The more common association with parody is for copyrights, where a parody may be protected under the statutory "fair use" doctrine. But there is a well developed body of case law for parody under the trademark laws. There is statutory protection for a parody as a defense to a trademark dilution claim, but not for a trademark infringement claim. A trademark 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. While a parody must call to mind the actual product to be successful, the same success also necessarily distinguishes the parody from the original product. To the extent it does only the former, not only is it a poor parody, but is vulnerable to attack by the trademark owner. The second message must not only differentiate the parody from the original, but also must communicate some articulable element of satire, ridicule, joking, mockery or irreverent commentary. The parody relies on a difference from the original mark, presumably a humorous difference, in order to produce the desired result. The parody must be able to conjure up enough of the work to make the object of its parody recognizable.

A key question for a parody is whether the speaker has created confusion by identifying the mark as the actual source of the message as opposed to simply the target of the parody. When parody is taken to a certain degree, it becomes clear that the trademark owner was not involved in the manufacture or sponsorship of the defendant's product. When a parody is clear, the parodist is not trading on the good will of the trademark owner. Rather, his sole purpose for using the mark is the parody itself, and for that reason, the risk of consumer confusion is at its lowest. A very strong mark may be a more effective target of parody since its popularity and fame is exactly the mechanism by which likelihood of confusion is avoided. While a parody may engender some initial confusion, an effective parody will diminish the risk of consumer confusion by conveying only enough of the original to allow the consumer to appreciate the point of the parody. Where the unauthorized use of a trademark is for expressive purposes of parody, allusion, criticism or commentary, the law requires a balancing of the rights of the trademark owner against the interests of free speech. Because of First Amendment concerns, expressive works are given more deference than a commercial product.

Illustrative Second Circuit Cases Finding a Successful Parody

In Louis Vuitton Malletier, S.A. v. My Other Bag, 156 F. Supp. 3d 425 (S.D.N.Y), aff'd 674 Fed. Appx. 16 (2d Cir. 2016), a relatively recent case, the Second Circuit upheld a parody defense. This case principally involved a parody defense to a trademark dilution claim, and the analysis focused on it. The case involved a tote bag, called "My Other Bag," a commercial product. Its name was a play on the popular "my other car" bumper stickers on inexpensive, beat up cars which inform passerby cars that the driver's "other car" is a luxury brand item. The defendant sold canvas tote bags bearing caricatures of iconic designer handbags on one side and the text "My Other Bag," on the other. The defendant marketed its bags as "eco-friendly, sustainable tote bags playfully parodying" high end designer bags, in this case Louis Vuitton (LV).

The Second Circuit affirmed the district court's ruling that the defendant's tote bag was protected as a parody. In finding a successful parody, the Second Circuit reasoned that "at the same time [that defendant's tote bags] mimic LV's designs and handbags in a way that is recognizable," they do so in a manner "that is such a conscious departure from LV's image of luxury" so as to convey to the consumer that its tote bags were not LV handbags. The Second Circuit further reasoned that the "fact that the joke on LV's luxury image is gentle, and possibly even complimentary to LV [did] not preclude it from being a parody." The Second Circuit considered that the parody of LV's carefully cultivated luxury image was the very point of defendant's inexpensive, utilitarian tote bags. The Second Circuit contrasted this case with those where the trademark was used merely to promote or sell a product or service, which runs afoul of the trademark laws. It cited its prior decision in Starbucks v. Wolfe's Borough Coffee, 588 F.3d 97 (2d Cir. 2009), where it rejected a parody defense. In that case, the Second Circuit found that the defendant's use of the "Charbucks" mark for its dark roasted coffee did not qualify as a parody because it was not presented as a satire or irreverent commentary of Starbucks, its well-known competitor, but rather to identify its coffee as being at the same level and quality as the coffee sold by Starbucks.

In Cliffs Notes v. Bantam Doubleday Dell Publishing Group, 886 F.2d 490 (2d Cir. 1989), the Second Circuit found that the defendant had established a successful parody defense to a trademark infringement claim. The Cliffs Notes case was brought by the publisher of the well-known study guides known as Cliffs Notes, which are condensed versions with brief analysis of short stories, plays and books. Most of the titles were ones that would typically be found in college literature classes. The defendant was a well-known publishing company which published "Spy Notes." Spy Notes was written principally by the editors of Spy Magazine, which contains a mixture of journalism, humor and satire, had a substantial circulation, and received considerable acclaim. The idea behind Spy Notes was to poke fun at certain novels with literary shortcomings familiar to the readers of Spy magazine, and thus were a natural target for Spy's satirical commentary. As to Cliffs Notes, Spy Magazine's editors thought that a study guide would provide an ideal vehicle for a parody of Cliffs Notes in that the "flat straightforward, academic style of Cliffs Notes would appear incongruous with the cool, ironic, sophisticated, urbane novels it discussed, and thus greatly enhance the humor of the satire." The defendant-publisher admitted that it used prominent features of Cliffs Notes in order to make Spy Notes an effective parody. While noting certain similarities of the two works, the Second Circuit found that there were important differences. These included that the cover of Spy Notes prominently stated, "A Satire" five times; had the logo of Spy Magazine; was to be sold in packaging that prominently featured the Spy name; used colors different than those used on the cover page of Cliffs Notes, and there was a substantial disparity in the price of the two publications. In addition, both the title page and the copyright notice page indicated that Spy Notes was written by the editors of Spy Magazine and published by Defendant, and the copyright notice page also stated that "Spy Notes is a parody of Cliffs Notes."

