THE RIGHT TO POKE FUN:

ASSESSING PARODY AS A VIABLE DEFENSE IN PHILIPPINE TRADEMARK

INFRINGEMENT

By:

Jose Arturo C. De Castro1

I. INTRODUCTION

A. PARODY IN GENERAL.

B. U.S. CONSTITUTION AND STATUTE

B.1 PARODY’S CONSTITUTIONAL MOORINGS
B.2 PARODY AND THE LANHAM ACT

C. PARODY’S DEVELOPMENT IN THE TRADEMARK CONTEXT.

C.1 OPENING THE DOORS TO PARODY
C.2 EASING INTO EXISTENCE: THANKS TO TRADEMARK’S
COUSIN, COPYRIGHT
C.3 BREAKING AWAY: TELLING TRADEMARK APART FROM
COPYRIGHT
C.4 PARODY & LIKELIHOOD OF CONFUSION
C.4.1 DETERMINING LIKELIHOOD OF CONFUSION: FACTORS
C.5 AMERICAN CASE LAW

D. PHILIPPINE TRADEMARK LAW

D.1. HISTORICAL PERSPECTIVE
D.2 TRADEMARK INFRINGEMENT UNDER PHILIPPINE LAW.
D.3 THE PROBLEM WITH PARODY

II. RELEVANT SIMILARITIES WITH AMERICAN LAW

III. HOW PHILIPPINE COURTS TREAT AMERICAN CASE LAW

IV. CONCLUSION

1
J.D., Ateneo De Manila Law School (2003); LL.M., Berkeley Law (2014); JSD Candidate, Berkeley Law (2016)

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INTRODUCTION

In the United States, the role of parody in the context of trademark law has
become one of the more noteworthy topics in the field. It is indeed an issue that
generates quite an interest, presumably because it pits parody’s peculiar nature and
constitutional flavor with many a business entity’s jealously guarded rights to the
commercial exploitation of its trademarks—proprietary rights which are policed most
especially by companies that have assiduously built their trademark knowing its value in
ensuring public’s recognition of their trade. That, taken in conjunction with parody
readily lending itself to being one of the more favored weapons in the entire arsenal of
constitutional free speech against not just politics but also big business,2 provides for an
environment conducive to the filing of cases that serve as avenues for the courts to
develop a robust body of case law.

While it is arguable that such an environment likewise exists in the Philippines,

there is a dearth of definitive Philippine jurisprudence covering trademark infringement
cases in which aspects of free speech, more particularly parody, has been invoked as a
defense.3 As the title suggests, this paper is aimed at assessing the viability of parody as a
defense to trademark infringement in the Philippines, and the possibility of applying
American case law precedents in the Philippine setting.

First, this paper shall delve into parody as a concept in American law by looking
at its definition, as well as its constitutional and statutory moorings. Next, it will look
into the historical development of parody towards its current place in the American
trademark arena. Thereafter, this paper shall look into the Philippine trademark law and
its history for possible points of commonality with its American counterpart, with a view
to finding how American case laws on parody could be applied in the Philippines. In that
regard, possible legal hooks for parody in the Philippine constitutional and statutory
environment shall also be discussed. All the foregoing shall then be supplemented by
Philippine jurisprudence on the Philippine Supreme Court’s amenability to adopting
foreign case law for purposes of resolving legal controversies before it.

A. PARODY IN GENERAL.

Parody is “a writing in which the language and style of an author or work is

closely imitated for comic effect or in ridicule often with certain peculiarities greatly
heightened or exaggerated.” 4 It is a distinct literary form that achieves its ends by
imitating the expression and ideas of serious works in a satiric manner.5 In order to
develop an effective parody, the parodist must copy or appropriate various elements of

2
This is presumably due to its humorous, mocking, and comical nature.
3
Mary Jude Cantorias, FREE SPEECH AND TRADEMARK RIGHTS, 7:1 ALPR 106 (April 2005).
4
Kelly L. Baxter, COMMENT, TRADEMARK PARODY: HOW TO BALANCE THE LANHAM ACT WITH THE FIRST AMENDMENT,
44 Santa Clara L. Rev. 1179, 1189 (2004) (citing Webster’s 3rd New International Dictionary of the English Language
Unabridged 1643 (3rd Ed. 1993)), available at: http://digitalcommons.law.scu.edu/lawreview/vol44/iss4/10 last
accessed on April 20, 2014.
5
Charles C. Goetsch, PARODY AS FREE SPEECH—THE REPLACEMENT OF THE FAIR USE DOCTRINE BY
FIRST AMENDMENT PROTECTION, 3 W. New Eng. L. Rev. 39 (1980), available at
http://digitalcommons.law.wne.edu/lawreview/vol3/iss1/3 last accessed on April 20, 2014.

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the serious work.6 It is a form of comment or criticism that ridicules the original work by,
for example, mimicking its style.7 A parody can be a humorous way to voice a complaint
about something or mock it in some way. It is an expression in which the style of a work
is imitated for a humorous effect or to make a critical statement.8 An effective parody
“must convey two simultaneous—and contradictory—messages: that it is the original, but
also that it is not the original and is instead a parody.”9

B. U.S. CONSTITUTION AND STATUTE

B.1 PARODY’S CONSTITUTIONAL MOORINGS

Parody’s viability as a defense in many contexts,10 including that of copyright and

trademark, is rooted in the protection afforded by the 1st Amendment of the U.S.
Constitution which guarantees that “[C]ongress shall make no law…abridging the
freedom of speech.”11

Parody is a vital form of speech considered to be as valuable as political speech.12

It serves as a “humorous form of social commentary and literary criticism that dates back
as far as Greek antiquity.”13 This method of humor can be seen in magazines, on
television and in movies. Political cartoons in newspapers often employ parody or
similar types of humor as well, and this speech is highly protected by the 1st
Amendment.14 Denying parodists the opportunity to poke fun at symbols and names that
have become woven into the fabric of our daily life, would constitute a serious
curtailment of a protected form of expression.15 Parody has played a vital role throughout
history in providing humorous commentary on various topics.16 Parodists have varying
motivations for their artistic work; some hope to entertain, while others engage in social
commentary, and others may have duplicitous commercial aspirations.17

As an aspect of free speech, parody is one of the oldest forms of expression,18 and
its popularity continues undiminished until the present day.19

