Posted By: John-Philip J. Schroeder
In 2003, a humor website called “Penny-Arcade” was forced to take down a comic by American Greetings, the popular greeting card company. Ten years later, the comic is still not available on Penny-Arcade’s the website. This is a close look at just one instance of how trademark law can be used to achieve private censorship.
Penny-Arcade’s original posting for April 14, 2003 depicted the characters Strawberry Shortcake and Plum Pudding in dominatrix gear under the title of “Tart as a Double Entendre.” The comic was poking fun at American McGee, a video game designer with a tendency to infuse darkness and sexuality into formerly sweet and innocent childhood figures. (Most famously, his game “Alice.”) However, Penny-Arcade was forced to take down the comic when American Greetings sent a takedown notice, in which they claimed Penny-Arcade was violating American Greeting’s trademarks. To this day, the comic is absent from the Penny-Arcade archive.
Generally, trademark infringement claims center around possible consumer confusion and require a plaintiff to prove (1) that it possesses a mark; (2) that the defendant used the mark; (3) that the defendant’s use of the mark occurred “in commerce”; (4) that the defendant used the mark “in connection with the sale, offering for sale, distribution, or advertising” of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers. People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001). Here, elements 1 through 3 are conceded. Element 4, the use in connection with the sale of goods or services, is debatable. After all, Penny-Arcade does sell merchandise on its website, but it is completely unrelated to the used marks. Finally, element 5 seems clearly lacking because it difficult to imagine the comic would confuse consumers. Even so, the mere threat of legal action by a large corporation such as American Greetings is enough to silence relatively small speakers like Penny-Arcade. This phenomenon is worsened by the fact that the law of trademarks is ambiguous when it comes to satire and parody.
Perhaps the biggest reason that trademark parody cases are confusing is because of the trademark dilution theory. The trademark dilution theory recognizes “the owner of trademarks should not have to stand by and watch the diminution in their value as a result of unauthorized uses by others.” Robert J. Shaughnessy, Trademark Parody: A Fair Use and First Amendment Analysis, 72 Va. L. Rev. 1079, 1097 (1986). However, unlike copyright law, this theory does not have the fair use doctrine as an explicit constraint. Id. This surprisingly can provide better protection for a trademark than a copyright – a result that should be avoided. After all, a copyrighted character may be parodied under fair use. Why should a trademark afford any more protection?
It seems clear that Penny-Arcade’s comic would survive a fair use analysis under copyright law, which specifically includes use of copyrighted material for criticism. See 17 U.S.C.A. § 107. Similarly, a traditional investigation into whether a consumer would be confused by the comic would clearly allow of Penny-Arcade’s use of the marks in the comic. Thus, it is the ambiguity and uncertainty created by concepts of trademark dilution that make Penny-Arcade just vulnerable enough to where they are effectively silenced and (understandably) too scared to post the content.
Unfortunately, this is one of many areas where the law affords large corporations the ability to silence speakers who do not have the resources to engage in a legal battle. An interesting aspect of this particular story is that time has shown the disparate impact on a small speaker such as Penny-Arcade versus larger speakers. Notably, the popular television show “South Park” has depicted Strawberry Shortcake being tortured and killed – yet American Greetings did not bring a suit. Of course, South Park is a much bigger player than Penny-Arcade, and is a known advocate of free speech, so American Greetings’ contrasting approach to “protecting” their marks is understandable.