Dr. Seuss Trademark Claims Against Parody Book Title Dismissed

On May 21, 2018, the U.S. District Court for the Southern District of California granted a Motion for Judgment on the Pleadings filed by the creators of a Dr. Seuss-Star Trek mash-up parody book entitled “Oh, the Places You’ll Boldly Go!” (the “Boldly” book) against trademark infringement claims brought by Dr. Seuss Enterprises LP (the owner of the intellectual property rights associated with the Dr. Seuss books).  See Dr. Seuss Enterprises, L.P. v. ComicMix LLC et al, Case No. 16-cv-02779 (S.D. Cal.) (decision here).

Previously, Defendants argued that Plaintiff’s trademark infringement claims should be dismissed because Defendants’ title choice was protected by the First Amendment under the limiting construction provided for in the landmark case Rogers v. Grimaldi, 75 F.2d. 994 (2^nd Cir. 1989):

Under the Rogers two-prong test, the title of an expressive work does not violate the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Mattel Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) (internal quotation marks omitted) (quoting Rogers, 875 F.2d at 999). This test “insulates from restriction titles with at least minimal artistic relevance that are ambiguous or only implicitly misleading but leaves vulnerable to claims of deception titles that are explicitly misleading as to source or content, or that have no artistic relevance at all.” Rogers, 875 F.2d at 1000.

Defendants had argued that there is nothing misleading about its “Boldly” book title and that the use of the title was directly relevant to the underlying creative work.  Plaintiff focused its opposition on a specific portion of the Rogers decision – footnote 5 – to argue that this case was different.  That footnote 5 stated that the outlined “limiting construction would not apply to misleading titles that are confusingly similar to other titles. The public interest in sparing consumers this type of confusion outweighs the slight public interest in permitting authors to use such titles.” Rogers, 875 F.2d at 999 n.5.

In its order on the motion to dismiss, the Court found that Defendants’ invocation of Plaintiff’s trademarks was relevant to the book’s artistic purposes and that the title did not explicitly mislead as to its source or content.  However, with respect to the footnote exception, while the Ninth Circuit had not directly addressed such exception, because other district courts had determined that the exception is applicable, the Court decided that it would not dismiss Plaintiff’s trademark claims on First Amendment grounds pursuant to Rogers.

However, on November 16, 2017, the Ninth Circuit Court of Appeals issued its opinion in the case Twentieth Century Fox Television a Division of Twentieth Century Fox Film Corp. v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017).  This case involved a dispute between a record label named Empire Distribution and the companies behind the television show Empire (and its portrayal of a fictional music label named “Empire Enterprises”).  As expected, the Ninth Circuit invoked the Rogers test in deciding if the allegedly infringing use of EMPIRE as the title of an expressive work was protected by the First Amendment. 

Empire Distribution had argued that the limiting construction of the Rogers test did not apply because of footnote 5.  However, the Ninth Circuit rejected Empire’s argument for an exception based on footnote 5 – nothing that the footnote had only ever been cited once by an appellate court, and even then the Second Circuit had rejected its applicability. 875 F.3d at 1197 (citing Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490 (2d Cir. 1989)).  The Ninth Circuit stated “[t]he exception the footnote suggests may be ill-advised or unnecessary” because identifying confusingly similar titles “has the potential to duplicate either the likelihood-of-confusion test or the second prong of Rogers” and “conflicts with our precedents, which ‘dictate that we apply the Rogers test in [Lanham Act] § 43(a) cases involving expressive works.’” Id. (alternation in original) (quoting Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241–42 (9th Cir. 2013)).

With this revised interpretation of the Rogers test in hand, the Court then reevaluated Defendants’ use of the Boldly title under the First Amendment.  The Court reaffirmed its previous findings that Defendants’ invocation of Plaintiff’s alleged trademark is relevant to Boldly’s artistic purpose

As well-put by the court in CI Games S.A. v. Destination Films, No. 2:16-cv-5719-SVW-JC, 2016 WL 9185391 (C.D. Cal. Oct. 25, 2016): “It is clear to the Court that the artistic relevance prong of the Rogers test is meant to ensure that the title in question uses the potential trademark to express or describe its own content rather than merely to attract notoriety using a trademark in its title that is irrelevant to the underlying work.” Id. at *6.