6
Id.
7
Id. at 40.
8
Keren Levy, TRADEMARK PARODY: A CONFLICT BETWEEN CONSTITUTIONAL AND INTELLECTUAL
PROPERTY INTERESTS, 69 Geo. Wash. L. Rev. 425, 435 (2001).
9
Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, Inc., 886 F.2d 490, 494 (2d Cir. 1989); PETA v.
Doughney, 263 F. 3d 359, 364 (4th Cir. 2001); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252,
260 (4th Cir. 2007).
10
See Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 52 (1988); New York Times Co. v. Sullivan, 376 U.S. 254
(1964); Philadelphia Newspapers, Inc. v. Hepps, 475 U.S. 767, 772 (1986).
11
U.S. CONST. amend. I.
12
http://www.unc.edu/~ptutone/internetlaw.htm last accessed on April 21, 2014.
13
Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769, 776 (8th Cir. 1994) citing L.L. Bean, Inc. v. Drake
Publishers, Inc., 811 F. 2d 26, 28 (1st Cir. 1987).
14
Supra note 12.
15
Bean, 811 F.2d at 34.
16
Supra note 12.
17
Id.
18
Goetsch, supra note 5, at 40.
19
Id.

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B.2 PARODY AND THE LANHAM ACT

Parody has no legislative statutory hook in the Lanham Act provisions on

trademark infringement.20 It is not part of statutory fair use defenses against trademark
infringement actions.21

A parody of a trademark is not an affirmative defense to an infringement charge

in the sense that laches or the statute of limitations is an affirmative defense. Rather,
‘parody’ is a way of arguing that there will be no trademark infringement because there
will be no likelihood of confusion.22 The parodist argues that the ordinary consumer will
not be deceived or confused: she will see that the defendant’s use is just a parody of the
plaintiff’s trademark or its owner. That is, the ordinary consumer will see that this is a
joke. She will appreciate that an entity separate and distinct from the trademark owner is
poking fun at a trademark or the policies of its owner.23 A defendant generally asserts a
parody defense to establish that consumers would not likely confuse the protected
product with the challenged product or communication. This argument may have force
beyond simply negating an element of the plaintiff's claim, however, because of the
solicitude accorded to parody under First Amendment case law.24

Thus, as far as trademark infringement is concerned, the parody defense exists

independently of statute, and draws its vibrance and vitality from the U.S. Constitution’s
1st Amendment guarantee. This is not to say, however, that Congress cannot by statute
expressly provide for parody as a defense in particular causes of action.25 In other words,

20
See Patrick Emerson, “I’M LITIGATIN’ IT”: INFRINGEMENT, DILUTION, AND PARODY UNDER THE LANHAM ACT, 9
NW.J.TECH.& INTELL. PROP. 477, 479-483 (2011), available at
http://scholarlycommons.law.northwestern.edu/njtip/vol9/iss7/6. (“A central distinction between dilution and
infringement actions, concerns the public policy underlying the actions. Dilution and infringement have been designed
to protect two different groups. Primarily, the infringement action serves to protect consumers. Infringement is an
action brought by a holder of a trademark; success in court provides immediate and obvious advantages for a producer
of goods. However, consumers as a group are the stakeholders of greatest public policy concern… producers are
permitted by law to seek a remedy for infringement at least in part because of the goodwill, or even mere consumer
recognition, attached to their product…By contrast, the dilution action works principally for producers’ advantage. The
dilution action does not directly pay dividends to consumers. Rather, the dilution action protects trademarks from other
producers. It does so even where there is no appreciable risk that a consumer would mistake the origin of the product
associated with the trademark.”)
N.B. Congress passed the Trademark Dilution Revision Act (“TDRA”, 2006), codifying parody as a defense
[§43(c)(A)(ii)] but only with regard to actions against dilution of protectable marks. Trademark dilution is an
altogether separate cause of action from trademark infringement.
21
See 15 U.S.C. § 1115(b)(4), which provides, as an affirmative defense, “the use of the name, term, or device charged
to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the
individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and
in good faith only to describe the goods or services of such party, or their geographic origin; xxx.”
22
6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 31:153 (4th ed. 2012).
23
Id.
24
See Laura E. Little, REGULATING FUNNY: HUMOR AND THE LAW, 94 Cornell L. Rev. 1235, 1263–64 (2009).
25
For example, when the Federal Congress amended the Lanham Act by enacting the Federal Trademark Dilution Act
(FTDA) in 1995, and the TDRA in 2006, it codified trademark dilution and expressly included parody as a part of the
statutory fair use defenses against it (“identifying and parodying, criticizing, or commenting upon the famous mark
owner or the goods or services of the famous mark owner”), see 15 U.S.C. § 43(c)(3)(A)–(A)(ii); See also Michael
Fuller, "FAIR USE" TRUMPS LIKELIHOOD OF CONFUSION IN TRADEMARK LAW THE SUPREME COURT RULES IN KP
PERMANENT V. LASTING IMPRESSION (2007), available at
http://www.bc.edu/bc_org/avp/law/st_org/iptf/articles/content/2006011001.html last accessed on April 22, 2014.

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while it may be desirable for Congress to expressly provide for parody as a statutory
defense in infringement cases, its failure to provide any express statutory provision did
not in any way affect the continued viability of parody as a defense against trademark
infringement primarily because parody is borne not out of statute but out of the
constitutional guarantee of free speech and expression.

C. PARODY’S DEVELOPMENT IN THE TRADEMARK CONTEXT

Due to parody’s imitative nature and form, it is quite understandable how

parodists often find themselves at odds with owners of certain forms of intellectual
property, such as copyrights and trademarks. Trademarks have been used in parodies to
ridicule or comically exaggerate a product, service or company. Without the use of the
exact trademark, or a close distortion of it, it is assumed that one would not recognize the
target of the criticism. Thus, the intent of the parody would not be realized.26

Trademark owners have a different view of the issue, of course. In general they
feel that, in establishing a trademark, they should have the security of knowing that
nobody else will profit from it. Even if someone else is not profiting, trademark owners
do not want parodies to affect their own ability to profit from an already established
mark.27 In such cases, the courts must decide when the use of a trademark within a
parody constitutes free expression and when trademark law overrides this freedom.28

C.1 OPENING THE DOORS TO PARODY

In the 1976 case of Virginia State Board of Pharmacy v. Virginia Citizens

Consumer Council, Inc.,29 the U.S. Supreme Court opened the doors of 1st Amendment
protection to commercial speech,30 thus paving the way for 1st Amendment protection of
parody in trademark infringement cases. Since then, defendants have raised the 1st
Amendment as part of their defenses against claims of unauthorized use of trademarks.31

C.2 EASING INTO EXISTENCE: THANKS TO TRADEMARK’S

COUSIN, COPYRIGHT

In the United States, the development of parody as a defense in trademark

infringement can be traced from jurisprudence that dealt with parody in the context of
copyright infringement.

