Parody in India- against Trademark Infringement

Parody in India- against Trademark Infringement

Project submitted to

Mr. Atul Satwa Jaybhaye

(Faculty: IPR- Trademark (Hons.II)

Project submitted by

Prashant Kerketta

Semester VII

Roll no. 119

HIDAYATULLAH NATIONAL LAW UNIVERSITY

RAIPUR, C.G.

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 Parody in India- against Trademark Infringement

ACKNOWLEDGEMENT

I am highly elated to carry out my research on the topic, ‘Parody in India- against Trademark
Infringement’. I would like to give my deepest regard to my course teacher Mr. Atul Satwa
Jaybhaye, who held me with his immense advice, direction and valuable assistance, which
enabled me to march ahead with this topic. I would like to thank my friends, who gave me their
precious time for guidance and helped me a lot in completing my project by giving their helpful
suggestion and assistance. I would like to thank my seniors for their valuable support. I would
also like to thank the library staff and computer lab staff of my university for their valuable
support and kind cooperation.

Prashant Kerketta

Semester VII

BATCH- 13

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 Parody in India- against Trademark Infringement

TABLE OF CONTENTS

INTRODUCTION ............................................................................................................................................. 4
OBJECTIVES ................................................................................................................................................... 5
CONCEPT OF PARODY ……………………………………………………………………………………………………………………………..6
PARODY DOCTRINE………………………………………………………………………………………………………………………………….7

PARODIES AND TRADEMARK……………………………………………………………………….…………………………………….……9

PROPER TEST OF PARODY………………….………………………………………………………………………………………………….15

CONCLUSION…………………………………………………………………………………………………………………………………………17

REFRENCES……………………………………………………………………………………………………………………………………………18

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 Parody in India- against Trademark Infringement

INTRODUCTION

A parody is a composition that imitates the style of another composition, normally for comic
effect and often by applying that style to an outlandish or inappropriate subject. Seth Grahame-
Smith's Pride and Prejudice and Zombies is a perfect example of parody. Grahame-Smith took
Jane Austen's text and introduced zombies into the storyline. Throughout the reworked novel, he
maintained Austen's writing style, voice, and even much of the original storyline, creating a new
work that is recognizable as being Jane Austen's but that definitely isn't.

A satire, on the other hand, is intended to do more than just entertain; it tries to improve
humanity and its institutions. A satire is a literary work that tries to arouse the reader's
disapproval of an object — a vice, an abuse, a faulty belief — by holding it up to ridicule.
Satirists use euphemism, irony, exaggeration, and understatement to show, with a greater or
lesser degree of levity, the follies of mankind and the paradoxes and idiocy that they can lead to.

Engaging in trademark parody is a little like striking at a king. You had better be good at it,
because if you attempt and fail, you are in trouble.

Parody is a defense to trademark infringement. The theory behind it is that there is no likelihood
of confusion because a parody will not be taken seriously. While it must initially bring to mind
the original, it must be clever enough to be clear that it is not the original nor connected with the
original, but is a parody, a humorous take-off on the original.

Using the trademarks of others without authorization appears be violating proprietary rights of
the owner. However, Indian courts have disagreed if the use is non-commercial and the third
party user does not advertise or sell related goods or services.

Parodies have their own advantages. The main objective of trademark is to avoid any confusion
among products and to enable the consumers to distinguish between products of different brand,
quality etc. Parodies do not create any confusion. They do not cause any direct harm to the
market of the trademarked product; instead they at times raise awareness of the trademarked
product.

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 Parody in India- against Trademark Infringement

RESEARCH METHODOLOGY

The method of research adopted for the project is the analytical and descriptive method.

The texts that were used for the project include articles, research papers and news given in
various websites as well as online journals

OBJECTIVES

1. To know about the legal provisions of Parody and its use.

2. To have a detailed study of the Doctrine of Parody.
3. To have a detailed study about Tata sons vs Greenpeace against trademark Infringement.

