Questions: How can the First Amendment protect one's use of registered trademarks in parody? What role does the commercial or noncommercial aspect of the parody play in deciding these cases, and what other factors are looked at? How is this issue complicated with the introduction of the Internet, and to what extent should parody be protected in this medium?

Introduction:

Parody has played a vital role throughout history in providing humorous commentary on various topics. Although parody is protected as free speech under the First Amendment, its use of registered trademarks in criticism has frequently come into conflict with federal and state trademark laws. Trademarks have been used in parodies to ridicule or comically exaggerate a product, service or company. Without the use of the exact trademark, or a close distortion of it, it is assumed that one would not recognize the target of the criticism. Thus, the intent of the parody would not be realized.

Companies use trademarks to distinguish their products and services from those manufactured by others. Trademarks provide consumers with the ability to recognize distinct products and services and develop expectations about the quality associated with a name. "In competitive markets, customers are able to differentiate between various products because of identifiable trademarks and continue to purchase those brands they recognize and enjoy."[1] Trademarks are protected under state statutes and the Lanham Act, a federal statute acted by Congress on July 5, 1946.[2]

Trademark protection is justified in that it protects consumers from being misled and gives owners an incentive to create products of high quality.[3] In addition to trademark infringement, which occurs when one party uses the trademark of another in the identification of competing goods, owners are also concerned with trademark dilution. This involves the lessening of the quality of a trademark by the use of it on an unrelated, noncompetitive product.[4] The courts have explored the balance between encouraging free expression and preventing trademark infringement or dilution with regard to parodies. Often, the determining factor is whether or not the expression is commercial in nature, because commercial speech does not enjoy the same level of First Amendment protection as noncommercial speech.

With the growth of the Internet, the ability to reach large audiences and express views about various issues has become much easier for the common person. Parodies abound on the Internet, as they do in other media, and the regulation of them with regard to trademark law is a timely issue. The distinction between commercial and non-commercial speech has not been clearly established with regard to the Internet; therefore, it is difficult to determine the level of First Amendment protection that should apply to Internet parodies.

The conflict between protecting the parodists’ right to criticize and the trademark owners’ right to control the use of their marks has been discussed in the courts to the result of varying conclusions. As Internet parodies have become more popular and the line between commercial and noncommercial speech has been blurred, the courts have continued to grapple with the issue.

Background

Parody

A parody can be a humorous way to voice a complaint about something or mock it in some way. Parody can be defined as an expression in which the style of a work is imitated for a humorous effect or to make a critical statement. Parodies should convey two simultaneous messages: that the expression is the work being criticized and that it is not, but rather a parody of the original work.[5] This method of humor can be seen in magazines, on television and in movies. Political cartoons in newspapers often employ parody or similar types of humor as well, and this speech is highly protected by the First Amendment. “Parodists have varying motivations for their artistic work; some hope to entertain, while others engage in social commentary, and…others may have duplicitous commercial aspirations.”[6] The courts must decide when the use of a trademark within a parody constitutes free expression and when trademark law overrides this freedom.

The First Amendment

The First Amendment to the U.S. Constitution states, “Congress shall make no law…abridging the freedom of speech.”[7] Historically, commercial speech has received some First Amendment protection, but it has received less protection than has other types of speech. This is deemed necessary because commercial speech is considered more durable than other kinds of speech and less likely to be chilled by regulation.[8]

Trademark Law

The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof…adopted and used by a person…to identify and distinguish his or her goods…from those manufactured or sold by others.”[9] The law protects trademark owners from the unauthorized use of their marks by others. When a person uses a registered trademark without permission, trademark owners can claim infringement, dilution, and, in Internet cases, cybersquatting. In terms of parody, infringement and dilution are the most likely offenses.

Infringement occurs when a mark is used without permission and consumers are likely to be confused about the origin of the goods offered. One can also infringe by attracting consumers with another’s trademark even if the origin of the goods is clear prior to their sale.[10] Dilution has less to do with confusion and more to do with the diminishing of the value of a product by the use of the trademark on a dissimilar product. Anti-dilution laws were put in place to protect trademark owners from an unfair lessening of the value of their mark.

