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Fashion cat’s tail might bristle at those parodies |
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.
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
South Butt?
ReplyDeleteIt´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?
ReplyDeleteOne 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."
ReplyDeleteDoctrinally 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.
How can ANY parody not be said to be tarnishing?
ReplyDeleteThe 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.
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?
ReplyDelete
ReplyDeleteThank you.
A loyal reader.
Gregory Chandler, Arbitration Judge