The owner of clothing brand “Assholes Live Forever,” who created a profane replica of Patagonia Inc.'s logo, has a shot at escaping a trademark lawsuit by raising a parody defense, attorneys said.
In recent years, the defense has helped protect creators who have made parodies of famous brands. These include the makers of “Chewy Vuiton” and “Bad Spaniels” dog toys, which parodied luxury fashion company
That precedent could help KirillWasHere LLC defend its “Patagofuckyourself” and “Assholes Live Forever” logos, but attorneys and academics say it’ll be a challenging road.
“The defense is always going to be inherently legally gray, because it’s applied very contextually,” said Adam Mossoff, a law professor at George Mason University, who focuses on intellectual property.
“Is it a message to the brand? Is it a message to the people who wear the brand? Is it just a pun, like let’s take this mark everyone knows and do something racy with it?” asked Alexandra J. Roberts, a trademark law professor at the University of New Hampshire, noting that those are the kinds of questions the court would explore.
“The number of parody cases that get litigated all the way to decision is small enough that they all make some interesting precedents,” she said.
The parody defense can be raised in response to trademark infringement or dilution claims—both were brought in the Patagonia case before the U.S. District Court for the Central District of California.
Infringement claims ask if there is a likelihood of confusion for consumers. This addresses whether consumers might think there is an association to the brand at issue, such as authorization or licensing by Patagonia, Roberts said.
“If not, then we don’t even need to reach that defense,” she said. “But if so, then we ask the parody question and if it is a successful parody then courts have held we can tolerate some degree of confusion.”
“It’s a balance of First Amendment speech rights and protecting consumers from deception,” Roberts said.
For the defense to be successful, a product should hold enough resemblance to the mark to remind consumers of it, but not enough to confuse them or lead them to think that the product was created by the brand being parodied.
In contrast, a trademark dilution claim doesn’t require the element of confusion. Instead, it requires use that harms the reputation of the mark or diminishes its goodwill by impeding its ability to be associated with just one thing.
Dog Toy Cases
In 2007, the U.S. Court of Appeals for the Fourth Circuit upheld a ruling in favor of Haute Diggity Dog, which was sued by Louis Vuitton over a “Chewy Vuiton” chew toy. The court rejected claims that the toy might create consumer confusion or that it may dilute Louis Vuitton’s trademark.
“Chewy Vuiton works because the court says a Louis Vuitton bag is something very fancy and expensive, you would never want a dog to chew on it,” Roberts said. “And then on the other hand, you have a dog chew toy, which of course like costs $10 and you do want your dog to chew on it, and that’s hilarious.”
That precedent seems promising for KirillWasHere, but it might not be as simple, said Jim Petruzzi, an attorney who represented Haute Diggity Dog.
“The parody holds up the icon, Louis Vuitton, as something to be looked up to, and I’m not sure in the Patagonia case, anyone would look at that in the context of looking up to Patagonia as an iconic trademark,” he said.
In another case, Jack Daniels sued VIP Products LLC over its “Bad Spaniels Silly Squeaker,” which resembles a Jack Daniel’s whiskey bottle. The toy label replaces “Old No. 7" with “Old No. 2,” and alcohol content listings with “43% Poo By Vol.” and “100% Smelly.”
The Ninth Circuit in March 2020 overturned a trademark infringement ruling in Jack Daniels’ favor. Applying what’s known as the “Rogers” test, the court ruled that the toy was an “expressive work” entitled to First Amendment protections, and that a lower court should have balanced VIP Products’ free speech rights with the distillery’s trademark interests. The U.S. Supreme Court denied review in January 2021, and the case remains ongoing.
Stephen Sacra, owner of VIP Products, said their toys are a commentary on how companies become so involved in their brands that they “lose sight of people just being able to make a joke about them.”
However, he said the parody in the Patagonia case seems difficult to pull off.
“If you’re not making comment to the original art, and you’re not making a comment at all, you’re just putting some profane words out there, that might not necessarily make it a parody,” Sacra said.
Another potential roadblock for the defense in the Patagonia case is the similarity of the products—both companies make clothing.
By contrast, the “Chewy Vuiton” case involved dog toys, not designer handbags, George Mason’s Mossoff said.
“The Patagonia case is a closer case given the fact that you definitely have a very explicit use of a logo for apparel and clothing,” he said, adding that this creates the potential for a greater likelihood of confusion for customers.
Still, the defense isn’t completely shut out.
The U.S. Court of Appeals for the Second Circuit in 2016 ruled against Louis Vuitton in its trademark case against My Other Bag Inc., which created handbags with the same color and pattern as the high-end versions.
The court held that the joke might be “gentle, and possibly even complimentary” to Louis Vuitton, and that was enough to be a parody.
Neither party in the Patagonia case responded to requests for comment, nor did representatives for Jack Daniels or Louis Vuitton.
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