Putting parody and expressive works to the test
A lookalike for Barney the purple dinosaur—the wholesome, unnaturally cheerful character from children’s TV—was tackled, flipped, and assaulted by a sports mascot performing at an event.
The US Fifth Circuit Court of Appeals found that this was an obvious parody, mocking Barney’s relentless optimism, and held that consumer confusion was unlikely.
In trademark cases, US courts struggle to balance the right to free speech with the likelihood that consumers will be confused. If an alleged infringer’s work is a parody—poking fun at the trademark rather than simply freeriding off its renown—consumers will be less likely to believe the work is created by the trademark owner.
But the courts themselves seem to be getting confused in parody cases. Sometimes they use a form of their usual likelihood of confusion factors, as the court did in the case of Barney the cheery purple dinosaur.
And sometimes they say that parodies are “expressive works,” which calls for a decidedly stricter standard known as the Rogers test. That test almost always results in a victory for the defendant.
When consistency doesn't work
Are all parodies expressive works? And if all parodies are expressive, why are courts using these two separate tests to determine whether they are infringing?
An attempt to wrestle these cases into consistent rules is, sadly, doomed to fail.
Many courts use a version of the regular likelihood of confusion test for parodies. Some use a stricter version of the multifactor test, some add a parody factor, and others apply the standard test and then balance the defendant’s free speech rights with the mark owner’s property rights.
The parody tests acknowledge that the nature of a parody makes it less likely for consumers to believe it is the real thing, similar to a website that proclaims that a brand “sucks.”
For example, the incongruity of upbeat Barney the purple dinosaur with the mascot’s over-the-top pummelling was plainly not sponsored by the real owners of the Barney image.
When Rogers comes into play
On the other hand, the Rogers test typically comes into play when the creator of an “expressive work”—such as a movie, book, or TV show—is accused of trademark infringement. In those cases, the defendant avers that their work is an expressive piece of art, manifesting a creative idea rather than freeriding off the trademark’s renown.
Under that test, if the work has any “artistic relevance to the underlying work whatsoever,” the work is not infringing unless it explicitly misleads consumers as to the work’s source or content. Rogers makes it almost impossible for the trademark owner to enjoin the expressive work, even if there is some consumer confusion.
For example, an artist sold prints of a painting commemorating a victory by golfer Tiger Woods, depicting Woods in different poses during the 1997 Masters Tournament. The Sixth Circuit treated this as an artistic work and found that consumers were unlikely to believe that Woods authorised or endorsed the collage.
The images of Woods in the painting had artistic relevance and did not explicitly mislead, the court decided, so any risk of confusion was outweighed by the defendant’s interest in artistic expression.
Testing parody v expressive works
There is a substantively different legal test, then, for infringement for a parody on the one hand and an expressive work on the other. But courts have used these tests interchangeably to determine whether a parody is infringing.
The Second Circuit in particular has been inconsistent in this regard. That circuit, the source of the Rogers test, has treated parodies unpredictably.
In some opinions, the court has applied Rogers to parodies, finding explicitly that parodies are expressive works and deserve the strongest protection.
In one case, the Second Circuit held that humorous, unauthorised versions of the yellow-and-black “Cliffs Notes” study guides were protected by the First Amendment under Rogers.
The same court also declared that a mash-up of Star Trek and Dr Seuss was both an artistic work and a parody, citing Rogers and holding that the public interest in free speech outweighed Seuss’s estate’s interest in protecting its trademarks.
Other opinions from that court, however, rely on a parody-centric version of the ordinary likelihood of confusion test and do not even mention Rogers.
Evidence of consumer confusion
The Second Circuit did not invoke Rogers when it affirmed an award of summary judgment in favour of the producer of a tote bag with a Louis Vuitton-lookalike pattern on one side, and “MY OTHER BAG” cheekily written on the other. The court found the evidence of consumer confusion as to source or sponsorship to be unconvincing.
And an additional “parody factor” dispelled confusion, again according to the Second Circuit, when it affirmed that confusion was unlikely between SPAM tinned luncheon meat and a wild boar named SPA’AM in the movie “Muppet Treasure Island.” Rogers was nowhere to be found in that opinion.
The Rogers case itself did not involve a parody. In that case, showbusiness legend Ginger Rogers sued Alberto Grimaldi and MGM over their movie title, “Ginger and Fred,” which evoked her famous partnership with Fred Astaire.
The film told the fictional story about the reunion of two Italian cabaret dancers who, in their glory days, had been known as Ginger and Fred, after the real-life stars. The Second Circuit held that the artistic expression inherent in titles allowed the use and laid out its now well-known standard to accommodate artistic and consumer interests.
Finding resolution
So how should the Second Circuit—and other courts—resolve this inconsistency?
A parody may undeniably be manifested in an expressive work. It invokes the original trademark in the viewer’s mind while simultaneously communicating to the viewer that it is not the original.
It uses elements of another party’s trademark to create a new work that comments on, caricatures, or criticises the original. Books, movies, TV shows, paintings, video games—these all may comment humorously on a brand.
But not all parodies are artistic works of the type the Second Circuit considered in the Rogers case. Many commentators argue convincingly that Rogers has been applied improperly in cases involving commercial products like dog toys.
And allegations of expressive content can cause a court to turn to the narrow standard in Rogers and find no infringement despite significant consumer confusion.
Rogers is certainly more protective of defendants in infringement cases than the parody standard for judging likely confusion.
The parody test asks whether there is confusion in the first place, with the understanding that confusion is less likely from a true parody. Rogers, however, tolerates a greater level of confusion in the name of protecting free speech.
Tolerance required
Trademark rights should not immunise mark owners from criticism or commentary. Courts should tolerate some level of consumer confusion from parodies and other expressive works.
Still, parodies may well confuse consumers as to source or sponsorship at an unacceptable level. If it is unclear that a so-called parody is not affiliated with the original mark, it may well deceive consumers and benefit unduly from the renown of the original mark.
In addition, we should be wary of putting courts in the position of deciding what is art that is worthy of protection and what is not. Judges themselves may not want this responsibility.
Several cases use the shortcut of the intention of the defendant—if it intended artistic expression rather than commercial exploitation, the court is more likely to follow Rogers. That is not a satisfying method for distinguishing artistic pursuits from infringements.
Allowing the Rogers test to immunise parodies strikes the wrong balance between consumer confusion and the public interest in free expression.
While non-parodic expressive works should continue to be protected under Rogers, parodies should be judged under a parody-centred likelihood of confusion analysis.
If it is genuinely a parody and most consumers will get the joke, then it is not infringing.
Anne Gilson LaLonde is the author of “Gilson on Trademarks”. She can be contacted at: trademarkbook@comcast.net.
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