hi we are back to discuss in this second video um the various defenses to trademark infringement and dilution we have seen descriptive uses nominated by use we've seen for sale we've seen abandonment because Marx are no longer used we have seen issues of genericness and functionality in the previous video now we are going to focus on First Amendment related defenses uh parody making fun of something is um to defends a Judicial defense and trademark law and it's allowed based on the principle of freedom of expression for speech uh parody uh is when we make fun of that symbols exist in marks you can see here a couple of examples somebody might find it funny other people might not find their funny but they're still uh protected under the first amendment in the U.S Constitution now um of course at the end of the day it might depend on the judge's sense of humor now uh with Fame it come unwanted attention um says also some of the judges in the various decision and when a mark become a status symbol they become part of an expression my colleagues and good friend Lisa Ramsey of uh University of San Diego she would say they are inherently um valuable expression and we know that we are using trademarks in language and you are going to see I have as part of this unit this specific class we also have a few videos that I would like you to see um and so when in Mark transcend is distinctive function to embody value in itself um when we can use this value in a way that might be ironical um or even judgmental um that it's permitted under the First Amendment so what is parody for the purpose of trademark law it's a form of entertainment conveyed by juxtaposing the Reverend representation of the trademark with the idealized image created by the framework owner of course three marketers don't like parody but they need to learn to laugh and that's also what the judges have said in some of these cases as we are going to see in a minute um in uh Louis Vuitton versus hot diggity dog uh a case that I mentioned earlier in uh in an introduction but we're going to analyze quickly today it's really um you know you're sensing the judge a parody must convey two simultaneous and contradictory message that is the original but it's also not the original and it's that it's a parody um in Mattel versus MCA the Barbie girl case I have added the video of the Barbie Girl song by Aqua for you if you want to watch it um the judge says when when an artistic work targets the original and does not merely borrow another property to get attention First Amendment interest way more heavily in the balance and so um we have um um cases uh that were decided before Matan versus MCA uh they cannot in the Hat book for example uh that really borrow elements from Dr Seuss book to try to um tell a story about the O.J Simpson uh crimes um and uh um and so the the difference there is a difference between a satire and a parody um that the first can also be relevant um whether or not there is the defense uh because a parody needs to be apparently not just a satire um on the other side the court also said that there is no first uh you know a um Untouchable First Amendment uh in the right to use another word for parody because some of this parody may actually be dangerous um this is the case in the northern Bush versus Balducci and so um the various element to prove um plaintiff cannot prove infringement um a parody does allow uh for a bit of confusion but usually there is no lack of Confusion And this is also why parenting usually interest-famous Mark um and or usually famous Mark becomes the object of parodies now in another Bush what happened is there was this as you can see this advertisement that one case and and you will drink oily and there was these um uh assumption that there was oil uh in the can of the beer and so um the court in this case uh the terminal Balducci had not done a good job in structuring the parody it didn't take enough step and in a way that would not confuse consumer and so in this case lack of confusion could be found a consumer could be letting to believe that it was really oil in the in the in the can of beer and so um the court really found that in this case uh there was no sufficient parody to actually justify the defense and uh denying the claim for infringement um in rupton versus hot diggity dog uh the court on the other side found parody um and uh of course plenty was uh Louis Vuitton um Call of Duty dog produces dogs um toys for dogs and they made their living out of making fun of old famous possible Mark I strongly encourage you to go and look at the website and among these there is Louis Vuitton and they made this chewable toy for dogs called Chui witton and Louis Vuitton didn't find it funny and sued them uh of course there is a famous Mark there is a similarity between the products um and the question is whether or not there is an association that can impair the distinctiveness or tarnish the reputation and and so in this case the court said uh well um is there really so there is similarity but it you know is there an association yes yes but then the court said that this product even though there is no an automatic defense to dilution um to apparently in this specific case the actual um products where a parody of the Louis Vuitton and bag and the products did not come so close to Louis Vuitton uh marks us to destroy the success of the parody Or diminish Louis Vuitton markability to identify a single a single source and so they were not really blurring away the distinctiveness of the mark and then in a more recent case about all the Louis Vuitton my other bag here this other company decided to call to create a series of um you know textile shopping bags and printed uh images of famous bag but with a Twist clearly they didn't use the trademarks uh they might have used some of the design but they changed them and they call it my other bag so the bag that I use when I can't really carry my luxury bag and it's a funny version of course I'll give it on also didn't find it funny but you can see uh the flowers style is a bit different so they add good IP attorneys to advise them when they were producing the product uh rather than LV it says me mov my other bag the monogram uh and so um Louis Vuitton was not able to be successful here again the court said uh that the bag were a parody it was a well-known joke and return should learn term to joke as well um and so here here you can see more of the reasoning in this specific case these are interesting opinion of course for those of you who are not lawyers season lawyers or um and a JD um I don't advise to go and read all legal opinions they might be a bit overwhelming from for those of you who are and might be interested in reading some I strongly recommend that you use the button BB textbook with Open Access otherwise just let me know I can give you more materials and you can read some of these cases because they're actually very interesting to follow um now uh in Mattel versus MCA with the Barbie girl case um and here you can see the aqua and please watch the video because now you can see with a different lens um the cord here um um and this was really Barbie has done a lot to promote freedom of expression in trademark law um the the court says um that if and I'm going to move this slide and then I come back if uh the um content in this case if the mark does more so if they use the non-authorized use of the mark there's more