Q: A vendor is refusing to fulfill an order of artwork that parodies Trump because it includes the Twitter logo. Is the use of the Twitter logo for political parody protected by the First Amendment? If not how best should I proceed in persuading the vendor to print the artwork?
A: The scenario you describe raises an important intersection of trademark law and First Amendment protections. Neither area of law lends itself to black-and-white answers, as the analysis tends to be fact-intensive. There is also a practical challenge here, where the question is not whether you are likely to have a strong defense to a claim of trademark infringement but rather how to convince a third party that no trademark problem exists.
Generally speaking, trademark owners can prevent others from using their marks when doing so is likely to create confusion or mistake as to the source or origin of the relevant goods/services. The easiest example is when a counterfeiter puts a well-known brand on a product so that people will think the product is the genuine article. Cases involving parody merchandise (which is akin to but not exactly how I would describe your situation) are tougher to predict, but as long as there is strong reason to believe that consumers will understand the parody and not be confused as to who is responsible for the parody product, there is a good chance of surviving an infringement claim. As the Second Circuit said in reversing an injunction against a parody of “Cliff’s Notes”:
“[I]n any case where an expressive work is alleged to infringe a trademark, it is appropriate to weigh the public interest in free expression against the public interest in avoiding consumer confusion. … [T]he expressive element of parodies requires more protection than the labeling of ordinary commercial products. Indeed, we have said, in the context of alleged copyright infringement, that a parody is entitled ‘at least’ to conjure up the original and can do more.”
Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Grp., Inc., 886 F.2d 490, 494–95 (2d Cir. 1989). The court went on to approve “a balancing approach” which “allows greater latitude for works such as parodies, in which expression, and not commercial exploitation of another’s trademark, is the primary intent, and in which there is a need to evoke the original work being parodied.” Id.
Similarly, trademark law allows some use of others’ brands to some extent when doing so is necessary to truthfully reference the brand-owner or its product, as in comparative advertising. This is sometimes called “nominative fair use.”
The work that is at issue in your situation does not seem to parody the brand in question but rather to refer to the brand in a nominative sense in order to make a political statement that is not, strictly speaking, about the brand but that might be difficult to make without the brand reference. When I saw your art – I immediately thought of the Supreme Court’s discussion of political cartoons in the First Amendment case Hustler Magazine, Inc. v. Falwell:
“Despite their sometimes caustic nature, from the early cartoon portraying George Washington as an ass down to the present day, graphic depictions and satirical cartoons have played a prominent role in public and political debate. Nast’s castigation of the Tweed Ring, Walt McDougall’s characterization of Presidential candidate James G. Blaine’s banquet with the millionaires at Delmonico’s as “The Royal Feast of Belshazzar,” and numerous other efforts have undoubtedly had an effect on the course and outcome of contemporaneous debate. Lincoln’s tall, gangling posture, Teddy Roosevelt’s glasses and teeth, and Franklin D. Roosevelt’s jutting jaw and cigarette holder have been memorialized by political cartoons with an effect that could not have been obtained by the photographer or the portrait artist. From the viewpoint of history it is clear that our political discourse would have been considerably poorer without them.”
485 U.S. 46, 54–55 (1988). In Hustler v. Falwell, the Court rejected a libel lawsuit based on a parody ad about Jerry Falwell that ran in Hustler magazine. That case didn’t involve trademarks, and it wouldn’t control the outcome in your case. But the following observation from that case seems relevant here:
“At the heart of the First Amendment is the recognition of the fundamental importance of the free flow of ideas and opinions on matters of public interest and concern. ‘[T]he freedom to speak one’s mind is not only an aspect of individual liberty—and thus a good unto itself—but also is essential to the common quest for truth and the vitality of society as a whole.’” Id. at 50–51.
This is all to say that when a trademark is used in a political cartoon, and that cartoon appears on merchandise, and there is no likelihood that the public is likely to be confused as to whether the merchandise comes from the trademark owner, it should be difficult for the trademark owner to prevent the mark from being used in the merchandise.
I realize that this doesn’t get you where you want to be, however, because in the scenario you describe, a third party is evidently refusing to make or sell merchandise without consent from the trademark owner. At the same time, it can be awkward or even just impractical for a trademark owner to affirmatively consent to particular uses of its mark, even if it does not find them objectionable.
While it won’t always work, one possible solution in such a scenario might be to substitute a different image for the brand – one that calls to mind the platform you mean to reference without actually being the trademark owner’s logo. For example, if the use of an apple icon were posing an obstacle in artwork depicting a tablet computer, I might consider substituting it with a stylized banana. Though perhaps less visually effective, it might be a way forward.
Bryan Cave Leighton Paisner LLP is general counsel for the First Amendment Coalition and responds to FAC hotline inquiries. In responding to these inquiries, we can give general information regarding open government and speech issues but cannot provide specific legal advice or representation. No attorney-client relationship has been formed by way of this response.