article
Parody in English Law
4 October 2010
Parody means slightly different things in different contexts,
but at its core it is a deliberate imitation, usually for comic
effect. This article sets out an overview of English law’s approach
to parody, with an emphasis on recent cases, and considers the
application of domain name dispute rules to domains that host
parody sites.
Parody in English copyright law
For a parody to succeed, it must be clear what is being parodied
– and as this may be done by copying the original, copyright law is
key to an understanding of parodies. It is often assumed that
parody is exempted from the normal rules of copyright, and in some
jurisdictions it is. For example, in Campbell v Acuff-Rose Music,
510 US 569 (1994) the US Supreme Court held that commercial parody
could qualify as fair use. In assessing whether someone has made
fair use of a copyright work, one should look at whether or not the
use it was put to was transformative or not.
The English courts once also held that transformative works
would not infringe copyright. This approach is exemplified by
Younger J in Glyn v Weston Feature Film Company [1916] 1 Ch. 261,
who held that there was a principle that “no infringement of the
plaintiff's rights takes place where a defendant has bestowed such
mental labour upon what he has taken and has subjected it to such
revision and alteration as to produce an original result”.
However, this is no longer considered good law. In Schweppes v
Wellingtons [1984] F.S.R. 210, Falconer J was asked to consider
whether the defendants’ labels, which bore the word ‘Schlurppes’,
infringed the claimant’s copyright in its Schweppes labels. The
judge stated that the test was simple – was there reproduction of a
substantial part of the claimant’s work? It was of no relevance
whether or not a new work had been created. This approach was
followed in Williamson Music Ltd v The Pearson Partnership Ltd
(1987) F.S.R. 87.
When determining whether or not a ‘substantial part’ of a work
has been copied, one must look at whether substantial use of the
author’s skill and labour has been made, or whether or not what has
been reproduced express the author’s own intellectual creation. In
practice, the hurdle for direct textual reproduction is quite low,
and following Case C-5/08 Infopaq International A/S v Danske
Dagblades Forening [2009] ECR I-0000, it seems that even copying
seven words could amount to copyright infringement. Copyright does
not just cover words – as Lord Hoffman said in Designers Guild Ltd
v Russell Williams (Textiles) Ltd [2001] 1 W.L.R. 2416,
“the original elements in the plot of a play or novel may be a
substantial part, so that copyright may be infringed by a work
which does not reproduce a single sentence of the original”.
However, it is trite law that copyright protects the expression
of an idea, not an idea itself. In Baigent & Anor v The Random
House Group Ltd [2007] EWCA Civ 247, it was claimed that The Da
Vinci Code copied the theme of the claimants' earlier historical
work, but the claimants failed to establish that The Da Vinci Code
reproduced anything protected by copyright.
It could also in some circumstances be open to defendants to
claim that the parody is fair dealing as it is used for the
purposes of criticism or review, which is permitted under section
30 of the CDPA.
The Gowers Review, an independent review commissioned by the
government and published in 2006, called for the government to
create an exception to copyright for the purpose of caricature,
parody or pastiche by 2008; and such an exception from copyright
law is expressly permitted by the 2001 Information Society
Directive (Art 5 (3) k). However, following a consultation, the
UK’s Intellectual Property Office felt that a change would create
uncertainty and prejudice rights holders, so it appears that law
reform is unlikely, at least in the near future.
Copyright and online parodies – the difficulties of
enforcement
Online parodies abound, and with many it is clear that they
infringe copyright. However, despite rightsholders' best efforts,
it can be very difficult to get the infringements down.
EU law provides that service providers are not liable for
information they host, as long as (a) they do not have actual
knowledge of the content, and (b) once they become aware they act
expeditiously to take the information down. In practice, this often
means that service providers usually remove allegedly infringing
material first and ask questions later. But when the material is
uploaded again, the rightsholder has to start the process
again.
For example, a sequence from the 2004 film Downfall in which
Hitler launches into a tirade about the Russian advance became an
internet meme when it was resubtitled. A series of parodies and
satires had Hitler ranting instead about being banned from Xbox
Live, Michael Jackson’s death, or that he cannot get tickets to see
Billy Elliot. Constantin Films, the rights owners, have tried to
have the subtitled versions removed from YouTube and similar sites,
apparently pursuant to the US Digital Millennium Copyright Act. But
the take downs have not succeeded; as one video goes down, another
is put up. The situation has reached the farcical stage whereby one
of the more popular Downfall parodies is of Hitler ranting about
the parodies, and demanding that they should be taken down.
In this case, the takedowns failed because by the time they were
attempted, the videos in question had already become very popular.
