August 31, 2006

Federal Court Says “FUBU” Can Mean “Fair Use by Universal”

Holland & Knight Newsletter
Arthur E. Rosenberg

A movie parody that jumbled the letters in the name of a famous line of clothing and apparel did not violate the clothing manufacturer’s trademark, according to a recent decision of a New York federal court. The decision in GTFM LLC v. Universal Studios Inc. continued and expanded the protection of trademark parody used in films and other artistic vehicles.

The decision of Judge Richard Owen of the U.S. District Court for the Southern District of New York rejected the lawsuit brought by the owner of the “FUBU” brand in a claim arising out of the Universal Studios film, “How High.” The movie, billed as a satirical “stoner comedy,” stars popular rappers Method Man and Redman, who find themselves attending Harvard University after what the court described as a series of “supernatural events involving a marijuana plant.” According to the court, the film contains “ridiculous, fictional antics” and involves “exaggerated stereotypes.”

The question decided in this case was whether the use of the parody brand “BUFU,” to describe a line of clothing designed by one of the characters, infringed the “FUBU” trademark. The film briefly mentions the fictional BUFU line three times, in circumstances that make it clear that the film is poking fun at the somewhat lofty image that the owners of the FUBU mark are trying to portray.

While not set out in any statute, parody of a trademark is a form of “fair use,” a defense to an alleged infringement. Using a test that applies in this judicial district, the court balanced the rights of the trademark owners not to have their rights infringed against the First Amendment rights of the filmmakers to lampoon and criticize a mark. After weighing these competing rights, the court in its May 16, 2006, decision granted summary judgment to Universal – and in his own display of parody, the judge characterized the plaintiffs’ infringement claim as “UFUB,” or “Utterly Frivolous Under Biopsy.”

In reaching its decision, the court determined that the primary intent of the filmmakers was expression, not commercial exploitation of the FUBU mark, holding that this intent renders the “risk of consumer confusion … at its lowest.” In light of this intent, the court stated that Universal, as a parodist, was “not trading on the good will of the trademark owner to market its own goods.” “Rather,” the court continued, “the parodist’s sole purpose for using the mark [was] the parody itself.”

The court continued to balance the rights of the parties to the case, noting that the plaintiffs’ “FUBU” mark appeared nowhere in the film, leaving the plaintiffs without any claim that the FUBU mark was “used in a manner that was injurious to the mark and to its reputation and good will.” In addition, the court held that whether the parody is lewd or offensive, or whether or not anyone can appreciate the “comedic value” of the parody, is irrelevant in determining whether the parodist’s parody should be afforded First Amendment protection.

Finally, the court held that, under the applicable precedent, the likelihood of consumer confusion was minimal. The court reached this conclusion by considering (i) the strength of the plaintiffs’ mark, (ii) the degree of similarity between the actual and the parody marks, (iii) the proximity of the parties’ products in the marketplace, (iv) the likelihood that the plaintiffs would “bridge the gap” between the products, (v) the degree of actual consumer confusion, (vi) the good or bad faith with which the defendants adopted the plaintiffs’ mark, (vii) the quality of defendants’ product and (viii) the sophistication of the relevant consumer group. The court concluded that under these factors, there was “no likelihood of confusion, and no tarnishing or dilution of the FUBU mark.”

The “BUFU” parody joins several others that courts in the Southern District of New York have held protected, including a Muppet character named “Spa’am,” the video game character “Donkey Kong,” and the “Spy Notes” parody of the “Cliff Notes” series.

For more information, e-mail Arthur E. Rosenberg at or call toll free, 1.888.688.8500.

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