Reconsidering Parodies in the Eighth Circuit

Author:Judy K. He
Pages:317-351
SUMMARY

This Note examines the Eighth Circuit's trademark jurisprudence on parodies. For decades, legal scholars have been unable to reconcile conflicting interests between trademark and constitutional law. While trademark owners have an interest in protecting their marks from unauthorized third-party uses, the parodist also has an interest in his choice of speech and expression. Circuits have wrestled... (see full summary)

 
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317
Reconsidering Parodies in the Eighth
Circuit
Judy K. He*
ABSTRACT: This Note examines the Eighth Circuit’s trademark
jurisprudence on parodies. For decades, legal scholars have been unable to
reconcile conflicting interests between trademark and constitutional law.
While trademark owners have an interest in protecting their marks from
unauthorized third-party uses, the parodist also has an interest in his choice
of speech and expression. Circuits have wrestled with this conflict differently,
but the Eighth Circuit Court of Appeals has been particularly hostile to
parodies, and, unlike the other circuits, has rarely agreed with a parodist’s
First Amendment arguments. In effect, the Eighth Circuit’s divergent
approach to trademark parodies increases judicial inconsistency and lowers
judicial efficiency. Moreover, the Eighth Circuit’s anti-parodist attitude poses
a severe threat to free expression and commerce. To resolve these problems, this
Note proposes that the Eighth Circuit reforms its current approach to better
account for a parodist’s right to free speech.
I. INTRODUCTION ............................................................................. 318
II. THE DEVELOPMENT OF PARODIES IN THE U.S. LEGAL SYSTEM ..... 320
A. THE ROLE OF TRADEMARK PARODIES DURING THE 20TH
CENTURY ................................................................................ 320
1. The Parody Defense in Trademark Law ...................... 321
2. Parodies and First Amendment Considerations ......... 324
B. THE MODERN DILEMMA INHERENT IN THE TRADEMARK
PARODY .................................................................................. 325
1. How Other Circuits Interpret Trademark Parodies ... 326
2. The Eighth Circuit’s Hostile Approach Towards
Parodies .......................................................................... 328
* J.D. Candidate, The University of Iowa College of Law, 2017; B.A., B.B.A., The
University of Iowa, 2014. Thank you to all of the editors and writers of Volumes 101 and 102 of
the Iowa Law Review for their work on this Note. I would also like to dedicate this Note to my
loving family and friends who have always inspired and encouraged me to pursue my dreams.
318 IOWA LAW REVIEW [Vol. 102:317
III. PROBLEMS WITH THE EIGHTH CIRCUITS APPROACH TO
PARODIES ...................................................................................... 330
A. INHERENT FLAWS IN THE EIGHTH CIRCUITS APPROACH ........... 330
1. Anchoring Bias and Its Effects on Confusion ............. 330
2. Dangerous Reliance on Surveys ................................... 332
3. Alternative Avenues? An Improper Test for Free
Speech ............................................................................ 334
B. INCREASED JUDICIAL INCONSISTENCY AND LOWER JUDICIAL
EFFICIENCY ............................................................................. 337
1. Inconsistency ................................................................. 337
2. Inefficiency .................................................................... 340
C. ADVERSE COMMERCIAL EFFECTS ............................................... 341
IV. RECONSIDERING PARODIES IN THE EIGHTH CIRCUIT ................... 342
A. USING THE “BALANCING TEST ................................................ 342
B. REWEIGHING THE FACTORS IN THE “LIKELIHOOD OF CONFUSION
ANALYSIS ................................................................................ 343
V. CONCLUSION ................................................................................ 345
Appendix A: Examples of Parodies ........................................... 346
I. INTRODUCTION
Modern critics often use parodies to convey messages.1 By definition, a
parody is simply “an imitation, [or] a unique take, of an original work for the
purpose of comedy.”2 But depending on its context, a parody may have
different legal meanings.3 For instance, in trademark law, a successful parody
1. See, e.g., Comedian Hari Kondabolu Finds Humor and Substance in Talking About Race, PBS
NEWSHOUR (July 30, 2014, 6:45 PM), http://www.pbs.org/newshour/bb/comedian-hari-
kondabolu-finds-humor-substance-talking-race (discussing the experiences of “an increasingly
successful comedian who talks about race and ethnicity”); Justin Korda, Satire Can Be a Powerful
