Trademark Attorney Ponders Parody — Yankees v Evil Enterprises

Posted by | September 09, 2011 | Disputes, General | One Comment

Two Fridays ago I wrote about the world famous Hells Angels motorcycle club and today I’ve moved onto the world’s second most famous baseball club (after the Red Sox, of course) the New York Yankees.  (I went to law school in Boston, you see.)

In any event, although the Yankees filed this trademark Opposition against Evil Enterprises in November 2009 and now, towards the end of the process, for some reason it drew the attention of Deadspin on August 17 and Techdirt on August 18.  Since I’ve written recently on what parody is not (here and here), I thought it might be helpful to write about what parody is.  Luckily, this case gives us a real time, real life example, which I find really rad.

On November 20, 2009, New York Yankees Partnership (an Ohio(?!?) limited partnership), filed an Opposition against Evil Enterprises’ application to federally register BASEBALLS EVIL EMPIRE for “clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats.”  If only poor punctuation were grounds for refusal, the Yankees would have a home run here.

According to the Opposition:

[framed_box] Opposer owns U.S. federal registrations and applications for the Yankees NY Marks and the Yankees Top Hat Marks in International Classes 6, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 28, 30, 34 and 41; namely, Registration Nos. 1,076,665, 1,182,757, 1,564,580, 1,577,279, 1,898,998, 2,309,488, 2,368,952, 2,651,320, 3,320,066, 3,320,067, 3,331,057, 3,331,058, 3,412,814, 3,593,130, 1,032,767, 2,575,644, 3,320,068, 3,320,069 and 3,320,070.  Registration Nos. 1,076,665, 1,182,757, 1,564,580, 1,577,279, 1,898,998, 2,309,488, 2,368,952, 2,651,320, 1,032,767 and 2,575,644 are incontestable. [/framed_box]

The Opposition also states:

[framed_box] Since long prior to July 7, 2008, Applicant’s constructive first use date, because of the Club’s successes, including its outstanding record in MAJOR LEAGUE BASEBALL competitions and WORLD SERIES titles, and its relatively lucrative player contracts, Opposer has been commonly and extensively referred to by the press, media, fans and the public by the designation the “Evil Empire” in addition to its names NEW YORK YANKEES and YANKEES.  The “Evil Empire” designation was originally coined by the CEO of the BOSTON RED SOX club, an arch rival of the YANKEES Club, as a derogatory reference to Opposer. [/framed_box]

And on that theme, it continues . . .

[framed_box] The term “evil empire” has a negative connotation because the word “evil” refers to that which is morally wrong or bad, immoral, wicked, harmful and/or injurious.  The BASEBALLS EVIL EMPIRE mark will be understood to refer to the Club, and, upon information and belief, is clearly intended to do so, and thus may disparage Opposer, or bring Opposer into contempt or disrepute among a significant segment of the consuming public. [/framed_box]

Nothing like arguing “in the alternative,” something lawyers do when they have multiple, sometimes contradictory, positions and aren’t sure which one is the winner.  Here, the Yankees first claim that they own the EVIL EMPIRE moniker because it’s been associated with their ball club for so long; then they argue that the EVIL EMPIRE mark should be refused registration because it is disparaging to their ball club.

The Yankees claim that:

[framed_box] Applicant’s intent to trade on the goodwill of Opposer is made clear by its use on Applicant’s website www.baseballsevilempire.com and on the goods being sold or offered for sale on that site which feature the term “Baseballs Evil Empire” in connection with designs that are highly similar to the Yankees NY Marks and the Yankees Top Hat Marks, as shown by comparison below:

[/framed_box]

It does not help that the Applicant’s website allegedly stated, “The one source for all the latest tee-shirts and hats for all the Yankee fans around the world.”  (The site now states, “The one source for all the latest tee-shirts and hats for all baseball fans around the world.”)

There is no bright line test for what constitutes a permissible trademark parody under U.S. statutory law or common law.  Generally speaking, a parody either pokes fun at, or makes a social commentary about, something.  The trouble usually begins when the parody becomes commercial.  This often results in the brand owner crying infringement, even when no reasonable consumer ever would be confused into thinking that the brand owner offered or authorized the parody product.  Theoretically, parody is not a defense to trademark infringement, because the nature of the parody itself obviates any potential for confusion.  That doesn’t stop the brand owners though!

As for trademark dilution by blurring or tarnishment, several dilution/parody cases have held that the parody strengthens, not weakens, the famous mark’s brand recognition.  Other courts have held that parodies fall within the “noncommercial use” exception of the Federal Trademark Dilution Act’s (FTDA), but that’s only when the use is non-commercial.  Evil Enterprises’ use of the EVIL EMPIRE mark clearly is commercial here.

I presume/hope that the TTAB will find that the Yankee’s infringement claim knocks out its tarnishment claim.  I mean, really.  How can the Yankees argue with a straight face that the BASEBALLS EVIL EMPIRE mark is both so closely associated with their brand as to cause consumer confusion, while simultaneously causing negative associations with their brand?

Given the unique facts of this case, including evidence and admissions that show that a substantial number of the purchasers of the parody goods are Yankees’ fans, I think Evil Enterprises is likely to lose at the TTAB on the grounds of likelihood of confusion.  Even if the Yankees hit it out of the park on this one, I am sure next inning will be in federal court unless Evil Enterprises agrees to cease use of the EVIL EMPIRE marks.

Is it fair?  I am conflicted.  On one hand parody isn’t possible without co-opting some portion of the other party’s brand.  On the other hand, when the parody is a competing commercial venture, something seems unfair about that — that seems to be trading of the brand recognition (good or bad) — of the parodied brand.  Fortunately, I don’t have to decide the outcome of this case; the TTAB will take care of that for us.

The law of trademark parodies is unsettled.  Non-commercial parody is protected as free speech under the first amendment, but commercial speech/competing products is a whole ‘nother ball game.

 

 

 

 

 

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

One Comment

  • Lucy says:

    First thing you have to written here about Evil Enterprises i understand but i also read in another article there have to written like, A principal test of trademark infringement may be confused to the source of assets and services. Board said the Evil Enterprises to find that the mark was disparaging, and thus unregistrable. But there was prove that the Yankees had taken on the association with the Evil Empire as a “badge of honor. ” And Other notable marks have bubbled up from the public, such as Coke for Coca-Cola etc. Those marks came to be associated with the source of those well-known goods and services and became trademarks.

Leave a Reply

Your email address will not be published.