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Parody Cannot be Relied on as a Defence to Copyright Infringement if it Causes Marketplace Confusion

Parody has been a fair dealing exception to copyright infringement in Canada since 2012. However, the scope that this defence would be afforded in Canadian law has been uncertain. This issue came under the spotlight in the 2017 case of  United Airlines, Inc. v. Cooperstock.

It all began with a series of unpleasant flights in the spring of 1996. A frustrated Dr. Cooperstock shared his unpleasant experiences on his website, which soon garnered the attention of other disgruntled United passengers. As the website’s popularity grew, it evolved into UNTIED.com, a parody website dedicated to lodging complaints against and listing the failings of United Airlines.

In 2011, Dr. Cooperstock redesigned UNTIED.com to intensify his spoof of the United website, mimicking both United’s logos and its webpage layout. From there on, Dr. Cooperstock updated UNTIED.com regularly to mirror the latest design of United’s website. In 2012, responding to demands made by United, Dr. Cooperstock made minor alterations to the spoof logos and added disclaimers. However, unimpressed with Dr. Cooperstock’s effort, United launched a lawsuit for both trademark and copyright infringement.

Justice Phelan decided the case and found in favour of United on both trademark and copyright infringement. Regarding trademark infringement, Justice Phelan concluded that the spoof marks were confusingly similar to United’s original marks, as there was evidence consumers believed the had properly submitted complaints to United for resolution via the UNTIED.com website. Moreover, the marks on Dr. Cooperstock’s website were used in connection with the service of lodging and resolving complaints, which was a service notwithstanding that no money changed hands. Furthermore, Justice Phelan reiterated the principle that parody and satire are not defences to trademark infringement.

Regarding copyright infringement, Justice Phelan had no difficulty in finding that the elements of the offence were met. There had clearly been substantial copying, and the only issue was whether Dr. Cooperstock could rely on the fair dealing exception of parody. To do so, Dr. Cooperstock had to establish that his UNTIED.com is a parody and that his dealing was fair. He succeeded on the first element but failed on the second.

In particular, Justice Phelan questioned whether the parody exception may successfully be invoked when there is confusion, since parody depends on the recipient recognizing that the work in question is a spoof. As Justice Phelan observed, this has direct implications for the effect of parody. Although harmful commercial consequences due to negative commentary inherent in a parody is fair, harmful consequences arising from the public being confused between the copyright owner and the parody is not. Justice Phelan made clear that a parody should use alternatives that do not cause confusion to be able to rely on the fair dealing exception, and indeed Dr. Cooperstock had made use of such alternatives prior to the 2012 redesign of his website.

Other factors that weighed against Dr. Cooperstock were the purpose of the dealing and the amount of the dealing. With regard to the purpose of the dealing, a parody is less likely to be fair if its real purpose is to defame and punish rather than to mock with humour. Likewise, the dealing is less likely to be fair if the amount is excessive.

In summary, if you are making parodies, it is prudent to clearly distinguish the spoof from the original to avoid a likelihood of confusion. On the other hand, if you are a rights holder wishing to stop a parody, it may help to highlight unwarranted harms due to the parody or malevolent intent on the part of the parodist.

By Kevin Wang and Jennifer A. Marles


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