A blogger publishing under the name “WTForever21.com” recently got threatened with litigation for trademark infringement by the LA-based clothing retailer Forever 21.
WTForever21.com, a parody site published by Rachel Kane, had prominently disclaimed any affiliation or endorsement by Forever 21. And as indicated, Kane’s purpose was (some would claim clearly) parody. Kane was the proud recipient of a cease and desist letter from Forever 21 on April 22 (a copy of which can be found here), which alleged trademark and copyright infringement, unfair competition and trademark dilution.
Without testing the merits of her legal position and, according to several initial reports, not willing to expend the resources to do so, Kane announced that she would pull down her site by June 10th. Kane then reversed course, and issued a statement last month stating “If the company continues to makes threats that have no basis in law, my attorneys are prepared to vigorously defend me and seek all available legal redress against Forever 21.” The site is currently live.
Forever 21’s letter to Kane stated that the name “WTForever21” “refers to an abbreviation for colloquial expression that the general public may find offensive.” That evidently would be the “WTF” appendage.
Forever 21’s copyright claim relates to Kane’s use on her blog of copyrighted images from Forever 21’s site. The company’s trademark claims – claiming both infringement and dilution – seem to have anticipated the plausibility of a trademark fair use defense (for parody) succeeding against a claim of infringement, which may not succeed against a claim of dilution.
In trademark land, “dilution” refers to the tarnishing or diminution of an established trademark regardless of whether the defendant’s use of the trademark constituted actual infringement. To illustrate the point, Paul Supnik cites the classic Kodak case from 1898, which established the dilution doctrine. (Eastman Photographic Materials Co. v. Kodak Cycle Co., 15 Rep. Pat. Cas. 105 (1898)). In that case, the film manufacturer Eastman Kodak successfully challenged a bicycle manufacturer’s use of the name “KODAK”, even where (as Supnik notes) “No significant segment of the consuming public was likely to think that bicycles were made by, endorsed or sponsored by a film manufacturer.” Nonetheless, Eastman Kodak successfully argued that the very use of the trademark – in this case a distinctive and established brand intimately associated with the Eastman Kodak company – served to dilute the distinctiveness and thus the value of the trademark, even where used in a noncompetitive market.
As Supnik explains:
Justification for the dilution doctrine is that somehow the public benefits from protection against diluting the distinctiveness of a famous mark and that it simply is not right to reduce the importance or value of a very valuable mark for the free ride of the newcomer, even if the public is not confused.
A parody fair use defense would (if successful) undercut a trademark infringement argument, the argument being that a use that is clearly parody would not cause a “likelihood of confusion” among the consumers as to the source of the trademark. (See here for a good discussion of this point.)
But trademark dilution is a different story.
Baila Celedonia cites a 1994 case involving a competitor’s parody use of John Deere’s famous deer silhouette logo, where the competitor’s commercial was “animated and hopped around the television screen, pursued by [the competitor’s] lawn tractor and a barking dog.” Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994)
The defendant’s use of Deere’s logo was clearly parody, preventing Deere from demonstrating any “likelihood of confusion” in the marketplace. Deere lost its infringement claim, but won a dilution claim. As Celedonia notes, even if intentionally parody and even if not technically “infringing”, a trademark use may constitute dilution. Quoting from the court’s discussion of parody in the context of dilution:
Whether the use of the mark is to identify a competing product in an informative comparative ad, to make a comment, or to spoof the mark to enliven the advertisement for a noncompeting or a competing product, the scope of protection under a dilution statute must take into account the degree to which the mark is altered and the nature of the alteration. Not every alteration will constitute dilution, and more leeway for alterations is appropriate in the context of satiric expression and humorous ads for noncompeting products. But some alterations have the potential to so lessen the selling power of a distinctive mark that they are appropriately proscribed by a dilution statute. Dilution of this sort is more likely to be found when the alterations are made by a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration. (emphasis added)
WTForever21.com is clearly not “a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration.” It is (at worst) a true parody site. In the Deere case, the parody use by a direct competitor undercut the fair use defense.
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