Thursday, May 25, 2006

Acrimony over acronyms

GTFM, LLC v. Universal Studios, Inc., 2006 WL 1377048 (S.D.N.Y.)

Plaintiffs GTFM and FUBU offer clothing and apparel under the successful "FUBU" mark ("For Us By Us") targeted at the "multicultural youth generation," and strive to maintain a positive image and fight stereotypes of multicultural youth. Universal made brief usage of the acronym "BUFU" (“By Us, F--- You”) in a 2001 marijuana-themed comedy starring two African-American youths, How High, in which – for reasons that don’t need explaining at this juncture – the two slacker-types find themselves at Harvard. According to the court, when one of the main characters is complimented on his clothing, he responds: “I designed it myself. I call it ‘BUFU’”; when another character comes under the sway of the main characters, he is asked why he changed his behavior and clothing, and responds: "It's phat. It's dope. It's cool. It's BUFU, man"; and one of the main characters asks, "What the hell are you wearing?" to which the other responds, "BUFU ... By Us F--- You."

You can tell how the rest of the story unfolds. Outraged, plaintiffs sued for trademark infringement and dilution et cetera (including defamation and breach of fiduciary duty). The court found that the film’s three brief references to "BUFU" were made “in the context of comedic dialogue between the film's outlandish characters,” poking fun at FUBU by using BUFU in reference to one of the main character’s fashion clothing line. Thus, the use was a protected parody under the First Amendment. As a result, the court did not analyze specific elements of plaintiffs’ causes of action, though it gave a bit attention to confusion, since it is well-established law that effective parodies are unlikely to cause consumer confusion.

The court emphasized that the FUBU marks appeared nowhere in the film and thus “plaintiffs have no claim that FUBU was used in a manner injurious to the mark and to its reputation and good will,” even if the parody was lewd or offensive. This holding, though perhaps limited to a First Amendment-protected expressive work, seems to impose a requirement that marks be identical before tarnishment can be found; however, the court did not specify how its analysis fit into standard dilution law. Without confusion or dilution, plaintiffs had no claims that could survive summary judgment – the case was “UFUB,” or “Utterly Frivolous Under Biopsy.”

What about the breach of fiduciary duty claim? Apparently Universal Music signed a cross-promotion agreement with FUBU Music undertaking, among other things, not to interfere with FUBU’s property rights. One can contract out of First Amendment rights; why did Universal not do so in this case? There is some reason to treat overreaching suits of this type summarily, to emphasize that they are unmeritorious and that trademark owners might be risking fee awards, even sanctions, for bringing them. Yet the contract in this case deserved some mention – if only to say that it didn’t contemplate parodies by Universal Films.

This case reminds us that transformation and critique can be used against outsiders as well as by them. Plaintiffs may well be right that the movie reinforces “the repugnant stereotype that multicultural youths require illegal drugs to empower themselves” and associates FUBU with that stereotype. But attempts to craft tests that give special favor to the critical speech of the disempowered have found no favor in the courts; critics of all stripes are instead the beneficiaries of free speech limits on intellectual property law.

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