The two types of dilution are tarnishment and blurring. A trademark can be tarnished if it is linked to a product of poor quality or portrayed in an unsavory context. Blurring occurs when someone other than the owner uses the trademark and, as a result, the effectiveness of the mark as a selling tool is lessened.[11] The Federal Trademark Dilution Act (FTDA) of 1995 was enacted by Congress to protect against both tarnishment and blurring. The defenses against dilution provided by the Act include using the mark in a non-commercial manner, including it in any form of news reporting and commentary, and using it in comparative advertising (“fair use”).[12]

How This Relates to the Internet

The Internet has provided a new outlet for everyday people to criticize and poke fun at trademark owners. Anyone can register a domain name and create a Web site that parodies another Web site, a book, a movie or a company. Trademark battles concerning the Internet have to do not only with the content on Web sites, but also with the use of trademarks as domain names. Sometimes, even if it is clear that there is no confusion caused by the Web site’s use of a registered trademark, its domain name may be found infringing. While expression on the Internet is similar to that in other media, the manner in which Web site designers combine commercial speech with general expressions of ideas makes this medium the most complex when it comes to trademark law.

Literature Review

Although the courts have been very concerned with protecting the property rights of companies over their trademarks, most scholars seem to feel that the First Amendment issues at stake are more important. The scholarly consensus is that parody is a vital form of speech that should enjoy the same protection as political speech. It is interesting to note, though, that most of what is written on the topic does not provide justification for parody’s place in society. Rather, scholars assume that parody is considered to be as valuable as political speech, and they do not bother to explain its importance. Trademark owners have a different view of the issue, of course. In general they feel that, in the establishment of a trademark, they should have the security of knowing that nobody else will profit from their mark. Even if someone else is not profiting, trademark owners do not want parodies to affect their own ability to profit from an already established mark.

In terms of the Internet, not much has been discussed or decided about how the application of trademark law should differ in this context. As the Internet does blur the line between what is and what is not commercial speech, it is more difficult for one to decide whether a company is really losing anything when its trademark is parodied.

One scholar, Keren Levy, argues that the FTDA is not understood well enough by the courts and is therefore applied rather haphazardly.[13] Levy discusses how in some cases, the courts address the First Amendment argument while in others they do not. Also, broad standards are sometimes used to determine commerciality, while at other times the standards are narrower. In one case, Elvis Presley Enterprises, Inc. v. Capece[14], a nightclub owner that used Elvis’ trademark in his club to parody the “Las Vegas Lounge Scene” was found guilty of dilution because he could have created the parody without the use of the mark. In this case, the court considered the availability of other ways of expressing the same idea. Most courts have not interpreted the statute in that way because it seems to intrude on the artist’s ability to determine the best way to express his or her own ideas.[15] Although the FTDA was created to remedy confusion that occurred in state statutes over the requirements for dilution, Levy finds that its inconsistent application is doing just the opposite.

Although the commercial aspect of the speech has often been the deciding factor in the courts, Keren Levy argues that this should not be the case. Levy states, “The court’s misplaced emphasis on commercial use versus non-commercial use is contrary to the purpose of dilution doctrine and is an ineffective way to resolve First Amendment concerns.”[16] Levy says the Internet is a place where people can exchange ideas and information, while at the same time entrepreneurs and retailers can advertise and offer merchandise. This simultaneous occurrence of advertising and free expression makes indistinct the line between commercial and non-commercial speech. Until this line is made clearer and a standard is set, courts should find other ways to balance the rights of trademark owners and parodists, according to Levy.

Levy has also noted that parodies of a sexual nature tend to be treated more harshly in the courts than do those that are less offensive.[17] This should not be the case because, when examining non-commercial speech, the court is required to be content- neutral in determining a level of First Amendment protection. In some cases the parodies are found to be commercial in nature, and in this case the courts have more room to pass judgment because commercial speech can be regulated based on its content.

Levy says that the use of disclaimers is one way that trademark owners’ investments can be protected without curtailing parodists’ First Amendment rights.[18] Disclaimers can prevent consumer confusion because they inform consumers that the parodied company does not support the work.