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Concept of Parody

Parody is a humorous or satirical imitation of an original work. In its very outset parody is meant
for comical or ridiculing purpose. With the advancement of technology, making and publishing
parodies online have become easier. Few websites or portals operate focussing on parodies only.
The debate on legality of parody and its relationship with the intellectual property law is always
open as substantial amount of work is copied and used. However, the determination whether
such copying is infringement or is exempted under the defence of fair use or does it affect the
moral rights of the owner, is very subjective and differs from case to case.

Parody can be considered a defense under both traditional trademark infringement and dilution
causes of action. However, it is probably not a very good parody and probably will not be
protected if consumers are likely confused in believing that the senior mark holder is responsible
for the parodic use.Fair use in trademark law is similar to the doctrine as used in copyright law in
that it protects the public interest in preserving the First Amendment’s guarantee of free speech.
Two judicial developments through copyright fair use have benefited courts applying fair use in
trademark situations. One is the realization that commercial uses of a work or senior mark can be
fair use, in that commerciality is merely a factor to consider when deciding whether the second
use is fair and hence not infringing. The second is the judicial recognition that parody is a form
of fair use.

A parody, in general, falls under the exception of fair use of copyright. In India, the concept of
fair dealing (similar but not identical to the doctrine of fair use in the US) in copyrighted works
is statutorily recognised. However, it is debatable if the exception of fair dealing extends to
parodies like those of Weird Al. With the exception of fair dealing still being explored to the
maximum possible extent in the copyright law, the existence of it in the Indian trademarks law is
a little obscure.

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THE CURRENT PARODY DOCTRINE IN TRADEMARK LAW

Parody analysis in trademark law has nuances that it lacks in copyright law. In
copyright, parody shades the borders of the fair use defense, usually coloring the
inquiry with a hue of fairness. In trademark, though, the story is complicated by
courts’ analytical techniques: although some courts use parody as a defense to
infringement, most use parody to shade the infringement analysis. In this Part, I taxonomize each
analytical approach courts take when resolving a traditional infringement (confusion) or
dilution claim involving parody. Most—but not all—of these cases I analyze cite Campbell,
for reasons I mentioned earlier. At the same time, I analyze these approaches, asking questions
about their ability to adequately protect speech interests and trademark owners’ rights.
From this analysis I develop suggestions for how courts should address parody in
trademark infringement and dilution claims.

Approaches to Trademark Infringement Actions Involving Parody

It turns out that, once courts find that a parody exists, they employ a variety of methods
to determine whether and how that finding bears on the issue of confusion. Taking a
certain approach can be determinative of infringement. Thus, it matters a great deal how
courts approach the application of the parody finding.

Parody as Nominative Fair Use

Another approach—one taken by the court in Mattel Inc. v. Walking Mountain Productions
analyzes parody under the judicially created doctrine of nominative fair use.78 This
doctrine applies where the defendant uses the plaintiff’s mark to refer to the plaintiff’s
mark, generally for comparison or criticism. So, for example, where an advertisement says,
“Try our Product X. It has more ingredients than comparable Product Y®,” nominative fair
use would apply. Nominative fair use, which replaces or supplements the factor-based
confusion test, requires the plaintiff to show three elements.80First, the plaintiff’s product or

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service in question must be one not readily identifiable without use of the trademark.
Second, only so much of the mark or marks may be used as is reasonably necessary to
identify the plaintiff’s product or service. And third, the user must not use the mark in a way
that suggests sponsorship or endorsement by the trademark holder.

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Parodies and Trademark

Criticism is very important. As it is said, it is good to be talked about rather being never talked
about, parodies have their own advantages. The main objective of trademark is to avoid any
confusion among products and to enable the consumers to distinguish between products of
different brand, quality etc. Parodies do not create any confusion. They do not cause any direct
harm to the market of the trademarked product; instead they at times raise awareness of the
trademarked product.

While it must initially bring to mind the original, it must be clever enough to be clear that it is
not the original nor connected with the original, but is a parody, a humorous take-off on the
original.

