The parody paradox

A well executed parody is the ultimate insider's joke, and it can be targeted narrowly or broadly. At the two extremes are parodies of other ad campaigns, which usually only the creative teams truly 'get,' and parodies of cultural icons like...

A well executed parody is the ultimate insider’s joke, and it can be targeted narrowly or broadly. At the two extremes are parodies of other ad campaigns, which usually only the creative teams truly ‘get,’ and parodies of cultural icons like Perry Mason or The Beach Boys.

Although parody is a common device in advertising, there is a very fine and shifting line between legal and illegal ones. The landscape in Canada is particularly confusing because there is little case law and because U.S. spillover advertising follows different, more forgiving rules. American protection of freedom of expression covers a multitude of sins. To simplify the difference between the two countries, there is no ‘parody defence’ in Canadian law. In the U.S., ‘parody’ is a limited defence to copyright and trademark infringement.

Parody in advertising is prohibited on several grounds. The Canadian Code of Advertising Standards states that ‘No advertiser shall copy the advertising or slogans of another advertiser in such a manner as to mislead the consumer.’ This kind of misrepresentation – that the parodist is somehow associated with the advertiser who is being parodied – is also prohibited by the tort of passing off.

In addition, parody is prohibited by the Copyright Act when an original work has been substantially copied. Copyright infringement involves a qualitative test. A classic example involves the George Harrison song My Sweet Lord. Because the three-note opening chorus is identical to the opening chorus of the Shirelles’ He’s So Fine, Harrison was found liable for copyright infringement (there is no need to prove deliberate copying).

Certain forms of parody are also prohibited by Canadian trademark law. One famous case involved a mineral water called Pierre Eh! In 1982, with Pierre Trudeau in power, this was a transparently Canadian name. However, the product also had a light-green bottle that resembled the Perrier bottle, and Perrier was not amused: It brought an injunction to prevent further sales of the Pierre Eh! product on the grounds of passing off and trademark infringement. The defendants invoked a parody defence, but the court granted the injunction.

Let’s return to Perry Mason: Although the classic television series starring Raymond Burr ended in 1966, it is still widely known. It is easy to parody – the brooding criminal lawyer/detective, the perpetrator caught in a web of lies in the final courtroom scene, the theatrical black-and-white staging.

Is Perry Mason a safe (i.e. legal) subject of parody in a Canadian ad? No, but…

‘No,’ because the series is still protected by copyright that subsists for 50 years from the death of the last author of a creative work. In most such cases, the authors would include the director, the scriptwriter, etc. In this case, copyright is owned by the widow of Erle Stanley Gardner who wrote the Perry Mason novels. And ‘no’ because it would be impossible to do a Perry Mason parody without infringing the publicity rights of Raymond Burr. Although Burr died several years ago, Canadian law would likely permit a lawsuit brought by his estate.

That said, there is no copyright in an idea per se, and publicity rights have limitations. Advertisers can stage a Perry Mason style commercial provided they do not substantially copy the original. Here is where it gets tricky. You can borrow the idea of Perry Mason and some of its elements such as a black-and-white courtroom set, provided the music, actors and dialogue are not Perry Mason-esque. A Perry Mason look-alike cannot copy the voice, mannerisms, hairstyle, tailored suits or penetrating stare of Raymond Burr without risking a lawsuit.

The essential problem is this: For an advertising parody to work, it must clearly bring the original to mind. If it does, it almost certainly crosses the line. To paraphrase the judge in the Pierre Eh! case: ‘the [similarities]… are not only likely to cause confusion but are obviously meant to cause confusion. Otherwise, the spoof would not be a spoof. The obvious intent of the defendant is to cash in upon the favourable public image of the [plaintiff]…’.

The law in Canada does not permit this.

If your ad campaign involves a parody, either get permission or develop new creative.

Susan Vogt practises marketing and trademark law at the Toronto offices of Gowling Lafleur Henderson LLP. She can be reached by phone at (416) 862-5439 or by e-mail at susan.vogt@gowlings.com.