“Because the circuit court could indeed use some guidance on this point, it remains to be seen whether the Supreme Court will ultimately provide the criteria for proper parody under First Amendment doctrines. would be interesting.”
Following oral argument by the Supreme Court Jack Daniel’s Properties, Inc. v. VIP Products LLC Last week, I was reminded of an article I wrote for the Cardozo Arts & Entertainment Law Journal many years ago exploring the boundaries of parody against allegations of trademark infringement and dilution.
That article states:
Many trademark parody cases do not take the time to analyze what parody is. Rather, in the vast majority of cases it is assumed that attempting to be humorous while using someone else’s trademark is probably parody.
In the face of the essentially blanket parody exception contained in the TDRA, “Courts may give greater weight to parody issue threshold“
That part is included in the various definitions of the term parody that federal courts may use to examine existing case law to determine whether a parody’s proposed parody should receive protection. We considered the possible threshold parameters and created the following chart.
This article hypothesized a multi-factor definition that may have been gleaned from authorities to determine when parody protection should be triggered.
To summarize the case law definitions, if you substantiate a definition of parody based on strict criteria, it could be (1) a literary or artistic work (2) a definition of parody asking for comment. or (3) criticize another work by appropriating or imitating elements of the original work, and (4) create a new work of art that mocks the style and presentation of the original (5) in a humorous way.
We then posed the following questions to guide the application of such definitions.
– Did the alleged parody actually comment on or criticize the original work?
– Is the alleged parody humorous enough for the average public?
– Can the alleged parody really be considered a literary or artistic work?
Indeed, if such a definition (or a similar definition) existed historically, Anheuser-Busch v. Balducci Publ’ns28 F.3d 769 (8th Cir. 1994)—“One bite and it’s oily” again “Do you enjoy cocaine?“like Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Sapp. 1183 (EDNY 1972), Was it humorous enough to constitute a parody?Snaggle set her bear on fire as the defendant did Conopco, Inc. vs. 3DO Co., 53 USPQ 2d 1146 (SDNY 1999) Substantially commenting on the original work? Or is it a casino ad replacing “New York New York Stock Exchange” with “New York $lot Exchange”? NY Stock Exch., Inc. v. NY, Can NY Hotel, LLC, 293 F.3d 550 (2d Cir. 2002) reasonably be considered a literary or artistic work?
Not much has changed since the article was published, and the multi-factor definition of parody is now more than ever capable of providing a threshold factor that courts can use to properly distinguish between non-parody and parody. It helps avoid what McCarthy warned about.BecomeA cry of “Parody!” . . dodge like magic[ing] Overrule other valid claims of trademark infringement or dilutionJ. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 31:38.[1]31-216 (3d ed. 1994)
From Judge Cagan to VIP: What is Parody?
The same concerns and potential line-drawing exercises that were considered in assuming the above definitions were fully demonstrated during oral argument Jack Daniels Properties Inc.specifically when Judge Kagan questioned VIP Products LLC attorney Bennett E. Cooper, was caught in the following exchange:
——————-
Judge Cagan: Well, what’s in it? What’s the parody here?
Cooper: Parody?
Judge Cagan: yes.
. .
Judge Cagan: Maybe I just don’t have a sense of humor
(Laughter.)
. .
Cooper: There are many parodies. The –the –the –the testimony indicates that the parody is to make fun of Mark taking it seriously, which is not discussed.
Judge Cagan: Well, I mean, you say that, but you know, you’re making fun of a lot of marks: Doggie Walker, Dos Perros, Sumera R Poe, Cora the Dog, Mountain Drool. Are all these companies taking themselves too seriously?
. .
Justice Cagan: So, just like soft drinks and alcohol-
. .
Justice Cagan: – Are companies taking themselves too seriously as a class?
cooper: I think there are a lot of products that take themselves too seriously. For example, I never see a parody of something close and dear to my heart, Woodford Reserve Bourbon. Because you don’t get the construction of buildings to make them iconic, cultural icons and reference points.
Constantly advertising on television and creating this image of himself as very important,
Justice Cagan: So you’re saying that whenever you go out or use a big business mark, it’s parody by definition?
cooper: good –
Justice Cagan: Because they have to be — because they’re a big company, they have to take themselves too seriously.
cooper: I have no doubt that Jack Daniel’s takes very seriously, as it applies here.
Justice Cagan: Well, I don’t know. I don’t think Stella Artois is taking it too seriously.
. .
Justice Cagan: They have very funny commercials.
cooper: Yeah, I’ve seen their historic commercials. But Jack Daniel’s will be at the forefront.
Justice Cagan: So this is –
(Laughter.)
Justice Cagan: have understood. I made my point.
——————–
In fact, Judge Cagan’s question focused on whether the defendant’s dog toy was humorous enough to qualify for parody protection, and whether the defendant could have “Teasing Mark for taking it seriouslyIn this case, as Justice Cagan pointed out, this is “big company markThey were selling liquor.”
As the Circuit Court may indeed use guidance on this, the Supreme Court will go deeper into this foray and ultimately provide criteria on the parameters of what constitutes parody under First Amendment doctrines. It would be interesting to see if point.
Skepticism over VIP claims ‘Non-Commercial Use”
The relevant question in this case centered on the commercial nature of VIP’s use of the trademark in question. The Ninth Circuit overturned the district court’s ruling, stating:I use VIP [Jack Daniel]The design of the trade dress and bottle to sell the Bad Spaniel was also used to convey a humorous message. “ TDRA’s “Noncommercial Use” Exception and Article 1 to the Proposition that Marks Containing at least Some “Protected Expression” Are “Noncommercial” Even When Used Directly to “Market” Products 9 Citing Circuit Court precedent. See VIP Products. LLC v. Jack Daniel’s Properties, Inc. 953 F.3d 1170, 1176 (9th Cir. 2020).
The Ninth Circuit’s opinion presents an incredibly broad view of the definition of “noncommercial,” and at least some judges seem reluctant to adopt that definition. Justice Cagan stressed:This is a standard commercial product. This is not a political t-shirt. it’s not a movie. Not an artistic photo.Judge Thomas asked Mr. Cooper:Could you elaborate a bit on why you chose the product? . .Is anything I can buy online or on Petco non-commercial?Reflecting the concerns of other judges, Justice Sotomayor pointed out the following interpretation: “Nonprofit is anything that includes speech” perhaps “too wide” and “I will abolish it except for parody.” Note that even under the court’s existing “commercial speech doctrine,” this is still a commercial transaction..“
Thus, additional points that the Court’s opinion seems ready to address are how it interprets the statutory “non-commercial” exception set forth in the TDRA, and the Court’s doctrine of commercial speech. is applied in this context. Reading Tealeaf, it appears that courts may seek to narrow the Ninth Circuit’s application of commerciality in the context of trademark use.