 Good Parody - Getting it Right

In order to be successful as a defense to infringement, trademark parody must have been handled
correctly.
The elements of parody are-
i) An original host work.

ii) The original host work must be famous and/or known to the particular target audience;

iii) The creator of the derivative work, the parody, must take only so much of the original work
as necessary to bring to mind the original host work; and

iv)The derivative work which conjures up the famous host must result in a new, original work.
Parody, by definition, brings to mind the original. It then spoofs the original in some way. Once
the original is brought to mind in connection with a product or name other than the original, one
of two things is going to happen, it will either be judged a valid parody, in which case there is no
liability, or there will be trademark infringement.

In both cases, the case of valid parody and the case of trademark infringement, the first step is
the same, the original is brought to mind. The critical issue then for valid parody, is whether that

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next step is taken, to so exaggerate or distort the original as to clearly distinguish the parody
from the original. If that next step is not taken, there is not a valid parody, but an infringement.

Trade Mark Parody is a defense to Trade Mark infringement. There should be no likelihood of
confusion between the original host work and the parody work, as the parody will not be taken in
a serious manner. It must be cleverly portrayed so as to show itself as a humorous take on the
original work.

In the case, Tata Sons v Greenpeace, Tata had initiated an action for infringement of their Tata
logo. Further, they alleged defamation and disparagement against Greenpeace claiming total
damages amounting to $2.17 million. Greenpeace released a game which was formed on the
lines of the popular Pacman game wherein it depicted turtles being chased by the Tata logo. The
game was based on the intent to raise awareness on the alleged adverse impact of the Dharma
Port Project which was a joint venture project between Tata Sons and L & T, on Olive Ridley
turtles. The port is being developed by the two companies on a build-own-operate-share-transfer
basis. Greenpeace, along with other environmental groups have opposed the port’s construction
since the port is in an ecologically sensitive area which is home to Olive Ridley turtles.
Preventing this species of turtles from being endangered was the need of the hour, and hence, the
concept of the game came up. The game allegedly also used the “TATA” logo mark with the
stylized version of its “T within a circle” device, but also contains references to “Tata demons”.

Now, was this a parody or an infringement of Tata’s intellectual property?

Section 29(4) of the Trade Marks Act, 1999 refers to infringement of a registered trademark by
use of the mark without the consent of the registered proprietor with undue cause and in the
course of trade.

Essentially, it means that the use of a Trade Mark for criticism, fair use and parody is allowed if
it is with due cause and not in the same course of trade.

– Intellectual Property Discussions

Trade Mark Parody- An analysis of Tata Sons v. Greenpeace

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Trade Mark Parody is a defense to Trade Mark infringement. There should be no likelihood of
confusion between the original host work and the parody work, as the parody will not be taken in
a serious manner. It must be cleverly portrayed so as to show itself as a humorous take on the
original work.

In the case, Tata Sons v Greenpeace, Tata had initiated an action for infringement of their Tata
logo. Further, they alleged defamation and disparagement against Greenpeace claiming total
damages amounting to $2.17 million. Greenpeace released a game which was formed on the
lines of the popular Pacman game wherein it depicted turtles being chased by the Tata logo. The
game was based on the intent to raise awareness on the alleged adverse impact of the Dharma
Port Project which was a joint venture project between Tata Sons and L & T, on Olive Ridley
turtles. The port is being developed by the two companies on a build-own-operate-share-transfer
basis. Greenpeace, along with other environmental groups have opposed the port’s construction
since the port is in an ecologically sensitive area which is home to Olive Ridley turtles.
Preventing this species of turtles from being endangered was the need of the hour, and hence, the
concept of the game came up. The game allegedly also used the “TATA” logo mark with the
stylized version of its “T within a circle” device, but also contains references to “Tata demons”.

Now, was this a parody or an infringement of Tata’s intellectual property?

Section 29(4) of the Trade Marks Act, 1999 refers to infringement of a registered trademark by
use of the mark without the consent of the registered proprietor with undue cause and in the
course of trade.

Essentially, it means that the use of a Trade Mark for criticism, fair use and parody is allowed if
it is with due cause and not in the same course of trade.

