Ever since the case of Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, advertising has been the unpopular stepchild of the First Amendment. In that 1976 case, commercial speech, typified by ads that promote a product or service, was nudged under the umbrella of protection afforded by the First Amendment. But the Supreme Court did not give commercial speech full constitutional protection. As a result, advertisers can get soaked in trademark and copyright infringement cases.
Such cases get particularly muddy when parody is involved. Commercials based on parody, such as the Energizer Bunny ads, can be hugely successful. But the legal stakes are high. A parody, by its nature, has to remind the audience of the original; otherwise, the spoof falls flat. In the process of “conjuring up” the original to the audience, an advertisement can violate copyright and trademark laws.
And by their nature, parodies can carry a devastating sting. In 1987’s L.L. Bean v. Drake Publishers, Judge Bownes wrote:
Since parody seeks to ridicule sacred verities and prevailing mores, it inevitably offends others, as evinced by the shock which Chaucer’s Canterbury Tales and Voltaire’s Candide provoked among their contemporaries.
Companies that make ads spoofing other companies’ products and commercials are walking into a legal mine field. Consumers may love a good parody, but the companies whose products are the butt of the joke get mad. The angered companies then try to get even in court, suing for copyright and trademark infringement, injurious falsehood, trademark dilution, misappropriation, and even defamation. Even when the offending advertiser wins in court, the legal battle can cost huge sums of money.
So, legally speaking, what can advertising parodists get away with? Right now, there is no firm answer to this question; the legal status of an advertising parody is often in the eye of the beholding judge. A good way to understand the current legal thought in this area is to look at some of the more important advertising parody cases of the late 1980s and early 1990s.
The first case from this period is L.L. Bean v. Drake Publishers (1987). High Society, a pornographic magazine, published a two-page parody entitled “L.L. Beam’s Back-To-School-Sex-Catalog” in its October, 1984 issue. The sexually graphic article, which was clearly labelled as being a fictitious parody, depicted a facsimile of L.L. Bean’s trademark.
L.L. Bean sought a restraining order to take the offending issue out of circulation. Bean’s suit accused Drake Publishers of a variety of trademark related violations, including trademark dilution. The district court ruled for Drake on many of Bean’s complaints, but the court did grant Bean a summary judgment in regard to its claim of trademark dilution. The district court ruled that the crude and sexually offensive nature of the parody had “tarnished Bean’s trademark by undermining the goodwill and reputation associated with the mark.” The court then issued an injunction barring further publication of the parody to prevent additional damage to Bean’s trademark.
Drake appealed on the grounds that the injunction violated its First Amendment rights. The appeals court ruled that the district court had dismissed Drake’s First Amendment rights too easily. First, the court stated that the use of Bean’s trademark in the parody was an editorial and artistic use, since the parodied trademark wasn’t used to promote any goods or services. Second, the court stated that while the parody was vulgar and offensive, it was still entitled to First Amendment protection. Chief Judge Bownes wrote,
Trademark parodies, even when offensive, do convey a message. The message may be simply that the business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark.
In sharp contrast with this case is Mutual of Omaha v. Novak (1987). The Novak ruling came close on L.L. Beans’s legal heels, but the Novak majority almost completely ignored the precedent.
In 1983, Franklyn Novak began selling T-shirts and other items emblazoned with a parody of the Mutual of Omaha “Indian Head” logo. Novak’s parody depicted the head of a wasted human in an Indian war bonnet and had the phrases “Mutant of Omaha” and “Nuclear Holocaust Insurance” incorporated into the parody logo. Mutual of Omaha sued on the grounds that Novak had disparaged and infringed on its trademark. The district court rejected the disparagement claim but found for the insurance company on the trademark infringement claim and issued an injunction barring Novak from selling his parody merchandise.
