Balancing Trademark Enforcement With Free Speech

At the abstract level, there is no inherent conflict between the principals of free speech and the goals of trademark law.  Trademark law–at least in theory–promotes free speech in commercial affairs.  See TE-TA-MA Truth Foundation—Family of URI, Inc. v. World Church of Creator, 297 F.3d 662 (7th Cir. 2002) (holding that a church does not have a constitutional right to use the name of another church if it would cause confusion).

However, in individual cases, there can be a real conflict between the two competing goals of trademark law to prevent the likelihood of confusion and the goal of free speech to create a zone of open social, artistic, political and commercial expression. For businesses and some artists, the question is whether and to what extent unpermitted use in a media product such as a motion picture, television, or other work is an infringement of a commercial trademark or service mark.

The Rogers Test

The majority of courts use the Rogers balancing test named after the case of Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). Under Rogers, courts must balance the right of the trademark owner to prevent confusion against the free speech rights of the creator of the accused expressive work. The finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interest. A mark used in an accused expressive work will be prohibited as an infringement or false designation under the Lanham Act if it has “no artistic relevance” to the underlying work or, if there is artistic relevance, the title “explicitly misleads as to the source or the content of the work.” Note that the Rogers balancing test applies only to expressiveworks and has no application to commercial works such as traditional advertising or an infomercial.

Examples

  • Trademark for TRON for electrical fuses might have been infringed by TRON, the motion picture.  See McGraw-Edison Co. v. Walt Disney Productions, 225 U.S.P.Q. 512 (N.D. Ill. 1985).
  • No infringement of pinball machine trademark by full-length feature entertainment film that briefly showed the pinball machine in the background. See Gottlieb Development LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625 (S.D.N.Y. 2008).
  • No infringement by video game set in cartoon virtual city modeled after Los Angeles, which depicted a club called the “Pig Pen” a reference to and depiction of the real life LA strip club “Play Pen.” The Ninth Circuit found that the video game was an expressive work and that under Rogers, the use of the strip club had artistic relevance and the use did not explicitly mislead. See E.S.S. Entertainment 2000 v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008).

Negative Connotations

The appearance of a trademark on a product used in a negative context in an expressive work will probably not infringe that mark using the Roger’s balancing test.

Examples

  • The song “Barbie Girl”, by Aqua was the subject of litigation. Mattel sued for dilution and likelihood of confusion over the title and lyrics. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) (“Some trademarks enter our public discourse and become an integral part of our vocabulary…[T]he trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function.”).
  • In novel, the following text appears: “The evil Doctor Pain giggled as he sipped on a straw, which he dipped into his favorite beverage: Bacardi dark rum and Pepsi-Cola served in a chilled skull.”  Held: No infringement, citing Mattel v. MCA Records.
  • In another case, a court denied an injunction against Disney’s release of children’s movie in which the villain gang drives CATERPILLAR branded bulldozers which attack the hero. The Court concluded that it was unlikely “that any consumer would be more likely to buy or watch [the accused movie] because of any mistaken belief that Caterpillar sponsored the movie.  See Caterpillar Inc. v. Walt Disney Co., 287 F.Supp. 2d 913 (C.D. Ill 2003) (“George of The Jungle”).
  • The same conclusion was reached in a movie depicting improper use of SLIP ‘N SLIDE. A court held that no one would be confused into thinking that the maker of the toy had anything to do with the movie and no dilution or tarnishment was found—the court noting that the trademark will not be “tarnished” when a product is obviously misused (and in a clearly comedic way) in a movie. See Wham-O, Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254 (N.D. Cal. 2003).

Parodies

Certain parodies of trademarks may be permissible if they are not too directly tied to commercial use. Artistic and editorial parodies of trademarks serve a valuable critical function, and this critical function is entitled to some degree of First Amendment protection. In general, courts appear to be more sympathetic to the extent that parodies are less commercial, and less sympathetic to the extent that parodies involve commercial use of the mark.

Parody Examples

  • A Risqué parody of an L.L. Bean magazine advertisement was found not to constitute infringement.  See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987).
  • Use of a pig-like character named “Spa’am” in a Muppet movie was found not to violate Hormel’s rights in the trademark “Spam.” See Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996).
  • “Gucchie Goo” diaper bags were found not to be protected under the parody defense.  See Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977).
  • Similarly, posters bearing the logo “Enjoy Cocaine” although clearly not likely to confuse were found to dilute the rights of Coca-Cola in the slogan “Enjoy Coca-Cola.”  See Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972).
  • In a movie aimed at teens, a fictional clothing brand was named BUFU as a parody of FUBU. The court found neither infringement nor dilution because of First Amendment immunity, noting that the fact that the challenged use was embodied in crude and offensive language was irrelevant: “To whatever extent, if any, one regards the parody as lewd or offensive, or whether one actually appreciates its comedic value, is entirely irrelevant to the issue of whether this expression of ideas should be afforded First Amendment protection and judicial evaluation of the former sort will not be made.” See GTFM, LLC v. Universal Studios, Inc., 2006 WL 1377048 (S.D.N.Y. 2006) (“For Us, By Us” parodied in move as “By Us, F*** You.”).
 
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