Content Regulation / Censorship, Defamation / Reputation, National Security, Political Expression, Press Freedom
Le Ministère Public v. Uwimana Nkusi
Closed Expands Expression
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The U.S. District Court for the Southern District of New York held that when an unauthorized use of a trademark does not concern the source of the product, and implies an expressive content that is clearly recognizable as a parody or as a joke, it is protected under the First Amendment and the right to freedom of expression. The case involved New York magazine’s cover design, published by News America Publishing Incorporated, which made reference to another magazine’s cover design, The Old Farmer’s Almanac, a distinctive trademark published by Yankee Publishing Incorporated. Yankee Publishing Incorporated, as the publisher of the Almanac, and International Licensing Management Inc. —the licensing agent— filed a lawsuit against News America Publishing Incorporated, New York magazine’s publisher, because it considered that confusion was created in the marketplace regarding who was responsible for the publication, and that it diluted the value of their own trademark. News America Publishing Incorporated responded that there was no likelihood of confusion or other injury to the plaintiffs’ mark because it was clear that it was making a joke. Furthermore, it also argued that if there was any kind of confusion, it derived from an artistic expression that was protected by the First Amendment. The Court ruled in favor of the defendant, and found that the danger of public confusion regarding the source of origin was minimal, and that, in any case, the public interest in avoiding confusion was clearly outweighed by the public interest in free expression.
Yankee Publishing Incorporated has published The Old Farmer’s Almanac since 1941. The Almanac includes material of interest such as “weather forecasts, astrological predictions, stories of fact and fancy, recipes, and advertisements for homespun products.” [p. 2] Each year, the Almanac has featured the same cover design, which is registered with the United States Patent and Trademark Office. International Licensing Management Inc. is the exclusive merchandise licensing agent for the Almanac’s trademark.
News America Publishing Incorporated is the publisher of New York magazine. New York has been published continuously since 1968 and it “reports on news, fashion, art, theatre and film, elegant merchandise, trends and tastes, concentrating on the City of New York.” [p. 3] As the Court explained, “the Almanac is associated with rusticity, thrift, homespun good sense, homely time-honored adages, practicality, permanence, and rejection of the new-fangled trendy changes, all values diametrically opposite to the frivolous, trendy, inconstant, stylish, changeable, urbane glorification of consumption that characterizes the message of New York.” [p. 4]
For the 1990 Christmas Gift Issue, the editors of New York decided to point humorously to “thrift” as a new social value, and made a cover with joking references to the Almanac. For example, Mr. and Mrs. Santa Claus were substituted for Ben Franklin and Almanac founder Robert B. Thomas, and “jolly Christmas scenes most suggesting extravagance and consumption were substituted for the Almanac’s dour images of farm work.” [p. 4] The cover also included the name of the magazine, New York, “set forth with the usual boldness, in its usual place, large size, and distinctive typeface.” [p. 5] Except for its cover and the introductory page of the Christmas gifts feature which repeats the cover, the 252 pages issue includes no other reference to the Almanac.
The parties agreed to submit the issues of liability, likelihood of confusion, dilution, and freedom of expression for final judgment before the U.S. District Court for the Southern District of New York. Yankee Publishing Incorporated and International Licensing Management Inc. acted as co-plaintiffs and News America Publishing Incorporated was the defendant.
Judge Leval delivered the opinion for the U.S. District Court for the Southern District of New York. The main issues before the Court were whether New York’s magazine cover design for the 1990 Christmas Gift Issue —whose cover was a takeoff of Almanac’s traditional cover but with many changes— violated trademark rights by creating confusion on the origin of the product, and whether these eventual damages were outweighed by the First Amendment and freedom of expression.
Yankee Publishing Inc. and International Licensing Management Inc. alleged that the New York cover design violated trademark rights because it caused confusion in the marketplace regarding who was responsible for the publication, and it diluted the value of the Almanac‘s trademark. The plaintiffs claimed that News America Publishing was not engaging in parody and that the cover was inherently misleading, and consequently, not entitled to First Amendment protection.
The defendant, News America Publishing, acknowledged imitating elements of the plaintiffs’ traditional magazine cover design, but it contended that its use did not cause likelihood of confusion or other injury to the plaintiffs’ mark because it was a humorous commentary. Furthermore, it argued that if there was any kind of confusion, it derived from an artistic expression or comedy that was protected by the First Amendment. For the defendant, the constitutionally protected interest outweighed any minor injury to the plaintiffs’ trademark rights.