In the 1994 case of Campbell v. Acuff-Rose Music, Inc.,32 the U.S. Supreme Court
held that a parodic use of a copyrighted work could qualify as a non-infringing fair use.

Trademark dilution, however, is a cause of action that is separate and distinct from trademark infringement. For the
distinctions between dilution and infringement, supra note 20.
26
Supra note 12.
27
Id.
28
Id.
29
Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748 (1976).
30
Baxter, supra note 4, at 1186-1187 (2004).
31
Id. The defense proved successful in cases of parodies that did not confuse consumers.
32
510 U.S. 569 (1994).

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Campbell was a decision in copyright law and its implications for trademark law were
uncertain.33 This notwithstanding, lower courts and commentators immediately sought to
apply and criticize the Campbell decision not just in the context of copyright, but also in
the trademark context as well.34 This transition in the application of parody from the
umbra of copyright to the penumbra of trademark is partly because copyright and
trademark claims often appear in the same dispute.35

C.3 BREAKING AWAY: TELLING TRADEMARK APART FROM

COPYRIGHT

While it may seem that copyright and trademark are directly related, they are
different in that trademark law has features that are foreign to copyright—features that
necessitate a distinct approach in dealing with parody in the trademark context.36

Trademarks differ widely from copyright in terms of purpose. Trademarks serve

mainly to identify the manufacturer or sponsor of a good or the provider of a service.
The purpose of trademark as a source identifier of goods and services has remained
constant throughout the development of trademark law.37 Copyright, on the other hand,
secures the authors’ monopoly in their “original works of authorship”38 for a limited
time.39 Moreover, even though both copyright and trademark laws similarly protect those
who have direct proprietary interests in their respective subject matter, i.e., the author as
regards his work of authorship and the owner as regards his trademark, there is a
discernible divergence with regard to the objectives and goals underlying their
protections. Copyright exists in order to promote the progress of science and the useful

33
David Simon, THE CONFUSION TRAP: RETHINKING PARODY IN TRADEMARK LAW, 88 Washington L. Rev. 1021, 1025;
See also Baxter, supra note 4 at 1179 (“the level of protection afforded to parodies of trademarks remains an unsolved
issue”).
34
See McCarthy, supra note 22 at § 31:156; Gary Meyers, TRADEMARK PARODY: LESSONS FROM THE COPYRIGHT
DECISION IN CAMPBELL V. ACUFF-ROSE MUSIC, INC., 59 Law & Contemp. Probs. 181, 204–10 (1996) (arguing that
Campbell’s alteration of the fair use factors is instructive to trademark law, and parody should similarly alter the
confusion factors in trademark law); Simon, supra note 33, at 1057-1066 (detailing how courts have cited and
incorporated Campbell into their trademark analyses); Aaron F. Jaroff, COMMENT, BIG BOI, BARBIE, DR. SEUSS, AND
THE KING: EXPANDING THE CONSTITUTIONAL PROTECTIONS FOR THE SATIRICAL USE OF FAMOUS TRADEMARKS, 57 AM.
U. L. REV. 641 (2008) (explaining how concepts from Campbell have been incorporated into trademark law). The
analogy between copyright and trademark parody analyses had been made prior to Campbell. See, i.e., Robert J.
Shaughnessy, NOTE, TRADEMARK PARODY: A FAIR USE AND FIRST AMENDMENT ANALYSIS, 72 Va. L. Rev. 1079 (1986)
(arguing that copyright fair uses and parody are relevant to parody analysis in trademark law).
35
Simon, supra note 33 at 1027-28 (Of the fifteen cases involving copyright and trademark dilution claims, courts
decided those claims identically 100% of the time. The same was true for all of the twenty- two cases involving
copyright and trademark infringement claims. Put another way, in every case in which a court found copyright
infringement, it also found trademark dilution and/or infringement. Likewise, in every case where the court found no
copyright infringement existed, it also found that no trademark dilution or confusion existed. This provides evidence
that copyright and trademark claims are related in parody cases).
36
Id. at 1028.
37
See New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 310 (9th Cir. 1992), citing William M. Landes &
Richard A. Posner, TRADEMARK LAW: AN ECONOMIC PERSPECTIVE, 30 J.L. & Econ. 265, 269 (1987):
In economic terms, trademarks reduce consumer search costs by informing people that trademarked products
come from the same source.
The benefit of the brand name is analogous to that of designating individuals by last as well as first names, so
that, instead of having to say “the Geoffrey who teaches constitutional law at the University of Chicago Law
School—not the one who teaches corporations,” you can say “Geoffrey Stone, not Geoffrey Miller.”
38
17 U.S.C. §102.
39
See U.S. CONST. art. I, § 8, cl. 8.

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arts.40 The underlying goal of trademark, on the other hand, is—and always has been—to
improve the quality of information in the marketplace and thereby reduce consumer
search costs. Trademarks are means by which consumers organize information about
products or services.41 Trademark protection is justified in that it protects consumers
from being misled and gives owners an incentive to create products of high quality.42 The
traditional notion therefore is that the consumers are the ultimate intended beneficiaries
of trademark protection.43 By preserving the integrity of these symbols, trademark law
benefits consumers in both a narrow sense—by protecting them from being deceived into
buying products they do not want—and a broad sense—by allowing consumers to rely on
source indicators generally and thereby reducing the costs of searching for products in the
market.44 Trademark infringement actions are therefore designed to protect against harm
both to consumers who may be misled into buying something they did not expect and to
trademark owners who are deprived of sales.45