Novak appealed the decision. In a majority decision, the court of appeals affirmed the lower court’s ruling. The court ruled that Novak’s parody would create confusion among consumers as to whether or not Mutual of Omaha was sponsoring Novak’s merchandise and therefore violated both federal and state laws. The majority stated that although the parody had political content, Novak could have expressed his views in many other ways besides parodying the Mutual of Omaha logo. Thus, the court did not consider the injunction to be a violation of Novak’s First Amendment rights. The majority ruling only mentioned L.L. Bean in a single footnote, stating that Novak did not violate Bean’s precedent, since the Bean ruling was based on the “editorial or artistic” use of a trademark and the Novak case was based on the confusion issue.
Circuit Judge Heaney vigorously dissented with the majority:
The majority’s holding sanctions a violation of Novak’s first amendment rights. The T-shirts simply expressed a political message which irritated the officers of Mutual, who decided to swat this pesky fly buzzing around their backyard with a sledge hammer. … We should not be party to this effort.
Heaney expressed serious doubts that anyone would confuse Novak’s “Mutant of Omaha” parody with the real Mutual of Omaha. Furthermore, the insurance company had not given any evidence to prove that the parody had hurt its sales or reputation in any way. Heaney stated that nobody could doubt that Novak was using the parody to point out the folly of nuclear war, and he pointed out that scholars have rejected the idea that parodists must use “adequate alternative means of communication.” And finally, Heaney argued that a trademark is “a form of intangible property that itself conveys or symbolizes ideas.” Therefore, an attempt to enjoin a trademark parody censors the content of the expression more than the manner of the expression and so violates the First Amendment.
In comparing L.L. Bean and Novak, it is worth noting that the rulings in the cases run counter to intuitive logic. An offensive, sexually-oriented parody that could conceivably “tarnish” a company’s image was found to be protected, whereas a milder, fairly non-offensive parody was enjoined.
In 1988, Hustler Magazine v. Falwell reaffirmed part of the L.L. Bean decision and put offensive parody firmly under the protection of the First Amendment. In 1983, Hustler ran a parody of a liquor ad that featured a fictitious interview with preacher Jerry Falwell. In the parody interview, Falwell was portrayed as having had a “drunken, incestuous rendezvous with his mother in an outhouse.” Falwell sued the magazine for libel and intentional infliction of emotional distress.
After several years of litigation, the case made it to the U.S. Supreme Court. The court noted that the main legal knot of the case was whether a public figure (such as Falwell) could recover damages for emotional harm caused by a parody that most people would consider to be gross and repugnant. The court concluded that, based on the history of the political cartoon, a parody or caricature of a public figure, even when it is deeply offensive, is protected under the First Amendment.
In the early 1990s, a pair of cases involving beer companies set forth new standards concerning parody in advertising.
The first case, Tin Pan Apple Inc. v. Miller Brewing Co. (1990) dealt with both copyright and trademark infringement issues. Miller Brewing ran a humorous TV ad that featured three black rappers and comedian Joe Piscopo. The rappers in the ad dressed and performed like the Fat Boys, a rap group that encouraged its underage audience to abstain from alcohol and other drugs. The Fat Boys sued, accusing Miller Brewing of copyright, trademark, and privacy violations.
The case went before the district court. In the matter of the copyright violation, the Fat Boys claimed that the ad had copied parts of their rap songs. Miller claimed that the ad was a parody, and as such constituted “a fair use which prevents a claim of copyright infringement.” The court agreed that parody usually qualifies as a fair use, but it also stated that using copyrighted material for solely commercial purposes was illegal. Judge Haight wrote:
This commercial’s use is entirely for profit: to sell beer. Even if the concept of parody is impermissibly stretched to include this commercial, it does not qualify as fair use . . . the commercial in no manner “builds upon the original,” nor does it contain elements “contributing something new for humorous effect or commentary.”
The court then turned to the issue of the alleged trademark infringement. The Fat Boys had stated in their complaint that their group name had been registered as a trademark. The Fat Boys and Tin Pan Apple had entered into licensing arrangements with merchandise companies to use the group’s name and image in making clothing and toys. In essence, the group had the trademark status of a company.
