Followers of the legal treatments of parodies of trademarks may want to skip immediately to footnote 4 of the decision.
You see the top two pictures above? One side of the bag says ‘My Other Bag …” and the other side is a depiction of an LV bag. Get it? Ok, that’s fair use. LV’s causes dismissed.
You see the picture of the ‘LV’ basketball? The SDNY ruled in 2012 that that was actionable. And now this SDNY court says in footnote that it won’t follow Hyundai.
HERSHEY COMPANY v. FRIENDS OF STEVE HERSHEY http://t.co/6wWmNFLu5a
— TrademarkBlog (@TrademarkBlog) September 6, 2014
By The Way, It's The Devotion of Resources To This Sort Of Thing That Erodes Our Nation's Competitiveness
Let me just channel the voice of an old cranky person first: the reason why the fact that Mike “The Situation” Sorrentino is a wealthy person is a bad thing, is that it sends the message to young people that you don’t actually have to work hard at math or science or some other useful field, to be successful. You merely have to be fabulous.
OK, I got that out of my system. So back in August, Abercrombie & Fitch, as part of an (alleged) publicity stunt, announced that it would pay The Situation to NOT wear its clothes. It also offered shirts such as that above, referring to “The Fitchuation.”
The Situation is now suing, alleging false endorsement (and alleging that Abercrombie never actually contacted him regarding its ‘offer.’ This has the makings of a pretty interesting fact pattern. A defendant has a free speech right to comment on the plaintiff and a right to parody plaintiff. Also, there also is an explicit statement by defendant that it doesn’t want plaintiff to endorse it. However, there is an interesting ‘meta’ aspect to this in that in view of the novelty of the public statement, and in view of the “Fitchuation” merchandise, that a certain segment of the public might believe the exact opposite: namely that The Situation is in on the joke.
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.
Those of you not put off by the blogging ‘inside baseball’ aspect to this post will be interested by the dispute between blogger/author/interviewer Shel Israel, author of ‘Naked Conversations,’ and the naked Shel Israel parody puppet. As noted by TechCrunch, the parody show seems to be doing better than the original, which does not please the original.
From the August 2002 Trademark Blog, we dredge up a Judge Mukasey opinion in the TIMMY HOLEDIGGER case. Tommy Hilfiger had gone after a parody usage for pet perfumes and the Judge cited language in the previous Barbie Girl in which the Court had advised the parties to chill.
TheSmokingGun provides a copy of the complaint filed by Evel Knievel in the Middle District of Florida, alleging that musician Kanye West infringed Mr. Knievel’s rights in his name, likeness and jumpsuit (I’m serious about the jumpsuit), by portraying a character named EVEL KANYEVEL who attempts to leap a canyon in a rocket, in his music video for the song ‘Touch The Sky” (above).
Interestingly, AOL is a named defendant, apparently because it returns the video as a search result for a search for EVEL KNIEVEL.
Atrios is the pseudonym for a blogger who writes for the popular Eschaton blog. Three times today he posted critical comments of Arlen Specter and ended all of them by providing Specter’s contact info and the exhortation that his readers call Specter and ask him provocative questions.
If many people called Specter and ask him provocative questions, Specter may well be annoyed.
Does Specter have a cause under the new Intent to Annoy law (that he had a hand in drafting)? Can he force Atrios to testify as to his ‘intent’?
Atrios provides a link to what he says is his real name. Is that a complete defense? Does Atrios have to forego anomynity because of this law?
More on Intent to Annoy here from Professor Volokh, (emphasizing that for purposes of anti-stalking laws, one-to-one communications such as phone and emial, are qualitatively different from one-to-many communications, such as websites.