These distinctions between copyright and trademark logically translate to

corollary differences in the treatment of parody as a defense in infringement cases. Case
law then progressed towards a distinct definition of parody in the trademark context. In
this regard, the 1st Circuit’s early definition of parody as “[A] simple form of
entertainment conveyed by juxtaposing the irreverent representation of the trademark
with the idealized image created by the mark’s owner,” gained acceptance.46

C.4 PARODY & LIKELIHOOD OF CONFUSION

In keeping with the traditional purpose of trademark, the Lanham Act prohibits
the unauthorized use of a reproduction, copy, or imitation of a trademark in a way that is
“likely to cause confusion.”47 It protects owners of registered trademarks from uses
“likely to cause confusion, or to cause mistake, or to deceive.”48 Confusion occurs when
consumers make an incorrect mental association between the involved commercial
products or their producers. 49 Trademark infringement cases thus primarily revolve

40
Id.
41
Mark McKenna, THE NORMATIVE FOUNDATIONS OF TRADEMARK LAW, 82 Notre Dame L. Rev. 1839, 1844 (2007).
42
Oscar C. Cisneros, ANNUAL REVIEW OF LAW AND TECHNOLOGY I. INTELLECTUAL PROPERTY; C. TRADEMARK BALLY
TOTAL FITNESS HOLDING CORP. V. FABER, 15 Berkeley Tech L.J. 229, 230 (2000).
43
Stacey L. Dogan & Mark A. Lemley, THE MERCHANDISING RIGHT: FRAGILE THEORY OR FAIT ACCOMPLI?, 54 Emory
L. J. 461, 467 (2005).
44
Supra note 41; See Landes & Posner, supra note 37 at166–68.
45
See Little, supra note 24, at 1262; Roger E. Schechter & John R. Thomas, INTELLECTUAL PROPERTY: THE LAW OF
COPYRIGHTS, PATENTS AND TRADEMARKS, § 29.1 (2003).
46
Bean, 811 F.2d at 34 cited subsequently in PETA, 263 F.3d at 366. (N.B. This is quite unlike copyright law which
subsumes parody in its statutory fair use defense in infringement cases, See Campbell v. Acuff-Rose Music, Inc., 510
U.S. 569, 579 (1994): “[W]e thus line up with the courts that have held that parody, like other comment or criticism,
may claim fair use under § 107.”)
47
15 U.S.C. §1125(a).
48
15 U.S.C. § 1114(1); See Anheuser-Busch, 28 F.3d at 773.
49
See San Francisco Arts & Athletics, Inc. v. United States Olympic Commission, 483 U.S. 522, 564 (1987), Justices
Brennan & Marshall dissenting.

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around the issue of “likelihood of confusion,”50 which involves the determination of

whether the allegedly infringing design or mark so resembles that of another that it is
likely to cause confusion among consumers as to whether the latter has sponsored,
endorsed, or is otherwise affiliated with.51 Confusion, not competition, is the touchstone
of trademark infringement.52 Explaining this, the 8th Circuit, in Anheuser-Busch, Inc. v.
Balducci Publications53 (hereinafter Anheuser-Busch), explained:

Many courts have applied, we believe correctly, an expansive

interpretation of likelihood of confusion, extending “protection against use
of [plaintiff's] mark on any product or service which would reasonably be
thought by the buying public to come from the same source, or thought to
be affiliated with, connected with, or sponsored by, the trademark
owner.”54 This approach seems consistent with congressional intent, as
evidenced by the express inclusion during the 1989 revision of the
Lanham Act of protection against confusion as to “origin, sponsorship, or
approval.55

Anheuser-Busch held that a parody that creates a likelihood of confusion may be

subject to a trademark infringement action. Moreover—

There is no simple, mechanical rule by which courts can determine when a

potentially confusing parody falls within the 1st Amendment's protective
reach. Thus, “in deciding the reach of the Lanham Act in any case where
an expressive work is alleged to infringe a trademark, it is appropriate to
weigh the public interest in free expression against the public interest in
avoiding consumer confusion.” (internal citations omitted).56

C.4.1 DETERMINING LIKELIHOOD OF CONFUSION: FACTORS

In their task of determining the existence of “likelihood of confusion,” the U.S.

courts have developed several factors, with different circuits adhering to their own
specific set of factors.57

50
Mutual of Omaha Insurance v. Novak, 836 F.2d 397, 398 (8th Cir. 1987); WSM, Inc. v. Hilton, 724 F.2d 1320 (8th
Cir. 1984); Vitek Systems v. Abbott Lab, 675 F. 2d 190 (8th Cir. 1982); SquirtCo v. Seven-Up Co., 628 F.2d 1086 (8th
Cir. 1980).
51
Novak, 836 F.2d at 398; Jordache Enterprise v. Hogg Wyld, 828 F.2d 1482, 1484 (10th Cir. 1987); Kentucky Fried
Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 388 (5th Cir. 1977)
52
Novak, 836 F.2d at 399; SquirtCo, 628 F.2d at 1091; Hanson v. Triangle Publications, Inc. 163 F.2d 74, 78 (8th Cir.
1947), cert. denied, 332 U.S. 855, 92 L. Ed. 424 (1948).
53
See Anheuser-Busch, 28 F.3d at 774.
54
Id. citing McCarthy, supra note 22, at 24–13; Novak, 836 F.2d at 398; Nike, Inc. v. “Just Did It” Enters., 6 F.3d
1225, 1228 (7th Cir.1993); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204–05 (2d
Cir.1979)
55
See Anheuser-Busch, 28 F.3d at 774 (citing 15 U.S.C. § 1125(a)).
56
Id. at 776; See Cliffs Notes, 886 F.2d at 494 (confusing parodies are “vulnerable under trademark law”); Bean, 811
F.2d at 32 (confusing parodies “implicate the legitimate commercial and consumer protection objectives of trademark
law”), cert. denied and appeal dismissed, 483 U.S. 1013 (1987).
57
For example, some circuits use what is referred to as the SquirtCo factors, see Novak, 836 F.2d at 399 citing
SquirtCo, 628 F.2d at 1091, while other circuits use the 8-Factor test in Polaroid Corp. v. Polarad Electronics Corp.,
287 F2.d 492, 495 (2nd Cir. 1961), see Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497 (2nd Cir.

