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AFTER THE PARODY, COMES AN INFRINGEMENT CLAIM

November 13, 2020, By

As the saying goes, there is a thin line between love and hate and equally a thin line between what business owners may consider trade mark/copyright infringement and harmless parody of their brand.

In the age of Gifs and Memes, we have seen an increase in parodies of popular brands. Whilst, a parody of a brand may be viewed as harmless tongue in cheek humour, parodies of brands are increasingly used as a marketing tool for commercial gain. As such, brand owners may have valid concerns regarding the effect, a parody may have on its brand.  Brand owners may be concerned that a parody of its brand may (1) put the brand in a negative light and (2) unfairly takes advantage of the goodwill created in the brand thus creating the illusion in the minds of consumers that the two brands are linked. The risk, therefore, being that such parodies may cause brand dilution and blurring amongst consumers and cause harm to the brand’s identity.

Recently, Off-White made the decisive decision to bring a copyright infringement claim against US based ice cream and dessert company called Afters Ice Cream, for its use of Off-White’s graphics and multi-diagonal stripe mark with the words ‘Off-diet’ on its merchandise.

off white T-shirt afters ice cream T-shirt
OFF-WHITE AFTERS ICE CREAM

Parody exception

Under UK copyright and trade mark law, certain acts are restricted and only permissible with the consent of the copyright/ trade mark owner. However, under Copyright law in the UK and EU, parody is a legitimate defence to a copyright infringement claim (provided that the use also amounts to ‘fair dealing’).

So, what is the definition of parody? Although the legislation provides no definition, the Court of Justice of the European Union determined in the case of C-201/13: Deckmyn and another v Vandersteen and others [2014] All ER (D) 30 (Sep) that ‘parody’ should be given its ordinary meaning, and according to the Oxford English Dictionary parody means ‘an imitation of the style of a particular writer, artist, or genre with deliberate exaggeration for comic effect.’

So, when will the parody exception apply? Well, the above case also established that when a court is assessing whether something is within the parody exception consideration must be given to the following:

  1. Does the parody evoke an existing work while being different from it?
  2. Is the parody an expression of humour or mockery?

Notwithstanding the above, a balance must be struck between the interests of the copyright owner and the third party’s right to express themselves whilst using the copyright protected work.

Biffa comment 

Unlike the US and elsewhere, the parody exception is a relatively new defence (having been incorporated into UK law in 2014). As such, the defence is still in its infancy, and there are not very many UK cases in this area.

In our view, if the parody/ imitation is so close that that is (1) it is likely to misrepresent, deceive and cause confusion among consumer or (2) it intends on riding upon the reputation of another brand for commercial gain, this could trigger copyright infringement claim, especially in the instance where there are also some very similar specific elements within the imitation.

As with any infringement claim, each case is different, and the likelihood of successfully bringing a copyright infringement claim will rest heavily on the facts of each case, and as advised above any copyright infringement claim would be subject to defences and exceptions, such as parody.

If you are concerned that a third party may be infringing your copyright, or you suspect that your use may be infringing other third parties copyright, please do get in touch. As always, our specialist IP lawyers can advise you on all copyright related issues.

Written by Clara Bakosi, Solicitor

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