Trademark parody and dilution: what if the mark’s owner does not get the joke?

by cristinaberra

Recently, there has been much talk on fashion magazines and blogs about the newly founded US brand Vetememes evoking the cult French brand Vetements. The web community has positively embraced Vetememes raincoats mimicking Vetements’ ones and quite uniformly agreed that the garment amounts to parody, without really questioning if it can be considered as such and whether the Paris based fashion company will file a lawsuit for trademark infringement and dilution. In this event, would the trade mark owner be likely to succeed or would the Courts take a parody defence into account, supporting Vetememes’ conduct?

US trademark law expressly provides a fair use defence for parody within the exceptions for a dilution claim: according to 15 U.S.C. §1125 (c) (3), if the use of a famous mark amounts to a parody[1] and does not constitute a designation of source, it cannot be actionable as dilution. If this provision can be quite easily applied in a non-commercial context – such as in pure political or critical speech – trademark parody in the course of trade creates bigger issues, as the provision does not extend the fair use defence to parodies used as trademarks.

However, recently US courts have shown openness in interpreting the “commercial” use of parody in relation to claims of trademark infringement and dilution (see, for example, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252, 4th Cir. 2007, Louis Vuitton Malletier SA v My Other Bag Inc, 1:14-cv-034, 2016). First, according to the interpretation given by the Courts, infringement would likely to be found only when the claimant could demonstrate a likelihood of confusion between the mark and the alleged parody in relation to the origin of the goods. Moreover, as far as dilution claims are concerned, blurring appears hard to prove in case of effective parody, as the Courts tends to consider that a parody does not threat the uniqueness of the mark, rather it reinforces and enhances its notoriety in the eye of the public. Dilution by tarnishment, which occurs when the use of the similar sign harms the reputation of the senior trademark, looks even harder to demonstrate in case of parody, as it has usually been found in obscene contexts or in relation to illegal activities (see, for example, University of Kansas and Kansas Athletics Inc., v Larry Sinks Clark Orth and Victory Sportswear, LLC., 644 F. Supp. 2d 1287, 1306; PepsciCo, Inc #1 Wholesale LLC and others 84 USPQ 2d 1040).

That being said, apparently there is no need to worry about legal actions in the case at hand. In fact, according to the New York Times, “Vetements will not be filing any lawsuits over the Vetememes raincoat and hope that he has enjoyed making his project as much as we [Vetements] do making our clothes”[2]. Contrary to others, some famous marks’ holders seem – finally – to get the joke.

Cristina Berra

Assistant Editor, QMJIP

[1] US Courts have acknowledged that a successful parody must initially bring to mind the original work, but it must be clever enough to be clear that it is not the original and is not even connected with it, being just a humorous take-off on it (see Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ. Group, Inc., 886 F.2d 490, 494 (2nd Cir. 1989).