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For purposes of this paper, however, these factors are consolidated for several
reasons: first, this paper aims to have as much of the U.S.’s robust parody-trademark
infringement jurisprudence applied in the Philippine setting; second, each set utilized by
one circuit often lists down some factors that are in common with the other sets used by
other circuits; third, not one of these factors is singly dispositive of the issue; fourth, the
list of factors is not exhaustive;58 fifth, all these factors appear to interrelated;59 and fifth,
all the factors tend towards one common aim—determining the likelihood of confusion.

The factors that were considered by the U.S. courts include the following:

(1) Strength of the trademark;

(2) Similarity between the plaintiff's and defendant's marks;
(3) Competitive proximity of the parties' products;
(4) Alleged infringer's intent to confuse the public;
(5) Evidence of any actual confusion;
(6) Degree of care reasonably expected of the plaintiff's potential customers;60
(7) Bridging the gap, i.e., if the trademark owner can show that it intends to enter
the market of the alleged infringer;
(8) Junior users good faith in adopting the mark;
(9) Quality of the respective goods; and
(10) Sophistication of relevant buyers.61

These factors are not a distinct test.62 These are not necessarily the only factors
that might be relevant in a particular case.63 The following factors have thus likewise
been held relevant to determining the likelihood of confusion between two marks:
(a) The degree of similarity between the designation and the trademark or trade name
in—
i. appearance;
ii. pronunciation of the words used;
iii. verbal translation of the pictures or designs involved;
iv. suggestion;
(b) the intent of the actor in adopting the designation;
(c) the relation in use and manner of marketing between the goods or services
marketed by the actor and those marketed by the other;
(d) the degree of care likely to be exercised by purchasers.64

1996). Other circuits have likewise identified a set of factors using the Restatement of Torts §729 (1938), see Jordache,
828 F. 2d at 1484.
57
Items 7 to 10 were taken from the 8-Factor Polaroid test. See Polaroid, 287 F2.d at 495.
58
See Jordache, 828 F. 2d at 1484.
59
Id.
60
Items 1 to 6 correspond to the SquirtCo factors, see SquirtCo, 628 F.2d at 1091; Novak, 836 F.2d at 399.
61
Items 7 to 10 were taken from the 8-Factor Polaroid test, see Polaroid, 287 F2.d at 495, cert.denied, 368 U.S. 820
(1961); See also Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 873-76 (2d Cir. 1986). The rest of
the 8-factor Polaroid Test are similar to items 1, 2, 3 & 5 of the SquirtCo factors. The 4th and 6th SquirtCo factors are
similar to Items 8 & 10 on the list.
62
See Anheuser-Busch, 28 F.3d at 774.
63
See Novak, 836 F.2d at 399.

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The factors discussed above are interrelated, and no one factor is dispositive. The
ultimate inquiry always is whether, under all the circumstances, there exists a likelihood
of confusion between the plaintiff’s trademark and the allegedly infringing use.65

C.5 AMERICAN CASE LAW

The foregoing factors have been utilized effectively by the various U.S. circuit
courts in dealing with trademark infringement cases involving parody.

In Jordache Enterprises v. Hogg Wyld, Ltd.,66 the owner of the famous Jordache
label sued the defendant for trademark infringement in connection with a product that the
latter marketed for larger women: blue jeans bearing a humorous smiling pig design and
the word "Lardashe." In its defense, the defendant claimed that its product parodied the
plaintiff’s famous Jordache label.67 The 10th Circuit ruled for the defendant, holding that
its mark had obvious differences with the plaintiff’s more subtle mark and that the
differences in the marks greatly outweighed any similarity between them. 68

In Cliffs Notes, Inc. v. Bantam Doubleday Dell,69 the defendant published Spy
Notes which parodied a condensation of urban novels depicting drug abuse in the
1980s.70 The product’s cover was almost identical with that of the plaintiff’s Cliffs Notes.
The 2nd Circuit ruled for the defendant, recognizing that a parody needs to resemble the
original to some extent and that the public interest in free expression outweighed any
slight risk of consumer confusion.71

In Lyons Partnership v. Giannoulas,72 the plaintiff owner of the Barney trademark

sued the defendant who had created The Famous Chicken sports mascot for trademark
infringement because the latter used (or abused) the Barney trademark in an act where
The Famous Chicken assaulted Barney.73 The 5th Circuit ruled for the defendant, holding
that its use of the Barney trademark was a clear parody and that consumers would
recognize the joke easily in view of strength of the Barney mark.74

In New York Stock Exchange, Inc. v. New York, New York Hotel, LLC,75 the
plaintiff New York Stock Exchange (NYSE) sued the defendant hotel outfit for using
modified versions of NYSE's marks in developing a Las Vegas casino.76 The 2nd Circuit

64
See Jordache, 828 F. 2d at 1484; Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 925 (10th Cir. 1986); Beer
Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 940 (10th Cir. 1983).
65
See Novak, 836 F.2d at 399.
66
Jordache, 828 F.2d 1482.
67
Id. at 1483.
68
Id. at 1485.
69
See Cliffs Notes, 86 F.2d 490.
70
Id. at 492.
71
Id. at 495.
72
Lyons Partnership v. Giannoulas, 179 F.3d 384 (5th Cir. 1999).
73
Id. at 387.
74
Id. at 388.
75
New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550 (2d Cir. 2002).
76
Id. at 553.

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ruled in favor of the defendants, concluding that the defendant’s use of the plaintiff’s
marks in its New York-themed Las Vegas casino was an "obvious pun" that would not
cause any consumer confusion.77

In Mattel v. MCA Records,78 the plaintiff Mattel, owner of the famous Barbie
mark, sued the defendant record company for producing and selling a song entitled
“Barbie Girl.”79 Finding that the song did not mislead or confuse consumers as to its
source and that it did not suggest any association with the plaintiff, the 9th Circuit ruled in
favor of the defendants.80

D. PHILIPPINE TRADEMARK LAW

D.1. HISTORICAL PERSPECTIVE

The history of trademark protection in the Philippines goes as far back as its
colonization by Spain. The Spanish Penal Code of 1870 was extended to the Philippines
by the Royal Decree promulgated by King Alfonso XII on September 4, 1884 and the
Royal Order issued by Queen Regent Maria Cristina on December 17, 1886 directing the
enforcement of the decree.81 Article 292 of the said code penalized the substitution of the
trademark or trade name of the manufacturer of an Article of commerce with the
trademark or trade name of another manufacturer.82 Thereafter, on October 26, 1888,
Queen Regent Maria Cristina promulgated a trademark law for the Philippines under
which protection was based on registration.83

On December 10, 1898, Spain ceded the Philippines to the United States.84 On
March 6, 1903, the Philippine Commission, by authority of the United States, enacted
Act No. 66685 to serve as the trademark law of the Philippines in lieu of the 1888 Order.
Aside from defining property rights in trademarks and trade names, Act No. 666 required
actual use as the basis for acquiring exclusive rights to trademarks and trade names, in
lieu of registration.86 On December 7, 1926, Act No. 332 amended Act No. 666 to
require registration as a condition for recovery of damages for infringement.87 On July 4,
1946, the United States ended its occupation of the Philippines.

