Fair Use Week!

The OTW supports Fair Use Week. And if you support fair use, why not support the OTW?

Also, I enjoyed Laura Quilter's post on the uses of parody.

WIPIP, part 2, Session 3 Trademark

Session 3, Trademark

 

Leah Chan Grinvald, Constructive Consent

 

Courts adopt as evidence of fame the number of users = strength = fame.  Example: the number of Flipboard users accepted by a court in October.  But that also is read to include shortened forms like the stylized F Flipboard uses.  May be unconscious influence. 

 

Bad because there’s a theoretical disconnect.  In contract, judges acknowledge that they’re creating a hypothetical world where people assent to terms through reasonable notice, for reasons of efficiency; we want online contracts to be valid and we want to put the burden on the user to read the terms.  In TM, at least in theory, the law takes more of a legal realist approach: we really want to get into consumers’ minds. Though we use proxies like advertising, we are trying to reach consumer thought. Internal criticisms of constructive consent in contract are very strong in themselves—coercion, reality that consumers/users don’t read the terms. 

 

Judges who do this lower the burden of proof for some TM owners.  Rack up user downloads = strength, but that’s an unfair shortcut.  So don’t import the theory. Scrutinize agreements carefully.  Are the claims based on prominent marks?  Adopt “interactive” theory of fame.

 

Is this really happening on a large scale?  Aren’t companies like Facebook famous anyway? Yes, but there’s overreach too.  Tumblr = ‘t’ famous?  Efficiency: maybe this is efficient cheap way to prove fame. At least w/r/t current TM doctrine, we want fame to be done on a case by case basis.

 

Gibson: you don’t have to reject the contract theory to reject it in TM.  Contract = there’s a theory of the informed minority who reads and protects the rest of us.  Fame numbers generated by overall customer base don’t take that into account.  Second, reputational argument: consumers usually work these out as customer service matters and not contract matters, but again that is not a TM context. These theories don’t work for TM purposes.

 

A: right, that goes to my argument about fit.

 

Rosenblatt: to what extent is this counting users approach really constructive consent versus a way of figuring out how many people have seen the mark?

 

A: she thinks it’s unconscious; also it’s a way to prove secondary meaning (which is a factor to prove fame, Rosenblatt points out) but it needs to be scrutinized more carefully. We have all downloaded random apps we don’t know much about/we deleted quickly.

 

Ramsey: separate issue of using number of users who downloaded versus agreement in fame.  Constructive consent applies to agreeing that its famous. Has any court really explicitly relied on the idea that users have agreed the mark is famous?

 

A: Run the risk; need to scrutinize evidence carefully.

 

William McGeveran, What Campbell Can (and Can’t) Teach Trademark Law

 

Campbell is important for various things, including ill-advised parody/satire distinction. What does it do for TM? Error and administrative burden in adjudicating parody.

 

Lessons of Campbell: parody is important—significant speech/social value.  Parody is inherently tricky because imitation is inherently necessary to do parody.  No bright-line rules; fact intensive.  Parody should be handled consistent w/the underlying purposes of IP.  Underlying purpose of TM is different from that of ©!  (Though Silbey’s work suggests that laypeople don’t agree.)

 

Present lessons: Judges get it right. Parody almost always wins nowadays. We don’t have a meaningful error cost problem now, though we did in the past.  Too much discussion suggests that might be the case.  Some markholders get it wrong: overclaiming.  We talk too much about problem #1 (judges) and not enough about problem #2 (overclaiming by TM owners), giving sustenance to the narrative out there that helps sustain overbroad C&Ds by suggesting that parody is vulnerable in court when by and large it’s not. 

