What do Tommy Hilfiger, MasterCard, the World Wrestling Federation, and Tom "Scopes monkey trial" Donohue, the President of the U.S. Chamber of Commerce, have in common? Apparently, none of them has a sense of humor when it comes to their respective brands.
On October 19, 2009, the Chamber was the target of a prank by the Yes Men, a self-described "genderless, loose-knit association of some 300 imposters worldwide." A fake press release announcing a change in the Chamber's position on the climate bill followed by a fake news conference at the National Press Club left the Chamber and various media outlets covering the event, including Reuters, CNBC, and Fox Business Network, scrambling to figure out what was going on. Historically, the Chamber has lobbied against regulation of greenhouse gases and at times publicly doubted whether global warming would be harmful. The Yes Men prank announced a sudden turnaround in strategy and that the Chamber would support the climate change bill because "without a stable climate, there will be no business."
The 97-year old institution, America's "voice of business," was not amused. In the past few months, Nike, Apple, Pacific Gas and Electric Company, and others have been distancing themselves from the Chamber because of its position on climate change, drawing plenty of publicity. The Chamber evidently felt that it should attract more attention to the issue by sending a DMCA takedown letter to the Yes Men's ISP and filed a complaint in federal District Court in Washington, DC. alleging federal trademark infringement, unfair competition, and trademark dilution.
The DMCA takedown notice sought removal of the hoax website. The Chamber complained that the Yes Men's site infringed its "images, logos, design and layout" of its website. The Yes Men and its lawyers at the Electronic Frontier Foundation argued that the site is a parody of the real Chamber site. Characterizing the prank site as a parody is important because borrowing a copyrighted work for parody is more likely to be fair use (and not infringement) than borrowing a work for the sake of satire. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 581 (1994). What's the difference? The essence of parody is the use of a work to comment upon the work itself, while satire is the use of a work to comment on something else, such as the world at large. You can argue about whether the distinction is really as clear as all that, but in this case it's pretty easy to see that in borrowing the Chamber's copyrighted logo and layout, the Yes Men were poking fun at the Chamber's political position and its website specifically, and not just climate change skeptics generally.
In their lawsuit, the Chamber takes a different strategy by alleging trademark infringement. The essence of a trademark infringement claim is likelihood of consumer confusion, 15 U.S.C. § 1114. Parody is not a separate defense to a claim for trademark infringement, but instead is "merely a way of phrasing the traditional response that customers are not likely to be confused as to the source, sponsorship or approval." World Wrestling Fed'n Entm't, Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d 413, 431 (W.D. Pa. 2003). In other words, with a parody, consumers are "in" on the joke and won't be confused as to the source of the parody. Thus in a successful parody, the trademark isn't being used to indicate source at all, but is used to ridicule the trademark owner and the brand, and courts weigh parody as a factor against consumer confusion. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 414 (S.D.N.Y. 2002). The cautionary message to take away from this is that parody "must convey two simultaneous-and-contradictory-messages: that it is the original, but also that it is not the original and is instead a parody." World Wrestling Fed'n Entm't, at 431. Under this theory, a parodist will run into trouble if consumers don't figure out the joke and are confused as to the source of the parody. The irony is that the stronger the trademark and the brand, the less likely a consumer will be confused by the parody.
What are we to make of the befuddled journalists who had to correct themselves while on air or print corrections later in the day? Isn't that slam-dunk evidence of actual confusion as to the origin of the parody, and thus trademark infringement? The problem with that argument is that even with this prank, the point is to ultimately erase the confusion as to the source of the website, the press release, and the news conference. It's a prank because it was intended that everyone discover the source of the joke. Aside from a little embarrassment on the part of major news organizations, no one was actually confused in the end. All along there were clues that the whole thing was a hoax: Mr. Donohue's name was misspelled on the initial press release, the press contacts listed didn't work at the Chamber, and even the National Press Club got a little heads-up that something was afoot.
Another factor in the Yes Men's favor is that it wasn't appropriating the Chamber's mark in order to sell merchandise or to compete directly with the Chamber. In other words, it's like Ralph Nader's parody using the MasterCard tagline "Priceless. There are some things money can't buy." That use was not infringing because it did not "propose a commercial transaction at all" and was instead found to be political speech. MasterCard v. Nader 2000 Primary Comm., No. 00 Civ. 6068, 2004 WL 424404, *16 (S.D.N.Y. Mar. 8, 2004). In contrast, an artist could not sell t-shirts and merchandise depicting the Consumer Whore spoof of Starbuck's logo, even though it qualified as parody. Along similar lines, a direct competitor of John Deere tractors could not parody the the deer in the Deere logo, even if it was in mockery. Deere & Co. v. MTD Products, Inc., 41 F.3d 39, 45 (2d Cir. 1994).
In the end though, the Chamber is mad about the whole thing. Unfortunately for Mr. Donohue, he's finding out what Barbie and Fox News found out: that it's hard to use trademark law to keep people from making fun of you. Not that Mr. Donohue isn't up for a fight: "You think we are going to blink because a couple of people are out shooting at us? Tell 'em to put their damn helmets on." And watch out kids, if you walk on the grass, Mr. Donohue will turn the sprinklers on you.