If you want to manage parodies, or indeed any content harmful to
your brand, you need to actively manage your portfolio, monitor
online use of your IP, and quickly identify and removing infringing
works. Of course, it is worth asking the question – is the
infringement doing you any harm, or is it just generating free
viral publicity for your product?
The flip side of this for many businesses is – if you are
seeking to parody something, check that, to the extent that you are
using it, you have permission. Soon after the government rushed
through the Digital Economy Act before the 2010 general election,
both political parties were alleged to have infringed a television
production company’s copyright by superimposing an image of David
Cameron on to one of Gene Hunt from the BBC television series Ashes
to Ashes.
Brand parody
‘Brand parody’ is a further form of parody, and is often a
euphemistic way to say that your advertising or get up gives a nod
and a wink to another more famous brand.
A classic example was United Biscuits v Asda [1997] R.P.C. 513.
The claimant, who made Penguin biscuits, sued Asda for passing off
and trade mark infringement after Asda launched its own ‘Puffin’
biscuits, which like the Puffin biscuits featured a dark seabird
and black lettering. The court found that Asda had “miscalculated
the degree of “challenge” or “matching” or “parody” that was
tolerable without the product being actually deceptive”, and their
sale of the Puffin biscuits amounted to passing off. However, Asda
were not found to have infringed United Biscuits’ trade marks
(except very briefly), and a number of United Biscuits’ marks were
revoked.
In a recent judgment, Specsavers International Healthcare Ltd
and others v Asda Stores Ltd [2010] EWHC 2035 (Ch), Asda have again
been found to have sailed too close to the wind with a brand
parody, and were found liable for trade mark infringement – but
only just.
Asda had deliberately set out to parody Specsavers’
advertisements, trying to get as close to Specsavers’ branding as
possible without infringing.
Specsavers claimed that three aspects of this campaign infringed
their trade marks. Firstly, they claimed that the Asda Opticians
logo infringed certain of their device marks. Secondly, they
claimed that the straplines “Be a real spec saver at Asda” and
“Spec savings at ASDA” infringed their word mark SPECSAVERS. All
the trade marks were CTMs.
The court held that there was no infringement under 9 (1) (b) of
the Trade Mark Regulation, because Asda’s logos and straplines were
not confusingly similar to Specsavers’ marks. Asda could show
little evidence of actual confusion, and the typical consumer would
realise that there was a play on words, and would not be confused
about origin.
However, in respect of 9 (1) (c) infringement – taking unfair
advantage - the court found differently. There had been suggestions
following the decision in Whirlpool v Kenwood [2010] RPC 2 that 9
(1) (c) infringement could only occur when a small brand tried to
piggy back on a large brand – but the judge in this case rejected
that interpretation.
The court found that the strapline “Be a real spec saver at
Asda” took unfair advantage of Specsavers’ trade mark, and rode on
that mark’s coat tails.
In contrast, no unfair advantage was found in respect of “Spec
savings at ASDA”, as the court held that the link with Specsavers’
marks was much weaker, saying that it did not use Specsavers’
reputation to get a leg up. The judge also found no infringement in
respect of the logo, though he did say that evidence that Asda had
sought to live dangerously had made the issue more complicated for
him. The court also rejected the passing off claim.
As a sideline, Specsavers’ device mark that did not contain the
word mark ‘Specsavers’ was revoked for non-use. Specsavers had only
ever used it in conjunction with the word Specsavers, and the court
held that the addition of the word across the logo altered the
distinctive character of the mark.
It is also interesting that Asda did not raise the Comparative
Advertising Directive 2006/114/EC as a defence. The directive
permits comparisons in advertising when an advertisement complies
with the provisions of Article 4, which prohibits misleading,
unfair and denigrating advertisements. It might have been open to
Asda to argue that in so far as its advertisement did take
advantage of Specsavers’ mark, it did so by drawing a comparison
between Asda and Specsavers – and that, so long as the
advertisement complied with Article 4, it was permitted.
Spoof diaries
There have also been a couple of interesting cases before the
English courts which involved neither copyright not trade marks.
Instead, they involved spoof diaries.
Alan Clark, the famous Tory MP, successfully published his
diaries in 1993. In the run up to the 1997 General Election, the
Evening Standard published a series of parody articles titled ‘Alan
Clark’s Secret Election Diary’. Clark took umbrage to this and sued
for passing off and false attribution – and the judge found in his
favour. Clark v Associated Newspapers [1998] R.P.C. 26 turned on
the judge’s finding of fact that impression given by the photograph
of Claimant beside his name at the heading of the article was not
sufficiently neutralised by the various counter-indications
throughout the article that the work was in fact a parody – which
included the real author’s name in capital letters near the start
of every article, and the presence of ‘secret’ in the articles’
titles. With a different judge, it is possible that the case would
have been decided differently.