77
Id. at 555.
78
296 F.3d 894 (9th Cir. 2002).
79
Id. at 899.
80
Id. at 902.
81
United States v. Tamparong, 31 Phil. 321, 323 (1915).
82
Jacinto D. Jimenez, INTELLECTUAL PROPERTY LAW IN THE PHILIPPINES 97 (2012), citing S. Viada, IV CODIGO PENAL
17 (5th Ed. Madrid: Librerias Editorial Reus, 1926).
83
Id.
84
Treaty of Paris, 30 Stat. 1754 (1898).
85
ACT NO. 666 entitled, “AN ACT DEFINING PROPERTY IN TRADE-MARKS AND IN TRADE-NAMES AND PROVIDING FOR THE
PROTECTION OF THE SAME, DEFINING UNFAIR COMPETITION AND PROVIDING REMEDIES AGAINST THE SAME, PROVIDING
REGISTRATION FOR TRADE-MARKS AND TRADE-NAMES, AND DEFINING THE EFFECT TO BE GIVEN TO REGISTRATION UNDER
THE SPANISH ROYAL DECREE OF EIGHTEEN HUNDRED AND EIGHTY-EIGHT RELATING TO THE REGISTRATION OF TRADE-MARKS
AND THE EFFECT TO BE GIVEN TO REGISTRATION UNDER THIS ACT”
86
See Jimenez, supra note 82.
87
Id.

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Interestingly enough, this period of American occupation of the Philippines

coincided more or less with the United States’ development of its own trademark statute.
After having its 1870 trademark statute struck down by the U.S. Supreme Court,88 the
U.S. Congress used its Commerce Clause authority and reenacted limited federal
trademark protection in the Act of March 3, 1881. The law was significantly modified in
the Act of February 20, 1905, and further amended in 1920.89 Finally, in July 6, 1946—
two days after emancipating the Philippines—the U.S. Congress passed the Trademark
Act of 1946, also known as the Lanham Act, which to this day continues in force in the
United States.90

On June 20, 1947, the Philippine Congress issued Republic Act No. 166,
repealing Act No. 666. With the U.S. Congress having at the time just recently passed
the Lanham Act in 1946,91 and with the recent Philippine ties to the United States, it was
no surprise that Republic Act No. 166 was patterned after the U.S. Trademark Act of
1946.92 By 1950, the Philippine Civil Code93 took effect, recognizing the ownership of
trademarks and trade names in their registered owners, subject to special laws.94 Act No.
166 was then amended on June 11, 195195 and on June 16, 1953.96 Finally, on January 1,
1998, the Philippine Congress passed Republic Act No. 8293, otherwise known as the
“Intellectual Property Code” of the Philippines.

D.2 TRADEMARK INFRINGEMENT UNDER PHILIPPINE LAW.

A side-by-side comparison of the trademark infringement provisions of Act No.

666, as amended,97 and Republic Act No. 8293,98 shows that, while there may have been
changes in some elements of infringement, the linchpin of “likelihood of confusion”
remains. This was confirmed by the Philippine Supreme Court in Prosource
International v. Horphag Management SA.99

In Prosource International, the respondent (Horphag) filed a complaint for

trademark infringement against the petitioner (Prosource) for the latter’s use of the mark
PCO-GENOLS which the former claimed to be confusingly similar to its trademark
PYCNOGENOL. Because Prosource used the questioned mark started in 1996 and
ended in June 2000, the Philippine Supreme Court found that the case should be decided

88
100 U.S. 82, 94 (1879).
89
See Robert P. Merges, Peter S. Menell & Mark A. Lemley, INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL
AGE 764 (6th Ed. 2012).
90
60 Stat. 427 (July 6, 1946).
91
Supra note 89.
92
See Jimenez, supra note 82, citing the EXPLANATORY NOTE OF HOUSE BILL 1157; In McDonald’s Corp. v. LC Big
Mak Burger, 437 SCRA 10, 32 (2004), the Philippine Supreme Court observed that Republic Act (hereinafter RA) 166
has been superseded by RA 8293, the Intellectual Property Code of the Philippines, which took effect on 1 January
1998. Section 22 is substantially identical with Section 16 of the United States' 1946 Trademark Act ("Lanham Act").
93
RA 386, available at http://www.gov.ph/downloads/1949/06jun/19490618-RA-0386-JPL.pdf.
94
Id. art. 520.
95
RA 638.
96
RA 853.
97
RA 666 § 22.
98
RA 8293 §155.
99
Prosource International v. Horphag Management SA, G.R. No. 180073, November 25, 2009, available at
http://sc.judiciary.gov.ph/jurisprudence/2009/november2009/180073.htm last accessed on May 7, 2014.

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by applying Republic Act No. 166 for the acts committed until December 31, 1997, and
Republic Act No. 8293 for those committed from January 1, 1998 until June 19, 2000. In
affirming the Regional Trial Court’s finding of infringement, the Court reiterated its
definition of what constituted a trademark—

A trademark is any distinctive word, name, symbol, emblem, sign, or

device, or any combination thereof, adopted and used by a manufacturer
or merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by others. Inarguably, a trademark deserves
protection.100

Thereafter, the Court cited Section 22 of Republic Act No. 166 and Section 155 of
Republic Act No. 8293 on trademark infringement, and laid down their respective
elements—

Section 22 of R.A. No. 166, as amended, and Section 155 of R.A. No.
8293 define what constitutes trademark infringement, as follows:

Sec. 22. Infringement, what constitutes. – Any person who

shall use, without the consent of the registrant, any
reproduction, counterfeit, copy or colorable imitation of
any registered mark or tradename in connection with the
sale, offering for sale, or advertising of any goods, business
or services on or in connection with which such use is
likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such
goods or services, or identity of such business; or
reproduce, counterfeit, copy of colorably imitate any such
mark or tradename and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods,
business, or services, shall be liable to a civil action by the
registrant for any or all of the remedies herein provided.