Another scholar, Sarah Mayhew Schlosser, argues that corporate trademark owners should sue critics for reputational harm rather than trademark dilution when they believe their name has been tarnished.[19] She explains that while the offensiveness of parodies makes this form of expression seem perfect for dilution claims, its non-commercial nature can always protect it from the same claims. And trademark laws, which place large, powerful corporations against common individuals, place a chilling effect on free speech. If a parodist knows she will not be able to afford a possible lawsuit, she may be afraid to express her views about a company through parody. According to Schlosser, economic factors also come into play with the commercial versus non-commercial dilemma. Courts often place more weight on the economic effect the parody may have on the company than on the First Amendment issues at stake. “By favoring economic factors over First Amendment concerns, the Federal Trademark Dilution Act, and the courts that apply it, fail to give adequate protection to legitimate public discourse.”[20]

David Najarian, an Internet scholar, argues that the courts must see domain names as speech that is as expressive as the content on Web sites; therefore, domain names would warrant full protection under the First Amendment.[21] He also explains that courts must resolve issues surrounding trademark use that is both expressive and commercial because, “When use is both expressive and commercial, the courts must decipher multi-faceted and/or intrinsic use to determine the appropriate level of protection.”[22] If the courts do not want to stifle communication and prevent the free flow of ideas on the Internet, they must take into consideration the expressive nature of all Internet speech.

Although most legal scholars are on the side of the First Amendment, some do understand the viewpoint of trademark owners in wanting to protect their investments. In discussing the parody of well-known trademarks, Eric Welch explains that distasteful parodies should be permitted from smearing the names of these icons. “The FTDA serves a valuable purpose…Americana is preserved, and our culture is allowed to flourish, by the expansion of intellectual property in defense of the integrity of established cultural icons.”[23] In other words, the general public should be more respectful when using the names of famous trademarks so as not to tarnish a well-deserved reputation.

Cases

Non-Internet

Although Internet parody has recently become very popular, other forms of parody have been used to poke fun at companies for many years. The trademark owners sometimes bring legal action against the parodists because they do not want their reputation tarnished in any way. Such was the case in L.L. Bean , Inc. v. Drake Publishers, Inc., in which High Society magazine, a monthly periodical featuring adult erotic entertainment, published a parody of Bean’s famous catalog.[24] The parody, which was featured in the October 1984 issue, was a two-page article entitled “L.L. Beam’s Back-To-School-Sex-Catalog.” The article used a facsimile of L.L. Bean’s trademark and had sexually explicit content. On the magazine’s contents page the article was labeled as “humor” and “parody.”

L.L. Bean, in filing suit, claimed “trademark infringement, unfair competition, trademark dilution, deceptive trade practices, interference with prospective business advantage and trade libel.”[25] The United States District Court for the District of Maine granted Bean summary judgment with respect to the dilution claim, and an injunction followed that enjoined the further publication of the article. Drake Publishers appealed the injunction, and the First Circuit Court of Appeals overturned the lower court’s ruling.

In examining this case, the Court focused on whether the injunction was in violation of the First Amendment. It recognized the inevitable conflict between the ridicule accepted in parody and the protection against tarnishment afforded by the Maine anti-dilution statute. The court noted that, “Trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view.”[26] Also, “The overriding purpose of anti-dilution statutes is to prohibit a merchant of non-competitive goods from selling its products by trading on the goodwill and reputation of another’s mark.”[27] Therefore, if the parody is non-commercial in nature, it should not be regulated under the statutes. In order to determine whether or not the defendant’s article was commercial in nature, the court examined its context. Since the article was labeled as “humor” and “parody,” took up two pages in a one-hundred-page issue, and was not featured on either the front or back cover, the court labeled it as non-commercial.

The Appellate Court also noted faults in the District Court’s reasoning in that the lower court’s injunction “depends upon an untoward judicial evaluation of the offensiveness or unwholesomeness of the appellant’s materials.”[28] As long as material deemed offensive is not obscene in nature, it should be afforded the same amount of protection as non-offensive speech. The Court heralded the importance of parody in society as speech that, although offensive, conveys the message that businesses should not always be taken so seriously. It emphasized that, “While such a message lacks explicit political content, that is no reason to afford it less protection under the First Amendment.”[29]

In an opposite ruling, the U.S. Court of Appeals for the Eighth Circuit held in Anheuser-Busch, Inc. v. Balducci Publications that the First Amendment did not protect Balducci from infringement and dilution claims.[30] Balducci Publications published a mock advertisement for the fictitious product “Michelob Oily” in a 1989 issue of its magazine, Snicker. According to Balducci, the parody was a commentary on a recent oil spill in the source of Anheuser-Busch’s water supply, and a statement on the ubiquitous nature of Anheuser-Busch brands and advertisements. Since Anheuser-Busch owns the Michelob trademark and was unhappy with the idea of its products being promoted as having oil in them, the company sued for trademark infringement and dilution.