Spoof diaries were again before the English courts in Elton John
v Guardian News & Media Ltd [2008] EWHC 3066 (QB). The spoof
entry suggested that Elton John spent most of the income for a
charity ball on the ball itself, and Elton John sued for
defamation. Unlike the Alan Clark case, Elton John accepted that no
reasonable reader would have thought that he had written the
article himself. In this instance, the court held that readers
would understand that the article was a joke, and that it was
therefore not defamatory.
Domain name complaints
Finally, we take a look at the approach taken to parodies in
domain name dispute proceedings.
Disputes for the top level domains .com, .net and .org are
governed by the Universal Dispute Resolution Policy (UDRP).
Disputes for .co.uk, .org.uk and .net.uk domains are governed by
Nominet’s Dispute Resolution Service (DRS).
There has not been a contested complaint regarding a parody site
under the DRS procedure. In starbuckscoffee.co.uk DRS 02087, the
website located at the domain name declared that it was a ‘form of
cultural and political criticism and satire’. However, no proper
response was filed, so the decision can not be said to provide a
thorough analysis of the rights of a satirist or a parodist to a
domain name.
We therefore need to look at the policy itself. To succeed in a
DRS complaint, a party must show that they have rights in a name,
and that, in the hands of the other party, the domain registration
is an abusive registration. One of the factors that may evidence
that a registration is abusive is if the domain is used to confuse
people or businesses into believing that the domain is connected
with the complainant. However, the policy also says that fair use
may include sites operated solely in tribute to or in criticism of
a person or business.
As parody sites may confuse visitors, a registration of a domain
name identical to someone's trading name may be an abusive
registration. In guidestar.co.uk DRS 02193, the appeals panel held
that deliberate impersonation would rarely be acceptable, and in
that case the domain registration was abusive because “it was
calculated to cause confusion and manifestly involved taking unfair
advantage of the Complainant’s rights.” Under the DRS, therefore,
parody sites may struggle to show they are not abusive.
In contrast, under the UDRP, a parody site recently established
that it was not abusive.
In sutherlandinstitute.com D2009-0693, a conservative think
tank, launched a UDRP complaint about the domain which parodied its
own website sutherlandinstitute.org, but which, though reminiscent
of the genuine site, did state that it was a parody site and was
not affiliated with the Sutherland Institute.
To succeed in a UDRP complaint, you need to prove:
(i) your domain name is identical or confusingly similar to a
trademark or service mark in which the complainant has rights;
and
(ii) you have no rights or legitimate interests in respect of
the domain name; and
(iii) your domain name has been registered and is being used in
bad faith.
The panel unsurprising found that the Sutherland Institute had
rights in their name.
The panel also found that the parody was not a legitimate
interest. The Sutherland Institute's trade mark was not itself
being parodied “because there is no transformation of the service
mark”. Moreover, the intentional confusion caused by the domain
meant that the Respondent could not claim that he had made
legitimate non-commercial use of the domain name.
The panel then considered whether use of the domain was in bad
faith, and as the respondent was using the domain name “for
purposes of constitutionally protected political speech”, the panel
only considered the categories of bad faith expressly enumerated in
the UDRP.
These are (a) registering a domain primarily to sell it on, (b)
registering the domain as part of a pattern of registrations to
prevent the owner of a trade mark from registering it, (c) using
the site to get commercial gain from a likelihood of confusion with
the complainant’s mark; or (d) using the domain to disrupt the
business of a competitor.
The panel held that none of these applied, as (a) the respondent
did not want to sell it on, (b) the registration was not part of a
pattern, (c) the respondent was not getting any commercial gain and
(d) “only by the exercise of mental gymnastics may a group of gay
rights activists be defined as a “competitor” of a conservative
public policy think tank”.
Accordingly, the panel declined to make a finding of bad faith,
and the domain name was not transferred.
Conclusion
When seeking to parody, be careful to only use the ideas behind
the original work, avoid copying direct text, and make it clear
that the parody is a parody. If you want to parody a trade mark, be
careful either to come within the exemptions in the Comparative
Advertising Directive, or that you are not riding on the coat tails
of the parodied mark.
When looking to guard against parodies, the most important point
is to effectively monitor use of your brand so that you are able to
respond to before a work becomes widespread. If your work or brand
is parodied, look at whether the parody is doing you any harm, or
whether it is just increasing your own recognition. And if you do
decide to act – act quickly.
This article was first published in Intellectual
Property Magazine
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