As for the second prong – whether the alleged use explicitly misleads as to the source or content of the work – the question is “whether there was an ‘explicit indication,’ ‘overt claim,’ or ‘explicit misstatement’ that caused . . . consumer confusion.” Brown, 724 F.3d at 1245. (quoting Rogers, 875 F.2d at 1001).  The Court noted that not only did no such statement appear in Defendants’ work, but that Defendants actually went out of their way on the Boldly copyright page to inform readers that it was a work of parody that was not associated with or endorsed by Dr. Seuss.  While Plaintiff disputed the effectiveness of such disclaimers, “what cannot be disputed is that there is no statement in Boldly to the contrary, i.e., that the work is associated with or endorsed by Plaintiff.” (emphasis in original).  Moreover, Defendants’ use of similar text and design for their book title is not enough to be an “explicit misstatement.”  Without any clear evidence that the title of Boldly explicitly misleads as to the source of the work, the Court found that the second prong had been satisfied by Defendants. 

With both prongs of the Rogers test satisfied, the Court ruled that Defendants were entitled to a judgment on the pleadings as to Plaintiff’s trademark claims relating to the title of Boldly.  While Plaintiff had also pled trademark rights in the font and illustration style, because the Court had not determined if Plaintiff had protectable trademark rights in the font and illustration style of the Dr. Seuss book and only analyzed the title of the book (which it had previously determined was a protectable trademark when it analyzed Defendants’ Boldly book title), the Court’s dismissal of Plaintiff’s trademark claims was limited to just those relating to the title of Boldly. 

The latest Facebook trademark dispute - Lamebook

Facebook’s aggressive trademark enforcement efforts against any third party use of trademarks using “–book” (or “face-“) have been well documented in the media (most recently, Teachbook) (articles here, here, and here among many). A review of the Trademark Trial and Appeal Board filings by Facebook also documents the number of trademark applications involving the word “book” or “face” that Facebook has opposed.

Yesterday, the website Lamebook, which prides itself on finding and reposting amusing pictures and status updates (along with “other gems”) found on social networking websites like Facebook and Twitter, decided to be proactive and filed a declaratory judgment action in the face of a cease and desist letter from Facebook seeking a declaration of non-infringement and non-dilution. See Lamebook, LLC v. Facebook, Inc., Case No. 10-cv-00833 (W.D. Tex. November 4, 2010). Techcrunch reports on the lawsuit (and provides a copy of the complaint).

Lamebook’s position is that its use of the mark Lamebook is protectable parody. So naturally, Facebook’s position will be that its mark is famous (not an unreasonable position) and that this mark causes a likelihood of dilution (ask Louis Vuitton about the viability of this position). Of course, as described in this prior blog post regarding a different parody mark, the online nature of the services offered by both Facebook and Lamebook may make the case more suitable for a traditional likelihood of confusion analysis.

"South Butt" Parody Lawsuit Comes To A Quiet End

Pittsburgh Trademark Lawyer provides closure on the North Face v. South Butt trademark “parody” dispute (previously blogged here and here). And it looks like “Little Jimmy Winkelman” got the last laugh – with North Face apparently allowing him to continue selling his “South Butt” merchandise (which was made all the more valuable in large part due to the lawsuit filed by North Face).

Two Trademark Parody Cases For Your Amusement

In the first case, the companies behind the JOHNNIE WALKER brand of scotch whisky are suing the purveyors of JOHNNIE BARKER BLACK LAB flavored dog water (pictured above on the right) for infringement and dilution of the JOHNNIE WALKER BLACK LABEL trade dress (pictured above on the left) (see registrations here, here, and here). See Diageo Brands B.V. et al v. Vineyards et al., Case No. 09-cv-02002 (D. Conn. Dec. 9, 2009) (complaint here).

Anybody else out there really believe that Johnnie Walker is expanding its famous whisky brand into the highly lucrative canine beverage market? [For those who can’t get enough of these whacky trademark disputes involving parody pet items, check out prior blog posts here, here, and here].

