From Book Covers to Domain Names: Searching for the True Meaning of the Cliffs Notes Temporal Test for Parody

Article excerpt

Cite as: 7 J. HIGH TECH. L. 19

Parody--the close imitation of the style of an author or work for comic effect or ridicule--has existed for centuries and continues to be a vibrant part of American culture. (1) Because parodies such as Darrell Hammond's imitation of the political talk show Hardball with Chris Matthews on Saturday Night Live may serve as valuable cultural commentary, parodies are given certain First Amendment protections from regulation under copyright and trademark law. (2)

This Note examines the requirements for establishing a parody under federal trademark law. In particular, it suggests that the Fourth Circuit decision in PETA v. Doughney (3) misinterpreted the Second Circuit's requirements for establishing a parody in Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc. (4) Through examination of both PETA and Cliffs Notes, this Note argues that especially where a court is applying a balancing test animated by free speech concerns (as the Second Circuit did in Cliffs Notes), a court should consider the consumer's reception and interpretation of the expression as a whole and in context of the medium of the expression. The Note argues that it makes little sense to subject defendants to an overly rigid definition of parody that does not account for a consumer's actual experience of the expression.

Parody is at least as old as Greek civilization (5) and has found expression through society's evolving technologies. (6) However, like never before, computers and the Internet have democratized expression, including parodic expression, by lowering the cost and expanding the reach of all forms of written and visual communication. (7) As a result, individuals with moderate skill and minimal assets have the ability to create powerful and effective social commentary. (8) The legal consequences of parody are complex. While parody--a form of social and political commentary--may annoy or anger its target, as a legal matter it may also infringe or otherwise harm protected trademark rights, even in light of significant First Amendment protection. (9)

I. Emergence of Modern Trademark Law

Although the concept of trademark law is centuries old, the current incarnation of federal trademark law (the Trademark Act of 1946, commonly referred to as the Lanham Act) is now over 60 years old. (10) Trademarks are a breed of unfair competition law whose primary purpose is to prevent consumer confusion as to the origin of goods. (11) Essentially, trademarks function as "warranty of sameness," assuring consumers that they will receive a product of the quality received the last time they purchased a product bearing the same mark. (12) By preventing confusion as to the source, trademark law encourages businesses to produce quality goods and services because they stand a greater chance of reaping consumer good will. (13)

A cause of action for trademark infringement is established by showing that use in commerce of a similar (or identical) mark will create a "likelihood of confusion" as to the source of either the goods or the mark in the minds of ordinary consumers. (14) Once this likelihood of confusion is established, the Lanham Act provides an expansive set of remedies including injunctive relief, (15) recovery of defendant's profits, (16) treble damages, (17) and in cases of intentional infringement, attorney fees. (18)

Trademark law has grown in two major respects since the passage of the Lanham Act. (19) First, state and federal trademark dilution statutes prohibit use of another's famous trademark in a manner that would diminish the mark's ability to distinctly identify the source of goods. (20) Trademark dilution occurs through blurring and tarnishment. Blurring is caused by use of similar marks on noncompeting goods or services (e.g. Sony basketballs made by someone other than Sony) such that when a consumer hears or sees the mark (e.g. in conversation), they must ponder whose product the mark identifies. …