Although the District Court found that Balducci’s First Amendment rights overshadowed Anheuser-Busch’s trademark interests, the Appellate Court reversed the lower court’s decision. According to the Appeals Court, the difference between this case and the L.L. Bean case was that the advertisement in this case was placed on the back cover of the magazine; therefore, it was used to sell the magazine in a way the L.L. Bean parody was not. Also, real advertisements are usually found on the back cover of magazines, so there was a likelihood of confusion as to whether or not Balducci’s parody was in fact an advertisement. The court explained:

By using an obvious disclaimer, positioning the parody in a less-confusing location, altering the protected marks in a meaningful way, or doing some collection of the above, Balducci could have conveyed its message with substantially less risk of consumer confusion.[31]

The First Amendment did not excuse Balducci’s failure to do any of those things.

Internet Cases

As mentioned previously, the Internet makes the issue of parody versus trademark even more complex. A case that is often cited in reference to this issue is Bally Total Fitness v. Faber.[32] This case is more about direct criticism than parody, but it helps define the scope of commercial versus non-commercial speech and what should be protected under the First Amendment. In this case, the District Court granted Faber’s motion for summary judgment on Bally’s claims of trademark infringement, trademark dilution and unfair competition because it said these claims were unfounded.[33]

Andrew S. Faber operates a Web site called “Bally Sucks” at www.compupix.com/ballysucks that is devoted to consumer complaints and criticisms about Bally Total Fitness Holding Corporation’s Fitness Centers. Bally sued Faber to prohibit him from using its mark. The court found no consumer confusion because the two parties’ goods are not related, the site is labeled as unauthorized and it uses the word “sucks.” Therefore, summary judgment was granted on the claim of infringement. On the claim of dilution, the commerciality of the use is an important factor. Bally argued that Faber’s use of its mark was commercial because it was used to promote his services as a Web designer. The court disagreed and said Faber’s use was not commercial because using examples of his work to promote his services was “akin to an online resume”[34] The court in this case was not so quick to label an Internet parody commercial, and as a result, the First Amendment rights of Faber were protected.

The First Amendment did not provide full protection in another Internet case, though. In People For The Ethical Treatment Of Animals, Inc. v. Doughney, the 4^th Circuit Court of Appeals affirmed the lower court’s ruling in favor of the trademark owner.[35] Doughney registered the domain name peta.org in 1995 with Network Solutions, Inc. (NSI) under the claim that there existed a “nonprofit, educational organization” called “People Eating Tasty Animals.” This organization did not exist, but Doughney used the name to create a site with that name that he called a parody of PETA. A statement on the Web site said it was a “resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research.” The Web site had links to various sites with opposing views to PETA, but it also had a link to PETA’s official Web site.

When PETA asked Doughney to give up the domain name, he refused. Consequently, the organization complained to NSI whose rules mandated that Doughney’s site be placed on “hold” status until the dispute was resolved. Doughney proceeded to move the site to www.mtd.com/tasty and added a disclaimer that said, “People Eating Tasty Animals is in no way connected with, or endorsed by, People for the Ethical Treatment of Animals.”

In its suit, PETA claimed service mark infringement, dilution, unfair competition and cybersquatting. Doughney claimed that he did not use the mark in commerce and it did not cause confusion, but the court felt otherwise. It said that in order to use the mark “in connection with goods or services”:

Doughney need not have actually sold or advertised good or services on the www.peta.org Web site. Rather Doughney need only have prevented users from obtaining or using PETA’s goods or service, or need only have connected the Web site to other’s goods or services.[36]

Since Doughney’s Web site both provided links to over 30 commercial operations and was likely to prevent some Internet users from reaching PETA’s actual Web site, the court labeled it commercial. The court also found evidence of confusion. Although the site itself may not have created confusion as to whether or not it was affiliated with the organization, the domain name did create confusion. The court said, “Looking at Doughney’s domain name alone, there is no suggestion of a parody. The domain name peta.org simply copies PETA’s mark, conveying the message that it is related to PETA.”[37] Although the second message, which was found within the content of the site, suggested no connection with PETA, that message was not shown simultaneous with the first message (the domain name). Since the messages were not simultaneous, the court said Doughney could not use parody as a defense.