 

Dogan & Lemley; David Simon; Tushnet & Keller have cataloged the scene. There are 12 key cases, and not a ton more. The age of these cases suggests that, whether cause or symptom of change in attitudes, Campbell was an inflection point, w/trend to much better results if they go through full adjudication.  10 of the 12 are from last century; Buttwiper is 2008 and Charbucks 2009.  Some of these lawsuits are probably justifiable b/c parody was cream-skimming ex post justification, or at least you can understand why the court thought so. The reasons parodies lose are varied; there’s not one magic problem.  Direct competitors who’s doing what Campbell was worried about; unjustifiable general concerns over free riding; messing up what confusion is about; just blowing it: NAACP v. Radiance (Nat’l Ass’n for Abortion of Colored People). Hard to figure out any tweak in law that would fix that last one: neither def’t nor court cited Rogers, ESS, or any other relevant case.  The real cost we face is adjudicative cost. Any effort to tweak parody is likely to make that worse rather than better because Campbell teaches us that’s hard.  Start doing work to make adjudication quicker and cleaner.

 

Future: Think holistically about parody as part of larger set of expressive uses and respond with expressive use reform more generally.  Expressive works, political uses, maybe comparative ads.  Can’t make too big a list b/c then people claim anything not on the list is excluded. Argument will then not be about whether it’s a parody or whether it’s confusing but whether it fits these other parameters.  Presumptions and the Rogers test.  Confusion isn’t everything.

 

Lemley: one thing you don’t include is cases where the Q is whether or not it fits in the parody box. Mostly, once we decide something’s a parody, we give it credence. Campbell draws unjustified divide between satire and parody, and people try to tug one way or another because it changes results.

 

A: I did look at those cases; Ds do really well there too, though it can be costly. Parodic character perceptible = ok. And sometimes when the court disagrees, he thinks the court is right.  Series of fishing nets—scoop up easy cases first.  That might mean some parody cases go to the end of the line, but hopefully that’s where the cases are the hardest.

 

Heymann: consumer oriented language: reasonably be perceived. Relationship to audience: what is the market you’re talking about?  Market for parody or market for rap in Campbell? Who is perceiving this as parody, and in what market?

 

A: agree, but hopefully won’t need that level of analysis. But when you do consider full scope in confusion analysis, that would be important.

 

RT: Makes me think about why transformativeness has expanded in content.  Satire/parody distinction never worked and it was almost immediately apparent that it didn’t.  Timmy Holedigger & Cariou have in common their lack of interest in specifying the transformative/parodic message. [And Chewy Vuiton too, and even Charbucks as it rejects the defense.]

 

A: yes, agree—we’re working on problems that don’t need much work. Courts haven’t taken up Souter’s invitation to make what is essentially a meaningless distinction, even if at first they were willing to try (Cat NOT in the Hat).

 

Ramsey: incentive to explain to potential witnesses that commenting = helpful (a problem in the LV Hyundai basketball ad). Global issue?

 

A: also a problem in Rosa Parks case.  Not going global in a symposium on Campbell, but it is an issue elsewhere. My position = what needs to be reformed is the admin process, which is US-focused.

 

Gibson: is the point to get more cases before judges b/c judges do a good job? Or what?

 

A: I want you to be able to reply to a C&D with “no, b/c X.” Categorical defense = great.  Simple & straightforward Rogers-like test = great. If they do sue, resolution should be cheap and early.  Not complicated confusion based tests but simple tests. I’m not trying to improve outcomes, I’m trying to improve defenses. [This actually sounds like a reason to make registration more substantive—and to defer to 2(d) rejections in subsequent confusion cases.]

 

Xiyin Tang, Against Fair Use: The Case for Genericide Defenses in Artistic Works

 

Rogers v. Koons: cited in the LV/Hyundai case.  Folded parody/1A defenses into each other.

Genericide: formerly protectable mark is found no longer protectable b/c stopped signifying source but rather the product itself.  Increasing intersection between luxury goods/art/commerce.  Original Campbell’s soup can à Warhol’s silkscreens of can à Warhol estate-authorized Campbell’s soup cans colored in honor of 50^th anniversary of silkscreens.  Genericness in a market = lose protection in that market. Murphy bed used to be a protectable TM, and then became the name for a bed that pulls down from the wall. 

