Parody
Parody is another defense to the claim of trademark tarnishment. A parody by its very nature must conjure up the appearance of the original trademark to be a successful parody. The key here is to
- Avoid confusing that audience. Make the parody different enough so that an average person would know that it is not the trademark itself.
- Use the parody to poke fun of the original trademark rather than just using it for humorous effect.
SPA’AM A TRADEMARK PARODY IN ACTION
Jim Henson Productions successfully asserted a parody defense when they were sued for trademark infringement by Hormel Foods over the character from “Muppet Treasure Island.” Henson created a wild boar character named “Spa’am,” and was promptly sued by Hormel, makers of SPAM® brand luncheon meat.
The court pointed out that a successful parody must evoke the original to be effective: “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 the trademark law.” As the court stated: “No one likes to be the butt of a joke, not even a trademark. But the requirement of trademark law is that a likely confusion of source, sponsorship or affiliation must be proven, which is not the same thing as a `right’ not to be made fun of.”
Keep in mind that just because you may have the fair use right to use a trademark, many trademark designs are also protected by copyright, and you may not necessarily have the right to use the copyrighted material that embodies that trademark.
Example:
Spider-Man is protected by both trademark and copyright. You might have the right to use the Spider-Man trademark in a documentary on comic books, but you would not automatically have the right to reproduce pages from an entire comic book in your film, as these are also protected by copyright.
Trademark Clearance Letter
If you plan on featuring a trademark or logo prominently within a scene, the best practice is to get permission from the trademark owners. The best way to do that is with a trademark clearance letter.
It is common practice to first contact the trademark’s owners and to explain your needs. You may need to send them your script or the scene from the film which contains their mark. Once the trademark’s owners have agreed to let you use their trademark in your film, follow up your telephone conversation or e-mail with a letter agreement. This very simple release is often drafted in the form of a letter from the trademark owner to the production company granting the nonexclusive right to use the trademark in the film.
TRADEMARK CLEARANCE LETTER
Dear [Production Company Name]
We, [Trademark Owner Name] are the owners of the trademark(s) [list the trademarks; you may need to attach them to the letter. If they are federally registered trademarks, include the registration numbers as well] (the “Trademarks”). You have requested our permission to include the trademarks in your feature film, currently titled [insert movie title] (the “Film”).
For good and valuable consideration, the sufficiency of which is hereby acknowledged, we hereby grant you the irrevocable nonexclusive rights to use the Trademark(s) in any manner you so choose, in your sole discretion in connection with the Film. These rights include, but are not limited to, the right to photograph, videotape, create film depictions of, refer to in dialogue, and to otherwise use the Trademark(s) in your Film, in any advertising, promotional, and marketing materials related to the Film, in any and all media, manner of exhibition, reproduction, transmission, or display now known or hereafter invented in perpetuity throughout the universe. The rights granted herein are fully assignable and transferable to your licensees, assigns, and successors.
We hereby warrant and represent that we are the owners of the above-referenced Trademark(s) and that we have the power to grant the license in rights herein. We agree to indemnify you for any breach of these representations or warranties and against all claims, expenses, damages, arising from our breach of this agreement.
Sincerely, _____
Trademark Owner
