Prank as Parody?

Because pranks of this sort typically involve the unauthorized use of the target's trademarks, activist groups that choose to communicate their ideas in this manner may be liable for claims of trademark infringement. See Lisa P. Ramsey, "Brandjacking on Social Networks: Trademark Infringement by Impersonation of Markholders," 58 Buff. L. Rev. 851 (2010). Indeed, as a result of The Yes Men's prank, the U.S. Chamber of Commerce filed suit against the pranksters, claiming, among other things, trademark infringement under the Lanham Act. First Amended Complaint at ¶¶ 45–52, Chamber of Commerce of the United States of Am. v. Servin, No. 1:09-cv-02014 (D.D.C. filed Nov. 6, 2009). The defendants have moved to dismiss the case.

In addition to trademark-infringement claims brought under the Lanham Act, mark owners may be able to assert other claims against impersonations of this sort, including claims brought under the Anticybersquatting Consumer Protection Act and the Computer Fraud and Abuse Act, breach of the terms of use of the corporate target's website, trademark dilution, defamation, unfair competition, deceptive trade practices, false advertising, and intentional interference with contractual or business relations. The viability of such claims is outside the scope of this article.

Unlike a traditional parody, which must simultaneously convey both that it is the original and that it is not the original, many of these identity-correction spoofs imitate their targets so closely that it is not immediately apparent to the public that these pranks are intended to comment on, criticize, or poke fun at the target or its policies. Accordingly, where a prank causes reasonable members of the public to believe that the target is the true source of the prankster's false statements, the prankster may not be able to rely on the First Amendment protections typically available for parody and more obvious critical commentary. This article considers whether and under what circumstances these pranks constitute trademark infringement, as well as the two most significant obstacles a mark owner is likely to encounter in pursuing such trademark-related claims: the requirement that the prankster's unauthorized use of the target's marks be "in connection with" goods or services, and the defense that the prankster's use is constitutionally protected parody.

The Accused Use Must Be "in Connection with" Goods or Services
As a threshold matter, to be actionable under the Lanham Act, the target of any identity correction prank must be able to demonstrate that the prankster's use of the target's trademarks is in connection with goods, services, or commercial activities. Specifically, to establish infringement of a federally registered trademark, section 32 of the Lanham Act requires that the accused use be in "in connection with the sale, offering for sale, distribution, or advertising of any goods or services." 15 U.S.C. § 1114(1)(a). Similarly, for marks that are not federally registered, section 43 of the Lanham Act requires that an accused use be "on or in connection with any goods or services" or "commercial activities." 15 U.S.C. § 1125(a)(1)(A).

In cases in which an activist group creates a fake website as part of its impersonation of a target, and that website adopts a domain name confusingly similar to the domain name of the target, the target may be able to satisfy the threshold commercial requirement by demonstrating that the imposter's website is using the target's marks to harm, disrupt, or divert traffic away from the target's website or business. For example, in People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001), the Fourth Circuit held that, "[t]o use [the mark at issue] 'in connection with' goods or services, [the defendant] need not have actually sold or advertised goods or services on the [infringing website]. Rather, [the defendant] need only have prevented users from obtaining or using [the plaintiff's] goods or services . . . ." Id. at 365. In that case, the defendant set up a website at www.peta.org parodying the plaintiff's organization for the ethical treatment of animals by entitling the website "People Eating Tasty Animals." The defendant asserted that it was not making commercial use of the PETA mark, but the Fourth Circuit held that the defendant's use of the plaintiff's mark in the domain name of his website was "'in connection with' the distribution of services because it is likely to prevent some Internet users from reaching plaintiff's own Internet web site." Id. at 365–66.

Decisions in the Second and Third Circuits are consistent with PETA. In OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176 (W.D.N.Y. 2000), the court found that the defendant's use of the plaintiff's mark in the domain name of a website parodying the plaintiff met the "in connection with" requirement "because it is likely to prevent or hinder Internet users from accessing plaintiffs' services on plaintiffs' own web site." Id. at 186. Similarly, in Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), the court found that the defendant's creation of a "bogus 'Jews for Jesus' site" satisfied the "in connection with" requirement because "'it is likely to prevent some Internet users from reaching plaintiff's own Internet web site.'" Id. at 309 (quoting Planned Parenthood Fed. of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430, 1435, 1997 WL 133313 (S.D.N.Y. 1997)).