The Fat Boys argued that the beer commercial misled consumers into believing that they endorsed Miller’s beer and encouraged drinking. Miller Brewing again used parody as a defense. And, again, the court used the logic it had used with the copyright infringement issue to decide that Miller had violated the Fat Boys’ trademark.
While Tin Pan Apple was an important ruling, the most important case of the period was Eveready v. Adolph Coors Co. (1991). This case provides an new perspective on several advertising parody issues, since it pits advertiser against advertiser, parodist against parodist.
Eveready is well known for its ad-within-an-ad “Energizer Bunny” TV commercials. But some people may have forgotten that these ads began as a parody of Duracell TV ads. The original Duracell battery ads displayed a room full of toy rabbits playing snare drums. As a voice-over talked about Duracell’s batteries outlasting those of its competitors’, all the rabbits but the one run by Duracell batteries stop playing.
In the first Eveready spoof, the ad displays a similar group of toy rabbits playing snare drums. A voice-over says, “Don’t be fooled by commercials where one battery company’s toy outlasts the others.” At that, one of the rabbits turns its head, and its eyes widen as the Energizer Bunny strolls out in front of the other toys, beating its bass drum. At the end of the ad, the voice states Eveready’s now-familiar pitch, “Nothing outlasts the Energizer. They keep going and going and going …. voice-over fades out as ad ends” The Energizer Bunny pauses in the middle of the screen, leans back, and exits the screen during the fade-out.
This ad started a very successful ad campaign for Eveready. The series of ads involved the Bunny intruding on fake commercials for fictitious products such as “Sitagin” (a hemorrhoid ointment that spoofs “Preparation H”) and a wine called “Chateau Marmoset.” The Bunny also became more boisterous, typically knocking over props, and spinning around once and twirling his drum mallets before exiting the screen.
In late 1990, Coors Light’s marketing department decided to give Eveready a taste of its own parodic medicine. Coors’ advertising agents had been told to design a set of ads involving Leslie Nielsen, a popular actor who has starred in slapstick movie parodies such as Airplane! and The Naked Gun. The agents designed an ad in which Nielsen would parody the Energizer Bunny. Coors accepted the design, produced the ad, and scheduled it to air in the six weeks immediately before Nielsen’s new movie, Naked Gun 2 1/2, was released.
The parody commercial starts with a visual of a beer pouring into a glass with a voice-over accompanied by classical music. The voice and music grind to a halt and Nielsen walks onto the scene, beating a bass drum and wearing white rabbit ears, a fuzzy tail, and pink rabbit feet with a dark business suit. The Coors Light logo is emblazoned on the drum head. After a few beats on the drum, Nielsen spins around several times. And after recovering from an apparent dizzy spell, he says “thank you” and leaves the screen.
Eveready caught wind of the ad before it was sent to the networks and wrote letters to Coors demanding that the commercial not be aired. The two companies met and were unable to resolve their dispute, so Eveready filed suit in an attempt to keep the commercial off the air. The complaint argued that the Coors commercial violated Eveready’s copyrights and diluted and infringed on its trademark.
The district court stated that it was obvious that Coors had “copied” something from the Energizer commercials, but pointed out that Eveready had to prove “substantial similarity” between the two ads to win its copyright infringement claim. The court then examined the nature of the Coors commercial. The court cited Tin Pan Alley’s precedent that appropriating copyrighted material for a solely commercial use could not constitute protected parody.
The court then refused to follow this precedent on the grounds that although TV ads are designed to sell a product, this does not mean that they are “devoid of any artistic merit or entertainment value.” Furthermore, the court pointed out that since the original copyrighted material and the parody were both advertisements, Eveready couldn’t argue that its creation deserved especially strong protection. And finally, the court ruled that the Coors ad only used as much of the Energizer commercial as was necessary to make a decent parody of it. District Judge Norgle wrote,
Mr. Nielsen is not a toy (mechanical or otherwise), does not run on batteries, is not fifteen inches tall, is not predominantly pink, . . . . He by no means copies the majority of the Energizer Bunny’s “look.”
