Thursday, June 06, 2019

Mock magazine cover doesn't infringe, dilute, advertise falsely even if targeted at competitor

Ebony Media Operations, LLC v. Univision Communications Inc., No. 18-cv-11434-AKH (S.D.N.Y. Jun. 3, 2019)

Judge Hellerstein called the question presented “interesting,” but an even better adjective would be “easy”: “whether, in the case of a famous magazine trademark, a competitor-magazine is guilty of infringing or diluting the famous mark, and other wrongs, by publishing an image that prominently displays the famous trademark to criticize the conduct of its owners.” The answer is no.

Ebony Magazine alleged that defendants infringed, diluted, and engaged in false advertising by running an article, Dear Ebony Magazine: FU, Pay Your Writers! [Corrected] with a mock Ebony cover that used Ebony’s allegedly famous and definitely registered name. The mock cover also featured a phtoto of owners Michael Gibson and Willard Jackson, and several mock headlines:
           "Special Deadbeat Edition: #EbonyStillOwes"
           "Cheat your black writers by not paying? Ebony owners Michael Gibson & Willard Jackson show us how!"
           "Ebony 100 Gala: Let Them Eat Cake! 101 Ways Ebony Doesn't Pay Writers . . . But Holds Gala Banquet w/ Chris Tucker"
           "New Ebony Owners: Michael Gibson and Willard Jackson The Slow Play Kings of Black Biz"
           "December 2018: Thousands in Back Pay"

Ebony sued for trademark infringement, unfair competition, trademark dilution, and false advertising in violation of the Lanham Act; and tortious interference, unfair and deceptive business practices, and unfair competition under New York law.

As we know, “[t]he Lanham Act must be construed narrowly to avoid conflict with First Amendment values.” And parody has value.  The central fact was that the accused image “uses parody to enhance Ross' s article, the primary purpose of which is to criticize EBONY Magazine,” and that was fatal to each claim. “That Defendants compete with Plaintiff, and allegedly published the article, in part, to harm Plaintiff s business, is insufficient to overcome the protection to which Defendants' parodic and critical expressions are entitled.”

Because Ebony is a mark for an expressive work, the court didn’t use Rogers but did use the Polaroid factors with appropriate weight to the First Amendment interests at stake. [Note that the Ninth Circuit just uses Rogers even when the plaintiff’s mark is for expressive works too; I think this is probably the better approach, at the very least for the content of works as this use is—the picture appeared in the middle of the story.]

Notably, nominative fair use was no help to defendants because of the Second Circuit’s bizarre loading of the NFU factors into the usual multifactor test in IISSCC. The district court reasoned:

[P]arody is ill-suited to analysis under the three nominative fair use factors because the use rarely will be: (1) necessary to describe plaintiff s product or service, since parody involves distortion and alteration rather than description [probably not a good reading of “necessary,” which is about whether people will know what you’re talking about, and the use of Ebony’s mark in the parody is pretty necessary]; (2) limited to what is necessary for identification, since the purpose of parody is to evoke and mimic the original; or (3) true and accurate, in a literal sense, about the relationship between the products, since parody often contains strong elements of sarcasm and irony.

Nonetheless, there was no plausible allegation of a risk of confusion that would outweigh the public interest in free expression. Strength of mark: makes parody less likely to confuse. Similarity of marks: though the mark was reproduced without significant alteration, the context “immediately removed any semblance of true similarity. Each of the five headlines on the Accused Image is harshly and unambiguously critical of EBONY Magazine…. It is difficult to imagine any reader experiencing confusion as to whether or not EBONY Magazine sponsored or endorsed a cover that portrays it in such a negative light.” Proximity: there was no direct competition with Ebony’s products, and it wasn’t plausible that Ebony would bridge the gap by “providing competing coverage of its alleged underpayment of its contributing writers.” Actual confusion: the complaint didn’t plead facts suggesting discovery would yield any such evidence.  And though the complaint pled bad faith as to accuracy, it didn’t plead bad faith as to confusion. Quality of defendants’ product/sophistication of consumers: neutral.

“In sum, the substantial public interest in free expression far outweighs any risk of confusion created by the Accused Image.”

Dilution: Two exceptions to federal dilution law clearly applied, “[a]ll forms of news reporting and news commentary,” and fair use of a mark in connection with “identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.”

False advertising: this wasn’t “ ‘commercial speech,’ (2) made ‘for the purpose of influencing consumers to buy defendant’s goods or services,’ and (3) ‘. . . disseminated sufficiently to the relevant purchasing public.’” Gmurzynska v. Hutton, 355 F.3d 206, 210 (2d Cir. 2004); also citing Croton Watch Co. v. Nat’l Jeweler Magazine, Inc. , No. 06 Civ. 662 (GBD), 2006 WL 2254818, at *10 (S.D.N.Y. Aug. 7, 2006) (“The non-commercial nature of a journalist’s article cannot be overcome by plaintiff claiming an improper purpose motivated the publisher to run the article.”).  The accused image was a parody, “made by a professional writer for inclusion in his article in Defendants’ online magazine; it does not mention any of Defendant’s goods or services, much less promote them; it pertains to an issue of public importance, i.e., a leading magazine’s treatment of its contributing writers; and, although it may implicitly invite comparison between how Plaintiff and Defendants treat their writers, the central message of the Accused Image, and the article in which it appears, is simply that Plaintiff should pay its writers in a timely fashion.”

The state law claims failed for the same reasons.

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