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In an ongoing case before the United States Patent and Trademark Office (USPTO), Wizards of the Coast LLC, owner of the trademark rights associated with the well-known role-playing game “Dungeons and Dragons,” filed an opposition on August 9, 2024, against the trademark application for “Dungeons and Drag Queens”. The company argues that there is a likelihood of consumer confusion, error, or deception, as well as dilution of the Dungeons and Dragons trademark 1 and 2. Notably, the “Dungeons and Drag Queens” trademark is used to identify a show where drag queens play Dungeons and Dragons,3 making this case a compelling example of parody in trademark law.
In the United States, parody is protected as “free speech under the First Amendment."4 However, it must be demonstrated that there is no likelihood of confusion or any association with the original trademark being parodied.5 It's important to note that in the recent US Supreme Court case, Jack Daniel's Properties, Inc. v. VIP Products LLC, the Court ruled that parody marks are subject to a likelihood-of-confusion analysis. The decision also clarified that the Lanham Act’s dilution exemption for “noncommercial use of a mark” (§1125(c)(3)(C)) does not protect parody, criticism, or commentary when the alleged diluter uses the mark as a source designation for their own products.6 and 7
In Brazil, Law #9,610/1998 allows for the use of parodies in the context of copyright under Article 47, which states:
On the other hand, there is no explicit legal provision for regulating parodies in trademark law. However, parody is generally considered permissible through the combined interpretation of Articles 130(III) and 132(IV) of Law #9,279/19968, which state:
Within the judiciary, several cases of trademark parodies have been reviewed9, with one notable example being the ruling by the Superior Court of Justice involving the newspaper “Folha de São Paulo” and the parody website “Falha de São Paulo”. The website parodied the articles produced by the newspaper. After analyzing the case, the majority concluded that there was no conflict because “the two entities involved, despite the similar names Falha and Folha de São Paulo, provide entirely different services.”10 The court further ruled that the “activity of Falha, as a parody, (...) falls under copyright law, which is more specific and fully accepted within the national legal framework under the constitutional right to freedom of expression.”11
The judgment also found that unfair competition was not established, stating that “unfair competition requires a commercial intent, which Falha was not found to have.”12
When it comes to the registrability of parody trademarks with the Brazilian National Institute of Industrial Property (BRPTO), there is a tendency to reject applications based on the grounds for non-registrability outlined in Article 124 of Law #9,279/1996 (such as the likelihood of confusion or undue association with another trademark, or copyright infringement), as well as the possible high renown of the trademark being parodied.13 and 14 This was the case, for example, in the application to register the trademark “RED BURRO” for “non-alcoholic energy drinks.” The application was rejected due to the rights associated with the RED BULL trademark, citing Articles 124(XIX), 125, and 126 of Law #9,279/1996, which protect highly renowned and well-known trademarks from infringement by prior rights holders.15 Similarly, the application to register the trademark “New Kids On The Bloco” for music band services was denied under Article 124(XVII) of the same law, based on copyright infringement of the band “New Kids on the Block.”16
The case involving the “Dungeons and Drag Queens” trademark is still ongoing, and the applicant has until September 18 to respond to Wizards of the Coast LLC’s arguments.
In conclusion, while the intellectual property protection systems in the United States and Brazil differ, they face similar challenges when it comes to trademark parodies, especially within the framework of free competition. In Brazil, the prevailing view is that freedom of expression should be respected, but without undermining the rights of trademark holders, who are entitled to protect the integrity and reputation of their trademarks. Therefore, the legality of a trademark parody depends on the specifics of the case, particularly the commercial context in which the parody is used and its potential impact on the trademark owner, balancing the principles of free competition with the need to prevent parasitic use.