Message For Nonprofits, CHRON. PHILANTHROPY (Jan. 8, 2015), https://philanthropy.com/article/
Satire-Can-Be-a-Powerful/152001 (finding “that comedy can be a powerful tool in conveying a
message, be it social, environmental, political or otherwise”); Lori E. Switaj, Humor Used to Convey
Cyberbullying Message to Students, Parents, PATCH (Feb. 4, 2013, 5:19 PM), http://patch.com/ohio/
avon-oh/humor-used-to-convey-cyberbullying-message-to-students-parents (describing how schools
inform students about “the effects of cyberbullying through a popular educational theatre speaker”).
For more illustrative, concrete examples of modern trademark parodies, see Appendix A.
2. As noted by social critic Dwight MacDonald, a “[p]arody [involves] making a new wine
that tastes like the old but has a slightly lethal effect.” Law Offices of R. Sebastian Gibson, Satire
and Parody, Publishing Law in California and England, HG.ORG, http://www.hg.org/article.
asp?id=34155 (last visited Sept. 13, 2016).
3. See id. (noting how parodies “provide commentary in a way that is meant to be
humorous but, depending on one’s viewpoint, the protected opinions contain ed therein may
contain grains of truth in the writer’s depiction as well”).
2016] RECONSIDERING PARODIES 319
must imitate a substantial portion of the original mark to complete two tasks
simultaneously: (1) create audience recognition and (2) inform the audience
that the work is only an imitation.4 From a First Amendment standpoint,
however, a parody is simply a creative form of expression that—at least in
theory—is protected by the parodist’s right to free speech.5
Due to these different legal meanings, an inherent dilemma is present in
the modern trademark parody. Because an effective parody copies the
trademark’s most distinctive elements,6 it is also likely—and, perhaps,
inevitable—that it will cause mark owners to suffer reputational and financial
losses.7 After facing these losses, mark owners would undoubtedly sue the
parodist for trademark infringement, trademark dilution, or even both.8 In
response to these accusations, a parodist can raise parody as a defense and
argue that his work is protected under the First Amendment’s free speech
clause. These competing interests between the mark owner and the parodist,
along with the lack of a uniform legal standard to test for infringement, form
the modern dilemma inherent in the trademark parody.9
The Eighth Circuit’s decisions demonstrate how this dilemma hinders a
parodist’s First Amendment arguments during litigation. Although the
parodist is allowed to raise parody as a defense, the Eighth Circuit has
particularly been reluctant to grant these claims because of its strict test for
trademark infringement.10 While other circuits apply more flexible models to
determine whether this defense applies,11 the Eighth Circuit has adhered
strictly to the “confusion, then balancing” test. Under this test, courts must
4. See infra notes 51–52 and accompanying text.
5. Parodies often arise in multiple contexts. For illustrative purposes, some areas that are
affected by modern parodies include: (1) sports; (2) cookbooks; and (3) politics. See Michael
Wayne Bratton, WATCH: Georgia Fans Mocked in Parody Video, FOX SPORTS (Oct. 7, 2015, 4:01 PM),
http://www.foxsports.com/college-football/story/georgia-bulldogs-fans-mocked-parody-video-
100715; Obama Sings MC Hammer’s ‘U Didn’t Build That’ (VIDEO ), HUFFINGTON POST (Sept. 17,
2012, 10:53 AM), http://www.huffingtonpost.com/2012/09/17/obama-sings-mc-hammer-u-
didnt-build-that-video_n_1890072.html; Rachel Tepper, ‘50 Shades Of Chicken’ Parodies Erotic
Novel ‘50 Shades Of Grey’, HUFFINGTON POST (Sept. 19, 2012, 4:57 PM), http://www.huffington
post.com/2012/09/19/50-shades-of-chicken_n_1898162.html.
6. For more illustrative, concrete examples of trademark parodies, see infra Appendix A.
7. See supra notes 2–3 and accompanying text. Although parodies may confuse an
audience, this Note argues that the primary intent of a true parodist is to use the parody to
communicate a message rather than engage in unfair competition with the original mark owner.
Because a parodist often does not intend to engage in unfair competition, the Eighth Cir cuit
should reform its test to better account for a parodist’s First Amendment rights. See infra Part IV.
8. This Note also recognizes that sometimes trademark owners may sue parodists even
though they have suffered little to no direct losses. For the purposes of this analysis, however, it
is assumed that mark owners who file for infringement have an interest in the value of their marks
because they have suffered some form of loss as a result of the parody.
9. See infra Part II.B.
10. See infra Part II.B.2.
11. See infra Part II.B.1.

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