The Logo Parody Under Trademark Law: Things Can Get Not That Funny

*** The writing does not, and is not intended to, constitute legal advice by any means***

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GUCCI SELF-PARODYING ITS LOGO

One of my subscribers asked whether it would be an actionable cause to sue someone for making a "parody" of a fairly well-known logo and sell his or her goods that bear the parodied logo. In fact, logo parody lawsuits are not so uncommon. For example, Chanel sued a streetwear brand for using its double C logo as the central element of its design. (The defendant is the same streetwear brand that made the "Ain't Laurent with Yves" t-shirt that went viral online.) In order to fully understand what's at stake, we should first discuss the underlying policies behind trademark law. The goal of trademark law is two-fold. On one hand, trademark law aims to prevent potential and actual infringers from free-riding on the goodwill a brand has painstakingly earned over the years in the market. On the other hand, it seeks to protect consumers from being confused and misled when they purchase goods and services.

Trademark law thus protects almost anything that serves as a source identifier. The Lanham Act provides a federal statutory basis for trademark infringement. The relevant portion of the Act defines a trademark as "any [emphasis mine] word, name, symbol, or device, or any combination thereof", which is used to "identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if the source is unknown". See 15 U.S.C. § 1127. The Supreme Court has interpreted this definition expansively, pronouncing that a trademark can be literally anything. Justice Breyer said that "the language of the Lanham Act describes the universe in the broadest terms. Since human beings might use as a symbol or device almost anything that is capable of carrying meaning." See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 162 (1995). Under this broad construction of the statute, trademark protection now extends to colors and scents. So it isn't surprising at all that brand logos are eligible for strong trademark protections in law because they are the surest source identifier of all the things you can possibly imagine. (Even, product packaging receives trademark protections subject to certain requirements and qualifications. I will discuss in future blogposts the idea of trade dress!)

Faced with infringement lawsuits, the alleged infringers, in most cases, put forth the parody defense. Therefore, the answer to the subscriber's interesting question hinges on how a court would apply the facts of a case to the parody analysis courts have come to adopt. Of course, I cannot give the definite answer as to who will prevail. However, I can give you the general analytical framework under which I think the court would proceed. Remember, however, that every case requires a fact-sensitive inquiry, which means that certain facts absent in other cases can make the outcome to come out differently.

In order to win a trademark infringement lawsuit, the plaintiff must prove the following three elements of the legal claim: 1) plaintiff's valid ownership of a protectable mark, 2) defendant's unauthorized use of the protectable mark, and 3) the likelihood of consumer confusion.

[Elements 1 and 2]
If the brand that owns the original logo registered its mark on the Principal Register, the presumption is that the ownership is valid. Since the registration serves as the prima facie evidence of valid ownership, almost all fashion brands register their marks in connection with their goods and services. Also, in cases of parody, the defendant invariably uses the logo without the consent of the owner and makes a colorable alteration of it. Therefore, the first two elements are rarely contested.

[Element 3] If there's a likelihood of consumer confusion, the parody is out of luck, even it's a parody in the eyes of law.

i) Is the logo parody a "parody" in the eyes of law?
Parody has a literary origin. In the eyes of law, however, not everything is seen as a parody. The Fourth Circuit, in its famous Louis Vuitton decision, perceptively observed that "a parody must convey two simultaneous - and contradictory messages: that [the parody] is the original, but also that it is not the original and is instead a parody." It also added that the parody "must communicate some articulable element of satire, ridicule, joking, or amusement" to produce "its desired effect". This particular characterization suggests that consumers should be able to see the difference between the original and the parody and know that the aim of the parody is to satire, ridicule, joke, and amuse its viewers. If that's the case, the original can still serve as an effective source identifier. It also does not help that most parodied works are sold commercially, as opposed to being offered for making pure social commentary.

ii) Is the parodied logo likely to create consumer confusion?
If the likelihood of consumer confusion is strong, trademark protection is most likely to be granted to the owner of the original logo. This becomes the battle of surveys. Each side will come up with their own surveys that demonstrate the likelihood or unlikelihood of confusion if the parodied logo is used in connection with commerce. The Second Circuit laid down a 8-factor test (the so-called "Polaroid factor test") to determine whether the infringement is likely to cause market confusion. The factors include the strength of the registered mark, the similarity between the registered mark and the mark used by the alleged infringer, the allegedly infringing product's competitive proximity to the registered owner's product and the list goes on. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F. 2d 492, 495 (2d Cir. 1961). Another way to go about this is to prove actual confusion, which is much harder to prove but is a stronger form of evidence than the likelihood of confusion. If there were consumer complaints, they are strong pieces of evidence in favor of actual confusion. Plus, if the complaint comes from someone who is familiar with both brands, its evidentiary value is really high. This line of inquiry goes hand in hand with the protection of goodwill. The parodied logo, whether intentionally or intentionally, end up diluting the market value of the original logo, thereby vitiating the strength of a hard-earned goodwill.

In addition, the federal statute provides extra protection for famous marks. Depending on whether a given logo qualifies as famous, it can, if it wishes to do so, obtain a court-issued injunction in order to prevent infringers from distributing the parodied goods while the litigation is underway.

Some brands are taking more creative approaches to the issue. Vetements, having discovered a lot of counterfeit logo goods, launched a self-parody collection. Gucci took the similar approach with its "GUCCY" t-shirts and sweatshirts. I am ambivalent on whether this is a better approach, yet it seems the audience is reacting positively to the idea of fighting the fake with the real. Sometimes, brands have to take into account possible public reactions if the news of a potential lawsuit goes out. It sometimes does not look good if luxury brands go after small businesses despite the fact that it has little to with the rightful protection of their logos and marks associated with them.

P.S. Thanks for the wonderful question. Feel free to leave your thoughts or questions in the comment section below. I felt like I was taking a law school exam (just joking!) because this is exactly how you'd answer.