With the rise of YouTube, Instagram, Amazon Prime, Netflix etc., content creators now have a wider platform to get discovered and showcase their talents. One particular concept doing the rounds and amusing audiences, is PARODY.
Parody is a deliberate exaggeration of a particular situation, concept, person etc., done for comic effect. Parodies target anyone and anything, from popular celebrities to movies to politicians to brands etc. Most people would have encountered sardonic adaptations of various well-known brands. But from a legal perspective – can the same be causing trademark infringement?
In today’s commercial scenario, trademarks have become an important marketing tool and occupy a significant place in the minds of consumers. Likewise, parodies of popular brands are also being increasingly used for humor.
A major factor behind parody/spoof/satire/lampoon/meme etc., is that the public is so familiar with the brand that it understands the reference being made. Hence, a mark must be well-known to the target audience in order for it to be used in a parody. In fact, it can even be argued that a parody is propagating a particular brand. The same, however, can concern owners when their brand name is portrayed negatively. Therefore, the question is – when does a parody constitute infringement and when does it not?
In India, the “defence of parody” was first taken in Tata Sons Limited vs Greenpeace International and Ors. , and till date remains the only case which deeply analyses the Trademark law for such a defence. However, the courts abroad have vastly considered the mutilation of brand names in a number of pronouncements.
Intent, purpose and effect:
Parodies of brand names are very close to the actual brand names, but the creative tweaking also makes sufficiently distinctive from the original. Something meant to tickle the funny bone should not, in essence, be taken to offend the legal rights of another. Therefore, the intention of use, its purpose and the effect of such use in the minds of the public plays a pivotal role in determining infringement in such cases.
A lucid explanation of the same was provided in Tata Sons Limited vs. Greenpeace International and ors., as “The relationship between the trademark and the parody is that if the parody does not take enough from the original trademark, the audience will not be able to recognize the trademark and therefore not be able to understand the humour. Conversely, if the parody takes too much it could be considered infringing, based upon the fact that there is too much theft and too little originality, regardless of how funny the parody is.”
Section 29(4) and (5) of the Trademarks Act, 1999 mandates that the use of the infringing mark must be in the course of the trade and in relation to business.
The Indian Courts have relied on a number of foreign precedents in their rulings and held that in order to constitute infringement, the impugned mark must be used for a commercial purpose. Even in the case cited above (supra), the court has held that a breach of Section 29(4) would take place when another commercial/entrepreneurial body is exploiting the same trademark. Even in Blackwood & sons v A.N. Parasuraman , the Court held that the motive to compete must be necessary in order to constitute the “dealing unfair.”
The purpose of Trademark Law is to safeguard the interests of trademark owners against unauthorized use by entities attempting to free-ride on their reputation and goodwill as well as to protect the consumers from confusion and deception as to the origin of the brand. The purpose of parody would be ineffective if consumers did not make an association with the brand. However, it would be similarly ineffective if consumers considered the brand to be an official product of the original brand owner. In cases where the parody is recognized as a parody, it is unlikely that consumers will be misled about the origin of the goods/services being provided.
Balancing free speech and trade mark protection
In a society sensitive to both consumerism as well as free expression of creativity, it becomes important to ascertain the difference between what is permitted under the constitutional rights of freedom of speech and expression and what constitutes infringement.
As elucidated through the discussions of various judicial precedents in Tata Sons Limited vs. Greenpeace International and Ors. , the issue herein is not the limitation of one right, but analyzing them in their specific context. The balancing of interest must be based on the text concerned, (whether visual, verbal or both), should be analysed in terms of its significance and the impact it had (or was likely to have) and the actual setting in which it was communicated.
Therefore, the impact of the harm done by the parody to the property interests of the trademark owner should not overshadow the free speech interests involved. Hence, the question is whether the character of the parody is primarily, communicative or commercial?
Enforcement – when to act?
It is to be borne in mind that each case is different based on its facts and circumstances. Humour has its own place in society, but a parody has to make sure that it does not take more from the original than necessary.
Therefore, in deciding whether a parody constitutes trademark infringement or not, the courts have also considered the actual commercial nature of the parody. If the parody does not intend to ride upon the name of another for commercial gain or in the course of trade, no infringement has occurred. Whereas, if the nature of the parody is such that it is likely to misrepresent, deceive and cause confusion among the public or is used for a commercial purpose, the parody is liable to termed an infringement of trademark.
The courts have time and again adopted a very lenient view towards protecting parody of brands for the purpose of creativity and artistic expression. But when parodies result in actual confusion among the public and free-riding on the trademark owner’s reputation, such protection is not afforded to the Defendants.