From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 3 July 2013

Is parody--not imitation-- the sincerest form of flattery for high fashion brands?

Fashion cat’s tail might
bristle at those parodie
It has come to this Kat’s attention that streetwear designers have been highly creative in marketing “"parody garments" of high-fashion brands. These clothing lines have been reported by many fashion bloggers, sported by numerous celebrities, and receiving much publicity quickly (possibly quicker thanks to the original brands they’re ripping). While some of those items might make one smile or snicker (i.e.: Bottega Vendetta, Homiès or Giraunchy), brand owners and their lawyers are pondering whether to take legal action for trade mark infringement.

Last March, the IPKat cleverly reported here on the possible introduction of parody exception in UK Copyright law. What about Trade Mark law? In the US, the “fair use” defence which includes parody, nominative fair use, comparative advertisement are all protected as exceptions to trade mark infringement under certain conditions, while the UK –and various other European jurisdictions- do not recognize it as such.

The parody requirements as laid down by US law (see the latest case, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 4th Circuit 2007) are summarized below – which could apply to the American streetwear designers: 

I. In order to prevail on a trademark infringement claim according to 15 U.S.C. § 1114(1)(a) for registered trademarks, or unregistered trademarks, a plaintiff must establish that:
1. It has a valid mark that is entitled to protection under the Lanham Act; and
2. Commercial use of the mark by the defendant - in connection with the sale . . . or advertising of goods or services,
5. Without the plaintiff’s consent, AND

6. The defendant’s use of the mark “is likely to cause confusion as to the affiliation, connection, or association of Defendant with Plaintiff, or as to the origin, sponsorship, or approval of the defendant’s goods, services, or commercial activities by the Plaintiff.”

II. To state a dilution claim under Trademark Dilution Revision Act of 2006 a plaintiff must show:
1. It owns a famous mark that is distinctive;
2. Use in commerce by the defendant that allegedly is diluting the famous mark;
3. similarity between the defendant’s mark and the famous mark gives rise to an association between the marks; AND

4. The association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.
• To determine whether a junior mark is likely to dilute a famous mark, courts consider all relevant factors, including:
i. The degree of similarity between the mark or trade name and the famous mark; 
ii. The degree of inherent or acquired distinctiveness of the famous mark;  
iii. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; 
iv. The degree of recognition of the famous mark;  
v. Whether the user of the mark or trade name intended to create an association with the famous mark; 
vi. Any actual association between the mark or trade name and the famous mark.

As a practical application to, for example, the parody for Cartier–- which ceased after a C&D letter, a Judge who –firstly must have a sense of humour-- and after examining all factors, could hold there is no trade mark infringement. Indeed, the more outrageous, shocking and/or offensive the parody, the less likely confusion will result.  In Cartier’s parody case, the shocking word would most likely balance the decision in favour of the parody designer.

However, if we look on the trade mark dilution, in particular a “tarnishment” claim, the parody designer definitely made a profit from riding the coattails of well-known brand Cartier and its inspiration derived from a bad customer experience, it would hardly pass the “parody” exception test.

In the UK, the Lady Gaga v Lady Goo Goo (High Court) precedent would certainly give the outcome that the parody constitutes trademark infringement under Article 10 (3) of the UK Trade Marks Act since it takes unfair advantage of the high fashion brands’ market.

What do the rest of our fashion IP readers thinks of the Hermès parody T-shirt here? – where should we draw the  line between permissive social commentary and offence to a brand’s goodwill?

Cartier-- a big cat lover’s ad here
Cat parodies of famous movies here and here


Michael Factor said...

South Butt?

Anonymous said...

It´s time to think twice if IP doing any good in fashion. Oprah Winfrey: ‘How do you keep reinventing?’ Ralph Lauren: ‘You copy. Forty-five years of copying; that´s why I´m here.’ Or think of Miuccia Prada´s statement: “We let others copy us. And when they do, we drop it”. Or Tom Ford: ‘Nothing made me happier than to see something that I had done copied”. Prada CEO Bertelli: ‘ I would be more worried if my product wasn´t copied”. So, perhaps copying is good?

Danny Friedmann said...

One can argue that parody belongs more in the domain of trademark dilution than in that of trademark infringement: "To amuse, not to confuse" (Jordache Enterprises, Inc. v Hogg Wyld Ltd., 828 F. 2d 1482 (10 Cir. 1987) para. 26). Or as the court put it in Haute Diggity Dog: "A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody. This second message must not only differentiate the alleged parody from the original but must also communicate some articulate element of satire, ridicule, joking, or amusement. Thus parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect."

Doctrinally a distinction is often made between trademark infringement (based on a likelihood of confusion) and the EU equivalent of trademark dilution "without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark" (based on blurring, tarnishment and free-riding). Therefore the heading "Infringement of registered trade mark" of Article 10 UK Trade marks Act (1994) only partially covers the contents of the full article, which includes Article 10(3) UK Trade Marks Act (1994), implementing the trademark dilution provision of Article 5(2) Directive 2008/95/EC.

Anonymous said...

How can ANY parody not be said to be tarnishing?

The point of parody is to throw derision at someone who is 'too mighty for their own good.'

Humor is in the eye of the beholder. Dark humor (gallows humor) is STILL humor.

Dilution should not encompass such tarnishment. A mark holder should not be able to control the battle for the customer's mind and what the customer thinks. Such tarnish-shield is an over-reach of state protection.

Anonymous said...

I beg to differ with the last anonymous. Consider the comments to the IPKAT post "Dreaming (Literally) about Patent Litigation and the "Right" Result" of Friday, 24 May 2013. Is the parody of "Bohemian Rhapsody" tarnishing of the original, or indeed tarnishing of anything else?

Anonymous said...

Thank you.

A loyal reader.

Gregory Chandler, Arbitration Judge

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