Not all courts have adopted this "interference" theory. For example, in Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, 527 F.3d 1045 (10th Cir. 2008), the Tenth Circuit rejected the plaintiff's attempt to rely on the interference theory to argue that the defendant's creation of a look-a-like parody website with a domain name that incorporated the plaintiff's marks satisfied the Lanham Act's "in connection with" requirement. In so doing, the court relied on language from Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992), in which the U.S. Supreme Court stated that the Lanham Act is intended "to protect the ability of consumers to distinguish among competing producers." Id. at 774. Thus, according to the Tenth Circuit, "[u]nless there is a competing good or service labeled or associated with the plaintiff's trademark, the concerns of the Lanham Act are not invoked." Utah Lighthouse Ministry, 527 F.3d at 1054. In one of the few issued opinions involving an identity correction prank (as opposed to an obvious parody website or a website containing obvious critical commentary), a federal district court in Utah relied on the Tenth Circuit's rejection of the interference theory to dismiss a lawsuit brought by Koch Industries against pranksters who had created a fake website at www.koch-inc.com and issued a fake press release purporting to announce that Koch Industries would stop funding organizations that deny climate change. Koch Indus., Inc. v. Does, No. 2:10-cv-1275-DAK, 2011 WL 1775765, at *4 (D. Utah May 9, 2011). In the interest of full disclosure, the author notes that his law firm represented Koch Industries in this litigation.

In addition to the interference theory, targets of identity correction pranks may be able to satisfy the "in connection with" requirement by arguing that what the pranksters are doing is disseminating information to others and that such activities constitute "information services" triggering the Lanham Act. The Second Circuit adopted this interpretation of "services" in United We Stand America, Inc. v. United We Stand, America, New York, Inc., 128 F.3d 86 (2d Cir. 1997), in which it held that the defendant's political activities, including the dissemination of political information, constituted use in connection with "services" as required by section 32 of the Lanham Act. Id. at 92. Similarly, in SMJ Group, Inc. v. 417 Lafayette Restaurant LLC, 439 F. Supp. 2d 281 (S.D.N.Y. 2006), the defendant non-profit organization distributed informational leaflets containing the plaintiff restaurant's logos in order to raise awareness about the work conditions of the restaurant's employees. In holding that defendant's educational activities constituted "services" as defined by the Lanham Act, the district court reasoned that "an individual being educated should not be misled about the source of that education, just as an individual purchasing a can of peas should not be misled about the source of those peas." Id. at 287. Likewise, in Planned Parenthood v. Bucci, 1997 WL 133313, at *4 (S.D.N.Y. 1997), the court found that the antiabortion defendant "offer[ed] information services for use in convincing people that certain activities, including the use of plaintiff's services, are morally wrong. In this way, defendant offers his own set of services, and his use of plaintiff's mark is in connection with the distribution of those services over the Internet."

In certain scenarios, the targets of identity correction pranks may be able to satisfy the "in connection with" requirement by arguing that the prankster's spoof was at least in part an advertising stunt to promote the prankster and its goods or services. For example, in the pending U.S. Chamber of Commerce case, the chamber has argued that The Yes Men's prank was part of a comprehensive scheme to promote The Yes Men's movies, books, and other branded merchandise. It is unclear whether the district court ultimately will accept the chamber's argument, but, at least at an abstract level, section 32 of the Lanham Act makes clear that the threshold "in connection with" requirement can be satisfied not only by selling and offering for sale goods and services, but also by the "advertising of any goods or services." 15 U.S.C. § 1114(1)(a).

