Transcript Copyright and Trademark Committee of the NYSBA’S

Copyright and Trademark Committee of the
NYSBA’S Entertainment, Arts and Sports Law Section
and
New York Intellectual Property Law Association
POLITICAL “PARODIES”:
IP Owners Aren’t Laughing
Jeanne Hamburg
Partner
Attorneys at Law
Overview
Are courts looking at political and other types of
parody with the discipline required by the
Copyright Act and Supreme Court precedent—
e.g. weighing the parody-satire distinction, giving
appropriate weight to the “for profit” element of
fair use?
Should fair use tests for copyright and trademark
infringement and trademark dilution cases be
the same?
Attorneys at Law
The Legal Framework: Statutory
Fair use is a limitation on the
copyright owner’s exclusive rights
Codified at 17 U.S.C. 107
Allows the user of copyrighted
material to do things otherwise
exclusively the right of the copyright
owner
Attorneys at Law
The Legal Framework: Statutory
Must be for “fair use” purposes enumerated by
statute: e.g., criticism, comment, news reporting,
teaching, scholarship, research
Four factor test for fair use:
(1) purpose and character of use, including whether
commercial or non-profit educational purposes;
(2) nature of copyrighted work;
(3) amount and substantiality of portion used; and
(4) effect on marketplace value of original
Attorneys at Law
The Legal Framework—Copyright:
Supreme Court Precedent
There is no First Amendment defense to
copyright infringement. Harper & Row
Publishers v. Nation Enterprises, 471 U.S. 539
(1985). Fair use is the defense.
Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569 (1994): fair use.
– “For the purpose of copyright law, the nub of the
definitions, and the heart of any parodist’s claim to
quote from existing material, is the use of some
elements of a prior author’s composition to create a
new one that, at least in part, comments on that
author’s work”.
Attorneys at Law
The Legal Framework—Copyright:
Supreme Court Precedent
– “If, on the contrary, the commentary has no critical bearing on
the substance or style of the original composition, which the
alleged infringer merely uses to get attention or to avoid the
drudgery in working up something fresh, the claim to fairness in
borrowing from another’s work diminishes accordingly (if it does
not vanish)…Parody needs to mimic an original to make its
point, and so has some claim to use the creation of its victim’s
(or collective victims’) imagination, whereas satire can stand on
its own two feet and so requires justification for the very act of
borrowing.”
– Satire is defined by the Supreme Court according to the OED as
a work “in which prevalent follies or vices are assailed with
ridicule” or are “attacked through irony, derision, or wit.” Thus,
rather than comment on the work, a satire comments on some
aspect of society or culture.
Attorneys at Law
Acuff-Rose and Parody v. Satire
“parody may or may not be fair use”
“The [Copyright] Act has no hint of an evidentiary
preference for parodists over their victims, and no
workable presumption for parody could take account of
the fact that parody often shades into satire when society
is lampooned through its creative artifacts, or that a work
may contain both parodic and non-parodic elements.
Accordingly, parody, like any other use, has to work its
way through the relevant [fair use] factors, and be judged
case by case, in light of the ends of the copyright law.”
Attorneys at Law
Copyright: Advertising
Fair Use or Infringement?
The Original MasterCard Ads
“Priceless Ad” #1 – Baseball
“Priceless Ad” #2 – High School Reunion
“Priceless Ad” #3 – Mother-Daughter Trip
“Priceless Ad” #4 – Twister
The “Copy”
Ralph Nader’s “Priceless Truth” Ad
Attorneys at Law
Analysis of Priceless Ads
Identify the copyrightable expression
– Selection and arrangement of creative expression
(NOT ideas) including:
Recitation of item colon price; and intangible that is priceless
Sequence of images
Placement and appearance of text within ad (i.e., over
image)
Use of voice over
Sound of voice over
“Look and feel”
Analyze whether the alleged infringing use is
“substantially similar” to original creative
expression in the original
Attorneys at Law
Analysis of “Priceless” Ads
Is it fair use or infringement?
– Purpose of use: commercial? Not purely editorial.
Would answer change if told your contributions increased from
$5,125 to $818,000 in one month period (from July to August, 2000
-- a 15 fold increase) after ad ran nationally? Ad directed viewers to
web sites, make contributions.
Parody? Does it comment on the original?
What is the nature of the original work?
– Creative work at core of copyright protection
Amount/substantiality of portion taken:
– How much original expression “borrowed” from the original?
Does it displace market for the original?
Attorneys at Law
District Court Decision In Nader
Took court four years to decide. Court never looked at
many of the elements that were protectable in
MasterCard ads beyond the terms “priceless” and “there
are some things money can’t buy”
Court never closely applied parody/satire distinction (did
not examine expert testimony opining ad was a satire,
did not examine Nader’s testimony which admitted that
the Nader tv ad was not a commentary on MasterCard or
its Priceless ads)
Court concluded the Nader ad was fair use
Attorneys at Law
Trademarks and “Use In Commerce”
Communications Workers of America runs a nationwide campaign
using Verizon Wireless slogan CAN YOU HEAR ME NOW? To
protest that company’s supposed indifference to plight of laid off
workers who sacrificed their safety on 9-11. While not “political” so
much as “labor,” ad raises same issues.
At the time CWA is embroiled in labor dispute with Verizon
Wireless’s owner, the land-line company—NOT Verizon Wireless.
Many consumers, confused by CWA’s use of the slogan into
believing Verizon Wireless is anti-union, cancel their contracts.
Case is dismissed on 12(b)(6): there is no “use in commerce”
because it’s run during labor dispute; ignores that ad seeks to
increase union membership though it admits “promo[tion] of CWA’s
union services and membership development” would be use in
commerce under the Lanham Act.
Attorneys at Law
“Use in Commerce” vs “Fair Use”
Under the Lanham Act, a claim will be stated only if the
false designation is “used in commerce.” 15 U.S.C.
§§1114, 1125.
How is this different from fair use?
– Does “in commerce” mean “for profit”?
– Does “in commerce” exclude political speech?
Courts say no: United We Stand America, Inc. v. United We Stand
America New York, Inc., 128 F.3d 86 (2d Cir. 1997), cert. denied,
523 U.S. 1076 (1988); MGM-Pathe Communications Co. v. Pink
Panther Patrol, 774 F.Supp. 869 (2d Cir. 1991)
– Ads in CWA and Nader were broadcast throughout the country.
Nader ad solicited donations. CWA solicited members.
– Must the purported “parody” comment on the original?
Attorneys at Law
Federal Dilution Claims
and Political “Parody” Ads
Under the Supreme Court’s decision in Moseley v. V. Secret
Catalogue, 537 U.S. 418 (2003) under the FTDA (1) “actual”
dilution must be proven; and (2) there is no tarnishment claim,
only blurring
Additionally, § 43 (c) of the Lanham Act contains a
“noncommercial use defense”
This means the plaintiff in a political ad “parody” case, under
the FTDA, must show (1) actual dilution through blurring (use
of the mark no longer conjures only the senior user’s mark);
(2) use in commerce; and (3) that the defendant’s use is NOT
“noncommercial”
Is political advertising ever both “use in commerce” and NOT
noncommercial?
Attorneys at Law
Conclusion
The tension between IP owners’ rights and the rights
of politicians to advertise using others’ IP has not
been adequately addressed by courts.
There is no “black and white” answer or rule which
states political “parody” advertising is always
immune. Clearer and more disciplined judicial
guidance applying the definitions of “parody” AND
“satire” under Acuff-Rose is needed in copyright
cases; and judicial consistency is needed in
trademark infringement and dilution cases.
Attorneys at Law