Patagonia v. Pattie Gonia: Trademark, Fair use and parody.
Patagonia is suing the drag queen Pattie Gonia for trademark infringement.[1] There are a LOT of things about this case, and a lot of people have strong opinions about it. I, for one, think that this whole lawsuit could have been an email[2] But if you are a creative and part of your brand is being subversive towards other brands, you should pay attention to this case, specifically about Pattie Gonia’s defenses.
Some background on lawsuits and trademark law
Whenever you get sued, there are two basic ways to respond.
I didn’t do that.
Yeah, I did that; I had every right to do that, and I’ll do it again.
Pattie Gonia is using the second one (she’s using both but we’re talking about the second one). Specifically, she (or her legal team) is invoking a fair use defense.[3] And not just any fair use defense. Part of her defense invokes fair use and the First Amendment with a case called Rogers v. Grimaldi.[4] But there’s a problem. Let me take you on a journey.
In trademark law, there are different kinds of fair use:
Nominative: describing competitors' products. Such as, hypothetically, “We’re Pepsi. Drink Pepsi instead of Coke.”
Classic: using a trademark to describe your goods. Picture an erectile dysfunction med commercial that says it helps you cum and go, using Kum and Go’s trademark descriptively.
Neither of those things is happening here. So, what is happening? A secret third thing. That secret third thing is First Amendment expressive use, which includes parody. And that’s where things get sexy.
There are two types of trademark claims:
Confusion is “people think you’re shit is my shit” (false designation/passing off) or “people think I FW you and I don’t” (confusion as to sponsorship or association).
Dilution is: “I’m famous, I’m a household name. I have a reputation. Keep my name out of your mouth.”
For dilution, Lanham says that parody is a defense to dilution claims.[5] That’s because we want to let people use their free speech to criticize companies. But for confusion claims, there is no explicit carve-out. But there is a case! It’s called Rogers v. Grimaldi, which basically said that when something was expressive and had some artistic relevance, it could shut down trademark infringement claims. The argument goes, “This is an expressive work, a commentary on the brand; therefore, we don’t need to go through this whole lawsuit because it doesn’t matter, since the First Amendment allows us to do it. But there’s a problem…
The problem!
The problem is the Supreme Court (typical). In Jack Daniel’s v. VIP Productions,[6] a dog toy shaped like a Jack Daniel’s bottle named Bad Spaniels was at issue. Jack Daniel’s said it was infringement. VIP said it was expressive use. The Supreme Court said this: when the expressive use is a source identifier, the Rogers test doesn’t apply. Meaning: if your “parody” is also your brand, you can’t hide behind the Rogers test. Pattie Gonia is the Pattie Gonia brand.
The Roger’s test probably won’t save her. But that’s not the end. Parody can still be used as a defense in a confusion case, but you have to show that the parody itself makes it unlikely that people will be confused. Example: Louis Vuitton makes luxury handbags. They don’t make cheap dog toys. No one is going to think a dog toy that says “Chewy Vuitton” in the shape of a handbag was actually made by the designer clothing company. (a real case)[7] But like some dude in a robe once said: “There are confusing parodies and non-confusing parodies.”[8]
So what does this mean for you?
If you’re in the business of parody, there is a way to do that while minimizing the risk of getting sued. But parody, like all good art, is likely going to ruffle some feathers. The best way to mount a defense is to
1) Keep the use of IP you don’t own to a minimum. Just enough to get the point across.
2) Make that use transformative somehow. When it comes to parody, that means make the IP you’re using a target.
3) Keep the target audiences separate.
In an art/expressive work context, that would mean targeting different audiences. (No one is going to listen to your parody as a substitute for the original)
In a brand/trademark context, that means keep your goods away from the goods of the brand you’re parodying. (Remember: Louis Vuitton doesn’t sell dog toys, which made putting Chewy Vuitton on a dog toy a parody.
4) Be ready for a fight. Fair use is a defense, not a bar to a lawsuit. Even if you’re 100% in the right, you might still have to prove that in court.
If you have brand questions and want to consult with an attorney who knows ball, hit us up.
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* This post is for informational purposes only and does not constitute legal advice. For specific trademark questions, consult a licensed attorney.
References
[2]Patagonia v. Pattie Gonia: This Lawsuit Could’ve Been an Email.
[4]Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
[5] 11 U.S.C. 1125 (c)(3).
[6]Jack Daniel's Properties, Inc. v. VIP Prods. LLC, 599 U.S. 140
[7] Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007).
[8]Id. (fancy way of saying same case as above).
