From book covers to domain names: searching for the true meaning of the Cliffs Notes temporal test for parody.

• Author: Landry, Brian R.

Cite as: 7 J. HIGH TECH. L. 19

Parody--the close imitation of the style of an author or work for comic effect or ridicule--has existed for centuries and continues to be a vibrant part of American culture. (1) Because parodies such as Darrell Hammond's imitation of the political talk show Hardball with Chris Matthews on Saturday Night Live may serve as valuable cultural commentary, parodies are given certain First Amendment protections from regulation under copyright and trademark law. (2)

This Note examines the requirements for establishing a parody under federal trademark law. In particular, it suggests that the Fourth Circuit decision in PETA v. Doughney (3) misinterpreted the Second Circuit's requirements for establishing a parody in Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc. (4) Through examination of both PETA and Cliffs Notes, this Note argues that especially where a court is applying a balancing test animated by free speech concerns (as the Second Circuit did in Cliffs Notes), a court should consider the consumer's reception and interpretation of the expression as a whole and in context of the medium of the expression. The Note argues that it makes little sense to subject defendants to an overly rigid definition of parody that does not account for a consumer's actual experience of the expression.

Parody is at least as old as Greek civilization (5) and has found expression through society's evolving technologies. (6) However, like never before, computers and the Internet have democratized expression, including parodic expression, by lowering the cost and expanding the reach of all forms of written and visual communication. (7) As a result, individuals with moderate skill and minimal assets have the ability to create powerful and effective social commentary. (8) The legal consequences of parody are complex. While parody--a form of social and political commentary--may annoy or anger its target, as a legal matter it may also infringe or otherwise harm protected trademark rights, even in light of significant First Amendment protection. (9)

1. Emergence of Modern Trademark Law

   Although the concept of trademark law is centuries old, the current incarnation of federal trademark law (the Trademark Act of 1946, commonly referred to as the Lanham Act) is now over 60 years old. (10) Trademarks are a breed of unfair competition law whose primary purpose is to prevent consumer confusion as to the origin of goods. (11) Essentially, trademarks function as "warranty of sameness," assuring consumers that they will receive a product of the quality received the last time they purchased a product bearing the same mark. (12) By preventing confusion as to the source, trademark law encourages businesses to produce quality goods and services because they stand a greater chance of reaping consumer good will. (13)

   A cause of action for trademark infringement is established by showing that use in commerce of a similar (or identical) mark will create a "likelihood of confusion" as to the source of either the goods or the mark in the minds of ordinary consumers. (14) Once this likelihood of confusion is established, the Lanham Act provides an expansive set of remedies including injunctive relief, (15) recovery of defendant's profits, (16) treble damages, (17) and in cases of intentional infringement, attorney fees. (18)

   Trademark law has grown in two major respects since the passage of the Lanham Act. (19) First, state and federal trademark dilution statutes prohibit use of another's famous trademark in a manner that would diminish the mark's ability to distinctly identify the source of goods. (20) Trademark dilution occurs through blurring and tarnishment. Blurring is caused by use of similar marks on noncompeting goods or services (e.g. Sony basketballs made by someone other than Sony) such that when a consumer hears or sees the mark (e.g. in conversation), they must ponder whose product the mark identifies. (21) Statutes preventing "dilution by blurring" protect the distinctiveness of the mark against non-competing and non-confusing uses of the mark by others. Tarnishment, another form of trademark dilution, may occur where a junior mark is associated with goods that do not reflect well on the owner of the senior mark (such as pornography). (22) Such use by the junior mark causes a negative consumer perception of the senior mark. (23) Anti-dilution statutes are critiqued as transforming trademark rights from intellectual or intangible property rights into rights akin to real property rights (or "rights in gross") by allowing owners to exclude anyone from using the mark because the statutes do not require a showing of consumer confusion or competition of goods. (24)