The Court admitted that the issue of likelihood of consumer confusion in this case was “a close one.” [p. 6] The Court applied an eight-factor trademark law test, set out in Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S. Ct. 36, 7 L. Ed. 2d 25 (1961), and concluded that even if New York‘s cover was unquestionably similar to the Almanac‘s cover, it was sufficiently clear that the obvious reference to the Almanac was a joke. The elements of the test were: i) strength of plaintiffs’ mark; ii) similarity of the uses; iii) Proximity of the products; iv) Likelihood that the prior owner will bridge the gap; v) Actual confusion; vi) Defendant’s good or bad faith in using plaintiffs’ mark; vii) Quality of the junior user’s product; and viii) Sophistication of consumers. The Court considered that New York‘s cover “did not create a likelihood of misleading consumers as to the source of the magazine.” [p. 7] In the Judge’s words: “Although it is clear that New York‘s cover refers to the Old Farmer’s Almanac, the cover also makes sufficiently clear that it is not the Old Farmer’s Almanac.” [p. 7]
As for the First Amendment protection, the Court also agreed with the defendant in the sense that “if there was some confusion as to source or origin, it was relatively minor and was far outweighed by First Amendment considerations protecting the right of commentary and artistic expression.” [p. 6] The Court held that “the First
Amendment confers a measure of protection for the unauthorized use of trademarks when that use is a part of the expression of a communicative message.” [p. 11] Judge Leval acknowledged that “when another’s trademark (or a confusingly similar mark) is used without permission for the purpose of source identification, the trademark law generally prevails over the First Amendment.” [p. 11] However, when the unauthorized use of another’s mark is part of a communicative message and not a source identifier, as in this case, “the First Amendment is implicated in opposition to the trademark right.” [p. 11]
The Court recalled its own judgment, Rogers v. Grimaldi, 875 F. 2d 994, 999 (CA2 1989), where it “adopted a balancing test for trademark infringement in cases implicating artistic expression to accommodate the dual interests of artistic expression and avoiding consumer confusion.” [p. 12] It also made reference to Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Group, Inc., 886 F.2d 490, 495 (2d Cir.1989), where it also held, as in this case, that there was “only a slight risk of consumer confusion that was outweighed by the public interest in free expression.” [p. 14]
Finally, while the Court found that the New York‘s cover was not a parody, it said that it made no difference to the matter. The Court highlighted that “parody implicates an element of ridicule, or at least mockery. The New York cover does not ridicule or mock the Almanac. It rather makes a joking reference to the Almanac.” [p. 16] Still, “the dispute as to whether New York‘s cover was parody misses the point.” [p. 16] Judge Leval explained that “parody is merely an example of the types of expressive content that are favored in fair use analysis under the copyright law and First Amendment deference under the trademark law.” [p. 16] In sum, the jurisprudence’s message is not that “parody is accorded First Amendment deference, but rather that the use of a trademark in the communication of an expressive message is accorded such deference.” [p. 16] Here, in the Court’s opinion, the New York’s cover entailed an expressive message, that was fully entitled to First Amendment deference.
As for the dilution claim, the Court held that the plaintiff “has not suffered dilution, watering down, or weakening of its mark resulting from New York’s cover,” and that, in any event, “the same First Amendment considerations” would prevail. [p. 20] In conclusion, the Court found that the plaintiffs “failed to show that defendant’s use of a recognizable imitation of plaintiffs’ trade dress caused any significant likelihood of confusion. In any event, the defendant’s right of free speech in the exercise of comic commentary outweighs any minor injury that may have been caused to plaintiffs’ trademark rights.” [p. 21]
Decision Direction indicates whether the decision expands or contracts expression based on an analysis of the case.
This decision carefully balanced the importance of the right to freedom of expression against trademark rights and the likelihood of confusion. The U.S. District Court for the Southern District of New York held, firstly, that jokes and parodies are not likely to create confusion among consumers as to the origin of the products, especially when the use of the trademark is part of a humorous commentary. Secondly, it held that for this type of unauthorized use of a trademark (a communicative message or an expressive content, not a source identifier), freedom of expression prevails over trademark law.
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