Arguments on behalf of Tata:

 The attorneys on behalf of Tata argued that since their Trade Mark was unauthorizedly used,
it amounted to infringement. Since the stylized version of its logo made it distinctive, the
infringement could harm its repute and business.
 Further, Tata states that they received all the necessary clearances from government
authorities. They also stated that the Dharma port has been designed to be an eco-friendly

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port and that all precautions have being taken to reduce any drastic impact on the endangered
turtles. In their submissions, the following quote from an August 2010 report by the Central
Empowered Committee was cited which was constituted by the Supreme Court to monitor
compliance with its orders concerning forests and wildlife: “Details of the monitoring reports
do not so far indicate any adverse impact of the Dharma Port Project on the wild life and its
habitats including the Olive Ridley turtles.”
 Tata further submitted that they were the sole targets of this advertisement of Greenpeace,
although it was a joint venture. They saw it as an attempt to intentionally ruin its business
and damage its reputation by libel. The title of the game itself is ‘Turtle v. Tata’ which
plainly pinpoints the company in a battle against turtles. Additionally, with each visitor, the
Greenpeace website’s value and its capacity to attract donations increased, thanks to Tata’s
Trade Mark.

Arguments on behalf of Greenpeace:

 Greenpeace argued that Tata’s suit for interim injunction was more of an alleged
defamation suit than infringement of trademarks.
 Further, dilution or tarnishing a Trade Mark could occur only in course of trade, but Tata
had not mentioned anything to substantiate on this ground.
 Greenpeace in reply stated that Tata was the main beneficiary of this venture, since L &
T was pretty much solely the constructor of the port.
 Greenpeace contented that the juxtaposition of the word ‘Demons’ with the word ‘Tata’,
and indeed with reference to the project itself, is merely hyperbole. They added that the
word demons had been an “overtly emphatic expression” which was used to make a
strong impression, and that as such it was not defamatory.

In Tata Sons Limited v Greenpeace International (178(2011)DLT705), the Indian court made a
detailed analysis of the status of parodies under Indian trademark law. In this case, Tata Sons
was aggrieved by Greenpeace International's videogame, TATA v Turtle, which allegedly spread

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defamatory remarks and statements about the Tata Sons. It also argued that the use of the 'T'
device and the 'Tata' mark, although not in the course of trade, did amount to trademark
infringement, specifically dilution or Tarnishment.

Tata Sons contended that 'use' of a trademark is not confined merely to Greenpeace International
engaging in a trade or commercial activity, but other forms of speech or representation, which
would tarnish the 'Tata' mark.

Greenpeace International contended that it had launched the videogame to protest and garner
public opinion against a Tata Sons project that was a threat to Olive Ridley sea turtles.
Greenpeace International also submitted that its use of the 'Tata' trademark and 'T' device did not
amount to trademark infringement, as it was not commercial usage meant for profit or gain, and
that Indian trademark law envisaged the use of a registered trademark for the purposes of
criticism, fair comment and parody.

The Delhi High Court refused to grant an injunction to Tata Sons and observed:

 A textual reading of the statute makes it clear that the intent of the trademark law's draftsmen
was that infringement would take place when another commercial/ entrepreneurial body is
exploiting that same trademark;
 A bona fide user of a trademark will infringe only when the user is a similar/competitive
profit-making entity to the trademark owner; and
 The defendant's argument that it can make reasonable comment, ridicule, and parody of the
registered trademark is persuasive.

For the “defence of parody”, the Delhi HC also looked at Section 29(4) of the Trademarks Act,
1999 which provides the following:

A registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which-

 is identical with or similar to the registered trade mark; and

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 is used in relation to goods or services which are not similar to those for which the trade
mark is registered; and
 the registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute of
the registered trade mark.

In a few cases, Indian courts have rejected the defence of parody and held the unscrupulous use
of trademarks in parody or satire to be infringement. For example, in People for Ethical
Treatment of Animals v Doughney (263 F.3d 359, No. 00-1918 (4th Cir., August 23, 2001), the
defendant was sued following the creation and operation for a website hosted at the domain
name peta. org, which comprised the plaintiff's registered trademark 'PETA'.

