FAIR USE!

(Read the Is it Fair Use? problem here.)

The court found Elf Off‘s use of Elf On‘s marks to be a fair use. As I strongly implied in setting up the problem, the question of parody would determine the question of likelihood of confusion, which in turn, would determine whether the plaintiff’s motion for preliminary injunction would succeed.

Here’s the judge’s reasoning for her finding of trademark parody:

Acknowledging the similarities between the two covers, the Court finds this question is very close for trademark purposes. Nonetheless, Defendant has included a statement on its book cover that it is a parody, with a boldface emphasis on “parody,” a disclaimer on the back and the inside pages, a sub-title indicating that the book is for “Mom and Dad,” and multiple other visual cues that Elf Off does not purport to be Plaintiff’s book (see supra Section II). The overall impact, though somewhat subtle, is to present enough visual information to flag for consumers that the book is a parody for adults. Defendant’s website, www.elfofftheshelf.com (as opposed to Plaintiff’s website, www.elfontheshelf.com), presents the book cover immediately on arrival at the site and thus similarly communicates that the book and website parody the original.

She then gave the defendant some unsolicited advice in a footnote:

Defendant could have done a better job of conveying to consumers looking at the book jacket that Elf Off is a parody and not a sequel to Elf On. A different font stacked in the same way as Plaintiff’s would similarly have more sharply distinguished the two books. Embellishing the image of the elf dangling off the shelf in a humorous “naughty” way similarly would have more evocatively communicated the parodic nature of the book. Although Plaintiff has not established a likelihood of consumer confusion arising as a result of the book’s cover, the facts at this early stage of the case do suggest an arguable possibility of consumer confusion. Plaintiff potentially could present survey evidence proving consumer confusion at trial. In light of this, Defendant may wish to consider taking additional measures to distinguish the cover of Elf Off before marketing it.

I’ll conclude with some unsolicited advice from Prof. McCarthy:

Some of the litigation brought by trademark owners against those who make fun of their company’s policies by the use of parodies of their trademarks reveals that some mark owners are hyper-sensitive to such humorous and sometimes caustic criticism. Perhaps it is because many top executives in large companies are not used to being mocked and made fun of. Therefore, they are ready, willing and able to unleash the dogs of litigation against anyone who makes fun of the symbol of their company. But the more successful and famous a company and its products becomes, the more likely it will become a societal symbol of something. Then it is more likely that critics will use humorous parody to take potshots at the company and its symbols. A certain toughening of the hide may be a more effective response than asking the courts to silence a clowning critic. [Citing Nike, Inc. v. Just Did It Enterps., 6 F.3d 1225 (7th Cir. 1993).]

The irony is that the more distasteful and crude the parody, the more likely the target is to complain. However, the more distasteful and crude the parody, the less likely it is that the public will mistakenly think that the trademark owner has sponsored and approved it. People and companies rarely (if ever) make crude jokes mocking themselves. [Citing Burnett v. Twentieth Century Fox Film Corp., 491 F. Supp. 2d 962 (C.D. Cal. 2007).]

Bottom line: where parody is at issue, make sure you’re suing to protect your brand, not to silence a critic.

Thanks for reading!