   The second major development in trademark law was the passage of the Anticybersquatting Consumer Protection Act of 1999 (ACPA). (25) The ACPA was designed to reach activities that may or may not be within the reach of the Lanham Act, namely the bad faith registration of domain names with the intent to profit. (26) The ACPA lists nine factors indicative of bad faith, including the intellectual property rights of others in the domain name and attempts by the defendant to sell the domain name for financial gain without actually having used the domain name. (27) These factors figure prominently into court decisions, but courts are not limited to these factors in assessing bad faith. (28) Remedies available under sections 34 (injunctive relief) and 35 (monetary damages) of the Lanham Act are available under the ACPA. (29) Additionally, the ACPA allows the plaintiff to elect to receive statutory damages between $1,000 and $100,000, as set by the court, per domain name registered, instead of actual damages and profits. (30)

   As with other lawsuits, the defendant in a trademark suit may have a number of legal avenues to pursue in resisting the suit. Beyond procedurals grounds such as venue and jurisdiction objections, the defendant may choose to attack the plaintiff's trademark by objecting to its registration or challenging its use in commerce which is a requirement for registration under section 1 of the Lanham Act. (31) The defendant may challenge the actual infringement claim by contesting the evidence of actual or likely confusion. (32) Depending on the circumstances of the infringement, the defendant may also claim that the work is a parody and is therefore either not infringing or, if it is infringing, protected by the First Amendment. (33)

   1. Parody

      A parody is a literary, musical or artistic "work in which the style of an author or work is closely imitated for comic effect or in ridicule." (34) Parody has a long cultural history including use by the most distinguished writers and artists. (35) Because the nature of parody requires the parodist to imitate the targeted work, parody may give rise to claims under copyright and/or trademark law, depending on the form of the expression itself. (36) Importantly, parodies are often not directed at the original work, but rather at a societal problem or another person or entity. (37) For example, in the case of Mutual of Omaha, Inc. v. Novak, the defendant-artist modified the "Mutual of Omaha" logo and put it on t-shirts to reading "Mutant of Omaha" claiming to comment on the nuclear arms race, not to criticize the insurance company. (38) Courts in trademark and copyright cases have vacillated on whether fair use protection extends to works (known as satires) which critique an object other than the original work. (39) Trademark parodies present two obvious "defenses" to a claim of trademark infringement. (40) The first defense is to challenge the likelihood of confusion, an element of trademark infringement. (41) The accused infringer may argue that although a consumer might believe for an instant that the offending product is affiliated with the target of the parody, the consumer will quickly realize that it is a parody. (42) Unfortunately, the value of the likelihood of confusion defense has been diminished in the area of parodies as a result of expanded trademark protections under anti-dilution statutes and the view that trademark protection extends "rights in gross" to trademark owners. (43)

      As a result, courts may find that although there exists no likelihood of confusion, the mark holder has still suffered reputational damage. (44) Because of the limited protection of the likelihood of confusion defense, a second defense has assumed an important role.

      The second "defense" available to a claim of trademark infringement is claiming that parody is a form of constitutionally protected speech. (45) Unfortunately, courts have been inconsistent in deciding whether parody deserves protection under the First Amendment. (46) In particular, courts have had two stumbling blocks. (47) First, some courts have held that private actions to enforce trademarks are not subject to First Amendment freedom of speech strictures. (48) Second, some courts have viewed trademarks "as a type of 'private property.'" (49) Under the second analysis, the exercise of trademark rights need not yield to the First Amendment where "adequate alternative avenues of communication exist." (50) For example, in the oft-cited Dallas Cowboys Cheerleaders case, the Second Circuit rejected the argument that the defendant's use of cheerleading costumes resembling the plaintiff's actual costumes in a pornographic film constituted a parody of the role of sexuality in sports because the defendant had other means by which to express this opinion. (51) Other courts have utilized a balancing approach that weighs the public interest in being free from confusion as to source of the good or service with the public interest in parody and free speech. (52) And still other courts have completely exempted noncommercial parody from liability under the Lanham Act. (53)

   2. Assessing the Likelihood of Confusion

      A more basic problem underlies courts'...