First Amendment not a defence to infringement by innuendo, says court

United States of America
In Pfizer Inc v Sachs (September 8 2009), the US District Court for the Southern District of New York has granted Pfizer Inc's motion for summary judgment on its trademark infringement and dilution claims in a case involving the unauthorized use of the VIVA VIAGRA mark on a decommissioned missile.

On September 8 2008 Arye Sachs, self-proclaimed 'chief fun officer' of, an Internet-based advertising company, paraded a 20-foot decommissioned missile in New York City. Sachs adorned the missile with the VIVA VIAGRA mark and parked it on the doorstep of Pfizer. Pfizer manufactures the erectile dysfunction drug Viagra. In association with its product, Pfizer owns the registered trademark VIAGRA and the application for the mark VIVA VIAGRA. However, Pfizer did not react immediately to Sachs’s flagrant violation.
On September 9 2008, Pfizer received an email threatening a new appearance of Sachs’s missile - this time, however, featuring two female models 'riding' the missile while distributing condoms bearing the images of then US presidential candidates Barack Obama and John McCain. Pfizer immediately responded, demanding that Sachs cease use of the VIAGRA mark. Disregarding Pfizer’s resolve, Sachs continued to use the missile, appearing at an adult entertainment exposition and announcing a 12-city tour to promote’s services. As the court noted, if Sachs “intended this to be funny, Pfizer did not get the joke”. Three days after the announcement, Pfizer filed suit.
Sachs contended that his use of the VIVA VIAGRA mark was protected under the First Amendment. However, contrary to Sachs’s misconception, “[t]he First Amendment is not a licence to trammel on legally recognized rights in intellectual property” (see Dallas Cowboys Cheerleaders Inc v Scoreboard Posters Inc (600 F2d 1184 [1979])). In determining the applicability of the First Amendment as a defence to trademark infringement, “[t]he relevant issue is not the content of the defendant's message”, but “whether a defendant’s use is likely to cause confusion” (see SMJ Group Inc v 417 Lafayette Restaurant LLC (439 FSupp2d 281, 291[2006])). 
Ultimately, the district court found that Sachs’s missile confused consumers. The court stated that “even a sophisticated consumer, like Sachs, might conclude that [the] display was part of a Pfizer advertising campaign”. Moreover, Sachs’s association of VIVA VIAGRA with sexually explicit themes, “including advertising in front of adult entertainment establishments and threatening to distribute condoms with images of presidential candidates, may be inconsistent with the image Pfizer wishes to project” - thus potentially tarnishing Viagra’s reputation.
Sachs obviously intended to make a point with his comical commentary, but also sought to make a profit. His interest in free commercial speech was subordinated to the public interest in avoiding consumer confusion. Despite Sachs’s attempts to cloak his display in the protection of the First Amendment, the court’s rejection stands as a reminder that parody - rather than merely misguided humour - is required to avoid liability for trademark infringement.
James L Bikoff, David Heasley and Michael T Delaney, Silverberg Goldman & Bikoff LLP, Washington DC

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