Gatorade vs. Haterade: The Tarnishment Battle of Parody Products
John Charles Leabo, KLJ Staff Editor[1]
On September 17, 2015, the trademark owner of Gatorade, Stokely-Van Camp Inc., filed suit in Illinois federal court against the makers of Haterade, a body-building supplement, accusing them of trademark infringement and harmfully associating Gatorade with the colloquial derogatory term, "hater."[2] Stokely Van-Camp alleges that Haterade may lead to the dilution of the Gatorade brand by blurring and tarnishment, the impairment of a distinctiveness of a famous mark and the harming of famous mark's reputation by association with something distasteful, respectively.[3] While the court will probably find that there is no consumer confusion, the issue of dilution by tarnishment is a different matter—one that has been relatively murky in the courts for decades.Generally, the fair use of a parody is an exception to trademark infringement, as well as actions for dilution by blurring and by tarnishment.[4] However, there are limits on the type of parody that is allowed. The parody must be successful, in that it that calls to mind the original product but is clever enough to distinguish it from the original as to avoid consumer confusion. The parody must also not relate the original brand to something offensive in order for it to evade an action of dilution by tarnishment.[5] Some offensive associations that various courts have found to tarnish the original mark over the years include: a sexually explicit movie featuring the Dallas Cowboys cheerleader uniforms;[6] a slogan for an insecticide making a pun on a well-known beer slogan (“Where there's life ... there's bugs”);[7] the punned title of a sexual novelty store from Victoria's Secret (“Victor's Little Secrets”);[8] and a syringe in a modification of the New York Yankee's logo.[9] To say the least, the standard the courts use when it comes to deciding whether or not a mark is offensive enough to cause tarnishment seems arbitrary at times, and disputes are decided on a case by case basis. Generally speaking, however, courts tend to disfavor parodies involving drugs or sex, but seem more accepting of more benign caricatures, such as puppies and puppets.[10]However, Congress may have made a step towards standardizing tarnishment actions, as evidenced by a 2006 amendment to 15 U.S.C § 1125. This amendment lowers the burden of proof for the famous mark owner to obtain an injunction,[11] and limits the fair uses of trademark parody with regards to dilution actions to those "other than as a designation of source for the person’s own goods or services."[12] Some courts have interpreted this language to deny a parody defense specifically to a product mark.[13] Others, though, have interpreted the language to refer particularly to competing products and services,[14] and have endorsed the use of parody if the product was marketed to a completely different class of consumers than the parodied product.[15] Therefore, it seems that courts are continuing to hold onto some discretion when it comes to tarnishment actions. While courts should retain some discretion, that discretion should stay within the realm of consumer confusion. The only fair and reasonable standard with regard to tarnishment actions is one that requires an actual finding of tarnishment, given the lack of a sufficient definition of tarnishment in case law or statute.Hopefully, courts will begin tilt towards this kind of standard when it analyzes whether or not Haterade tarnishes Stokley-Van Camp's trademark for Gatorade. It seems unlikely that the term "hater" will be offensive enough to warrant tarnishment, but given the lack of a clear definition, the court could very find the opposite. Then again, perhaps the court will try and bypass the issue of tarnishment altogether by reasoning that Haterade is a successful parody—one that brings to mind the original, but differentiates itself from it by being a play on words that would obviously not be endorsed by the original. Though it is being used by its creators as a designation of source for their own goods, the targeted market for body-building supplements is different enough than the sports drink market, and therefore is a fair use exception under §1125. Or perhaps the court will join Stokley-Van in "hating" on Haterade and find there to be tarnishment outright. Whatever the case, parody products are here to stay, at least for the meantime, as they continue to find their ways onto the shelves and into our hearts.
[1] J.D. expected May 2017.[2] Daniel Siegal, Gatorade Owner No Fan of 'Haterade,' Sues Creator Over TM, Law360 (Sep. 17, 2015, 10:25 PM), http://www.law360.com/articles/704416/gatorade-owner-no-fan-of-haterade-sues-creator-over-tm.[3] Id.; The Lanham Act, 15 U.S.C. § 1125(c)(2) (2012).[4] E.g., Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. N.Y. 1999) (applying the parody analysis for copyrights in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) to trademarks); § 1125.[5] Leslie J. Lott and Brett M. Hutton. Trademark Parody, 489 PLI/Pat 517 (1997), available at http://lottfischer.com/general.php?category=Resources&subhead=Articles&headline=Trademark+Parody.[6]] Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. N.Y. 1979).[7] Chem. Corp. of Am. v. Anheuser-Busch, Inc., 306 F.2d 433 (5th Cir. Fla. 1962).[8] V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 385 (6th Cir. Ky. 2010).[9] N.Y. Yankees P'Ship v. IET Prods. and Servs., Inc., 114 U.S.P.Q.2d (BNA) 1497 (T.T.A.B. 2015).[10] Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. Va. 2007) (finding that a "Chewy Vuitton" handbag dog toy did not tarnish Louis Vuitton); Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 423 (S.D.N.Y. 2002) (holding that "Timmy Holedigger" dog perfume did not tarnish the original mark); Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. N.Y. 1996) (holding that though tarnishment isn't limited to seamy products, a Jim Henson pig puppet still did not tarnish SPAM).[11] § 1125(c)(1) ("the owner of a famous mark . . . shall be entitled to an injunction . . . regardless of the presence of actual or likely confusion, of competition, or of actual economic injury").[12] § 1125(c)(3)(a).[13] See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 113 (2d Cir. N.Y. 2009).[14] E.g., Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999) (holding that parody use with trademarks should be construed narrowly when "an alleged parody of a competitor's mark [is used] to sell a competing product").[15] E.g., Louis Vuitton, 507 F.3d at 260-61.