My Conclusions

The importance of parody to our society, while addressed by scholars, is not often fully rationalized. But parody is important because it is a license to criticize, and the criticism of big business is essential to our capitalistic society. Consumers have the rights to express their opinions about various companies, whether this involves straightforward criticism or a type of humor such as parody. Also, trademark owners claim that the ability to make infringement and dilution claims provides an incentive to create products of high quality. This is said to be because companies will only provide quality service if they know their trademarks are secure. To counter this argument, one could say that encouraging an environment of free criticism and parodies will also provide incentives for companies to produce quality materials. A company that does not want to be criticized can maintain a favored reputation by making quality products and providing good customer service. In this case, trademark infringement (causing public confusion) would remain a serious offense, but trademark owners’ dilution arguments would have less merit when weighed against the value of parody.

Since judges have been looking at the commercial aspect of parodies to determine whether or not to allow them, it is necessary to establish clear guidelines for determining what is commercial. A parody should only be deemed commercial if the parody itself or the use of the trademark is directly attempting to sell something. Therefore, a parody on the cover of a magazine could be found commercial, as the cover is what often sells the magazine. In looking at the Internet, it is illogical to assume that a parody is commercial in nature simply because the Web site it rests on makes a profit. Newspapers are profit-producers, but one would not classify the articles within as commercial speech. The only content in newspapers that is commercial by nature is the advertising, because it is directly attempting to sell something. Every speech can be loosely connected to the sale of something, but one cannot classify all of it as commercial speech.

In establishing parameters for what is commercial, one does not answer the question of whether the commerciality of the parody should be the factor that determines whether or not it is permissible. The courts have said that this is the determining factor, but some do not agree. In solving later disputes between parodists and trademark owners on the Internet, the courts must establish a clear test to determine what is commercial because the Internet does not operate in the manner of other media. Courts also cannot fail to recognize parody’s place in society as an essential means of criticism.

[1] Keren Levy, Trademark Parody: A Conflict Between Constitutional and Intellectual Property Interests, 69 Geo. Wash. L. Rev. 425, 429 (2001).

[3] Oscar C. Cisneros, Annual Review of Law and Technology I. Intellectual Property; C. Trademark Bally Total Fitness Holding Corp. v. Faber, 15 Berkeley Tech L.J. 229, 230 (2000).

[4]Keren Levy, Trademark Parody: A Conflict Between Constitutional and Intellectual Property Interests, 69 Geo. Wash. L. Rev. 425, 431 (2001).

[7] The First Amendment to the U.S. Constitution.

[8] Keren Levy, Trademark Parody: A Conflict Between Constitutional and Intellectual Property Interests, 69 Geo. Wash. L. Rev. 425, 426 (2001).

[10] David C. Najarian, Internet Domains and Trademark Claims: First Amendment Considerations, 41 J.L & Tech. 127, 128 (2001).

[11] Keren Levy, Trademark Parody: A Conflict Between Constitutional and Intellectual Property Interests, 69 Geo. Wash. L. Rev. 425, 431 (2001).

[15] Keren Levy, Trademark Parody: A Conflict Between Constitutional and Intellectual Property Interests, 69 Geo. Wash. L. Rev. 425, 450 (2001).

[19] Sarah Mayhew Schlosser, The High Price of (Criticizing) Coffee: The Chilling Effect of the Federal Trademark Dilution Act on Corporate Parody, 43 Ariz. L. Rev. 931, 936 (2001).

[21] Najarian, David C. “Internet Domains and Trademark Claims: First Amendment Considerations.” PTC Research Foundation of Franklin Pierce Law Center IDEA: The Journal of Law and Technology. 2001.

[23] Eric Welch, Trademark Litigation:Dilution: Ponderosa v. Wanda/Rosa, 12 J. Contemp. Legal Issues 280, 282.

[32] 29 F. Supp. 2d 1161, 1162 (C.D.C.A. 1998).

[33] Faber was ordered to bring a motion for summary judgment after Bally’s motion for summary judgment was denied by the court.

[34] [34] 29 F. Supp. 2d 1161, 1167 (C.D.C.A. 1998).