This article originally appeared in the 5.17.12 issue of Metroland
Trademark law can be a lot of fun. Some of you ancient folk
might remember the great QE2 debacle of the late ‘80’s when Dave and Char Shortsleeve
got a nastygram from Cunard Lines, telling them that their little punk club on
lower Central (now the Fuze Box) was offering many of the same goods and
services as Cunard’s luxury liners, so they had to immediately cease and desist
use of the name QE2 for the club. Hey sailor! Ships ahoy!
This was so silly it made national news.
Fact is, the Q had lifted imagery from the Sex Pistols for their logo,
but nobody seemed too concerned about that.
owners have always been a little over-protective of their stuff, and often
shoot first and ask questions later when they see somebody else using their
mark. Thing is, what a trademark owner
actually owns is pretty narrow: the sole right to use the mark to identify the
source of a good or service in commerce, and the right to stop others if mark is
being used in a way that will confuse consumers. Generally, if somebody else uses your mark in
a way that doesn’t confuse consumers, that’s OK. In other words, your trademark rights can’t
be used to stop people from talking about you.
nuts and bolts of trademark law are all kinds of messy, because there are grey
areas and judgment-call issues all over the place, and so courts have set up
various tests and standards to help judges make decisions. And too often courts, rather than taking a
step back and looking at the big picture, apply these tests mechanically and
come up with ridiculous results.
happened last week at the Trademark Trial and Appeal Board, an administrative
court-like branch of the Patent and Trademark Office in Washington DC. The Ralph Lauren-Polo shirt company was seeking to cancel
a mark that parodied the ubiquitous little polo dude on his horse. Here’s the two competing marks:
the TTAB found the parody mark to be infringing, that it would confuse
Nonsense! In its analysis the TTAB applied several of
those legal tests, including one that said the more famous a mark is, the more
protection it gets. Since the Polo mark
is uber-famous, well, it wins. Huh?
parody on its head. In the real world, the more
famous something is, the more ripe that thing is for parody. If something is unknown, a parody of it is
akin to one hand clapping in the forest, isn’t it? A smarter California court recognized this in a case
a few years ago where Mattel was trying to ruin the life of a goofy artist
who’d had the temerity to market pictures of Barbie after a few spins in a
blender. Barbie's an icon, so let the parodies fly. The bigger you are, the funnier
you fall, baby.
more fundamentally, look at those two images.
If you ran into somebody wearing a shirt with the guy falling off the
horse would you (1) laugh and ask him where he got it, or (2) think to your
self “oh, my, Polo must be expanding their brand”?
be seen as a parody only by
(1) someone who thinks too much and who has absolutely no sense of humor, or
(2) the hypothetical “moron in a hurry”. “Moron in a hurry” is a term coined by
Techdirt’s Mike Masnick to describe the ever-lowering standard for that
inscrutable legal strawman the “reasonable person.” The “reasonable person” is a sort of
everyman, and judges and juries often have to decide what the “reasonable
person” would think about things in deciding which way a case goes.
freakin’ scary. What do you base this
standard on? A random survey taken at
Wal-Mart on a Saturday night? Likely
voters for president in Alabama? Fox
News viewers? If you do, you’re likely
to get a supreme “moron in a hurry”, the perspective of an uneducated buffoon,
or people who voted for W for president (twice) uncurious bigots, or people who
believe that humans were created along with dinosaurs when “god” snapped his
fingers 6000 years ago.
“reasonable” mean “average” or does it mean something else? Is it an ideal to strive for? And if it is, who sets the standard?
rather than jump into this metaphysical black hole, the TTAB punted and applied
these safe tests, got it supremely wrong, and moved on. And shame on them. It was a stupid decision. And maybe you’re thinking “so, what, it’s
just a funny shirt, what’s the big deal?”
The big deal is this: by all but negating parody as an allowable use of
another’s trademark, the TTAB is setting a precedent that will chill future
parodies. And the next one probably
won’t be a funny shirt. It could be
anything. It could be political. It
could be anti-government. You see where
Paul Rapp is an
intellectual property attorney residing in the Berkshires and who has attended
one polo match in his life. He would
have been uncomfortable had he not been drinking extremely heavily.