Many businesses have been looking to profit on the back of the incredible popularity of HBO’s acclaimed TV show, Game of Thrones — some with great success. Despite the fact that HBO owns a trade mark registration for GAME OF THRONES, a brewery has been allowed to register GAME OF STONES by the UK Intellectual Property Office (UKIPO). Understandably, this has left HBO with a bitter taste in its mouth and, along with an earlier decision it lost against GAME OF VAPES, appears to erode its ability to protect its mark against pretenders to the throne (ahem, House Lannister).
Wadworth, the Wiltshire brewers based in the county of Stonehenge and Avebury Henge, applied for a GAME OF STONES logo mark for beers and ales, which could be seen to be a parody of the widely-known original. In light of this, here’s a look at why parodies are problematic when it comes to IP rights.
Parody as a defence for copyright and trade mark infringement
Any company should be able to stop third-parties from jumping on a successful bandwagon. However, a parody is successful only if the original is well-known, so that the changes appear humorous in comparison. A customer’s initial interest in a parody-related product must, at least partly, be due to a recognition of elements of the original’s widely-known mark alluded to in the parody mark. Although the UK has adopted parody as a ‘fair dealing’ defence to copyright infringement, we don’t have the same defence as such in trade mark cases.
The use of parody and satire as a defence to both copyright and trade mark infringement has been considered more frequently in the US. There, DC Comics pursued a third party, Mad Engine Inc., for marketing t-shirts emblazoned with “DAD” within the outline of the Superman shield logo just in time for Father’s Day. When Mad Engine tried to have the courts issue a dismissal of the claim using the parody defence, the courts decided that consumers might well believe the defendant’s T-shirts were a humorous, licensed version of the famous DC brand. This seemed right, as it was clear that it was the use of the Superman logo outline and the look and feel of the t-shirts which induced customers to buy.
Reputation and trade mark ownership is key
Meanwhile, HBO failed to call time on Wadworth’s application even though one of HBO’s earlier registrations also included beer. A key ground in the opposition case was that of HBO’s ownership of a registered trade mark with a reputation. This is the ground that allows trade mark owners to protect the time and money they put into getting to the point of having a widely-known brand and, in the absence of a parody defence, should have been the claim which let HBO win the case. In this instance, however, the claim that Wadworth was free-riding on the tails of HBO’s considerable reputation to boost its own sales fell flatter than a home-brewed scrumpy. The decision looks to have been down to a deficiency in the technical pleading, since although HBO demonstrated Game of Thrones’ strong reputation as a TV show, the registrations relied upon as the basis for the opposition didn’t include coverage for the TV show itself.
The decision and doctrine of parody
Ultimately, in this case, there must have been an element of free-riding on HBO’s investment in Game of Thrones. Nevertheless, there’s a balance to be had between humorous ‘free speech’ and allowing trade mark owners to reap the benefit of their investments and maintain the exclusivity of their brands. Here, the use of “GAME OF…” in a logo with a Neolithic image does hint at the name and setting of the popular show, even though the references are a little looser than the clear appropriation in the Superman logo case.
This decision doesn’t bring us any closer to a doctrine on the place of parody and satire as a trade mark defence in the UK. However, given the popularity of the series, this may not be the last ‘take-off’ mark we see.