The Second Circuit began its legal analysis by stating that parody is a form of artistic expression protected by the First Amendment. The case before it involved an expressive work, which is entitled to greater protection. The Second Circuit applied a balancing test that it had previously employed in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), rather than the traditional Polaroid test. (The Polaroid test is an eight-factor test to determine whether there is a likelihood of confusion, which was first announced in the case of Polaroid v. Polared Elecs., 287 F.2d 492 (2d Cir. 1961).) In Rogers, the Second Circuit stated that the trademark laws "should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." The Second Circuit then stated that nevertheless, trademark protection is not lost simply because the allegedly infringing use is in connection with a work of artistic expression, and that books are sold in the commercial marketplace like other more utilitarian products, making the danger of consumer confusion a legitimate concern that warrants some regulation. The Second Circuit noted that there was a conflict between these two policies because the keystone of parody is imitation. Cliff Notes argued that the court should simply apply the Polaroid factors to determine whether there was a likelihood of consumer confusion. The Second Circuit disagreed, stating that in a case involving an expressive work, the court should weigh the public interest in free expression against the public interest in avoiding consumer confusion, and that the expressive element of titles requires more protection than the labeling of ordinary commercial products. (The Second Circuit noted that "the Polaroid test has its origin in cases of purely commercial exploitation, which do not raise First Amendment concerns. Thus, the Polaroid test is at best awkward in the context of parody which must evoke the original and constitutes artistic expression. In such a situation, the Polaroid factors should be applied with proper weight given to First Amendment considerations.") The Second Circuit believed that a balancing test "allows greater latitude for works such as parodies, in which expression and not commercial exploitation of another's trademark, is the primary intent, and in which there is a need to evoke the original work which is being parodied." The Second Circuit reasoned that "somewhat more risk of confusion is to be tolerated when a trademark holder seeks to enjoin artistic expression such as a parody." In the case before it, the Second Circuit concluded that the "degree of risk of confusion between Spy Notes and Cliffs Notes does not outweigh the well-established public interest in parody …" The Second Circuit held that there was not a likelihood that an "ordinarily prudent purchaser would think that Spy Notes is actually a study guide produced by [Cliffs Notes] as opposed to a parody of Cliffs Notes," and rejected the trademark claim.

Hormel Foods v. Jim Henson Productions, 73 F.3d 497 (2d Cir. 1996) involved the use by the defendant, Jim Henson Productions (Henson), the creator of the extremely popular and famous Muppets, of a character in its film Muppet Treasure Island, named "Spa'am." (Henson's most famous characters also appeared in the film). The plaintiff was the company which produced and marketed its widely sold luncheon meat, under the name and trademark "SPAM," which is a strong mark. Plaintiff claimed that Henson's use of "Spa'am" infringed its trademark. The issue on appeal did not involve the use of "Spa'am" in the movie but whether Henson's use of Spa'am on various movie related merchandise (arguably entitled to less protection as a parody than the film, since the use was on commercial products) violated plaintiff's trademark rights. The merchandise involved licensed products depicting scenes and characters from the movie, including a video game, food, books, and clothing. Unlike in Cliffs Notes, the Second Circuit applied the traditional eight factor Polaroid test in the context of a parody.

The Second Circuit stated that the Muppets are familiar to television and motion picture audiences, and are "well-known for parodies of brand names, trademarks, television programs, fictional characters and celebrities." The Second Circuit reasoned that "where the plaintiff's mark is being used as part of a jest or commentary … and both the plaintiff and defendant's marks are strong, well recognized, and clearly associated in the consumer's mind with a particular ethic … confusion is avoided." The Second Circuit considered it significant that the words "Muppet Treasure Island" would always be prominently displayed where the name "Spa'am" appears. The prominence of the Henson marks, widely recognized as a source of satire, would make it clear that the merchandise itself parodies plaintiff's product, a message which depends on its success in distinguishing Spa'am from SPAM. In reaching the likelihood of confusion determination, the Second Circuit found that "the clarity of Henson's parodic intent, the widespread familiarity with Henson's Muppet parodies, and the strength of [plaintiff's] mark, all weigh strongly against the likelihood of confusion as to source and sponsorship between [plaintiff] and the name Spa'am." For these reasons, the Second Circuit rejected plaintiff's trademark infringement claim.

Howard Wintner is the director of litigation at the Abramson Law Group.