Where
does First Amendment-protected parody end, and trademark dilution and/or
infringement begin?
That is the interesting
legal issue being discussed this week after Women's Wear Daily (WWD) published an article discussing
the recent increase in parodies of well-known fashion designers.
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.
