When branding a new product, many businesses allude to copyrighted works either to honor a creative work or cash in on a pop culture success. The practice is very common across a wide variety of products, including t-shirts, stickers, craft beers, and car commercials. You may even be considering alluding to a copyrighted work for your next product. However, brand creators are often unaware of the dangers associated with the practice, as it risks trademark and copyright infringement. This four-part series introduces the limits of the applicable legal doctrines, as well as the defenses available.
In Part I, we saw that brand creators allude to copyrighted works in branding because they want to associate their new product with the positive associations consumers already have with the copyrighted work. We also discussed three of the most common ways in which brand creators accomplish this allusion: brand name, trade dress, and advertising. In Part II, below, we examine the possibility of trademark infringement and defenses that are available.
Consumer Confusion and Dilution
Many authors of copyrighted works, especially those wishing to capitalize on merchandising, often register trademarks for the title of that work and the characters in it. Disney, for example, made $56 billion in retail sales of merchandise in 2021. So, brand creators wishing to allude to a copyrighted work want to ensure that they do not infringe on another’s trademark. A trademark is a word, phrase, or symbol that is used to identify a manufacturer of a good. The purpose of trademark law is to avoid consumer confusion among similar products and to prevent one manufacturer from usurping another’s good will. A trademark helps ensure that the associations and emotions that brand has developed cannot be misappropriated by competitors. Trademark infringement occurs when one uses another’s mark in a way that is likely to cause confusion, mistake, or deception. For example, it would be obvious trademark infringement if I created my own brand of chocolate-sandwich cookies and used the name “Oreo” because it would understandably create confusion in the grocery aisle.
Trademark infringement can also occur through dilution, which occurs when so many brands use the same name, or when one’s mark becomes associated with something negative or unsavory due to another’s use of that mark. For example, you’d better believe Disney would come after me if I began selling “Princess Cinderella Chewing Tobacco.” Even if consumers would not be confused into thinking that Disney was getting into the chewing tobacco business, Disney would certainly argue that the association of its wholesome character with the product constitutes dilution through the tarnishment of its trademark.
Trademark Fair Use Defense
While trademark rights provide the mark owner with exclusionary rights to prevent others from causing consumer confusion, it does not create an absolute right to control every use of that word, phrase, or logo. For example, how could a music critic review the latest Taylor Swift album without being able to use the name of that album in the review? Trademark fair use is a defense that protects certain uses of another’s trademark. There are three forms of the trademark fair use defense: descriptive fair use, nominative fair use, and expressive fair use. Descriptive fair use occurs when a term is used in good faith only to describe to consumers the good or service being provided. This defense would allow me to create my own cookie brand and refer to it on the packaging as a chocolate-sandwich cookie because I’m simply describing the product, and no one should be allowed a monopoly on that description. Nominative fair use allows one to use another’s mark to refer to the company or product represented by that mark. This defense would allow a food critic to publish an article declaring my chocolate-sandwich cookie as the worst thing she has ever tasted. Expressive fair use allows an up-and-coming rapper to use the name of my brand of cookies in his song to express some message about how terrible they are. For those of you old enough to remember it, Aqua’s early 2000’s hit song “Barbie Girl” is a good example of expressive fair use. Mattel sued, but the courts held that Aqua was allowed to express their message about the brand.
Trademark Parody Defense
A second defense available to brand owners is the parody defense, which is the use of another’s mark in order to comment on the owner of that mark by joining reference to ridicule. A successful parody of another’s trademark does not cause confusion, but rather communicates a message to the observer about the mark. Sometimes trademark parodies are harmless puns, and other times they are harsh criticisms. For example, a dog toy manufacturer that creates a $10 polyester dog toy labeled “Chewy Vuitton” and resembles famous high-end fashion designer Louis Vuitton’s handbags, is a harmless pun. However, a t-shirt modifying the Walmart logo to compare it to the Third Reich is intended to be harsh criticism of the company’s practices. Both fall under the trademark parody defense. The outcome of a trademark parody case is highly fact-dependent and very difficult to predict in advance. Currently, the U.S. Supreme Court is considering a trademark parody case involving a “Bad Spaniels” squeaking dog toy that resembles a bottle of Jack Daniel’s whiskey. The outcome of that case may provide more guidance in the future of this defense.
Although it may seem counterintuitive, brand creators hoping to allude to a copyrighted work in branding should begin with a trademark analysis to ensure its intended allusion does not cause consumer confusion or dilution of another’s mark. Or, if there is a risk of infringement, brand creators will want to ensure their allusion fits within one of the above defenses.
This article is taken from Paul M. Matenaer, Never Tell Me the Odds: How to Avoid Infringement When Alluding to Copyrighted Works in Branding, 22 Chi.-Kent J. Intell. Prop. 86 (2023).