Whether or not you find them funny, most people would have at some stage encountered satirical adaptations of well-known brands. Parodies or satirical adaptations of famous brands are common, whether they appear in sketch comedy (does anyone remember Fast Forward’s “A Current Of Air with Jana Vent”?) or news satire programs like Last Week Tonight with John Oliver, or on t-shirts or other garments.
Parodies of well-known brands are appealing because the brands they adapt are well known. For owners of well-known brands this can be concerning, particularly if the adaptation portrays the brand in a negative manner. However, not all adaptations will contravene the law, and in many cases brand owners have limited options to enforce their rights against satirical adaptations. The three primary areas of law to consider are trade mark infringement, passing off, and misleading or deceptive conduct.
Trade Mark Infringement
A common complaint by owners of parodied brands is that the parody is an infringement of their trade mark rights. Assessing whether a parody qualifies as an infringement is not always straightforward, as it requires consideration of several different factors.
Section 120 of the Trade Marks Act 1995 contains the definition of trade mark infringement which provides (emphasis added):
A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
While many parodies are certainly visually or phonetically similar (or even phonetically identical), these are not the only factors to consider when assessing if a satirical adaptation constitutes trade mark infringement. A key element of trade mark infringement is use of the allegedly infringing sign as a trade mark. If the allegedly infringing sign is not used as a trade mark, the use will not constitute infringement. So, the question to be asked is “does a satirical adaptation of a well-known brand constitute use ‘as a trade mark’?”
Use As a Trade Mark
A sign will be considered to have been used as a trade mark if it is used, in the course of trade, as a ‘badge of origin’ to indicate a connection between goods and the person who applies the mark to the goods (Coca-Cola Co v All-Fect Distributors Ltd  FCA 1721; E. & J. Gallo Winery v Lion Nathan Australia Pty Limited  HCA 15 at 43). Section 17 of the Act expresses this concept in the definition of a trade mark:
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
As noted above, parodies of well-known brands are extremely common. Consumers are exposed to these satirical adaptations so regularly, that while they recognise that one is a parody, it is unlikely that consumers would think the original brand owner is creating a parody of its own brand. The purpose of the parody is often humour, rather than to indicate the origin of the goods/services, so the adaptation does not normally function as a ‘badge of origin’. In these cases, there is a strong argument that using the parody does not constitute use ‘as a trade mark, even if it is very similar to the original brand.
Courts in both the United States and Australia have considered these issues. United States Courts have recognised that parody or satire of famous brands does not constitute trade mark infringement where it is obvious to consumers that the parodied brand was not the manufacturer of the goods. Although there is limited Australian authority, it is likely that Australian Courts would recognise that use of satirical versions of well-known marks does not constitute use as a trade mark. Australian Courts have accepted that decorative use of signs on clothing does not necessarily indicate the origin of the goods (Top Heavy Pty Ltd v Paul Joseph Killin (1996) 34 IPR 282.).
Nonetheless, owners of famous brands have attempted to press their claims, most notably in the US case involving the parody brand, The South Butt (a parody of The North Face). In this case, however, The South Butt was clearly being used as a badge of origin. The matter settled without judicial determination, with parody brand creator Jimmy Winklemann agreeing to cease using The South Butt. Its lasting effect, however, has been mixed for The North Face. While the rise of The South Butt as a brand in its own right has been quashed, the saga gave a significant amount of publicity to the parody itself, and garments bearing the South Butt logo are now commonly found for sale from a wide variety of suppliers. Perhaps a better commercial approach by The North Face would have been to permit Winklemann to continue, in exchange for royalties, and on the condition that he vigorously enforced the “South Butt” brand. If they had done so, The North Face may at least have been able to retain a greater degree of control over the parody
Even if a party can argue a parody trade mark is being used as a trade mark, there remains a significant question about whether the parody mark is deceptively similar to the original.
Section 10 of the Act provides:
[A] trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles the other trade mark that it is likely to deceive or cause confusion.
