Today we have input from Philip L Marcus. Philip practices Intellectual Property (copyright, trademark, patent, trade secret) and contract law, you can learn more about him at smallbizlawyer.us.

1. Can you tell us how parody plays into issues of infringement? For example, a pet product manufacturer produced “Chewy Vuitton Designer Handbag Dog Toys” and was sued by Louis Vuitton. The pet product manufacturer won because their product was a parody. Is parody normally protected in that way?

“Everyone knows Roy Orbison’s (and William Dees’) “Oh, Pretty Woman” from 1964. In 1989 2 Live Crew did a parody called simply “Pretty Woman.” Eventually they were sued for copyright infringement. Their defense was that the copyright law has an express
exemption for “fair use” and their parody fit right in there. A unanimous Supreme Court agreed, but how they got there tells us something about when parody will be protected.

Although the Court had much to say, I think the critical point made is that parody uses some of the original for purposes of criticism or even derision, and not simply “to avoid the drudgery in working up something fresh.

So, the defense of parody comes from the law of copyright, which has an express “fair use” provision right in what Congress passed. Still, “Chewy Vuitton Designer Handbag Dog Toys” are not a copyright creative. (Nothing that short may be copyright protected—only a substantial work.) Instead, the Louis Vuitton brand is protected by trademark law. It is a very different law, with different history and with different purpose. Copyrights protect creators from having their creatives (books, songs, paintings, etc.) from being copied without their permission. Trademarks were developed to protect customers from being ripped off by imitators. Trademark law has no express fair use provision.

There is no Supreme Court case creating a parody defense to trademark infringement from the context of the trademark law. Still, the federal courts of appeal—there are a dozen of them—seem to agree there is such a defense. The question is what does it take to be successful with that defense if you get sued for your parody trademark?

One of those cases, from 2007, is the Louis Vuitton case you mention. There the court gave us its criterion for acquitting the parodist: “the juxtaposition of the similar and dissimilar – the irreverent representation and the idealized image of a [LOUIS VUITTON] handbag – immediately conveys a joking and amusing parody. The furry little “Chewy Vuiton” imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a LOUIS VUITTON handbag, which must not be chewed by a dog.”

So, one may parody a copyrighted work or a trademarked product (or product line) by using some of the original, enough to call it to mind, and then making a clear, or better an exaggerated, distinction for humor. Then the parodist will be safe. When it is unclear whether the purpose is humor or laziness there is more risk.”
- Philip L Marcus

2. Can you talk about derivative works. How much does an artist have to change something for it to be considered original? I am thinking of situations like Shepard Fairey being sued by the AP for his Hope poster. I am also thinking about situations like an illustrator using a photo of a dog as reference material for how to draw a dog. Most illustrators use reference photos for their work. Are they endangering themselves if they use anything but live models?

“Mr. Fairey and AP settled their litigation in mid January by a complex group of promises that looks to me like neither side was very confident of its view of fair use and how far that goes. Good call. The suit was about a poster created by Fairey pretty clearly based on an earlier photo by an AP staff photographer of then Sen. Obama.

I certainly do not think nothing short of a live model is safe, but there is a difference between a “reference” photo and an embedded photo. Fairey to me seemed to have embedded the photo in the poster, doing little but add the word “hope” and “posterize” the photo in the Photoshop ® sense (reducing the continuous grey scale to a group of levels). I would have bet on the AP.

The copyright act says whether use is fair depends on factors that “include” these:

(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the
copyrighted work.

So, if you undercut the creator’s market, do it for your own profit and use a lot of the original you are going to lose. If you use a piece of the copyright original, you do it to show how you agree or disagree with it but not to grab the creator’s (artist’s or author’s) market share, you will be ok.”
- Philip L Marcus