Sec. 155. Remedies; Infringement. – Any person who shall,

without the consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit,

copy, or colorable imitation of a registered mark or the
same container or a dominant feature thereof in connection
with the sale, offering for sale, distribution, advertising of
any goods or services including other preparatory steps
necessary to carry out the sale of any goods or services on

100
Id. (citing Philip Morris, Inc. v. Fortune Tobacco Corp., 493 SCRA 333, 345 (2006)).

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or in connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a

registered mark or a dominant feature thereof and apply
such reproduction, counterfeit, copy or colorable imitation
to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause
mistake, or to deceive, shall be liable in a civil action for
infringement by the registrant for the remedies hereinafter
set forth: Provided, That infringement takes place at the
moment any of the acts stated in Subsection 155.1 or this
subsection are committed regardless of whether there is
actual sale of goods or services using the infringing
material.

In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A,

9-A, and 20 thereof, the following constitute the elements of trademark
infringement:

(a) A trademark actually used in commerce in the

Philippines and registered in the principal register of the
Philippine Patent Office[;]

(b) [It] is used by another person in connection with the

sale, offering for sale, or advertising of any goods, business
or services or in connection with which such use is likely to
cause confusion or mistake or to deceive purchasers or
others as to the source or origin of such goods or services,
or identity of such business; or such trademark is
reproduced, counterfeited, copied or colorably imitated by
another person and such reproduction, counterfeit, copy or
colorable imitation is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended
to be used upon or in connection with such goods, business
or services as to likely cause confusion or mistake or to
deceive purchasers[;]

(c) [T]he trademark is used for identical or similar

goods[;] and

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(d) [S]uch act is done without the consent of the

trademark registrant or assignee.101

On the other hand, the elements of infringement under R.A. No. 8293 are
as follows:

(1) The trademark being infringed is registered in the

Intellectual Property Office; however, in infringement
of trade name, the same need not be registered;

(2) The trademark or trade name is reproduced,

counterfeited, copied, or colorably imitated by the
infringer;

(3) The infringing mark or trade name is used in

connection with the sale, offering for sale, or
advertising of any goods, business or services; or the
infringing mark or trade name is applied to labels,
signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in
connection with such goods, business or services;

(4) The use or application of the infringing mark or trade

name is likely to cause confusion or mistake or to
deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods
or services or the identity of such business; and

(5) It is without the consent of the trademark or trade

name owner or the assignee thereof.102

In the foregoing enumeration, it is the element of “likelihood of

confusion” that is the gravamen of trademark infringement. But
“likelihood of confusion” is a relative concept. The particular, and
sometimes peculiar, circumstances of each case are determinative of its
existence. Thus, in trademark infringement cases, precedents must be
evaluated in the light of each particular case.103

The Philippine Supreme Court then reiterated the two tests that it had developed
in determining the “likelihood of confusion,” namely, the Dominancy Test and the
Holistic or Totality Test—

101
Id.
102
Id. (citing Ruben E. Agpalo, THE LAW ON TRADEMARK, INFRINGEMENT AND UNFAIR COMPETITION 142-143 (2000).
103
Id.

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In determining similarity and likelihood of confusion, jurisprudence has

developed two tests: the Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent features of
the competing trademarks that might cause confusion and deception, thus
constituting infringement. If the competing trademark contains the main,
essential and dominant features of another, and confusion or deception is
likely to result, infringement takes place. Duplication or imitation is not
necessary; nor is it necessary that the infringing label should suggest an
effort to imitate. The question is whether the use of the marks involved is
likely to cause confusion or mistake in the mind of the public or to deceive
purchasers. Courts will consider more the aural and visual impressions
created by the marks in the public mind, giving little weight to factors like
prices, quality, sales outlets, and market segments.

In contrast, the Holistic Test entails a consideration of the entirety of the

marks as applied to the products, including the labels and packaging, in
determining confusing similarity. The discerning eye of the observer must
focus not only on the predominant words but also on the other features
appearing on both labels in order that the observer may draw his
conclusion whether one is confusingly similar to the other.104

D.3 THE PROBLEM WITH PARODY

Trademark infringement in the Philippine setting is more or less a neatly bundled

set of statutory rules, with the Philippine Supreme Court developing two distinct tests: (a)
Dominancy, which “focuses on the similarity of prevalent features of the competing
marks that might cause confusion and deception,” and (b) Holistic or Totality, which
“entails a consideration of the entirety of the marks as applied to the products.”105

The problem, however, with these tests for dealing generally with trademark
infringement is at once apparent—they seem ill-equipped to deal with parody and its
nature, complexed by the constitutional flavor that it brings. Focusing on the similarity
of prevalent features or the entirety of the mark hardly helps in the proper judicial
analysis of parody considering that the latter is an expression in which the style of a work
is imitated, albeit for a humorous effect or to make a critical statement;106 and that an
effective parody conveys the message that “it is the original” as part of the two
simultaneous messages that it communicates to the public.107 Elsewise stated, it is
essential that a parody should be able to conjure up the original; otherwise it would not be
a parody at all. In that regard, applying the statutory elements with rigidity to every
person’s parodic use of a trademark in commerce may very well result in unduly
burdening free speech.

104
Id.
105
Id.
106
Levy, supra note 8, at 435.
107
See Cliffs Notes, 886 F.2d at 494; PETA, 263 F. 3d at 364; Louis Vuitton, 507 F.3d at 260.

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The existing jurisprudential tests of dominancy and totality for general trademark
infringement in the Philippines would therefore need further refinement and guidance
when it comes to dealing with parody. It is in that instance that the Philippines can be
informed by American case law.

