Academic journal article Santa Clara High Technology Law Journal

A Parody of a Distinction: The Ninth Circuit's Conflicted Differentiation between Parody and Satire

Academic journal article Santa Clara High Technology Law Journal

A Parody of a Distinction: The Ninth Circuit's Conflicted Differentiation between Parody and Satire

Article excerpt

"Thou shalt not say that to rob the public is to steal." (1)


In Mattel, Inc. v. MCA Records, Inc. (Mattel), (2) the Ninth Circuit recently held that a song based on the Barbie doll was a parody and therefore qualified for a fair use defense against a claim of trademark infringement. (3) A few years ago, however, this same circuit in Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc. (Seuss) (4) held that a book using the writing style of Dr. Seuss, as well as a character fashioned after the Cat in The Cat in the Hat, was a satire and therefore did not qualify for a fair use defense against claims of trademark and copyright infringement. (5) A contrast of these two cases reveals the inadequacy of the standard adopted by the Ninth Circuit to determine when parody should be permitted as a defense to copyright or trademark infringement.

This comment will examine the standard utilized by the Ninth Circuit both in relation to other relevant decisions and within the framework of established literary scholarship on parody. Part II examines the statutory basis of the parody defense, the Supreme Court's decision on the subject, the subsequent Ninth Circuit decisions in Seuss and Mattel, and several other recent federal court decisions. Part III discusses literary scholarship on the definition of parody. Part IV examines the standard currently in use in the Ninth Circuit in relation to all the cases discussed in Part II. Part V concludes by proposing the use of a more expansive definition of parody to allow a broader range of artistic expression to qualify for the parody defense.


A. The Statutory Basis for the Parody Defense

Generally, a work is copyrightable when it is an "original work of authorship fixed in any tangible medium of expression." (6) An author must register his or her work and obtain a copyright from the U.S. Copyright Office to be able to challenge another work for infringement. (7) Another author who violates any of the exclusive rights of the copyright owner, including the right to reproduce the work and the right to create derivative works, is liable for copyright infringement. (8) However, the defendant in such an action can argue the affirmative defense of "fair use," whereby certain uses of the copyrighted material will not be infringing. (9) Parody is not included in the nonexclusive listing of allowable uses in the statute but can qualify as a fair use. (10) Four nonexclusive factors are considered in determining whether a particular use is deemed a fair use under the statute: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of what is taken in relation to the entire copyrighted work; and (4) the effect of the use on the commercial value of the copyrighted work. (11)

A trademark is any word, name, symbol or device used by a person in commerce to identify and distinguish his or her goods from those made by others. (12) Infringement occurs when another person uses a registered trademark or a "colorable imitation" of such trademark in commerce in a way that is "likely to cause confusion." (13) Different federal circuits have applied different standard lists of factors in deciding if infringement has occurred, although the lists are generally quite similar. (14) The factors used in the Ninth Circuit are: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. (15) The statute authorizing fair use in trademark law does not mention parody. (16) Nevertheless, courts have countenanced parody as a protected form of expression under the First Amendment provided there is no likelihood of confusion. …

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