With the King candy trademark saga winding down, it’s an appropriate time to work through some developer reactions and their possible legal implications. Many took to the internet to voice their concerns, frustrations, confusion, and rage at the situation. Others participated in game jams, gatherings of developers where a game is produced within set parameters including a time limit, that protested the application by making a game with “candy” in the title. King recently abandoned the mark, but had the application passed USPTO scrutiny, many of these developers could have faced serious consequences. Developers seem secure in the thought that even if King achieved registration, and, even if King were so bold as to challenge their games, King could not possibly win. After all, these games are protests and parodies of the “candy” mark, and it’s obvious that a parody isn’t a crime- it’s free speech.
Parody is most often cited as a defense in copyright infringement cases. In copyright, parody is a subcategory of fair use. Fair use is an affirmative defense to copyright infringement that “permits other people to use copyrighted material without the owner’s consent in a reasonable manner for certain purposes.”In cases where a work would otherwise be infringing, the fair use doctrine can exempt the author from liability. The primary purpose of fair use is “to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” Within this framework, parody is the transforming of a copyrighted work in such a way as to poke fun at the original. For example if some creative developers were to take a well known educational game about pioneers making their way west and use the same graphics and style in a game about escaping a zombie invasion.
Most candy jam developers, however, were not parodying the copyrightable material within the game Candy Crush Saga. They were, instead, making use of the “candy” mark to protest King’s trademark application. Trademark parody always involves a change to the existent mark so that the original mark and the parody are not identical. For example, a creative development team could name their game “Organ Trail” as a zombie themed parody of the well-known educational game “Oregon Trail.” The courts have not established that parody is a foolproof defense to trademark infringement, but have instead offered a patchwork of decisions giving guidance as to whether or not your parodic title will stand up to scrutiny.
Often, the first consideration is whether the parody is occurring in a commercial context, and, if so, whether the goods are in competition with the goods sold by owner of the mark. If the goods are used in a commercial context, for example a game that is being sold for an initial purchase price or one that offers in app purchases, it raises the bar for how dissimilar from the established mark the new mark must be. Similarly, if the goods are in competition, much like the candy jam apps that are now on the same devices as Candy Crush Saga, the court requires enough dissimilarity to distinguish the marks in the mind of the consumer.
Another consideration is free speech, or first amendment rights. Courts are less likely to allow a trademark holder to silence someone who is expressing a view, engaging in protest, or trying to communicate ideas. However, once free speech is intermingled with a commercial motive, particularly a competing one, the courts become less sympathetic, and hold the mark to a higher standard of dissimilarity to ensure no confusion. A free speech interest or political message or idea is not enough to insulate against claims of trademark infringement.
The marks are typically compared side by side, with the court opining on their similarities and differences before deciding whether the two are “confusingly similar.” This determination must be made based on whether a consumer would be deceived by the infringing parodic mark. The marks are considered in their entireties and their individual elements. It’s the impression which the mark as a whole, and not the individual parts, creates on the average buyer that is important. The determination on likelihood of confusion is based upon consideration of the respective marks in their entireties.
It’s important to note that titles are not the only possible form of parodic trademark infringement. Registered marks can be used within a product in a parodic manner. For example, if the aforementioned developer were to create a game about being a legal intern within which a variety of parodic titles appeared. These marks would still be infringing if not deemed parody.