[T]he strength and distinctiveness of the LOUIS VUITTON mark worked against Louis Vuitton in the context of its dilution by blurring claim, making it more likely that a parody (at least an obvious one) will not impair the distinctiveness of the famous mark.
Clients like this — Europeans — must be foaming at the mouth about this one, because European “industrial property” law works entirely differently. But the Fourth Circuit didn’t even throw LVMH a bone.
MarketWatch reports this story about an opinonated gent who’s suing Wal-Mart for a declaratory judgment:
Smith said he was making a point by comparing the giant retail company to the Nazis by creating T-shirt designs that played off the Bentonville, Ark., firm’s familiar logo, including “I (heart) WAL*OCAUST. They have family values and their alcohol, tobacco and firearms are 20% off,” the newspaper reported.
Wal-Mart launched a legal battle by writing a cease-and-desist demand that led Smith to file suit Monday in federal court in Atlanta. Former presidential hopeful Ralph Nader’s legal aid group, Public Citizen, is helping Smith, the report said.
Smith should be ashamed of himself for comparing a damned variety store to the Third Reich. It demonstrates a real lack of moral judgment on his part.
But the stupid party here is Wal-Mart, which should get its clock cleaned and which has given a platform for publicity to a bitter, if morally blind, adversary. Whether it will in this trademark-owners-take-all environnment is, however, anyone’s guess.
UPDATE: The Pierce IP News Blog has it that Wal-Mart will claim its trademark is being besmirched by Smith. In other words, its claim will probably hinge on a trademark dilution count. You know, dilution — the infringement that never has to say “I’m confused.”
June 17, 2014 | Comments Off on The Parody Bomb Goes Off
When it rains, it pours. Via Andrew Sullivan (and reported here too) a report that Volkswagen is going to sue— in the UK — the pair who made that tasteless mock commercial circulating around the Internet in which a suicide bomber detonates himself but the explosion is contained by the well-built Volkswagen. I don’t know anything about UK law on parodies, and I am not sure whether this would be a trademark suit for use (or dilution?) of the Volkswagen trademarks (which would probably lose here) or a copyright suit based on some similar commercial which I have not seen (which theoretically could win here). (See our discussion on what does and does not qualify as a parody here.)
If you’re Volkswagen, you may have to sue first and ask questions later. There are times when, as long as there is a colorable claim (i.e., the markholder does not believe the complaint violates legal ethics or Federal Rule 11 as frivolous) — even though it’s not a likely winner, you’ve got to file to protect the brand and make a public statement where there’s the risk of public outrage. The lawsuit is a way to distance yourself from the use of the mark.
That’s when it’s not frivolous. And it’s when we’re talking about a morally outrageous use of the mark, as opposed to a commercially or politically, religiously, philosophically competitive use — or one where you just plain resent that your property is part of the picture and you weren’t cut in on the profits.
Slippery slopes? That’s why lawyers are paid to exercise judgment.
After a week of prevarication [sic], the car giant has decided to go ahead and sue the people behind the advert on the grounds that it was damaging its reputation around the world and falsely linked the VW with terrorism.
“We are taking legal action but because it’s early stages we cannot comment further,” a Volkswagen spokesman said.
But the company privately admitted that it cannot locate Lee and Dan, the London based advertising creative partnership who dreamed up the film, which has been seen around the world via the internet.
“We are prepared to pursue the two individuals but need to locate them to ensure the success of our legal claim,” the company said in a private memo, details of which have been obtained by MediaGuardian.co.uk.
MoveOn.org used the trademark on a billboard critical of the Governor of Louisiana:
If you can’t read it, the billboard says “Pick your passion! But hope you don’t love your health. Gov. Jindal’s denying Medicaid to 242,000 people.”
Because politicians do not appear to be able to take criticism gracefully, the Lieutenant Governor sued MoveOn.org for trademark infringement. One argument was that since the Lieutenant Governor was the owner of the mark, it was not a lawful parody because the Governor, not the Lieutenant Governor, was the target of the message.
So that’s an interesting concept—is it true that the “parody” use of a trademark has to be about the owner of the mark?
