Is it Fair Use? Looks at Trademark

We’ve already looked at the Elf On/Elf Off” decision (CCA & B, LLC v. F + W Media Inc., N.D. Ga. Sept. 22, 2011) with respect to copyright infringement, but it also has an extensive fair use analysis for trademark. Here at Is it Fair Use?, we don’t discriminate against trademark-flavored fair use! Let’s play!

Elf Off’s Use of Elf On’s Marks

You can read about the two books’ content here. In addition, the court compared the two books’ covers and other trademark indicia as follows:

Defendant’s book cover includes the book title in a font that is quite similar to Plaintiff’s stylized logo font, an image of an elf in a green costume dangling from a shelf, the subtitle “A Christmas Tradition Gone Bad,” a byline attributing the story to Horace the Elf, and a final sentence, in red font: “A new holiday parody – for Mom and Dad!” (Emphasis in original.) The book is also 10” by 10” by .25” – much thinner than Plaintiff’s box set. Elf Off is not sold with a doll or special packaging. The back cover shows a photograph of the elf doll holding the Elf On book while surrounded by a remote control, Zombie Slayer DVD, and various gift cards. The back cover includes a small-print disclaimer that the book is a parody and was not “prepared, approved, or authorized” by the makers of Elf On. The copyright page includes a similar disclaimer of association with Elf On.

Defendant illustrated its book with photographs of Plaintiff’s elf doll, but in a green rather than red costume. Photographs show the elf splayed on a table with spilled eggnog, snuggled in bed with Barbie, hanging out in the Christmas tree with a nutcracker, and lying behind a toilet after being tormented by the cat. The first page of the Elf Off story shows a small picture of Plaintiff’s book, including the sitting elf image, partially obscured by “75% off” and “super markdown” stickers.

Defendant has listed its book for pre-sale with major online retailers including both Barnes and Noble and It has also created a website promoting the book at F + W Media projects more than $167,000 in profits from sales of its book.

(Citations and footnotes omitted.)

Parody Isn’t a (Really) Defense to Trademark Infringement

The plaintiff in a trademark case must prove (1) ownership of the mark, and (2) likelihood of confusion. Normally, the first element is easy to prove (Apple’s problems enforcing the APP STORE mark notwithstanding), and most of the action centers around whether consumers are likely to be confused by the defendant’s mark, i.e., believe that the defendant’s goods and services are the plaintiff’s.

As you might guess, Elf Off defendant in this case argued parody. Elf Off is just poking fun at the treacly wholesomeness of Elf On, and goodness knows Elf On sort of had it coming. That argument won the day for Elf Off as against Elf On’s copyright claims. But would it also against the trademark claims?

There’s just one problem with that argument. There’s no such thing as a parody defense in trademark law. In copyright law, by contrast, parody fits into the pre-existing rubric of “fair use.” But “fair use” a very different thing in trademark law: no matter how you slice it, fair use in trademark law always seems to merge with likelihood of confusion. The problem is that, if a so-called “fair use” really might confuse consumers, it’s not really “fair” from a trademark point of view. As Prof. McCarthy puts it:

A parody of a trademark is not an affirmative defense to an infringement charge in the sense that laches or the statute of limitations is an affirmative defense. Rather, “parody” is a way of arguing that there will be no trademark infringement because there will be no likelihood of confusion. The parodist argues that the ordinary consumer will not be deceived or confused: she will see that the defendant’s use is  just a parody of the plaintiff’s trademark or its owner. That is, the ordinary consumer will see that this is a joke.She will appreciate that an entity separate and distinct from the trademark owner is poking fun at a  trademark or the policies of its owner.

As we’ll see, though, parody still has a certain amount of power in trademark cases–but maybe not enough to save Elf Off.

The Bizarro Effect of Parody

Since all trademark cases must deal with likelihood of confusion, whether “fair use” is involved or not, we should start with that. In a normal case, the court looks to a number of factors to determine whether consumers are likely to be confused by the defendant’s use of its mark. Different federal circuits have slightly different factors they look at to determine whether two marks are “confusingly similar.” The circuit relevant to the Elf On/Elf Off case (the 11th) looks at the following factors:

  1. Strength of the mark: The stronger the plaintiff’s mark, the more likely the confusion.
  2. Similarities of the marks: Well, duh, the more alike the two marks are, the more likely there is to be confusion.
  3. Similarity between the two sets of goods and services: Well, duh, the more alike the goods and services associated with the two marks are, the more likely there is to be confusion. (Thus, you can have DELTA airlines, faucets and devils.)
  4. Similarity of “actual sales methods”: This requires the court to look at sales channels (traditional retail, on-line, mail-order, Tupperware® parties, whatever), market segments and the like. The more similar they are, the…you get the idea.
  5. Similarity of advertising methods. To me, this factor could have been usefully combined with factor no. 4.
  6. Defendant’s intent. Believe it or not, sometimes the defendant is actually trying to trade on the plaintiff’s goodwill. This factor counts even if the defendant does a really bad job of it.
  7. Actual confusion. Until you get to this factor, you might not realize that the foregoing factors are actually considered in the abstract: not whether consumers are actually confused, but whether they are likely to be confused. Still, strong evidence of actual confusion can be devastating. But lack of actual confusion (which is often the case, especially at the preliminary injunction stage) doesn’t hurt the plaintiff’s case–it favors neither side.

Looking at these factors, you’d think that Elf Off doesn’t have a chance, especially once I tell you that the parties agreed that the Elf On marks were strong. (Why would the Elf Off people agree to that?) The marks are obviously very similar, used on the same type of goods (books), which are sold through traditional retail and on-line channels (e.g., Barnes & Noble and Amazon), and the defendant had to admit that it was trying to copy the Elf On marks. There wasn’t any evidence at this early stage of similarity of advertising or actual confusion. Even so, five of the seven factors favor Elf On. That’s usually enough to get an injunction.

Only, this is a parody case. And, although parody isn’t a defense, it works a kind of bizarro alchemy on the likelihood-of-confusion factors, as follows:

  1. Strength of mark: In a parody case, the stronger the mark, the less likely there is to be confusion. Think about it for a moment. Parodying a mark only works if the intended audience recognizes the mark being parodied. Weak or obscure marks won’t be recognized as someone else’s mark but may be mistaken as the parodist’s mark.
  2. Similarities of the marks: If you’re going to parody a mark, you have to depict it in a recognizable way, so more similarity is tolerated in parody cases. Also, we should allow for the kind of “dawn on you” type of parody, where you briefly confuse the two marks for a moment until the joke starts to become apparent. (This was the case in Yankee Publishing, Inc. v. News America Publishing, Inc., 809 F. Supp. 267 (S.D.N.Y. 1992), where stylish and slightly trashy New York magazine published an edition that looked just like, and parodied, The Old Farmer’s Almanac.)
  3. Similarity of Goods and Services: Even here, at least where the parody is apparent, there is greater tolerance for similarity of goods and services.
  4. Similarity of Sales Methods: Parody doesn’t affect this factor.
  5. Similarity of Advertising: Parody doesn’t affect this factor, either.
  6. Defendant’s Intent: Normally, this factor can only hurt the defendant, but an intent to parody can actually help the defendant.
  7. Actual confusion: Parody doesn’t affect this factor, but it increases in importance. It is sometimes the only way to rebut a finding of parody. (As a by-product, a parody argument should, therefore, be stronger at the preliminary injunction stage, before the plaintiff can marshall the evidence of actual confusion.)

But Is it Really a Parody?

But wait, we’re getting ahead of ourselves. Is Elf Off’s use of Elf On’s marks a parody of those marks? Yes, we’ve already seen that Elf Off is, as a whole (and for copyright purposes) a parody of Elf On, but that’s not the same question. It is the marks that must be the object of the parody, not the expression of the books.

Here’s a fun case that I hope will clarify what I mean. There used to be a bar in Houston, Texas, called the “Velvet Elvis.” Great name. It did a great job of parodying a kind of tacky, cheesy nightclub that you might find in the 60’s. It used images of Elvis Presley in its advertising.* The trial court issued an injunction against the use of the Elvis imagery but allowed the “Velvet Elvis” name to stand.

* A rule of thumb: never, ever, get sideways with the estate of Elvis Presley. It protects its intellectual property aggressively–but unlike most aggressive enforcers, it is never ham-fisted about it.

The Fifth Circuit disagreed. Elvis Presley Enterp., Inc v. Capece, 141 F.3d 188 (5th Cir. 1998). It  held that even the “Velvet Elvis” name went too far. Why? The use of ELVIS wasn’t being used to comment on or mock Elvis Presley (in some ways, quite the opposite), but to mock a kind of nightclub. So, there was parody, but the parody was not of the ELVIS mark.

The judge in the Elf On/Elf Off case felt the question of whether Elf Off parodied Elf On’s marks was very close. Take a look at the two covers again. Perhaps you can see why the judge had such a hard time.

Once you’ve made your guess, click here to find out how the judge ruled!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.