Trademark Parody and Advertisers

The client is always right. Maybe not right in terms of correct, but usually in terms of prevailing in a dispute with its agency. The agency creates ads, the client reviews, likes it and says, "run it". The agency/client contract may or may not call for the agency to indemnify the client if something goes wrong, such as the violation of a third party's trademark rights. Even if the contract is dead set against the client, the resulting dispute will spoil the relationship, and it will only be a matter of time before the client looks to another agency. and if the agency fears the loss, but has the correct legal position, it may pay for the client's loses hoping to make up the out of pocket in the future. tought business. Best to try to get it right and avoid law suits.

Parody is a ripe area for creative directors. take another's brand and make fun of it on behalf of the client. Sometimes use it it make social comment (barbie and Ken and Aqua and Mattel) but usually not. One thing is for sure, parody is tough to get right. That's because effective parody should project two simultaneous messages. First, this is the real product, and second, this is not the real product.

Where most attempts at parody fail is that they appear to a court to cause some modicome of confussion that the parody is associated, or is, the real product. and sosmetimes two courts in two jurisdictions, dealing with similar facts, can come up with decisions that are 180 degrees apart.

If you don't believe this, look at Chewy Vitton and Butt Wiper. Hard cases to reconcile other than the fact that Budweisser came to court with a survey that indicated that 30% of the persons surveyed thought there was an association between Butt Wiper and the King of Beers. Pretty absurd, but the court bought the survey and ruled against the dog toy.

in the case of Chewy the court found no likelihood of confussion, but the plaintiff, apparently sure of its case, offered no survey evidence. Or perhaps it couldn't find an expert to opine its way. Not likely.

and then there is the case of the furniture delivery truck with pictures on the two large side panels depicting a sofa wrapped like a choclate bar. No confusion likely there, the court thought, but it did find a liklihood of dilution of the famous Hershey's tradedress. this, based on the colors used and the inner foil wrapper. In other words, the furniture store's use of a Hershey-like wrapper diluted the uniqness of the real bar's famous trade dress. How many trademark lawyers would haqve seen this one coming down the road?

Parody is funny, it attracts attention and it can be considered clever by some....such as the creative director. It works when executed properly because no one has a monopoly in their own trademark, and parody is fair use, protected expressly under the Lanham Act and by decisions regarding the First Amendment. But when a creative director parodies another's mark, he or she can be sure that the work will come to the attention of the mark's owner, and a letter demanding ceasation of the parody will result.

That's when the questions between client and agency arise.