When a cartoonist decides to horse around, must a mammoth corporation react as if an online site is a horse of a different color, and whinny to the jest, nay, nay, neigh? With the Entertainment industry seeking to protect its intellectual property, especially in response to lucrative merchandising issues, it’s worth seeing that copyright and trademark issues create legal issues for other enterprises, too–and that the cyber chatter can be just as robust over the online world’s perception that corporations may feel their oats too much and might consider a wee bit more horse sense about aggressive protection of brand.
Today’s publicity-attracting incident involves Walmart, from which Jeph Jacques, creator of the comic strip Questionable Content, received a recent cease and desist letter after he launched his Walmart.horse website via the Tumblr photo-sharing and blogging software.
Jacques insists his is a protectable fair use of Walmart’s trademark. In the C&D notice, Walmart, the nation’s largest retailer, says the site, among other mark infringement claims, particularly “weakens the ability of the Walmart mark and domain name to identify a single source… [and] tarnishes the goodwill and reputation of Walmart’s products, services, and trademarks.”
What legal issues will prevail, so one of these conflicting parties happily and triumphantly rides off into the sunset?
While parody is generally a protected form of speech, there is no definite legal definition of what separates legitimate parody from trademark infringement.
Further, Jacques refers to both parody and satire as to why his use of the Walmart mark is defensible. In his response Jacques refers to the Walmart.horse site as a “piece of postmodern Dadaism—nonsense-art using found objects, in this case publicly available images and the name of a mega-corporation. Its purpose is to provoke exactly the kind of response it has received, and in doing so to parody the Walmart corporation and its actions. Claiming that walmart.horse defames the Walmart brand somehow is the highest possible satire.”
Satire v. parody
A parody is an imitation a work that comments directly on the work and therefore is allowed to take a portion from the work that is the subject of the comment; whereas a satire comments on some broad aspect of society.
Generally, courts have concluded that parodies are less likely to infringe a trademark than satire. In particular, the U.S. Court of Appeals for the Ninth Circuit has suggested that it would be much more difficult for satire to claim “artistic relevance” to the underlying work than parodies. [See: Mattel, Inc. v.MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) ] One reason for this discrepancy is because “satires differ from parodies in that underlying work is not absolutely necessary for satiric commentary”. As such Jacques calls the site “an obvious parody” that is essentially too ridiculous to be considered affiliated with Walmart the retailer.
Dilution, commerical use
The central issue in mark infringement cases is the likelihood of confusion stemming from the use of the mark. Of the many factors courts take in to account, a key issue is if the use is commercial in nature. The Federal Trademark Dilution Act, in particular, requires that the mark be used “in commerce” which usually refers to the sale of goods or services.
The Walmart.horse site, at this point, has yet to sell anything: the photo appears on a static Tumblr page free of advertisements; it, thus, may be a hard sell a judge on the argument that the photo is used “in commerce.”
Still, a critical element of marks involves the rights holders’ maintenance and protection of their TMs, so the retailer may be unwilling to let the horse’s nose under the tent. Walmart has demanded that Jacques pull his site by a specified date, though it is unclear if the corproation will move forward if he refuses. While Jacques appears to have a viable parody defense, the web site Ars Technica reports that when it comes to Internet domains, ICANN routinely sides with mark holders challenging registration.