Earlier this year, a coffee shop calling itself 'Dumb Starbucks' mysteriously popped up in LA. The shop used almost identical branding to the real Starbucks, giving away 'dumb frappucinos' and 'dumb lattes' to customers who queued around the block.
Dumb Starbucks claimed they were entitled to use Starbucks' branding, as what they were doing was a parody, which has special protection under US law. They argued that, in the eyes of the law, their coffee shop was an art gallery, with the coffee provided being the art.
Happily for the real Starbucks, it transpired that Dumb Starbucks was a publicity stunt by a US comedian, and the coffee shop was shut down by health officials after only a few days.
Whether a parody defence would have been successful in protecting Dumb Starbucks from allegations of trade mark and copyright infringement is questionable, but Dumb Starbucks certainly brought the issue of parody works back into the spotlight.
Can someone else use your intellectual property if their purpose is simply to poke fun?
In New Zealand, the answer is 'it depends'. Unlike the US, New Zealand does not have a specific parody defence to copyright infringement. If a parody copies the whole or a substantial part of a copyright work (for example, if a spoof is made of a song or television advert) the owner of the copyright work may be able to sue for copyright infringement.
There are some exceptions to this. For example, the 'fair use' defence allows you to make fair use of someone else's copyright work for the purposes of criticism or review, provided your use is accompanied by a sufficient acknowledgement. You could reproduce an extract from a book that you were reviewing, as long as you acknowledged it.
However, the New Zealand courts have never had to consider whether using someone else's copyright work in a parody is 'fair use'. Determining whether use is 'fair' is a question of degree in each case. Relevant factors are likely to be the purpose of the parody, the extent it competes with the original copyright work and the amount of the original that has been copied.
High risk if a parody uses another company's trade mark
Parody does not fall neatly within any of the permitted copyright exceptions, which means that making a parody in New Zealand can be a hazardous business.
The risk is even higher if the parody uses another company's trade marks. The parody maker could find themselves on the wrong end of a trade mark infringement action, particularly if it is not clear that the parody is unconnected with the trade mark owner, or if the trade mark is well-known and the parody damages its reputation.
In practice, many parodies are ignored. Recently, students from the University of Auckland Law Revue released a feminist parody of Robin Thicke's hit song 'Blurred Lines', which they called 'Defined Lines'. This parody was a roaring success, racking up millions of views on YouTube, but no action for copyright infringement appears to have been taken against it.
Thousands of these kinds of parodies can be found on the internet and copyright owners often have little interest in stopping them.
Take action or ignore?
It can be difficult for rights owners to decide whether to take action against a parody, or ignore it and hope that no-one pays it much attention. A negative parody, or one that aligns your business with values or a message at odds with your own, can damage your business. On the other hand, taking a heavy handed approach could give the parody more exposure.
Sometimes a parody cannot be ignored. A famous example is the parody of Coca-Cola's 'Enjoy Coca-Cola' advertisement which encouraged the public to 'Enjoy Cocaine'. Not surprisingly, Coca-Cola was not happy about the association between its products and drugs, and took action to stop the parody.
Currently, New Zealand is out of step with countries such as the US and Australia, which both give stronger protection to parodies. Australian copyright law was changed in 2006 to specifically deal with the issue of parodies. The UK is likely to follow suit this year.
The issue was looked at in New Zealand by the Ministry of Economic Development in 2008 but their review stalled.
Unless this is revisited, making a parody in New Zealand will remain a risky thing to do.
AN edited version of this article appeared in the May/June issue of NZ Marketing.