 

In expressive context: b/c of the way rap employs tropes, like liquor brands and cars.  Rolls Royce sued a rapper named Royce Rizzy, demanding he stop using the RR mark in connection w/stage shows, albums, and merchandise.  Rizzy seems likely to settle. 

Genericness defense could discourage overzealous TM owners from going after expressive uses.  Many uses will just go away if you threaten; many artists lack time/energy to take to full trial.  Court could invalidate mark across a market—Cristal could be generic in the rap industry but retains secondary meaning in liquor industry.  Betty Boop on T-shirts: decorative/aesthetically functional—not a complete invalidation.

 

Rosenblatt: Genericity is about ordinary descriptive term for the goods; it means that expressive use isn’t applying as we usually understand it unless it’s already a mark for expressive goods.  What you’re talking about isn’t genericity so much as ubiquity or expressive value as a result of ubiquity—wouldn’t that make every famous mark generic for expressive goods?

 

A: some marks do catch on and are used more often as stand-ins than others.  Cristal in rap, compared to McDonald’s which is not used as much in expressive works.

 

Ramsey: need to know what marks would qualify. How would judges or juries decide. Also, how do you define what’s artistic?  Artistic designs are applied to shoes, product packaging, etc.

 

A: category of expressive use. You can create markets where you don’t need to define artistic works as a whole to invalidate a mark in a market.  Should introduce the idea of genericness into the public dialogue.  The way people are actually using it expressively.  “Gucci” to mean “fancy.”  [I was thinking about Idris Elba being, as they say, “one GQ m-------”].

 

McGeveran: courts are reluctant to find genericism because it’s so radical in consequences. Is this genericity or something else about confusion? Will using the term introduce ideas that you don’t want to have?

 

A: Abercrombie spectrum shows that you can fine tune genericity—SAFARI generic for hats, not for other apparel.

 

Heymann: maybe you really want to use the term functionality. 

 

Gibson: or TM use. 

 

Lemley: no, we can’t say that, we have to invent 20 different doctrines that serve the same function as TM use.

 

Q: what would balancing test look like in commercial use cases?

 

A: case by case.  Do you use mark as general stand-in for category of goods?  Was the brand involved in promotions in the industry in the past?  How close are the goods?

 

Q: what’s the relationship between nominative fair use and genericide?  You’re using this as references to ideas, not products: Louis Vuitton as a reference to luxury, not to a particular class of products.

 

A: we’ve seen a collapse between goods and goodwill—the mark is the product.  So the idea could be the thing that’s generic.

Transformative work of the day

Indiana Bones and the Raiders of the Lost Bark.  Via ST.

Seen at the Spy Museum

Matzohball, an Israel Bond thriller, a new adventure of Hebrew secret agent Oy-Oy-7, by Sol Weinstein, author of Loxfinger.

Today in parody shirts

I just acquired the Black Labour, White Guilt T-shirt from the Laugh It Off case, and I'm taking the opportunity to share some other parody shirts as well.

Black Labour, White Guilt

From my vacation:

Spider-Moose, New Hampshire

Then, continuing the moose theme:

John Moose, Calgary Canada, with moose in John Deere pose

Which let me, through a series of joke T-shirts, to:

"She wants the D" T-shirts with Disney D

That's probably the most offensive variant I saw; the others were all sports teams.  My search also took me to:

Just Shoot It shirt with Nike logo curving into duck head

That one was, in my opinion, the most artistically successful of the Just Shoot It shirts, with the Nike logo curving nicely into the duck's head.

Bike humor

Via Bikearlington on Twitter.  Hardly-Davidson "Born to be Mild" strikes me as a pretty good parody.

It’s a cookbook!