than just promote a simple commercial transaction then that use it in title enter into the speech area and is entitled or first amendment protection and so the court agreed that the Barbie girl song was not just commercial speech but comment humorously on cultural values and so the uh the song and the title are Exempted from uh liability and are not infringement now um they look at the um case uh in the Rogers case and uh let me go here for a second Roger versus Grimaldi is a case by the second circuit in the late 80s and here the producer uh Ginger Rogers to producer and distributor of Ginger and friend motion picture for um trademark entrenchment and so in the decision the court found a balancing approach saying that the landman ACT should be construed to apply to Artistic works all all you want the public interest in avoiding consumer confusion are we the public interest in freedom of expression and so in this case eventually our imprinting was not found um and so the court started um the Barbie girl case looking at this case the Roger's case but it went further and added this next step and say that if the content that's something else than just being a pure conversion transaction then it is entitled First Amendment and as I mentioned earlier the card not in the Hat you can see here was a parody by Dr juice about the O.J Simpson more murder uh was also not bound to be a uh impaired on the specific Case by applying the Rogers caves and so the this test continues to be used is the defendant work and artistic work is dependence use artistically relevant to the dependent Works Data dependent use are explicitly misleads consumers and this is another case that was decided just a few months after the Barbie girl's case the song case and was about an artist that was using Barbies in a food chain uh with Thomas Fortier and um the artist was sued by Mattel and the ninth circuit again ruled in favor of the office and again Mattel re-emphasizing the same content and the same conclusion that yet Richard just you know a few months before in the Barbie girl's case so here you can see now these are other examples of personal Amendment part of the examples and again they might be some time a bit um um you know vulgar words but then again these can fall under this first amendment protection um here you can see uh you know certainly adaptation funny perhaps of the MasterCard slogans and this again can be protected under the First Amendment there is no way around when you're famous people want to make fun of you want to use them it's almost a price of Fame and so our company relate to that you have legal issues but again if you work for companies with famous Mark uh Public Relation management it's really important because there is nothing worse for a company to be perceived as a bully uh that can swing consumer away because consumers might want to protect um David versus Goliath and so this is really where knowing the law is important knowing public relations and consumer psychology becomes even more important both are necessary these are just other examples of uh certainly not good use of the Walmart trademark um is that allowed for what purposes these are just some more examples um and you can see um and and so you know there's so many and really I hope you can find more so to share with everybody now uh in uh University of Alabama versus New York live and this is another relevant um case for somewhat descriptive users um the University of Alabama is all the property rights on the trademarks and so this painter uh has always painted the the players without the numbers um and in the specific case the uh University of Alabama also wanted him not to paint the colors of the players and so there was a decision um on whether this was fair use or not and eventually the court did find that these um was a fair use still applying the test in Rogers versus Primanti but you can see these are all very expensive litigation and so if you are a new artist and you can get sued what do you do um even if you're right sometimes you know many many art is just back off because it's simpler um than being right but still might spend time and money in litigation even when they get defended pro bono so these are really questions about bullism uh by companies um that perhaps should not but sometimes you know some very established artists might have to pay fees and they don't want to pay fees and so um you know it's always again a question of balance and a question of facts every situation might be factually slightly different and so here you can see uh how the course apply the Rogers test in this case in the more case in the universe of Alabama caves um these are examples of trademarks that are this is a painting for Dartford Nika in which you can see a variety of trademarks including uh the Louis Vuitton bag and despite Louis Vuitton trying to block the use the court of the Netherlands it was a case in the Netherlands the Netherlands said that was freedom of expression um this is logorama there was no a lawsuit here um in interestingly the the short movie actually won as I mentioned earlier an Academy Award please watch it because it's uh it's quite relevant and quite interesting it's a 15 Minutes video that you can watch um it's in the materials of today's class um so just let me know if you have any questions and here is the problem question that I designed for you for uh this specific class and so you can see here um Astrid is the owner of a design studio uh she buys your Starbucks marks and then change them paints them uh but also clearly put a card in which explains what she's doing um she's shipping these mugs around to other Galleries and they're very successful but uh Starbucks is not happy about it and says this is dilution and um uh potential impringement what do you think is there for sale or not and there is disclaimer is there confusion or not try not to push the envelope here because you know the alarm I tell you maybe it's imprisonment maybe not so particularly for a recycling economy we need to try to argue that these are legitimate uses um and there should not be a a treatment operated by trademark corners but under the current flow it might be difficult to argue for today for this week this class activity you have to find examples and create a case study I just want to give you some examples for example this was a jewelry that is very similar to you can see to Tiffany it's called lovisa but it's very similar type of jewelry and they use a very similar color so the question is should they be able to do it or not so you need to find even on the internet some examples and then you create your own facts so basically you create the problem questions this is another example you see these candles very similar um you know bands of the wall the cave of division so depends on what product uh should that you know is that the parody or not this is an example's you know local example the chewy restaurant um and and this other you can see you know the original choice of the Fort Worth City and so with that I thank you with this we have completed the materials for uh class four but please do watch the three videos I have assigned because you can really gather how all these principle applying practice to facts and so this is actually quite relevant exercise and hopefully it's pleasant as well I thank you very much and have an excellent evening or afternoon or rest of the day morning bye-bye