“BUFU” parody of “FUBU” not trademark infringement

GTFM LLC and FUBU Records LLC sell clothing under the popular "FUBU" mark, which stands for "For Us By Us."  The clothing is targeted at the "multicultural youth generation," and the two companies strive to promote youth empowerment through creativity and entrepreneurship.

In 2001, Universal Studios Inc. released the film How High, a satirical "stoner comedy" about two African American youths who find themselves attending Harvard University.  The movie pokes fun at the FUBU marks and image through references to a fictional fashion line of clothing "BUFU," which stands for "By Us, Fuck You."

The plaintiffs sued Universal for trademark infringement and dilution under the Lanham Act and common law, arguing that FUBU’s valuable name and reputation were injured by crudely profane ridicule and by its association with the type of repugnant stereotype that FUBU sought to correct (GTFM Studios LLC v. Universal Studios, Inc., SDNY No. 02CV0506 5/15/06).

In granting defendants’ motion for summary judgment on the basis of no likelihood of confusion, the court reasoned:

1.  "BUFU" was used as a parody, which is entitled to full protection under the First Amendment and pursuant to the substantial body of case law establishing "safe harbors" for that form of comical expression;

2.  in trademark infringement cases, parodies are protected where the mark is being used to lampoon or comment upon the trademark owner or the mark itself, in which expression, and not commercial exploitation of another’s trademark is the primary intent, and in which there is a need to evoke the original work being parodied;

3.  a parodist is not does not trade on the goodwill of the trademark owner to market its own goods; rather, the parodist’s sole purpose for using the mark is the parody itself, and precisely for that reason, the risk of consumer confusion is at its lowest; and

4.  defendants were not competing with plaintiffs by attempting to sell products under the name "BUFU."