Guest blog post by Melanie Garcia. Melanie is a Summer Associate in the Washington, D.C. office of DLA Piper LLP. She is a J.D. Candidate at the Georgetown University Law Center.
Unhappy customers have been embracing the Internet for years to vent their frustrations with companies. Lately, several bloggers have capitalized on websites that lampoon popular companies and companies are beginning to fight back.
Recently, Forever 21 threatened to sue fashion blogger Rachel Kane for diluting its brand and trademark with her blog, WTForever21.com. Forever 21, a global retail chain of clothing and accessories for young men and women, reportedly sent cease-and-desist letters to Ms. Kane regarding her blog. On WTForever21.com, Ms. Kane posts and satirizes images of clothing from Forever21.com. For example, on April 14, 2011 Ms. Kane posted a picture of earrings from Forever 21 with the following caption, “Those bead curtains that provide no privacy and serve no other purpose than to get tangled around each other, or in your hair when you walk through them, came back from 1973 and decided to become earrings.” While this is understandably offensive to the company, it seems Forever 21 has chosen not to pursue further action against Ms. Kane.
There are many reasons why Forever 21 may have chosen not to bring a suit against Ms. Kane.
Forever 21 has had several widely publicized legal battles over alleged copyright infringement. Widespread coverage of its actions against Ms. Kane throughout the fashion blogosphere and other social media outlets may be one reason Forever 21 shied away from the lawsuit.
Another possible reason is that the law is also complicated in this area and any legal battle would be hard won. In order to win a dilution claim, a plaintiff must prove that the defendant’s use of a mark is confusing and therefore dilutes the plaintiff’s trademark. A dilution claim must also prove that the defendant is using the plaintiff’s mark as a mark. It is possible that the WTForever21.com domain name does just that, but it is less clear whether this use is confusing.
Moreover, a claim against WTForever21.com would not just involve a trademark dilution claim. Because WTForever21.com is a blog such a claim would also implicate Ms. Kane’s First Amendment protected speech. First Amendment freedoms would protect Ms. Kane’s blog from liability unless the court found that the title of the blog, WTForever21.com, has no artistic relevance to the blog’s product, i.e., its content. The blog would also be liable if it made explicitly false statements regarding the original mark. Because Ms. Kane’s blog is a critique or parody site of Forever 21, and because the site explicitly states that it is not affiliated with Forever 21, it is possible that First Amendment defenses might defeat a claim of trademark dilution.
If such a claim is not defeated on First Amendment grounds, it is possible that Ms. Kane could argue that the blog is a parody. To be found a parody, the blog must fall under the exception in the Lanham Act that protects parodic competing marks from liability. For a parody to meet this exception under the Lanham Act, it must not be a “designation of source for the person’s own goods or services.” 15 U.S.C. § 1125(c). The Second Circuit held in one case that one mark did not meet the parody threshold because rather than being a “satire or irreverent commentary,” it functioned as a signal to consumers that the mark at issue was for a competitor. Under the Second Circuit’s analysis, because WTForever21.com does not signal itself as a competitor but is in fact an irreverent commentary, Ms. Kane’s blog likely falls under the Lanham Act’s exception.
Under the Fourth Circuit’s analysis of trademark parodies, finding that a mark is a parody is not an automatic defense to trademark infringement. However, if a mark is found to be a parody this will likely weigh in favor of the defendant, especially if the original mark is recognizable and there is little chance of confusion. An infringing mark is a parody in the Fourth Circuit if it successfully creates an association with the famous mark and simultaneously communicates that it is not the famous mark. Under the Fourth Circuit’s analysis, WTForever21.com will also likely be free of liability because it both signals the famous global retailer Forever 21, and that it is not the retailer itself.
Like WTForever21.com, other sites like Lamebook.com or Regretsy.com may also be protected by the First Amendment and because they are parody sites. While this may irk the original trademark owners, Facebook.com and Etsy.com, bloggers and blog-readers will continue to revel in the snide commentary these parody sites provide.
However, First Amendment protections do not mean that bloggers always get a free pass. Bloggers using a trademark to cultivate traffic to their site but whose site is not related to the trademark may be found to be infringing. For example, if the blog Lamebook.com was about pet grooming rather than lame comments on Facebook, its title would have no relevance to the blog’s expressive content. Facebook might then have a dilution of trademark claim against Lamebook.com if it could prove confusion. Moreover, any blog that makes a false claim or purports to be authorized by the trademark owner will likely be subject to liability. Even when it is possible that First Amendment claims might prevent blogger liability, trademark owners may still want to consider bringing suit against bloggers for trademark dilution when there is a real chance of confusion regarding the infringing mark.
Companies should monitor the Internet for blogs that use their trademarks, including blogs that critique them, to ensure that bloggers are not making false claims and that the blogs are not being confused with the original marks. Trademark owners should also consult with counsel if there are any blogs that they believe might cause trademark confusion, regardless of whether the blog is protected speech. Counsel can help determine whether bringing suit is a viable option.