In defence, the defendant argued that his site, entitled People Eating Tasty Animals, was a
parody of the plaintiff's name, People for the Ethical Treatment of Animals. However, the court
rejected the defence of parody and held the website's owner liable for trademark infringement.

Parodies are not new to India. They provide a new humorous take on a creative work. They
appeal to the public and provide opportunities for amateur artists and creators to display their
talent. However, with the advent of the digital age, in which videos go viral on social networking
sites and the internet, the impact and influence of these parodies have increased.

Parodies sometimes cross the 'line of creativity' and begin to encroach on the rights instilled in
the work or out rightly insult or humiliate the work or its creator. It is necessary to strike a
balance between parodies and IP rights.

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PARODY IN TRADEMARK LAW: WHAT IS THE PROPER

TEST

 Trademark Infringement Cases

Trademark law seeks to prevent confusion among consumers as to the origin, sponsorship, or
approval of goods or services. As a result, the central issue in every trademark infringement
case is the likelihood of consumer confusion. Similar to the fair use doctrine in copyright, the
likelihood of confusion test in trademark infringement cases requires a flexible inquiry that
analyzes a variety of factors, including freedom of expression concerns in the context of
parodies and satires. However, some courts have shifted their focus from the likelihood that
a trademark parody or satire will confuse consumers to the familiar parody/dichotomy that
has complicated copyright cases. Still other courts have applied different tests to determine
whether a parody infringes a trademark.

Some recent cases have applied the traditional “likelihood of confusion” test-
Many courts have applied the traditional likelihood of confusion test to parodies. Even though
parody is not a defense to a claim of trademark infringement, courts have noted in the context of
the likelihood of confusion test (either as a separate factor or in relation to the other factors)
that a successful parody will rarely be considered infringing, since the ultimate object of a
parody is to amuse, not confuse.

While likelihood of confusion tests differ among jurisdictions, many tests include the following
factors-

 Strength of the mark;

 Similarity of the marks;
 Proximity of the goods;
 Quality of defendant’s product;
 Likelihood that plaintiff will enter the product market of the alleged infringer under the
same mark.

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 Evidence of actual confusion;

 Marketing channels used;
 Defendant’s intent;
 Sophistication of buyers.

The parodic or satiric use of trademark should likely inform and influence a court’s analysis of
the factors when determining whether the use is likely to result in consumer confusion.

 Courts have applied a special rule for titles of artistic works

Relying on line of cases providing special First Amendment protection for titles of artistic works,
the Ninth Circuit concluded that the use of “Barbie” in a song title was not trademark
infringement.
The court noted that literary titles do not violate trademark law “‘unless the title has no artistic
relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title
explicitly misleads as to the source or the content of the work.

As applied to the song “Barbie Girl,” the court first concluded that the use of mark “Barbie” in
the title clearly was relevant to the song, since the song comments on Barbie and the values she
represents.
Moreover, without applying any likelihood of confusion factor, the court concluded that the song
title did not suggest that it was produced by Mattel, and therefore did not explicitly mislead as to
source.

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CONCLUSION

To successfully create a defense against alleged infringement, Trade Mark parody must be
cleverly portrayed. The original host work must be famous and known to a particular target
audience and the parody must prima facie remind of the original host work. The parody must not
be an exact remake of the original host work, but it should conjure a new, original work. If the
parody calls the original to mind, but doesn’t adequately distinguish it, the result is trademark
infringement. No amount of wit or humor will save a parody which is likely to cause confusion.

First, a parody must be clever enough or witty enough so that customers will not assume the
original trademark owner is connected with or approving of the parody. In cases where a
likelihood of confusion is demonstrated, the defense of parody is defeated. Secondly, a parody
must be clever enough to avoid dilution of “famous” marks.

Such a parody is allowed and is not an infringement of trademark. This interesting legal issue has
not yet arisen in the Indian context with as much flavour as it has in the United States.

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References

 www.academia.com

 www.lawyersclubindia.com

 www.legalindia.com

 https://iiprd.wordpress.com

 www.legalfarm.com

 www.cobrapost.com

 www.tehelka.com

 www.livemint.com

 www.timeofindia.indiatimes.com

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