50 Shades of Chicken.  (If you got the title of my post, you are my people.)

Transformative work of the day, Old Spice edition

Or New Spice, according to the username: this YouTube video offers "the grades your grades could be like."

question of the day, sex toy edition (NSFW)

Today’s trademark (and possibly copyright) issue is highly not safe for work, unless your work is like mine!  Super Hung Heroes are sex toys.  The Batman takeoff, who protects and serves GoodHead City, is kind of sculptural genius, as is the Iron Man takeoff.  There are also toys based on the Incredible Hulk and Spiderman, but I wonder if the Batman/Iron Man versions are more vulnerable to copyright claims because they’re so much more clever and thus arguably incorporate the characters in their sculptural elements, not just in their marketing.  See ConWest Resources, Inc. v. PlaytimeNovelties, 2006 WL 3346226 (N.D. Cal.).  (Also, that seems to be Batman on the Batman package, whereas the other characters on the packaging aren’t visually identifiable from what I can see.)  Still, given the way courts treat sex in fair use cases, I’d expect a fair use defense to go well—I hardly think DC/Marvel are likely to enter this particular market, for all that certain of their products are male masturbatory fantasies.

User-generated content of the day

This bar mitzvah invitation made me see "We Are the Champions" in a whole new light. 

Okay, very obvious joke

... but Nicholas Taleb appears to be a bit fragile.  I'm sad that the blogger didn't just add a big disclaimer at the top of the parody post (or even tell Taleb and his publisher to pound sand, but that's a personal decision).  I'm sure that now that the parody is gone, no one will accuse Taleb of egomania.

latest political parody of a song

Call Your Zeyde. Though they haven't fared well in court, people keep making these.  Could it be because ordinary communication on the issues of the day is often most naturally and memorably expressed using popular culture, regardless of the supposed satire/parody divide that neither comports with our literary traditions nor respects Justice Souter's footnote in Acuff-Rose refusing to kick "satire" out of fair use protections?  Ahem.

latest entry in the "licensed parody" category

Darth Vader and Son, or, scenes from Luke's childhood if Vader had been a better dad.  (c) in the name of Lucasfilm, in case you're wondering.

Parody and magical thinking

I've seen enough about ThinkGeek's Unicorn Meat/the other white meat dispute with the pork folks that I didn't feel much need to talk about it, but this post from the Consumer Advertising Law Blog reminded me just how badly we tend to think about parodies:

However, parody is not a defense to infringement per se, but rather an argument that there is no likelihood of confusion—a necessary element of infringement—because consumers will know that the parody is a joke. A parody, though, must make fun of or criticize the trademark or its owner; using a trademark to make fun of something else is not a parody. Thus, to be a parody, Canned Unicorn Meat must be meant as commentary on THE OTHER WHITE MEAT or the NPB. If Canned Unicorn Meat does not qualify as a parody, ThinkGeek may face liability for infringement or possible dilution of the NPB’s famous mark.

The authors state the formal rule (and one that works well as a first cut, no pun intended, before we start to take the First Amendment into account), then immediately ignore that they have done so. That is, infringement liability depends on confusion. No confusion, no infringement liability. Parody is just one reason there might be no confusion. So is satire. So is the nonexistence of unicorns.

Forget the literary theory terminology. (Or pay more attention to it! Contrary to legal caricatures, literary theory has multiple perspectives on parody, almost none of which rigidly distinguish parody-as-commentary-on-a-single-work from parody-as-commentary-on-culture, which makes a fair amount of sense given that (a) different people see different types of commentary in the same thing and (b) works that inspire parody happen to be part of a broader culture. I adore Justice Souter, but that parody/satire divide in Campbell was not sufficiently qualified, even though he did try, in a footnote.) Like too many people considering parody and satire post-Campbell, the authors of this post have made the logical error of denying the antecedent: a successful parody isn't confusing, therefore something that isn't a successful parody is confusing.

And yes, I know that the post doesn't say this outright, since it only concludes that ThinkGeek "may" be liable. I consider that statement, in context, misleading. Suppose there's no commentary on pork. Do you think that the pork folks have partnered with ThinkGeek to sell you unicorn meat? Okay, then!