RELEVANT SIMILARITIES WITH AMERICAN LAW

As can be seen above, the evolution of trademark law in the Philippines is closely
connected with that of U.S. trademark law,108 mainly because the Philippines had a
history of being under American rule.109 Thus, granting that there are clear differences
between Philippine and U.S. trademark laws, 110 there are likewise unmistakable
similarities. First and foremost is that both jurisdictions accept that the primary purpose
of trademarks is to serve as source identifiers. Second is that, in both jurisdictions, the
gravamen and linchpin for trademark infringement in general is the “likelihood of
confusion” test.

One other notable similarity for purposes of this paper is that, while both
jurisdictions do not expressly provide for the express statutory exemption of parody in
trademark infringement cases, their respective constitutions clearly enshrined the same
constitutional right to free speech. Section 4 of the Bill of Rights (Art. III) of the
Philippine Constitution which provides that “[N]o law shall be passed abridging the
freedom of speech,” is an analogue adaptation of the U.S. Constitution’s 1st Amendment
which guarantees that “[C]ongress shall make no law…abridging the freedom of
speech.”111 As in the United States,112 the Constitution of the Philippines constitutes the
supreme law of the land.113

HOW PHILIPPINE COURTS TREAT AMERICAN CASE LAW

In Weems v. United States, it was held that provisions of the Philippine bill of
rights taken from the U.S. Constitution must have the same meaning. 114 Weems is
peculiar in that it was a Philippine case ultimately decided by the U.S. Supreme Court

108
Cantorias, supra note 3, at 107.
109
On December 10, 1898, at the end of the Spanish-American war, the United States and Spain signed the Treaty of
Paris in which Spain ceded the Philippine Archipelago to the United States. See 30 Stat. 1754, art. III; Maximo
Manguiat Kalaw, THE DEVELOPMENT OF PHILIPPINE POLITICS 430–445 (1927) available at
http://quod.lib.umich.edu/p/philamer/afj2233.0001.001/17?page=root;size=100;view=image last accessed on April 22,
2014.
110
For example, Philippine trademark law is formalistic in that trademark rights are acquired through valid registration,
see RA 8293 §221, and has abolished actual prior use in commerce in the Philippines as a condition for registration, see
Jimenez, supra note 82 at 119.
111
U.S. CONST. amend. I.
112
U.S. CONST. art. VI, cl. 2.
113
Philippine Civil Code, supra note 93, art. 7.
114
217 US 349, 350 (1910), holding that the Philippine Bill of Rights provision prohibiting cruel and unusual
punishments must be interpreted in the same way that the 8th Amendment of the U.S. Constitution has been construed.

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during the American occupation. It thus constitutes binding case law in both
jurisdictions.115

American case laws based upon statutory and constitutional provisions that have
been adopted in the Philippines have persuasive effect. When a statute has been adopted
from some other state or country and said statute has previously been construed by the
courts of such state or country, the statute is deemed to have been adopted with the
construction given. 116 Accordingly, the Philippine Supreme Court has often cited
American precedents in construing constitutional free speech cases, 117 including the
celebrated American case on parody, Hustler Magazine v. Falwell.118

In the field of trademarks, there are likewise Philippine Supreme Court cases that
utilized American case precedents. For example, in Philip Morris v. Fortune Tobacco,119
and Societe Des Produits Nestle, S.A. v. Court of Appeals,120 the Court cited Mr. Justice
Frankfurter in Mishawaka Mfg. Co. v. Kresge Co.121

The protection of trademarks is the law’s recognition of the psychological

function of symbols. If it is true that we live by symbols, it is no less true
that we purchase goods by them. A trademark is a merchandising short-
cut which induces a purchaser to select what he wants, or what he has
been led to believe what he wants. The owner of a mark exploits this
human propensity by making every effort to impregnate the atmosphere of
the market with the drawing power of a congenial symbol. Whatever the
means employed, the aim is the same - to convey through the mark, in the
minds of potential customers, the desirability of the commodity upon
which it appears. Once this is attained, the trade-mark owner has
something of value. If another poaches upon the commercial magnetism
of the symbol he has created, the owner can obtain legal redress.

CONCLUSION

In the Philippine trademark context, it is respectfully submitted that parody can be

a viable defense in trademark infringement cases.

Despite the lack of an express statutory exemption of parody in Republic Act No.
8293, parody in the Philippines exists as an aspect of constitutional free speech, which is
drawn from Section 4, Art.III of the Philippine Constitution itself. It can therefore subsist

115
The holding in Weems has since been utilized by the Philippine Supreme Court in later cases, see People v. Novio,
G.R. No. 139332, June 20, 2003.
116
See Prudential Guarantee and Assurance Inc. v. Trans-Asia Shipping Lines, Inc., G.R. No. 151890, 20 June 2006,
491 SCRA 411, 439; Constantino v. Asia Life Inc. Co., 87 Phil. 248, 251 [1950]; Gercio v. Sun Life Assurance Co. of
Canada, 48 Phil. 53, 59 [1925]; Cerezo v. Atlantic, Gulf & Pacific Co., 33 Phil. 425, 428-429 [1916]).
117
See MVRS Publication v. Islamic Da’Wah Council, G.R. No. 135306, January 28, 2003.
118
Id. citing Hustler, supra note 10.
119
G.R. No. 158589, June 27, 2006.
120
356 SCRA 207, 215 (2001).
121
316 U.S. 203 (1942).

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independently of the Philippine trademark law. This constitutional treatment of parody

has persuasive precedent in the way that the parody defense in American law has drawn
its vibrance and vitality not from the Lanham Act but from the U.S. Constitution’s 1st
Amendment guarantee. With both the Philippine and American constitutions providing
for an almost identical constitutional guarantee of free speech, there appears no obstacle
to concluding that the parody defense in the Philippine setting can be borne by the
constitutional guarantee of free speech from which it is an essential part, without need of
any express statutory provision recognizing it. There is therefore proper basis to
conclude that Parody in the Philippines enjoys the same degree of free-speech protection
as it does in the American jurisdiction.

Should a case arise regarding trademark infringement in the parody context, the
Philippine courts need not look at it as a blank slate. This is so even if the traditional
dominance and holistic lenses of current Philippine trademark jurisprudence appear
inadequate to address the matter, and the constitutional dimensions make it ill-advised to
just merely apply the rigid application of the statutory elements in Republic Act No.
8293. The Philippine courts can clearly look to American precedents for guidance
mainly because the Philippines and the U.S. provide for almost identical constitutional
hooks for parody.

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