The court consequently ruled that Eveready had not established that Coors had violated its copyright, and then turned to the trademark infringement issue. The court stated that Eveready had to prove that Coors’ ad would create confusion among viewers as to which company sponsored the ad. The court pointed out that Eveready’s strength in this issue was also its weakness: Eveready had a strong trademark in the Energizer Bunny, so strong in fact that viewers would be unlikely to think the Coors ad was anything but a parody. And, given the commercial power of that trademark, the court did not see how the Coors ad could dilute or erode the mark’s strength or distinctiveness.
Given the Energizer ruling, it would seem that advertising parodies would get slightly more First Amendment respect in the courts. But Vanna White v. Samsung Electronics America Inc. (1992) proves that things are not as they seem.
Samsung ran a series of humorous magazine ads set in the near future. These ads poked fun at current pop culture while implying that Samsung’s VCRs would be around in the next century.
Samsung’s problematic ad was a spoof of the “Wheel of Fortune” game show. The ad portrayed a robot that had been dressed and posed to resemble Vanna White, the show’s hostess. White had not been consulted about the ad. She felt that her image had been unfairly used, so she sued Samsung on the grounds that the ad gave a false impression that she endorsed Samsung’s VCRs and that the company had unlawfully appropriated her likeness and had violated her common law right to publicity.
One of the defenses that Samsung used was that its “Vanna White” ad was a parody, and as such was expression protected by the First Amendment. The majority of the court agreed that the ad was intended as a spoof, but it felt that the ad might mislead consumers into thinking that White endorsed Samsung’s VCRs. Because of this, the fact that the ad was a parody was no defense. “The difference between a ‘parody’ and a ‘knock-off’ is the difference between fun and profit,” wrote Judge Goodwin.
Judge Alarcon disagreed with this view, however. In his dissent, he stated:
The majority gives Samsung’s First Amendment defense short shrift…. The majority’s attempt to distinguish this case from Hustler Magazine v. Falwell … and L.L. Bean v. Drake Publications is unpersuasive. The majority notes that the parodies in those cases were made for the purpose of poking fun … But they fail to consider that the defendants in those cases were making fun … for the purely commercial purpose of selling soft core pornographic magazines.
Alarcon also stated that “no reasonable consumer could confuse the robot with Vanna White or believe that … she endorsed Samsung’s product.”
In First Amendment protection terms, the White ruling seems to be a throwback to Novak. White shows that advertising parody’s status in the courts is still at least partially at the mercy of individual judges’ legal interpretations (not unlike many other areas of current communications law). Will advertising parodies ever be given more First Amendment protection? Only future cases will tell.
Eveready Battery Co. v. Adolph Coors Co., 765 F.Supp. 440 (1991).
Hustler Magazine Inc. v. Falwell, 14 Med. L. Rep. (BNA) 2281 (1988).
Langvardt, Arlen W., “Protected Marks and Protected Speech: Establishing the First Amendment Boundaries in Trademark Parody Cases,” The Trademark Reporter 82 (September-October 1992): 671-764.
L.L. Bean Inc. v. Drake Publishers Inc., 13 Med. L. Rep. (BNA) 2009 (1987).
Mutual of Omaha Insurance Co. v. Novak, 836 F.2d 397 (1987).
Rodin, Rita A., “Parody Protection Under The Fair Use Doctrine– The Eveready Standard: It Keeps Going, And Going, And Going…” St. John’s Law Review 66 (Fall-Winter 1993): 1169- 1192.
Tin Pan Apple Inc. v. Miller Brewing Co. Inc., 17 Med. L. Rep. (BNA) 2273 (1990).
Vanna White v. Samsung Electronics America Inc., 20 Med. L. Rep. (BNA) 1457 (1992).
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