According to the court, no: …
The State argues that MoveOn.org’s billboard does not criticize the owner of the mark, the State of Louisiana, but rather it criticizes Governor Bobby Jindal. Essentially, the State argues that the target of MoveOn.org’s parody (Governor Jindal) is not the holder or owner of the mark (the State). The question is whether the disconnect between the owner of the mark and the target of the parody creates viewer confusion. In other words, is a motorist viewing the billboard likely to conclude that the State of Louisiana is criticizing Governor Jindal. The Court thinks not.
It doesn’t matter who the owner is because the question is whether anyone is confused and clearly, here, no one would be.
OK, first thing: Case was an obvious stinker, and the court had no difficulty recognizing it. This is not a trademark infringement case; MoveOn.org isn’t even using the trademark as a trademark. (Query: Is Louisiana?) This was protected speech under the First Amendment of the most classic kind.
But Pamela raises a couple of other interesting issues. Read More…
Sometimes, just when a copyright dispute is getting very interesting, the parties go and do the unthinkable: They resolve their differences like reasonable people, and then there’s nothing left to do but imagine how things might have played out. And here we are.
Recently, in a very short period of time—less than two weeks—these things happened, in fairly rapid succession:
A company called GoldieBlox—established in 2012 to help introduce girls to the field of engineering—produced and released an advertisement for its products.
The GoldieBlox spot got noticed—because it was twelve kinds of awesome—but one of the ways in which it was awesome is the parody of the song “Girls,” recorded and released in 1987 by the Beastie Boys, used as the soundtrack.
GoldieBlox was contacted by counsel for the Beastie Boys. Said counsel reportedly notified GoldieBlox that because the Beastie Boys and writer/producer Rick Rubin, as copyright holders
of the original song, had not given—and did not now give—permission for a version of the song to be recorded and used, GoldieBlox was therefore infringing the exclusive intellectual property rights of the Beasties/Rubin, and that unless such infringement ceased and GoldieBlox desisted… well, you know the rest.
GoldieBlox sued the Beastie Boys and Rubin—with admirable alacrity—for a declaratory judgment… and the Internets went nuts, in part because many laypersons do not understand what declaratory judgment is (remember the Robin Thicke/Marvin Gaye story from a few months ago?), and in part because many people thought they’d read or heard that the Beastie Boys had sued GoldieBlox.
Then Beastie Ad Rock tweeted: “You guys..Don’t get it twisted. We did not threaten to sue Goldiblox..THEY’RE SUING US.” Which was accurate, if a tad disingenuous. A distinction without a difference, one might say.
And then GoldieBlox did something seemingly—see below—very classy: The company posted an open letter to the surviving Beastie Boys stating, among other things, that the company was unaware before hearing from the Beasties’ counsel that the late Adam Yauch had “requested in his will that the Beastie Boys songs never be used in advertising” and for that reason, even though “we believe our parody video falls under fair use, we would like to respect his wishes and yours,” GoldieBlox had already removed the song from its video. (Of course, the unredacted version can still be found with no effort at all, but it would be irresponsible for this blawg to point you to anywhere specific.)
Licensed to ill in NY and NJ.
I write “seemingly,” because one might argue that GoldieBlox has already gotten everything it had hoped to from its song parody, and therefore removing it now is merely… er, lip service. Indeed, some have suggested that GoldieBlox’s entire goal from the start was simply to get press, and that proactively suing the Beastie Boys was just a part of the plan—except that to bring a legitimate suit for declaratory judgment one needs to allege a real controversy, and there would have been none if the Beasties’ lawyers had not threatened legal action. And it’s not as if you can force someone else’s lawyer to threaten you with litigation. The most you can do is use their intellectual property without permission in a video that goes viral and… wait just a minute…!)
This will probably be the end of the matter. Read More…
Guy makes a video parodying the deification of Obama Barack, and posts it on YouTube. Looks like it hit a little too close to home. After a slew of complaints of hurt feelings by His ministering angels, the video has now been put beyond a registration wall by Google on the grounds that it is, of all things, “inappropriate for minors.” (Rather ironic, isn’t it?)
It’s Google’s ball. Not a First Amendment issue. But chilly-making, in once sense or another, all the same. Via Glenn Reynolds.