A target of a prankster also may be able to argue that the threshold commercial requirement has been satisfied where the prankster uses the target's marks in connection with the solicitation of monetary contributions for the prankster organization. In Coca-Cola v. Purdy, 382 F.3d 774 (8th Cir. 2004), the Eighth Circuit found that the websites of an anti-abortion activist—which used domain names incorporating famous marks (e.g., drinkcoke.org, mycoca-cola.com, mymcdonalds.com, mypepsi.org)—"can not be considered to be completely noncommercial since they directly solicited monetary contributions . . . ." Id. at 786. In an identity correction prank scenario, it is unlikely that the prankster's fake website will directly solicit monetary contributions, but where the prankster publicizes its stunt and where the target's official website solicits monetary contributions, the target could argue that the prankster is using the target's marks to indirectly solicit monetary contributions by driving traffic to the organization's website.

The Parody Defense
If the target of an identity correction prank is able to establish that the prankster used its marks "in connection with" goods or services, the most obvious defense the prankster is likely to raise is that its prank is constitutionally protected parody and therefore immune from liability. Parody is a recognized form of free speech protected by the First Amendment. For a general discussion on the parody defense in trademark cases, see 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 31:153 to 31:156 (4th ed.). Parody is not, however, an affirmative defense to trademark infringement in the way that laches and acquiescence are affirmative defenses. Instead, parody is simply another way for a defendant to argue that there is no trademark infringement because there is no likelihood of confusion. The Second Circuit explained it as follows:

A parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the customer will be confused.

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989).

Any analysis of parody in the context of identity correction pranks must begin with Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769 (8th Cir. 1994). In that case, a humor magazine called Snicker displayed on its back cover a mock advertisement for a nonexistent product, "Michelob Oily," with the slogan "One Taste and You'll Drink It Oily." Id. at 772. The defendant's apparent message was that water pollution would result in beer being oily. The defendant argued that its mock advertisement was protected parody, but the Eighth Circuit disagreed, relying on survey evidence in which 55 percent of respondents believed the advertisement suggested that MICHELOB beer was in some way contaminated with oil, 22 percent stated they would be less likely to buy MICHELOB beer in the future as a result of the ad, and 75 percent did not perceive the ad as satirical. Id. at 772–73.

In balancing the defendant's First Amendment rights with the likelihood that the advertisement would confuse consumers, the court concluded that the confusion engendered by the advertisement was "wholly unnecessary" to the defendant's stated purpose of commenting on environmental pollution. Id. at 776. The court reasoned that "[b]y using an obvious disclaimer, positioning the parody in a less-confusing location, altering the protected marks in a meaningful way, or doing some collection of the above, Balducci could have conveyed its message with substantially less risk of consumer confusion." Id.

In another relevant case from the Eighth Circuit, Mutual of Omaha Insurance Co. v. Novak, 836 F.2d 397 (8th Cir. 1987), the court affirmed a preliminary injunction against a nuclear protestor who marketed T-shirts and other merchandise bearing the terms "Mutant of Omaha"—along with the words "Nuclear Holocaust Insurance"—as likely to cause confusion with the plaintiff's MUTUAL OF OMAHA mark. In reaching its conclusion, the court relied, as it did in the Anheuser-Busch case, on survey evidence that showed that approximately 10 percent of respondents thought that the plaintiff "goes along" with the defendant's antinuclear products. Id. at 400. According to the district court, "[t]here are numerous ways in which [the defendant] may express his aversion to nuclear war without infringing upon a trademark in the process." Mut. of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 911 (D. Neb. 1986), aff'd, 836 F.2d 397 (8th Cir. 1987).

What is clear from Mutual of Omaha, Anheuser-Busch, and other trademark-infringement cases involving attempts to rely on parody as a defense is that if a plaintiff is able to establish likelihood of confusion as a result of an attempted parody, through survey evidence or otherwise, that likelihood of confusion will rebut the defendant's argument that the alleged parody is a non-confusing joke. With respect to identity correction pranks, it may be especially difficult for the pranksters to rely on parody as a defense, because those pranks are designed to mimic the targets as closely as possible. Thus, in order for an identity correction prankster to rely on parody, it will have to establish that the false statements communicated through the prank are so obviously antithetical to the positions of the target that reasonable members of the public are not likely to believe that the target was the actual source of those statements.

Keywords: litigation, intellectual property, trademark infringement, constitutionally protected, identity correction, freedom of speech, impersonation, likelihood of confusion, Lanham Act

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