Plaintiff uses the mark UTAH LIGHTHOUSE in connection with goods and services that critque Mormonism. There has been extensive history between plaintiff and the LDS faith. Defendant FAIR responds to such critiques, and created a parody website that was similar in appearance to that of Plaintiff. Defendant used domain names such as UTAHLIGHTOUSE.COM to direct to the parody site (the names listed in this summary of the case on the Citizen Media Law Project’s site all appear to point to plaintiff’s site as this time).
There are complex and controversial issues here involving the intersection between trademark use and parody, and what constitutes commerical use of a trademark in a primarily religious/political speech context, similar to the issues raised by cases such as PETA v Doughney and JEWS FOR JESUS v Brodsky
Which issues I will not address in this post today.
I instead want to talk about the strange way the issue of whether plaintiff had a protectable mark was handled. Plaintiff received a registration 3119677 for UTAH LIGHTHOUSE after filing its complaint. Sections 7(b) and 33(a) of the Lanham Act discuss the evidentiary presumptions that a registered mark receives, including the validity of the mark as a protectable mark. See also McCarthy Section 32.134 and 32.138 for a general discussion of the presumptions that flow from a trademark registration.
In addressing the requirement as to whether it owned a protectable mark, plaintiff appears to have only cited its registration and relied upon the presumption. The District Court held that because the mark was not registered at the time the suit was filed, plaintiff was not entitled to that presumption (pg. 8) and then found that plaintiff had not shown secondary meaning (and then proceeds on a tangent about the absence of secondary meaning).
On appeal, plaintiff argues that even without the presumption, UTAH LIGHTHOUSE was inherently registrable.
The 10th Circuit choose not to entertain this argument as it had been raised only on appeal for the first time.
Oddly, it also finds that plaintiff failed to produce sufficient evidence that UTAH LIGHTHOUSE was protectable. If the registration was in the record, then, because it was issued under Section 2(a) and not 2(f), it would seem to be at a minimum evidence of the PTO’s expert opinion that UTAH LIGHTHOUSE was inherently registrable as of March 21, 2005, the application’s filing date (prior to the date that the suit began). With a minimum of evidence of trademark use (such as plaintiff’s website), it is hard to see how defendant could establish that the mark wasn’t protectable.
It could be that plaintiff’s travails could have been avoided by plaintiff merely arguing in effect ‘we are entitled to a presumption because of our registration but in any event, the mark is inherently registrable . . .’, and that the court is penalizing the lawyering (unfettered by knowledge, I speculate freely).
As I stated above, I’m not speaking to the questions as to whether defendant’s actions rose to commercial use, and whether it had good parody or other defenses. Based on one reading of the circuit court opinion, and none of the underlying documents, the holding that UTAH LIGHTHOUSE was not a protectable mark seems problematic at best.
Boing Boing: 50 Greatest Commercial Parodies Of All Time
Some websites are reporting that Vuitton actually sued the artist who created the Darfur t-shirt (background here), soemthing I have been unable to confirm. Here is an interesting analysis from a brand analyst from Forrester Research as to what Vuitton’s options are in a situation like this.
The Seattle Trademark Lawyer has a post on Kerusso, a seller of Christian-themed t-shirts. Several of its reported best-sellers are based on well-known trademarks. STL points to two Ninth Circuit cases, the Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997), and the Barbie Girl case, Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901 (9th Cir. 2002), to conclude that these are likely infirnging uses. To put it simply, the shirt uses the Deere logo (for example) not to mock Deere but to get attention, and therefore is not a permissible parody.
However, to refer out loud to the elephant in the room, a trademark owner protesting such a usage runs the risk of being seen as anti-First Amendment and anti-religious expression. This can be handled in part by emphasizing that Jesus Christ is not a named party to an infringement suit but Kerusso Activewear, Incorporated, would be.
Prof Patry: I Was a Maid In A Porno Store II Family Guy does ‘joke’ depicted above, Carol Burnett sues, judge does good fair use analysis, Family Guy prevails.
HT Talking Points Memo.
Discuss, using the phrases ‘Cat Is Not In The Hat”, “Mastercard v. Nader” and “Weird Al Yankovic” in your answer.
UPDATE: Friend of the blog James G. points out that the ‘Here’s to the crazies’ commercial has been done before. Same question as above. As for me, I think both analyses would come out the same way but one parody would be easier to defend than the other.