This Slogan Isn't Necessarily For You   

The First Amendment rights of parodies don't always outweigh trademark protection.

The symbols and images that advertising and PR make famous often become part of the visual language of society. That makes them fair game for editorial cartoonists and satirists. Recently, for example, the Boston Globe's Daniel Wasser- man poked fun at politicians in a cartoon featuring not one but two such symbols: R.J. Reynolds Tobacco Co.'s ad icon Joe Camel and Sesame Street's Big Bird.

Such imitations are not always taken as flattery by the companies that footed the bill to create the originals, and lawsuits sometimes result.

There is always a legal risk in borrowing someone else's creativity because of copyright and trademark laws. Copying or caricaturing a famous symbol is not always illegal, though, because the Supreme Court treats parody as a form of expression entitled to some First Amendment protection.

The court made that point emphatically clear in 1988 when it nullified a $200,000 verdict that the Rev. Jerry Falwell had won from Hustler magazine for a parody suggesting that the evangelist had sex with his mother in an outhouse.

But a problem remains: The Supreme Court has not made clear when First Amendment rights outrank copyright or trademark protection. As a result, judges on lower courts act as art, literary or music critics, figuring out when a parody goes too far to copy or to tarnish an original.

Consider some of the cases that have passed through the Supreme Court:

•L.L. Bean, Inc., the Maine mail-order company that sells outdoor gear and clothing, claimed it was wronged by an ad parody in High Society, an adult magazine. The magazine twitted L.L. Bean by publishing an "L.L. Beam Back-to-School Sex Catalog." Bean lost in a lower court and the Supreme Court rejected the company's appeal in 1987.

•Franklyn Novak, a Minneapolis artist and writer, was barred by a court from marketing T-shirts, sweatshirts, caps, buttons and coffee mugs with the logo "Mutant of Omaha." That was a takeoff on the famous name of insurance giant Mutual of Omaha. Novak used the logo as a commentary against nuclear war. A lower court rejected his First Amendment challenge, and the Supreme Court would not hear his appeal in 1988.

•Anheuser-Busch lost a trademark infringement claim against a college student, Michael Berard, over his sales of T-shirts in Myrtle Beach, South Carolina. He used a takeoff of the Budweiser beer slogan, changing the wording to "This Beach is for You!" The Supreme Court turned down the Busch appeal in 1992.

•The owners of the copyright for Roy Orbison's classic, "Oh, Pretty Woman," claimed infringement when the rap group 2 Live Crew put out a reworded imitation titled "Pretty Woman." The Supreme Court ruled 9-0 last year that music parodies get strong First Amendment protection.

In a more recent legal battle, the publisher of a tabloid St. Louis humor magazine, Snickers, failed in an effort to get the Supreme Court to provide more clarity on the constitutionality issue. After Snickers parodied Anheuser-Busch's Michelob beer ads, a federal judge barred it from further parodies that could tarnish Busch's trademarks.

The magazine's publisher, Balducci Publications, used the parody to comment on an oil spill resulting from a burst pipeline leaking into the Gasconade River. Busch's St. Louis refinery draws water from the Mississippi River downstream from the Gasconade; the company closed the refinery for three days as a precaution.

Snickers' staff put together the parody using slight variations on Michelob symbols and a takeoff on its slogan, "One taste and you'll drink it dry." The ad's rewrite: "One taste and you'll drink it oily."

Saying that an injunction against the magazine would be valid and upholding a symbolic damages award of one dollar, the 8th U.S. Circuit Court of Appeals ruled last June that a parody of a famous trademark is not protected from liability under trademark laws if done in a way "likely to confuse consumers as to its origin, sponsorship or approval." The Snickers ad, the Circuit Court ruled, did not pass the confusion test.

Balducci Publications urged the Supreme Court to take the case and rule that the First Amendment shields parodies that are noncommercial and are used as a form of commentary or criticism. Its lawyers said they had found no other case upholding "state or federal trademark law actions against the use of a trademark in a book, magazine or newspaper in a noncommercial, editorial context."

The ruling, Balducci said, threatened "the stifling of political cartooning in a nation bred to broad freedoms of speech and the press."

Strong words – but ultimately unpersuasive. On January 17, the Supreme Court simply said no to the appeal, leaving constitutional clarity for another day. l