Use Of A Third Party’s Trademark In A Parodic Tone
By Camila Sirianni.
Law 22.362 establishes that the owner of a registered trademark is the sole owner of its exclusive rights (Section 4[1]), having the power to use or authorize its use by third parties. It also imposes penalties for anyone who uses a registered trademark without the owner’s authorization (Section 31, paragraph b[2]).
There is no section that expressly allows the use of a trademark without the owner’s consent, as is the case with the Intellectual Property Law[3]. In fact, this law establishes the possibility of adapting, transporting, modifying or parodying a work, provided that the author has allowed it[4].
Having said that, I would like to focus on the possibility of parodying[5] a trademark and ask myself if it is possible to do so with respect to someone else’s trademark. I consider that it is possible, but is it necessary a previous authorization?
To answer this question, a recent case from the United States and a few local cases will be commented on below.
Jack Daniel’s v. VIP Products[6]
This conflict originated over a dog toy, designed and marketed by VIP Products, that parodies a bottle of Jack Daniel’s Old No. 7 Tennessee Sour Mash Whiskey, with phrases referring to pet excrement, such as “Bad Spaniels: The Old No. 2 on Your Tennessee Carpet”.
Jack Daniel’s was not happy with the toy, so it requested VIP Products to stop selling it, but VIP brought a lawsuit seeking a judgement to have it declared that “Bad Spaniels” did not infringe or dilute any of the whisky maker’s trademarks. Jack Daniel’s then counter-claimed for infringement and dilution of its trademark and trade dress.
VIP Products argued that the use did not constitute infringement because the Rogers Test[7] must be applied and also invoked the Lanham Act’s statutory exclusion of liability for non-commercial use of trademarks.
In 2017, the District Court of Arizona rejected VIP’s defenses, finding it guilty on both charges (trademark infringement and dilution). VIP appealed and successfully reversed that adverse decision before the Court of Appeals of the Ninth Circuit.
Jack Daniel’s then appealed such decision and the U.S. Supreme Court had to analyze whether or not the parody of the famous bottle constituted an infringement and whether there was dilution.
On June 8, 2023, the Supreme Court in a unanimous decision expressed that the Rogers Test does not apply when the alleged infringer uses the characteristics of a trademark to identify the origin of its own products; that is, when it uses the trademark as a trademark.
VIP is using Jack Daniel’s mark and the trade dress as source identifiers of its toy, then the only test that applies in this case is the likelihood of confusion one. The fact that VIP uses the marks as a parody does not change the outcome.
Likewise, the Supreme Court did not apply the legal exclusion of liability for being a parody and sent the case back to the lower courts to analyze the likelihood of confusion.
Therefore, according to the decision of the highest American court, if you take advantage of someone else’s trademark for trademark purposes, even if it is a parody, such use is improper, unless the owner has authorized it.
Local case law
There have not been many cases before our courts in which judges have had to debate whether or not it is lawful to parody a trademark.
In “Japan Tobacco Inc. y Otro v. Massalin Particulares S.A.”[8], an injunction was revoked on the grounds that the use of a third party’s trademark as a parody was neither denigratory nor pejorative, and that the plaintiff was not affected.
Japan Tobacco had claimed the cease of use of the trademark “WINSTON” by Massalin, since in a commercial of “LE MANS” cigarettes, the trademark “WINSTON” was ridiculed.
For the defendant, the tone was not pejorative and the allusions to Japan Tobacco’s trademark were made from a humorous perspective, with the purpose of parodying English expressions used by the plaintiff in its advertising campaign.
The judges of Chamber I, stated that, although it was true that the references had been used in a humorous way, Massalin did not make any disqualifications. Therefore, the plaintiff had not letigimate interest to claim and revoked the injunction, giving preeminence to freedom of expression.
Some years later, in “Noverazco, Elida Elsa v. Televisión Federal S.A.”[9], the same Chamber I, tipped the scales on the side of the trademark holder.