Bob Ambrogi reports on some cease-and-desist follies involving GET OUT OF JAIL FREE and Mr. Monopoly, which of course are the intellectual property of the Monopoly people over at Hasbro. As could be expected with a friend’s blog, I put in my two cents in his comments; here I flesh ’em out for a penny or two more.
I’m not so interested in the cute part of the story about how the original cease and desist letter got returned to Patterson Belknap postage due, which, as far as it goes, is a nice hook. Always good to make the C&D sender look silly. The interesting legal question to me, however, is this, as quoted by Bob from the recipient Randy Cassingham’s blog:
We recently became aware that you are offering for sale “Last Chance – Get Out of Hell Free” cards and stickers on your website at www.goofh.com that depict the famous MR. MONOPOLY® character and are obviously derived from the MONOPOLY® “Chance” card. …
We therefore demand that you immediately cease and desist from any further use of the MR. MONOPOLY® character, remove the cards and stickers from your website, and provide us with a written assurance that in the future you will refrain from any further unauthorized use of the elements and characters of the MONOPOLY® property trading game.
“His lawyer responded to Hasbro’s lawyers, contending that his cards were parody and that he was within his rights to publish them,” says Bob, adding that they later stuck a disclaimer on the card (not usually too helpful).
So, is this really trademark use at all, or is Mr. Monopoly really a trademark? It’s true that everyone associates this phrase with Monopoly, but not every cultural reference is, really, a trademark infringement, is it? Well, of course I don’t think so, but don’t ask a judge these days.
Of course if my view of on this point were adopted, the argument would work even better for once-removed parody defenses such as the one suggested here. Using someone else’s work to poke fun at a third person is not a parody of the original work, just a utilization ofthe recognized cultural cue to move the point along. Under current law, for better or worse that does not appear to qualify as parody.
In a battle that refuses to die, publisher Capcom filed a pre-emptive lawsuit against the Dawn of the Dead film owners as part of a dispute over patenting [sic] zombie action.
Capcom requested a declaratory judgment against MKR productions, because, according to a Hollywood Repoter blog, it expects MKR to file a lawsuit over Dead Rising in response to the game’s depiction of zombie fighting in a mall.
Capcom says that the concept of humans battling zombies in a shopping mall – something common to the game and the films – is “wholly unprotectable” under copyright law. It has filed the lawsuit in order to “eliminate any doubt” that its game infringes upon MKR’s rights.
That sounds about right, but it is an intriguing question. Copyright protects tangible expressions of creativity. Couldn’t particular zombie fightin’-and-killin’, er, zombie… moves be protected, the way choreography is?
Probably, but as the complaint explains — it also seeks declaratory judgment on about five different kinds of conceivable trademark claims — the assertion by MKR, or at least the one regarding which Capcom is seeking a declaratory judgment, is that the “concept” of zombies rampaging through a mall is the creative work claimed here. Well, heck, after all, the high symbolism of this only-slightly-weirder-than-reality conception is well recognized as a signal moment of cinematic social commentary. So, zombies-in-a-mall concept — copyrightable, right?
It’s probably in the public domain, anyway. Zombies have been ripping up shopping centers since, like, forever.
UPDATE: Zombies win, of course. They always do, don’t they?
December 22, 2010 | Comments Off on Best of 2010: Foul ball?
I’m not trying to hide the ball. Far from it; take a look below and to the right–there’s your tort right there. Now Marty Schwimmer, who also picked up this story (and who has posted a copy of the complaint), demands of readers, “Spot The Lawsuit In This Commercial — (‘)(‘) <- me rolling my eyes.” Is Marty right? Is this civil action just an air ball?
The complaint is easy to make fun of, both as a legal matter and on sort of flat-footed “common sense” grounds. (Come on, it’s just a second or two on the screen! Come on, now everyone’s going to just see the commercial over and over again!) But that’s not entirely the same as saying it’s indefensible.* In fact, I think that while LVMH is shooting aggressively from beyond the three-point line, it is doing what it has to make sure its trademark rights don’t fade away.
Tarnishment -- Something might rub off?
First, though, let’s put the two dilution claims (federal and New York), which are the real meat here, aside. As I will urge below, there is a colorable, and arguably very winnable, argument for them. But first, the shootaround: Yes, it is time for me to put on my Professor Pendatic hat, unable as ever to resist needling good lawyers who have clients I’d also like to have and fully aware of my own lack of game, about the double-dribbles in their submissions.
