The not-so-funny side of parody
November 14, 2012

Parodies surround us. They appear not only in traditional media — such as paper advertisements, TV and radio — but also through more modern forms of media. For example, just one of the parodies of the popular Gangnam Style video, titled “Mitt Romney Style (Gangnam Style Parody)” on YouTube, has received over 8,000,000 views.

By its very nature, a parody requires a copying of the original work, preferably so that the original work is identifiable. While parodies are certainly common, in the intellectual property sense the copying required as part of the parody is not always legal in Canada.

Trademark law. Under trademark law, infringement of a trademark does not occur without source confusion. Given that the consumer is generally aware that a parody is a “spoof” of an original trademark, the infringement of a trademark by a parody mark is difficult to establish. However, if the public cannot determine the difference between the parody and the original trademark, or the public is of the view that there is a common source of the marks, trademark infringement may be found to occur.

Given the difficult task of proving infringement of a mark by a parody mark, trademark owners often rely on the dilution provision of the Trademarks Act and argue that the parody has depreciated the goodwill in the original trademark. It is clear, however, that the position of Canadian courts is that dilution does not occur unless the parody mark is used commercially.

Take for example a case involving the tire company Michelin and its “bibendum” design (a.k.a. the Michelin Man, or a “beaming marshmallow-like rotund figure composed of tires”), a registered copyright and trademark. The defendants, attempting to become bargaining agents for employees at a Michelin plant, distributed leaflets to workers displaying the bibendum design. In the leaflets, although the bibendum sported his famous smile, his foot was raised in an attempt to crush an unsuspecting worker while a coworker stated “Bob, you better move before he squashes you.” The Court held that because the trademark was not used in a commercial sense, dilution could not have occurred.

This case should be contrasted with an earlier case where a company was prevented from selling water under the name “Pierre Eh!” because it was confusing with and depreciated the goodwill in the PERRIER trademark. In this case, the “Pierre Eh!” bottle contained upper and lower labels which appeared substantially identical to the PERRIER labels. However, wording appearing in small print on the labels consisted of humorous comments directed to Prime Minister Pierre Trudeau and the Government of Canada. In granting an interlocutory injunction, the Federal Court held that the defendant was attempting to cash in on the reputation of PERRIER and the deception diluted the quality of the PERRIER trademarks. In the Court’s view, the fact that the defendant intended to produce a spoof did not take away from the deception.

Copyright law. In the United States, a fair use exception to copyright infringement permits for a parody of a copyright work without permission. This was tested in a U.S. case involving the music group 2 Live Crew and the owner of the Roy Orbison song “Pretty Woman.” 2 Live Crew was unable to obtain the consent of the owner to sell a parody of the Pretty Woman song. Unfazed, 2 Live Crew released the song containing lyrics such as “two timin’ woman / now I know the baby ain’t mine” and was sued for copyright infringement. It was ultimately held that the song could be perceived as a criticism (apparently relating to the naiveté of the original version that ignored the ugliness of street life) and that the parody exception to copyright infringement therefore applied.

In Canada, the courts have traditionally held that parody does not fall under the fair dealing exception in the Copyright Act because it is not considered criticism. Although a Supreme Court of Canada decision from 2004 appeared to suggest that a more liberal interpretation of fair dealing should be adopted, subsequent decisions maintained that parody is not an exception to copyright infringement under the Copyright Act.

Given the limitations in the Copyright Act, some questioned whether Parliament should create an exception to copyright infringement for parody works. After numerous attempts to amend the Copyright Act, Bill C-11, the Copyright Modernization Act, passed parliament and received Royal Assent. Included in Bill C-11 was a newly amended section 29, which states that “fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright.”

The newly amended section 29 came into force on November 7th, and a parody or satire is therefore now an exception to copyright infringement in Canada. This is in contrast to the United States, which only extends protection to parody works (and not satire).

While parodies are popular and grab the attention of millions of viewers on YouTube, those who use them should be careful to confirm that the parody work does not infringe the intellectual property rights that may exist in the original work. Such an infringement could result in a damages award against the parody owner, which would be no laughing matter.

Heather Robertson, Toronto

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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