The Court of Appeals determined that the defendant had used Mrs. Noverazco’s trademark “DANZA ARMONIZADORA” in a sketch for purposes of parody or direct comedy. It was not a non-commercial use, since there was a company that profited from this type of entertainment and this constituted an atypical trademark use for parody purposes.
In view of the above, Chamber I granted Mrs. Noverazco a compensation for non-pecuniary damages -although it clarified that the behaviour of the television channel had not been illegal-.
A case that resounded in the media was “Arte Gráfico Editorial Argentina S.A. v. Castañeda, Matías”[10] seeking the cease of the use of the trademark “CLARIN” within the domain name “quetepasaclarín.com”[11].
The judges understood that in those cases in which it is only a mere reference to a third party’s trademark, with no possibility of misleading consumers or implying unfair competition, freedom of expression must prevail.
There was no trademark infringement that generates the right to compensation since the defendant only included the plaintiff’s trademark in the name of a blog.
Conclusion
The exclusivity of the owner of the trademark registration is established by our system in order to prevent uses that may cause confusion among consumers or that may damage the sign by denigration.
Local case law seems to have leaned in favor of freedom of expression, but was not unequivocal on this issue. Therefore, we should not disregard the fact that, although parodying does not constitute an unlawful act per se, the use of a trademark without authorization does.
The meaning of parodying a trademark lies in the impact it causes on the market, and therefore, I understand that whoever wishes to use a trademark in a humorous tone will not want to warn the trademark holder of his move.
However, it is not superfluous to warn him that it is still an unauthorized use and it is possible that the courts, in his case, will lean towards the side of the Trademark Law, which is, in short, the regulatory body that governs us in these matters, and will condemn the use of the trademark -even if it has been with humor-.
For further information please contact: csirianni@ojambf.com
[1] Section 4, Trademark Law 22.362: The ownership of a trademark and the exclusivity of use are obtained with its registration. (…)
[2] Section 31, Trademark Law 22.362: Shall be punished with imprisonment from three (3) months to two (2) years and may also be fined from one million ($ 1.000.000.000) to one hundred and fifty million pesos ($ 150.000.000.000): …b) whoever uses a registered trademark or a counterfeit designation, fraudulently imitated or belonging to a third party without his authorization.
[3] Law 11.723: quotation (section 10), free use and transmission of news of general interest (section 28) and certain cases of free representation, performance and recitation (section 36) -for example, in educational institutions-.
[4] Section 25, Law 11.723: The person who adapts, transports, modifies or parodies a work with the author’s authorization shall have the co-author right of the adaptation, transport, modification or parody, unless otherwise agreed.
[5] According to the Royal Spanish Academy’s Dictionary, parody means “To make a parody of someone or something” and parody is a “burlesque imitation”.
[6] Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S.).
[7] The court in the case Rogers v. Grimaldi 875 F.2d 994 (2d Cir. 1989) developed this test to protect trademark uses involving questions of intellectual freedom, and thus whether the use of the mark requires prior authorization. This test can only be applied to non-commercial trademarks, prevailing the protection of works of expression. It consists of two elements: it must be determined whether the use of the trademark is “artistically relevant to the defendant’s work” and, in addition, whether such use is “explicitly deceptive”.
[8] Court of Appeals, Chamber I, “Japan Tobacco Inc. y Otro c/Massalin Particulares S.A. s/Medidas Cautelares”, Case No. 3305/01, 14/6/01.
[9] Court of Appeals, Chamber I, “Noverazco Elida Elsa c/ Televisión Federal SA y otro s/ cese de uso de marcas. Daños y perjuicios”, Case No. 1809/99, 30/09/2004.
[10] Court of Appeals, Chamber III, “Arte Gráfico Editorial Argentino S.A. c/Castaneda Matías s/ cese de uso de marcas. Daños y perjuicios”, Case No. 7.197/09, 11/02/2014.
[11] The phrase “¿Qué te pasa Clarín?” was first uttered by former President Néstor Kirchner at a political event.
