The Confusion Trap: Rethinking Parody in Trademark Law

81 Pages Posted: 1 Dec 2012 Last revised: 7 Oct 2019

See all articles by David A. Simon

David A. Simon

University of Kansas School of Law; Hanken School of Economics; University of Cambridge, Faculty of Law ; Harvard Law School

Date Written: October 14, 2012

Abstract

This Article suggests using existing doctrinal levers in trademark law to accommodate parodies in a more balanced fashion. To reach this conclusion, this Article examines the parody doctrine in U.S. trademark law using two lenses. The first lens is trademark doctrine itself. Here I explore the various approaches courts use to resolve trademark disputes involving parody. The other lens is copyright law. Though this lens I examine how courts deciding trademark parody disputes employ the Supreme Court’s most recent decision on parody in copyright, Campbell v. Acuff-Rose (1994). I also use this decision to examine the relationship between copyright and trademark parody claims. In other words, I ask the following question: how, if at all, are copyright and trademark claims related in parody cases?

Each perspective reveals something different. The first perspective shows that most courts resolve infringement claims by evaluating parody within some form of the likelihood of confusion test. It also shows that most courts assess dilution claims by analyzing parody as a form of noncommercial speech. The second perspective shows that copyright and trademark claims are related in a positive direction: if a parody case involves both copyright and trademark claims, courts always find for the defendant (no infringement) on both claims. Filtering the analysis through these two lens, I seek to sketch two revised parody tests — one for infringement and one for dilution. Both tests attempt to differentiate parody analyses from the traditional likelihood of confusion and dilution tests. These new approaches — which strengthen speech protections but do not create absolute defenses — account for the legitimate interests of both trademark owners and parodists.

Keywords: trademark, parody, intellectual property

Suggested Citation

Simon, David A., The Confusion Trap: Rethinking Parody in Trademark Law (October 14, 2012). Washington Law Review, Vol. 33, 2013. Available at SSRN: https://ssrn.com/abstract=2161622

David A. Simon (Contact Author)

University of Kansas School of Law ( email )

1535 W 15th Street
Room 504
Lawrence, KS 66045
United States

Hanken School of Economics ( email )

PB 287
Helsinki, Vaasa 65101
Finland

University of Cambridge, Faculty of Law ( email )

10 West Road
Cambridge, CB3 9DZ
United Kingdom

Harvard Law School ( email )

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