What’s the difference between good parody and bad? – A defensible legal position.

The recent kerfuffle between Knee Deep Brewing Co., and Sony Pictures Television over Knee Deep’s use of Breaking Bad (trademarked by Sony) iconography and imagery for their Breaking Bud IPA provides an opportunity for a good reminder about the defense of parody to trademark infringement.

When done right, this time-honored, and statutorily codified defense to a trademark infringement claim can shield a defendant from liability. But, like many things skirting the law for humor’s sake, its nuances are pitfalls for the uninformed.

In the Sony v. Knee Deep (link to complaint) suit, the visual comparison of the dispute is as follows:

In short, Sony sued Knee Deep over the brewery’s label (advertising) for an IPA called Breaking Bud that uses symbols in a manner similar to periodic table of elements in the same way Breaking Bad does for its title sequence and features the Knee Deep mascot (an alien thingy) wearing a chemical suit next to barrels of “HOPS” in the desert further evoking the show’s imagery.

Sony’s claims? That Knee Deep’s use is intended to evoke and trade off the Breaking Bad good will and associate with Sony’s property (the show) in a way that benefits the brewery.

This matters because using another’s registered mark is generally tantamount to infringement subjecting a defendant to disgorgement of profits, attorneys’ fees and other damages unless there’s some defense they can claim to defeat the assertion. And, as it happens, parody is one such defense. One that starts, usually, with a joke. Which is relevant in this case because in interviews provided by Jerry Moore, Knee Deep’s CEO, he references the fact that Sony appears to not get the “joke” several times:

“No one has ever thought the joke meant we were endorsed by ‘Breaking Bad,’ Moore wrote in an email. “We are a small brewery and I don’t appreciate the distraction, not to mention the expense of having to deal with something that should have been addressed three years ago if Sony really had an issue with it … at the end of the day, the quality of the beer is what has made Breaking Bud popular and we should all be able to take a joke.” Sony Sues Brewer Over “Breaking Bud” Beer, Ashley Cullins, The Hollywood Reporter, April 17, 2018.

So, the stage is set to consider whether this “joke” amounts to a parody sufficient to keep Knee Deep from having to pay out to Sony.

Under the Trademark Dilution Revision Act of 2006, congress codified “parody” as a defense to some trademark infringement claims, stating that a fair use of another’s mark in connection with a commercial use like the one at issue here may be allowed and can include “identifying and parodying, criticizing or commenting upon the famous mark owner or the goods or services of the famous mark owner.” 15 U.S.C. §1125(c)(3)(A)(emphasis added). But, the exception does not apply if the use of the mark is for “designation of source for the person’s [the alleged infringer’s] own goods or services.” 15 U.S.C. §1125(c)(3)(A).

So, if it’s parody, and not used as an identifier of the source of the goods or services, there may be hope for Knee Deep. (Note: The notion of not using something as an identifier of your own goods is an argument against trying to register the parody as a trademark which, by definition, is a source identifier. Sadly, Knee Deep tried to register Breaking Bud back in 2016. Point for Sony.)

Assuming Breaking Bud isn’t an identifier of source, what then must it accomplish to be considered a parody? Well, as you might have guessed, the answer is closer to a smell test than a stated legal rule.

For trademark purposes, “[a] ‘parody’ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner … A parody must convey two simultaneous — and contradictory — messages: that it is the original, but also that it is not the original and is instead a parody.” People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001) (internal quotation marks omitted).

I know, that last part sounds more like a paradox than a parody, but bear with me.

That latter message, the “not the original,” needs to both distinguish the parody from the original and also has to convey some concrete element of joking, or ridicule, or satire (I’m running out of the synonyms for amusing).

This means that “‘[a] parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.’ Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir.1987) (finding the use of ‘Lardashe’ jeans for larger women to be a successful and permissible parody of ‘Jordache’ jeans).”

Louis Vuitton Malletier S.A v. Haute Diggity Dog LLC, 507 F. 3d 252 (4^th Cir. 2007).

True to form, beer has already laid some important groundwork in the field of parody in Illinois.

Not many people remember the time Eveready hauled Coors into court for spoofing the Energizer bunny advertisements by having Leslie Nielsen put on bunny ears and interrupt a beer ad. Fewer still may remember that Coors went to the mat rather than caving and pulling the ad (developed to air during the NBA finals in 1991).

In finding that Coors’ advertisement was a “parody” sufficient to keep it from having to take the ad off the air or pay damages to Eveready, the Court provided some further guidance in understanding that the differences matter as much as the similarities when it comes to trademark infringement as those differences are what allows the alleged infringer to say that no one could seriously think these products are related:

“Parody has been recognized as a defense to a trademark infringement action. … Courts … as well have recognized parody as a legitimate use of another’s mark. See General Mills, Inc. v. Henry Regnery Co., 421 F. Supp. 359 (N.D. Il 1976) (denying preliminary injunction of defendant’s cookbook, entitled “Morey Amsterdam’s Betty Cooker Crock Book For Drunks,” after finding no likelihood of confusion with plaintiff’s registered trademark, “BETTY CROCKER”). In [another case involving a parody of Time Magazine’s cover by Cliff’s Notes]…the Second Circuit discussed the need to balance the necessity of imitation in parody with the trademark owner’s rights in his mark.

‘Conflict between these two policies is inevitable in the context of parody, because the keystone of parody is imitation. It is hard to imagine, for example, a successful parody of Time magazine that did not reproduce Time’s trademarked red border. A parody must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the customer will be confused.’

“As the court discussed above, although the Coors parody contains similarities to the Eveready mark, it contains conspicuous and resounding differences as well. To the extent that the Coors commercial conveys the message ‘that it is the original,’ it emphatically conveys ‘that it is not the original.’ Thus, this court construes the Coors commercial as a permissible parody which does not [infringe on the trademark].”

Eveready Battery Co. v. Adolph Coors Company, 765 F. Supp. 440 (N.D. Il 1991) (internal citations omitted).

Similarly, a florist’s use of “This Bud’s For You” used in advertising freshly cut flowers was found not to infringe on Anheuser’s similar, and registered, slogan. See, Anheuser-Busch, Inc. v. Florists Ass’n Greater Cleaveland, 603 F. Supp. 35 (N.D. Oh 1984).

Also, when social commentary is mixed with commercial use, (although I’m hard pressed to see what social commentary Knee Deep might be after unless it’s between meth and their IPA), parody can save the day where the social message is considered the main purpose. For instance, a community activist selling t-shirts with a “WAL*OCAUST” and “WAL-QUAEDA” branding similar to Wal-Mart’s, argued that his slogans were meant to draw comparisons to 9/11 and terrorism with Wal-Mart’s destructive impact on neighborhoods, won on a parody claim against the retailer with the court holding that although the activist had sold the shirts, the sale of the shirts wasn’t his main motive – the expression of the deleterious effects on community were.  See, Smith v. Wal-Mart Stores, 537 F. Supp 2d 1302, (N.D. Ga 2008).

So where does this all leave Knee Deep? I’d argue they’re in good shape, but not good enough to win outright. The use of a different name with similar elements, their alien mascot, the “HOPS” barrels, and their own “Knee Deep Brewing Co.” and the tag “Fine Craft Beers” above the Breaking Bud name all support the assertion that they’re dissimilar enough that no one could, contrary to Sony’s allegations, believe that somehow the show endorses their beer.

If this goes further than Knee Deep backing down, it will be interesting to see if I’m right. If not, these are all points to keep in mind when you’re riffing on someone else’s trademarked property in your labels, advertisements, and social media posts (as many of you do).