE decision.

The key legal questions are fact specific: Will the particular parody cause confusion? If not, will it dilute the brand through tarnishment or blur the trademark's ability to function? And finally, will the public's right to freedom of speech trump the brand owner's perceived offense?

So, in conclusion, clever parodies of famous designers are certainly not new, and courts have long struggled with balancing the public's right in free expression, with the brand owner's right to protect its image.







Thursday, August 29, 2013

T-Mobile Sues AT&T Subsidiary Over Use of the Color Magenta


In a recently-filed federal lawsuit against AT&T subsidiary Aio Wireless, telecommunications giant T-Mobile alleges that Aio Wireless deliberately chose the color magenta to advertise, promote and market a competing product, and in doing so, violated the trademark laws and committed unfair competition.

“With full knowledge of T-Mobile’s use of magenta, AT&T’s subsidiary chose — out of all the colors in the spectrum — magenta to advertise, market and promote its wireless services in direct competition with T-Mobile,” the complaint alleges.

“Aio does not use the orange coverage map of its parent company, but instead uses in its stores and on its website a magenta coverage map that is strikingly similar in color to the one used by T-Mobile."


However, what exactly is the "magenta" shade that T-Mobile uses, and does T-Mobile really own it as a trademark?
T-Mobile has undoubtedly been aggressive protecting magenta as a key part of its brand.  


In the more recent fight with Aio, T-Mobile's court filings reference a number of trademark registrations issued to its parent Deutsche Telekom AG for the color magenta alone, "which is the approximate equivalent of pantone matching system rhodamine red u, used on the background of product displays and advertisements found in a store."

However, the Washington Post notes that this trademark translates to hex #c63678 in the pantone color coding system.  The Post's reporters also noted that Aio's version of "magenta" maps to #960051.  In other words, not all magentas are the same, and it will be up to the District Court to sort out if there is a viable claim of infringement here.


But can T-Mobile really lay legal claim to a color to begin with?


The answer is absolutely, as a matter of established U.S. trademark law.  Colors can function as powerful indicators of source, when they are not serving a functional purpose.  A unanimous U.S. Supreme Court definitively pronounced on the subject in 1995, finding that colors could acquire distinctiveness over time, and serve the purpose of a trademark.  As we have also discussed, however, how this regime applies to individual cases is tricky.

Wednesday, August 28, 2013

"Cronut" Craze Inspires Trademark Filing Frenzy

Specimen of Use Submitted By Ansel to the Trademark Office

Greenwich Village New York pastry Chef Dominique Ansel, of the Dominique Ansel Bakery, claims to have launched the "CRONUT" -- a delectable pastry that is half-croissant, half-donut, in May 2013.  The line that forms outside the bakery each morning for the Cronut is reportedly 2 1/2 hours long.  Fans claim that the Cronut will "change your life."

Consequently, Ansel has filed for a federal trademark registration on the term as used in connection with baked goods. Wikipedia acknowledges Ansel as the creator of the pastry, and attributes the term to him, despite acknowledging the proliferation of imitators.  

Indeed, only weeks later, a Massachusetts individual named Stephen Foung filed an Intent-to-Use application with the Trademark Office for "THE CRONUT HOLE" as it would be used in connection with retail bakery shops.  Not long after that, a Texas establishment emerged, claiming that it intends to use the term "CRONUTS" in connection with baked goods and downloadable recipes. Bakery publications have dubbed the situation a "Cronut trademark scramble."

But Rosario Auddino of Auddino Bakeries, writes on that Ohio pastry shop's website:

The cronut !!!! WHAT ???? The DOUGHSSANT has been in Columbus/Hilliard Ohio for going on 20 years now.. 
Roy created this one night when he was covering a shift for an employee...New York can eat there hearts out ....The cronut has nothing on the...The DOUGHSSANT... 

Auddino similarly filed for a federal trademark on DOUGHSSANT in May, claiming a first use in commerce in 1994.

No word yet from the USPTO on who owns the trademark CRONUT, nor from critics on who makes the best pastry, but we will accept free samples and render a verdict on the latter.