FTC ad parodies freecreditreport.com

Slate does the comparison for me, pointing out that freecreditreport.com's annual advertising budget is a significant fraction of the FTC's total budget. Annualcreditreport.com is the only truly free source of credit reports. The FTC actor sings "don't be misled," but the FTC has more tools than internet ads if people are being misled. Perhaps the FTC needs to revisit enforcement against freecreditreport.com.

consumer confusion in the under-3 set?

An anecdote, for whatever it’s worth: when my 33-month-old son saw me take Goodnight Bush out of the mailer, he said, “That’s my book!” When I explained that it wasn’t Goodnight Moon and we compared the two side-by-side, he said, “They match!” Then he insisted that I read him Goodnight Bush, though he soon lost interest. I don’t think his reactions are all that significant in terms of consumer confusion, given that a kid familiar with Goodnight Moon is unlikely to (a) be the purchasing agent or (b) be in the market for a second copy.

(Keep an eye on the Georgetown IP Teaching Resources RSS feed for a couple of scans for comparison purposes. Also, the news & reviews section on the official site, linked above, appears carefully culled for litigation purposes, focusing on the repetition of “political” and “parody.” Here’s hoping it works!)

I found some of the “goodnights” bitterly funny—my favorite was the blank page “goodnight air” changed to “goodnight allies.” The Twin Towers are alphabet blocks; Jesus rides a toy dinosaur for “goodnight evolution.” All in all, it’s more satire than parody, to the extent that one can tell the difference, though it does highlight the surrealism of the original Goodnight Moon as well.

Haute Diggity affirmed

Louis Vuitton Malletier v. Haute Diggity Dog (4^th Cir. 2007)

District court ruling discussed here; pictures of Chewy Vuiton dog toys here. The Court of Appeals affirmed the grant of summary judgment in favor of HDD on LV’s copyright, trademark infringement, and trademark dilution claims.

Trademark infringement was easy. As the court said, “[t]he dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable.” The court emphasized that, in parody cases, the valence of several key confusion factors is reversed – mark strength decreases the likelihood of confusion by making deviation in the form of parody easier to recognize. (I think this is true of many non-parodic deviations as well – but I don’t expect courts to agree any time soon.)

Of some interest is the fact that many orders for HDD’s products misspelled “Chewy Vuiton” as “Chewy Vuitton,” making it closer to LV’s mark. But those invoices, which often contained orders for other HDD parody products, made clear that the buyers understood the source; they were confused about the name of HDD’s product, not about source.

Dilution: LV argued that parodies necessarily cause blurring, and that HDD’s products would cause tarnishment because they pose a choking hazard to some dogs. According to the Fourth Circuit, dilution requires (1) a famous mark, (2) defendant’s use in commerce of a diluting mark, (3) similarity between the famous mark and the defendant’s mark that gives rise to an association between the marks, and (4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark. Crucially, the court thought the first three elements were clearly satisfied here. The parody “gives rise to an association” between the marks.

Rather than applying the statutory factors from the TDRA, the district court simply held that parodies don’t dilute because they depend on retaining a continuing association with the original. (The court of appeals politely said that the district court didn’t “directly apply” the statutory factors.) On appeal, LV argued that any use of an imitation of its mark would cause dilution as a matter of law, because LV’s use has to date been exclusive. The court of appeals perceived this as overreaching. Distinctiveness, it explained, “refers to the public’s recognition that the famous mark identifies a single source of the product using the famous mark” (emphasis added). Dilution, in this understanding, is simply about the information conveyed by the mark, not any emotional associations – it is about the mark, not the brand.

Conducting its own independent analysis of the six-factor TDRA test, the panel concluded that the district court had the right answer. Parody is not a complete defense when the defendant uses the parody as its own designation of source, as here. The parody exclusion only applies to non-source-identifying uses. But the TDRA doesn’t require courts to ignore the significance of parody even when the challenged use is a trademark use.

