Copyright and Trademark Committee of the NYSBAS Entertainment

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

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?

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

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

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”.

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.

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. ”

The Original Master. Card Advertising Ads Copyright: “Priceless Ad” #1 – Baseball Fair Use or Infringement? “Priceless Ad” #2 – High School Reunion “Priceless Ad” #3 – Mother-Daughter Trip “Priceless Ad” #4 – Twister The “Copy” Ralph Nader’s “Priceless Truth” Ad

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

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?

District Court Decision In Nader Took court four years to decide. Court never looked at many of the elements that were protectable in Master. Card 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 Master. Card or its Priceless ads) Court concluded the Nader ad was fair use

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.

“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. 3 d 86 (2 d Cir. 1997), cert. denied, 523 U. S. 1076 (1988); MGM-Pathe Communications Co. v. Pink Panther Patrol, 774 F. Supp. 869 (2 d 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?

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?

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.