Australian Courts have recognised that surrounding circumstances, including the characteristics of the target audience or intended purchasers of the goods, are relevant considerations when assessing whether consumers are likely to be deceived or confused. Courts have also recognised that consumers of well-known or luxury clothing goods tend to subject the purchased goods to greater scrutiny than in other areas. This is a strong indication that parodies or adaptations of well-known brands will not be considered deceptively similar with the original brands. It is important to bear in mind, however, that each case will be different, and careful consideration of all factors is required when assessing whether a parodied brand constitutes trade mark infringement.
A further basis for complaint from owners of well-known brands is that of the common law tort of passing off. Passing off applies where a trader damages another trader’s reputation or goodwill by causing potential customers to, in some way, associate that trader’s product or business with the original trader’s, where no such association exists.
To be successful in a claim of passing off, a person must establish that:
- They have a reputation;
- The offending party has misrepresented that their goods are those of the person or are in some way connected to, associated with, or endorsed by that person’s business; and
- The misrepresentation has caused or is likely to cause damage to the person (Google Inc v Australian Competition and Consumer Commission (2013) 249 CLR 435, 443).
As noted above, brand parodies are successful because the brands they adapt are well-known. Consequently, a party can establish reputation. The other elements, that of misrepresentation and damage, require further consideration.
The misrepresentation requirement in a passing off claim is closely linked to that of deceptive similarity in trade mark infringement in that both require consideration of how consumers perceive the brand. In a passing off claim, the deciding factor is not whether consumers will be ‘confused’, but rather whether they will be misled or deceived about the origin of the goods/services. It is a well-established legal principle that mere confusion does not always equate to deception (Google Inc v Australian Competition and Consumer Commission (2013) 249 CLR 435).
It would be an ineffective parody where consumers could not make the link to parodied brand, and so some degree of similarity between the original and the parody is necessary. However, it would be similarly ineffective if consumers considered the brand to be an official product of the original brand owner. In cases where the parody is recognised as a parody, it is unlikely that consumers will be misled about the origin of the goods/services being provided. There is a strong argument in these circumstances that use of a brand parody does not amount to passing off.
Australian Consumer Law
Closely related to the action of passing off is that of misleading or deceptive conduct. Section 18 of the Australian Consumer Law in Schedule 2 of the Competition and Consumer Act 2010 (Cth) prohibits a person from engaging in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29 of the Australian Consumer Law prohibits a person from making false or misleading representations about goods or services, including:
- Representations that their goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits that they do not (section 29(1)(g)); or
- The person has a sponsorship, approval or affiliation (section 29(1)(h)) that they do not.
As with passing off, the parody’s success relies on consumers recognising the brand as a parody. As such, it would only be in cases where the parody was unsuccessful, or too subtle for the majority of consumers, where deception could occur.
Copyright and Misrepresentation
Parodies of trade marks or copyright protected material may constitute misrepresentation if it is not clear that the alleged infringement is indeed, a parody (Surge Licensing Inc v Pearson (1991) 21 IPR 228). Although there is limited Australian authority in relation to satire or parody of trade marks, parody of copyrighted works has been held to constitute breach of section 52 of the Trade Practices Act 1974 (Cth), the predecessor to section 18 of the Australian Consumer Law. Authority in the UK (Clark v Associated Newspapers Ltd (1998) 40 IPR 262 (Ch D)) and USA (Nike Inc v Just Did It Enterprises 6 F3d 1225) indicates that the misrepresentation must be that the supplier of the goods/allegedly infringing material is the owner of the parodied work, and is not the actual supplier of the goods/material. Although not binding, these cases provide a good indication of how Australian Courts are likely to approach the issue.
Enforcement of brands against parodic or satirical adaptations can be difficult. In many cases, owners of well-known brands will have limited options for enforcement, even where the infringement relates to registered rights. The key to a successful claim is largely focused on consumer deception, so provided this can be demonstrated or successfully argued, a claim of infringement by a brand parody will have merit.
In any event, brand owners would be best placed to seek appropriate advice before taking steps to enforce brand rights. If you are the owner of a brand and are worried about infringement, or if you have been accused of infringement, get in touch with our IP lawyers on 1300 544 755.
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