Thus, the court used the same ju-jitsu on the dilution factors as applied to parody as it did with confusion. “Indeed, by making the famous mark an object of the parody, a successful parody might actually enhance the famous mark’s distinctiveness by making it an icon.” Because mark strength favors the defendant in such an analysis, and because only strong, famous marks get protection in the first place, parodies start out ahead in the multifactor analysis. So also with the other factors: Intent to parody is not the same thing as dilutive intent; associations created by parody are not necessarily likely to decrease distinctiveness.

One way to read this is that a successful parody is a complete defense to dilution, even when used as a mark; the court’s analysis is not specific to anything about dog toys or high fashion. One phrase holds out the prospect that a properly conducted survey might help: “the facts impose on LVM an increased burden to demonstrate that the distinctiveness of its famous marks is likely to be impaired by a successful parody” (emphasis added). But what a survey might ask about is hard to figure out, since association alone – the usual focus of inquiry – is insufficient, at least in a parody case.

The court also limits its holding another way, perhaps attempting to avoid the conclusion that all successful parodies are nondiluting: “It is important to note, however, that this might not be true if the parody is so similar to the famous mark that it likely could be construed as actual use of the famous mark itself.” Use of LV’s “actual marks” as a defendant’s own marks could dilute, even as parody. (What that would look like is unclear to me.) Here, HDD’s dog toys “imitate and suggest, but [do] not use, the marks of a high-fashion LOUIS VUITTON handbag.” The “imperfect[ion]” of the use prevented any diminution in the link between the pristine LV mark and LV products.

Note: The Ninth Circuit takes a looser stance towards the amount of similarity required for dilution (at least until Judge Kozinski gets his pen on the TDRA), though it hasn’t yet considered a parody case.

Note the second: As with many recent trademark cases, “use” is a key term, but -- perhaps because it is so important -- it goes undefined. “Use” here seems to mean an actual replication, rather than a distinguishable facsimile.

The court also rejected the tarnishment claim because there was simply no evidence of a choking hazard. (Also, if the parody is recognized as a parody, even a product that reflected badly on the parodist should not harm the trademark owner’s reputation.)

On the copyright claim, the court observed briefly that LV was attempting to shoehorn copyright into what was really a trademark case. Applying copyright fair use to these facts was “awkward,” but, without further explanation, the court concluded that there was no copyright infringement.

How Harry Potter really ends

This Slate piece is parodying something -- but it's not Harry Potter. Fair use?

Like a free ride when you've already paid?

I've written before about the empirical weakness of the argument that copyright owners won't authorize parodies, but just realized I'd been overlooking a significant example -- Janis Ian. Ian released an excellent album, Revenge, and then recorded Janis Ian Shares Your Pain, an album of parodies/satires of the same songs. Both are available on iTunes. My personal favorite is "Stolen Tires," based on "Stolen Fire," but "Take Me Walking in Bahrain," based on "Take Me Walking in the Rain," is a wonderful take on the star-crossed lovers genre. Is it ironic that Ian, a great proponent of making some songs available for free on the internet to drive ticket and CD sales, is also trying to capture the market for parodies of herself?

I'll say it again: copyright owners aren't entitled to the market for parodies (and satires!) for normative reasons. If we accept purely empirical market definitions, copyright owners will just create licensing markets for everything.

Weird Al festschrift

Slate has an article on 25 years of Weird Al, with many links to YouTube videos of his oeuvre. Inevitably in discussions of transformative fair use or the parody/satire distinction, someone will bring up Weird Al (and the fact that he always gets permission). Here's Slate's argument that all Weird Al songs are parodies, not satires:

Even at their silliest ("I Want a New Duck," "Addicted to Spuds"), his parodies do important cultural work: They defuse whatever seriousness clings to the ubiquitous megahit, whatever tiny sliver of it colonizes our lives and makes us dream of a pop Xanadu where everyone has perfect abs and dances synchronously for our never-ending pleasure. He has singlehandedly tutored the MTV generation in critical thinking.