The technical foul here is the fact that, besides trademark dilution, LVMH also sued Hyundai on three other legal theories: false designation of origin under Lanham Act’s section 42; common law trademark infringement under New York law trademark law; and infringement of LVMH’s registered trademarks.
A little practitioner’s hint: The last count in a multi-count commercial complaint can be viewed as meritless, mere ballast, about 95% of the time. I don’t believe in ballast, but lots of lawyers (about 95% of them) do. And as a trademark litigator who often represents defendants, when I see that the registered trademark infringement claim is the last one in the complaint, that tells me, “Oh, good, so there’s no trademark infringement here, at least.” And of course there isn’t; Hyundai doesn’t sell or offer either cars or basketballs bearing anything likely to be confused with an LVMH registered mark, plus a million other reasons.
Hey, wait though–what about the other two trademark claims? How about the section 42 and New York unfair competition claims, which are counts three and four? Well, sorry kids, but you can’t have three last counts! Only one can be the lastest. And big-boy trademark registration infringement, being usually the proudest and loudest thing you can sue an infringer for, as a matter of dignity obviously insisted on being discreetly tucked away at the end–damned to sitting next to the ad damnums but at least not exposed to the glare up front.
But if that’s the case, then why still throw in the other two non-registration-based trademark claims at all?
To answer that question, children, you’ll have to ask one of the other 95% of lawyers.
Now, having said all that, we are left with the dilution claims. So what justification can there be for filing this lawsuit at all?
Never before has an historical figure, much less one of history’s most evil men yet one still regarded as some kind of transcendent figure, been so thoroughly, widely and ubiquitously mocked and cut down to a symbol of utter foolishness. And, as “he” points out in this clip, never has a “classic” but otherwise fairly obscure movie become so well known to millions of English speakers who probably otherwise wouldn’t even know which side Germany was on.
We wouldn’t expect Adolf Hitler to get either of these points. But a lot of other people who fuss around with free expression and creativity when IP rights, or “IP rights,” are involved really should.
UPDATE: Randazza thinks these are all fair use. I’m not so sure I agree — but this much I know: The one in this post is!
In any event, and after discussing this case with my friend, IP lawyer Ben Manevitz, this case seems to be pretty much out of the “fool’s parody” playbook — “fool’s” as in “fool’s gold.” It looks like a parody, but it isn’t. The case to look at here is the Cat Not in the Hat case out of the (here it comes) Ninth Circuit (getting one right). Here the Circuit Court followed the rule set out a few years earlier in the “Pretty Woman Parody” case and applied it to a book, written in the style and format of Dr. Seuss’s The Cat in the Hat, to tell the story about the O.J. Simpson murders in which Simpson is “the cat not in the hat.” (Tastefulness was not a basis of the decision.) The court correctly distinguished between a real parody, whose target is the plaintiff’s work, and what I am calling a “fool’s parody,” which merely utilizes (or as Ben says nicely, “leverages”) the extant work as a way to parody some other thing.
Now it’s possible that the target of the parody here is the gentile world, of which Dick and Jane are supposedly emblematic. (Of course many argued they weren’t even emblematic of that.) The problem with such an argument is that it’s too broad of an exception. No, that Spot won’t hunt.
UPDATE: I stumbled on some terrific and contrary commentary on how to read the Cat Not in the Hat and Pretty Woman cases from, guess who, Marty Schwimmer, here wearing his Blawg Channels hat. Under his interpretation, the “broader commentary” would in fact fly, to which I say he has thereby crafted an exception that swallows the rule. As I said to some friends recently, I remain pretty right-wing on copyright — despite being bloodied (and significantly enlightened) online years ago by the crew at the CYBERIA-L — but on trademark I’m a freethinker…
The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. This blog is about trademark law, copyright law, free speech (mostly as it relates to the Internet) and legal issues related to blogging.
As for me, I'm an AV-rated partner and commercial litigator in the IP Department of Archer & Greiner PC* with offices in New York and New Jersey (but active nationwide) and, some say, "IP maven"* with a special interest in copyright and trademark infringement involving the Internet--including advising clients how to avoid them.
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