The Confusion Trap: Rethinking Parody in Trademark Law

• Publication year: 2021

THE CONFUSION TRAP: RETHINKING PARODY IN TRADEMARK LAW

David A. Simon(fn*)

Abstract: This Article suggests using existing doctrinal levers in trademark law to accommodate parodies in a more balanced fashion. To reach this conclusion, this Article examines the parody doctrine in U.S. trademark law using two lenses. The first lens is trademark doctrine itself. Here I explore the various approaches courts use to resolve trademark disputes involving parody. The other lens is copyright law. Through this lens I examine how courts deciding trademark parody disputes employ the Supreme Court's most recent decision on parody in copyright, Campbell v. Acuff-Rose Music, Inc. (1994). I also use this decision to examine the relationship between copyright and trademark parody claims. In other words, I ask the following question: how, if at all, are copyright and trademark claims related in parody cases?

Each perspective reveals something different. The first perspective shows that most courts resolve infringement claims by evaluating parody within some form of the likelihood of confusion test. It also shows that most courts assess dilution claims by analyzing parody as a form of noncommercial speech. The second perspective shows that copyright and trademark claims are related in a positive direction: if a parody case involves both copyright and trademark claims, courts always find for the defendant (no infringement) on both claims. Filtering the analysis through these two lens, I seek to sketch two revised parody tests-one for infringement and one for dilution. Both tests attempt to differentiate parody analyses from the traditional likelihood of confusion and dilution tests. These new approaches-which strengthen speech protections but do not create absolute defenses-account for the legitimate interests of both trademark owners and parodists.

INTRODUCTION .............................................................................. 1023

I. THE CURRENT PARODY DOCTRINE IN TRADEMARK

LAW ........................................................................................... 1029

A. Approaches to Trademark Infringement Actions

Involving Parody .............................................................. 1029

1. Parody Approaches in Infringement Cases Citing Campbell v. Acuff-Rose ............................................. 1030

a. The Infusion Approach ....................................... 1031

b. Parody as First Amendment Balancing ................ 1034

c. Confusion ............................................................. 1036

d. Parody as Nominative Fair Use ............................ 1037

e. Alternative Means Approach ............................... 1040

f. Parody as a Separate Factor or Digit .................... 1041

2. Other Approaches to Parody in Trademark Infringement Claims ................................................... 1042

a. Parody as a Per Se First Amendment Defense ..... 1043

b. Parodic URLs and Initial Interest Confusion ....... 1044

B. Approaches to Trademark Dilution Actions Involving

Parody ............................................................................... 1048

1. Noncommercial Use ................................................... 1050

2. No Harm (Tarnishment Only) .................................... 1052

3. Per Se Non-Diluting ................................................... 1053

4. No Confusion .............................................................. 1054

5. Infusion (Blurring Only) ............................................. 1055

6. Standard Dilution ........................................................ 1056

II. CAMPBELL AS A LENS: THE RELATIONSHIP BETWEEN PARODY CLAIMS IN COPYRIGHT AND TRADEMARK LAW ........................................................................................... 1057

A. Parody Cases Citing Campbell: Trademark Infringement

and Dilution Cases ............................................................ 1057

B. Campbell's Lessons for Trademark Law ......................... 1066

III. CHANGING THE PARODY DOCTRINE IN TRADEMARK INFRINGEMENT ACTIONS .................................................... 1077

A. A Presumption-Based Defense for Parody ....................... 1077

1. The Presumption-Infusion Approach ......................... 1078

2. Why Use This Presumption-Infusion Approach? ....... 1083

B. A Broad Noncommercial Defense for Parody in

Dilution Actions ............................................................... 1086

CONCLUSION .................................................................................. 1096

APPENDIX: METHODOLOGY: EXAMINING PARODY IN

RECENT CASES ....................................................................... 1099

A parody [of a trademark] 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.(fn1)

-The United States Court of Appeals for the Second Circuit

For the purposes of copyright law, the

nub of the definitions, and the heart of

any parodist's claim to quote from

existing material, is the use of some

elements of a prior author's composition

to create a new one that, at least in part,

comments on that author's works.(fn2)

-The Supreme Court of the United States

INTRODUCTION

This Article argues that the current parody doctrine in trademark law needs adjustment. Currently courts analyze parody claims, and often draw on copyright law to resolve trademark claims that involve parody. This has resulted in a distortion of trademark law when applied to parodies-in part because courts focus too much on an expanded notion of confusion, and in part because courts draw broadly, instead of narrowly, from copyright law's approach to parody. Nevertheless, the surgical procedure trademark law needs can be relatively painless. Some courts already use the tools to make the necessary nips and tucks.

Trademark law-indeed language itself-is responsible for at least part of the problem courts have confronted in the parody context. Comedian George Carlin recognized the force and confusion of language when he quipped, "I recently went to a new doctor and noticed he was located in something called the Professional Building. I felt better right away."(fn3) It is the underlying features of language that makes regulating trademark law difficult: words are powerful. They rouse emotions. They evoke memories. They move you.(fn4) With so much human potential, it is no wonder that people sue each other over them. "South Butt,"(fn5) "Mutant of Omaha,"(fn6) "Chewy Vuiton,"(fn7) "Richard Grasso"(fn8): Each one of these phrases incited a lawsuit(fn9) -and in each one of these lawsuits the defendant claimed the use of the word(s) was protected as a "parody." And so the nature of words and their meaning makes evaluating them difficult. Parodies are no exception.

The issue of what constitutes a parody in trademark law, and what legal effect that finding should have, has been confusing courts for decades. Before several recent attempts to tackle the issue of parody in trademark law,(fn10) the last comprehensive attempt to do so occurred in a law review article nearly twenty years ago.(fn11) Then, in 1994, there seemed to be hope for clarity: the United States Supreme Court decided Campbell v. Acuff-Rose Music, Inc.(fn12) There, the Court held that a parodic use of a copyrighted work could qualify as a noninfringing fair use.(fn13) Parody, the Court stated, was a form of comment or criticism that ridicules the original work by, for example, mimicking its style.(fn14) It can be distinguished from satire, which does not target the original work but instead uses it as a vehicle to express some other (perhaps critical) message.(fn15) The Court reasoned that parody had a greater claim to fair use than satire.(fn16) Parodists require the original works to make their comment or criticism. Satirists, on the other hand, have a weaker claim because they are not commenting or criticizing directly the work they use. Immediately, lower courts and commentators sought to apply and criticize the Campbell decision both in copyright and trademark contexts.(fn17)

In a previous article, I explained how lower courts have applied Campbell's general holding-a parody is a use of the original work to ridicule, criticize, or comment on it-in the copyright context.(fn18) What I left out, however, was a discussion of parody in trademark law. This omission was intentional: Campbell was a decision about copyright law, and its implications for trademark law are uncertain.

This Article explores the gap left in my previous article, using Campbell as a guide to examine the parody doctrine in trademark. It argues that Campbell provides a few insights into parody that trademark law should consider incorporating. At the same time, the decision illustrates some pertinent differences between copyright and trademark that suggest trademark law might need to clarify and expand its current approach to parody. By collecting and analyzing all trademark cases that cite Campbell, this Article presents evidence that courts treat trademark and copyright parody claims similarly. It then questions whether this is a wise legal choice. In the process, this Article argues the existing dichotomy between likelihood of confusion and trademark...