THE IMAGINARY TRADEMARK PARODY CRISIS (AND THE REAL ONE)
William McGeveran(fn*)
Abstract: In the two decades since the Supreme Court protected a crude rap spoof from copyright liability in Campbell v. Acuff-Rose Music, Inc., courts have grown to understand the great value of parodic expression in trademark cases as well. Today, plausible claims of parody almost always prevail over trademark rights in judicial rulings. This Article demonstrates that it is simply wrong to suggest, as commentators often do, that we face a crisis in the results of trademark parody cases. That distortion is harmful because it distracts reform efforts and it lends credence to overbroad assertions of trademarks against parody and other speech. Demand letters and other pre-litigation maneuvering by markholders exemplify the real crisis in the law of trademark parody. Reform should concentrate on making excessive threats against speech less effective. I argue that fast-lane defensive doctrines that reduce the burden of litigating parody cases, such as safe harbors and a broad artistic relevance test, are more important than perfecting substantive parody doctrine. Meanwhile, we should shout the truth from the rooftops: Markholders who sue legitimate parodies lose. Their threats are empty.
INTRODUCTION ................................................................................ 714
I. THE LESSONS OF CAMPBELL .................................................. 716
A. Parody Is Valuable ............................................................... 717
B. Parody Is Tricky ................................................................... 719
C. Parody Doctrine Should Serve the Purpose of IP ................. 724
II. JUDGES GETTING IT RIGHT .................................................... 728
A. Parody Cases Are Rare and Losses Are Rarer ..................... 728
B. There Is No Consistent Reason for the Losses ..................... 733
III. MARKHOLDERS GETTING IT WRONG .................................. 739
IV. RESPONSES TO THE REAL TRADEMARK PARODY CRISIS ........................................................................................... 745
CONCLUSION .................................................................................... 753
INTRODUCTION
We live in a golden age of modern pop parody. Two decades after the Supreme Court found a crude rap spoof worthy of consideration as fair use in Campbell v. Acuff-Rose Music, Inc.,(fn1) this type of humor is now central to the American conversation.(fn2) Earlier this year, both the fortieth anniversary of Saturday Night Live and the announcement that Jon Stewart was leaving the Daily Show became cultural milestones worthy of front-page news stories and endless retrospective analysis.(fn3) Every news event is met with a parodic Twitter account, often within minutes.(fn4) A quick Google Image search illustrates how the combination of Photoshop and the web gives any smart aleck the ability to alter brand logos and publish the resulting takeoff to make a statement, or just a silly joke. In our consumer culture, ubiquitous and universally recognizable brands are among the juiciest targets for parody.(fn5)
Meanwhile, this spread of parody coincides with the huge expansion of trademark law to confer much broader rights.(fn6) Today, in contrast to earlier doctrine, "almost anything at all that is capable of carrying meaning" can be a trademark(fn7)-including packaging, product configurations, colors, sounds, and the "look and feel" of a product.(fn8) Simultaneously, liability can now arise not only when consumers are confused about the source of products but also when they misunderstand a range of vaguer relationships including "affiliation" and "approval,"(fn9) or even when the use "tarnishes" the trademark under dilution law.(fn10)
One might therefore expect a flood of judicial opinions drowning parody in the wake of these broad rights, but it hasn't happened. Simply put, true trademark parodies now almost always win in court. When parody-based defenses do fail, those decisions might be justified. Moreover, parody's victory rate has increased over time. In the first years after the Campbell decision declared the importance of parody in 1994, courts became somewhat more solicitous toward parodies but occasionally still found them liable for trademark infringement. By the time we started putting a "2" in front of the year, it became increasingly difficult to identify such losses. In the last decade, defeats for trademark parodies have become blue-moon rarities.(fn11)
Despite these pro-parody outcomes in formal law, however, the situation on the ground is another matter. While there are few litigated cases, markholders routinely send cease-and-desist letters demanding the eradication of parodies aimed at their trademarks. Many parodists comply. Even though the letters often cite dated cases that no longer reflect current judicial views, they remain effective for reasons distinct from their legal merits. Even though parody wins in court, the route to get there is long and convoluted. Parodists are not necessarily aware of the favorable trends in the law. They do not have much leverage in pre-litigation negotiations with markholders, and often they have less investment in their position as well. In these circumstances they choose to avoid significant costs of time and money they would incur even if they won a lawsuit.(fn12)
Commentators have been slow to adjust. They continue to mischaracterize legal doctrine as bad for parody and focus their energies on perfecting judicial accuracy. This is the wrong approach. It tries to fix a problem that is both highly complex and comparatively tiny, while distorting public understanding about the actual state of the law. The resulting narrative of supposedly flawed parody doctrine supports unmeritorious demand letters. It thus exacerbates the more serious problem of pre-litigation threats.
This Article seeks to reorient the discussion. Part I draws on lessons from the copyright decision in Campbell that are relevant to trademark law. Part II demonstrates the marked increase in judicial protection for parodies in trademark law since Campbell. Part III shows how sustaining the myth of bad outcomes for trademark parody in court encourages markholders to overstate their rights, undermines parodists in their responses, and distracts reformers from the real problem. Finally, Part IV proposes better responses to the high costs of adjudication that can make cease-and-desist demands effective. While Campbell shows how parody cases are usually difficult cases, certain broad reforms aimed at expressive uses more generally could reduce costs while continuing the favorable substantive treatment of parody we have seen since Campbell.
I. THE LESSONS OF CAMPBELL
Campbell concerned a parody "cover" of Roy Orbison's classic song "Oh, Pretty Woman" by the rap group 2 Live Crew. The opening melody of the parody generally imitated the original, but its growling rap style was different from Orbison's famous falsetto and the lyrics quickly departed from Orbison's as well, for example by referring to a "big hairy woman" and a "two timin' woman."(fn13) After the parody sold nearly a quarter of a million copies, the music publisher that owned the copyright to Orbison's song sued 2 Live Crew and its record label for copyright infringement.(fn14) Since copying was indisputable, the only real issue in the case was whether the parody was entitled to a fair use defense.(fn15) The United States Court of Appeals for the Sixth Circuit had ruled that 2 Live Crew's commercial exploitation of the parody and copying of the "heart" of the original foreclosed fair use.(fn16) The United States Supreme Court reversed, finding that parody fit neatly within the fair use defense's purpose: preserving the ability of later expression to build on earlier work protected by intellectual property.(fn17) In doing so, this copyright case offered indirect guidance for parody cases under trademark law.
This Part highlights three lessons from Campbell that have particular importance for treatment of parody in trademark law. First, and most simply, Campbell acknowledges the societal value of even the silliest or most lowbrow parody as a protected form of speech. Second, Campbell shows how certain features of parody, particularly its inherent need to imitate, make these cases exceptionally tricky. Finally, Campbell advances a subtle argument about the relationship of defensive doctrines to the core purposes of an intellectual property regime-with somewhat different implications in trademark law than in copyright.
A. Parody Is Valuable
First, Campbell tells us that parody is valuable discourse. Over the last twenty years, as parody and related humorous forms of commentary increasingly moved to center stage in American culture,(fn18) courts have become much more receptive to arguments that parody deserves special protection. Before Campbell, this position was not obvious. The Sixth Circuit's copyright decision in Campbell itself was dismissive of 2 Live Crew's parody and indulged strong presumptions of liability.(fn19) In trademark, there had been important lower-court opinions like L.L. Bean, Inc. v. Drake Publishers, Inc.(fn20) that praised even a pornographic parody of a wholesome Maine-based clothing retailer as a contribution...
