Just Kidding

Q: Can I use a trademark for parody?[1]

A: Yes, if the interests of free speech outweigh the rights of the trademark owner.[2]

WTF: What’s that mean?

OK: Maybe some examples will help.

HMMM: So, it’s OK as long as it’s hilariously funny.

NOPE: “First Amendment protections do not apply only to those . . . whose jokes are funny and whose parodies succeed.”[4]

SO: Really bad parody can be OK?

MAYBE: But if the parody totally fails then you’re probably infringing because when people don’t get the joke, they’re more likely to be confused about the source of the goods or service.[5]

UH OH: Maybe I just shouldn’t do it.

NO NO: Parody is really important and the courts go out of their way to protect the 1st Amendment from overzealous trademark owners.

BUT: If I do it, I’ll probably get sued.

OH YEAH: And only famous trademarks are worthy of parody, so the company suing you will have lots of money. But, Topps® made Whacky Packaging for years.

HA!: Yeah, until they got sued by Coleco over the Garbage Pail Kids series.

WELL: That did happen. What can I say? Comedy is a risky business.


[1] We’ll be talking about parody, but the rule is the same for any type of comedy, criticism, news reporting, or commentary. It’s just that parody really pisses off trademark owners and those are the ones that get litigated. “The message of these cases is not merely that parody is accorded First Amendment deference, but rather that the use of a trademark in the communication of an expressive message is accorded such deference.” Yankee Pub. Inc. v. News America Pub. Inc., 809 F. Supp. 267 at 279 (S.D.N.Y. 1992).

[2] Yankee Pub. Inc. v. News America Pub. Inc., 809 F.Supp. 267, 276 (S.D.N.Y. 1992)

[3]  The image of the poster is about half way down the page.

[4] Yankee Pub. Inc. v. News America Pub. Inc., 809 F. Supp. 267 at 280 (S.D.N.Y. 1992).

[5] “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. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the customer will be confused.”Cliff Notes, Inc. v. Bantam Doubleday Dell Publishing, 886 F.2d 490, 494 (2nd Cir. 1989)

The Greatest Legal Opinion of All Time

Twenty years ago, Jim Henson released Muppet Treasure Island and the accompanying merch. The film included a charming boar named Spa’am.

The executives at Hormel were “not amused” and worried that their sales of SPAM would plummet if it were linked with “evil in porcine form.” (You really can’t make this stuff up.)

There’s a veritable treasure trove of brilliance in Judge Ellsworth Van Graafeiland’s opinion. His destruction of Hormel’s infringement and blurring claims were just the warm-up. He really starts to sing when he addresses Hormel’s claim that Henson’s use tarnishes the SPAM trademark.[1]

Tanishment is when someone’s trademark suffers negative associations, usually associations with sex, sex, or crime. Hormel claimed that “linking its luncheon meat with a wild boar will adversely color consumers’ impressions of SPAM.”

Judge Van G pointed out that Spa’am is “a likeable, positive character” that won’t generate “any negative associations.” There was “no evidence that Spa’am is unhygienic or that his character places Hormel’s mark in an unsavory context.” (Seriously, there was an expert in children’s literature who testified that “Spa’am is a positive figure . . . even if he is not ‘classically handsome.’”)

Then Judge Van G gets out his hammer for the last nail in the Hormel coffin: A “simple humorous reference to the fact that SPAM is made from pork is unlikely to tarnish Hormel’s mark.”

That can be loosely translated to: SPAM isn’t exactly a luxury brand and being linked to the Muppets can only help.

I love you, Judge Van G.

[1] There’s this thing called dilution. It’s not infringement and isn’t based on being confusingly similar. There are two kinds of dilution: Blurring and tarnishment. Hormel claimed both.