The second trademark parody case involves a lawsuit by the company which owns the clothing brand THE NORTH FACE against a Missouri man named Jimmy Winkelmann and his related company over use of THE SOUTH BUTT in connection with certain clothing items. See North Face Apparel Corp., The v. Williams Pharmacy, Inc., et al., Case No. 09-cv-02029 (E.D. Mo. Dec. 10, 2009) (complaint here).

"The North Face" Jacket

"The South Butt" Jacket

The North Face opposed The South Butt’s attempt to register its mark. See The North Face Apparel Corp. v. The South Butt, LLC, Opposition No. 91191521 (T.T.A.B.). In response to cease and desist correspondence from The North Face, counsel for The South Butt stated that The South Butt was interested in having The North Face acquire The South Butt and its inventory for $1,000,000. {ed.--Hmm, has kind of a cybersquatting feel to it, doesn’t it}. The South Butt has since filed another trademark application and continues to sell its clothes through its website.

In this case, the attempt to take advantage of the trademarks and goodwill developed by The North Face seems clear enough that The South Butt is not likely to be able to get around a likelihood of confusion finding. And yet, to the extent that The South Butt attempts to defend its mark as a parody, this use of The South Butt on clothes does not strike me as such a clear cut example of a trademark parody which in turn ultimately undercuts the company’s parody argument (i.e., the parody in this instance is not as obvious as say the use of a famous scotch whisky brand label in connection with the sale of flavored dog water).

[Update: Daniel Corbett, who posts on the Pittsburgh Trademark Lawyer blog (a blog name that I can certainly relate to), has his own take on the The South Butt lawsuit here.]

HeinieSniff'n Dog Toy Maker Seeks Declaratory Relief

I previously blogged (link here) about the court decision ruling against VIP Products, LLC (“VIP”) over one of its “beer” bottle shaped squeaky dog toys. In that case, it was Anheuser-Busch, Inc. (“AB”) which sued VIP over its “Buttwiper” dog toy (pictured above) and the court granted AB’s motion for preliminary injunction based on likelihood of success on the merits of AB’s trademark infringement claims. See Anheuser-Busch, Inc. v. VIP Products LLC, Case No. 08-cv-0358, 2008 U.S. Dist. LEXIS 82258 (E.D. Mo. October 16, 2008).

Yesterday, VIP, possibly hoping for a better outcome in its home jurisdiction, opted to go on the offensive with respect to another one of its “beer” bottle shaped squeaky dog toys – in this case, the HeinieSniff'n (reminiscent of the famed Heineken bottle).

On April 21, 2009, VIP filed a declaratory judgment action against Heineken USA Incorporated and Heineken Brouwerijen B.V. (together “Heineken”). See VIP Products, LLC v. Heineken USA Incorporated et al, Case No. 09-cv-00842 (D. Ariz.) A copy of the complaint can be downloaded here.

According to the complaint, on April 17, 2009, attorneys for Heineken contacted one of VIP's customers (Scalawags of Kennebunkport, Maine) selling the HeinieSniff'n dog toy claiming that the dog toy infringed and diluted Heineken’s trademarks and trade dress and demanding that Scalawags cease and desist from selling the toy and remove all pictures of the toy from the company’s website.

VIP seeks a declaration that VIP’s HeinieSniff’n dog toy does not infringe or dilute any trademark or trade dress rights owned by Heineken.

Partial Victory for The Naked Cowboy in lawsuit over M&M cartoon ad

I’m a few days late on the district court decision (news reports here, here, and here) by Judge Denny Chin of the U.S. District Court for the Southern District of New York dismissing in part the lawsuit filed by Robert Burck (a/k/a “The Naked Cowboy”) against Mars Incorporated, the maker of M&Ms candies, over an M&M ad featuring a cartoon M&M guitar-playing street performer wearing a cowboy hat, boots, and underwear – all reminiscent of Burck’s alter ego. See Burck v. Mars, Incorporated et al, Case No. 08 Civ. 01330 (S.D.N.Y. June 23, 2008); see also my previous posting on the filing of Burck’s complaint here.

The court dismissed Burck’s state law right of privacy claim (i.e. right of publicity claim) on the basis that the M&M Cowboy character depicted in M&M’s ads were merely personifications that do not fall within the literal meaning of "portrait" or "picture" of a person as required by New York’s right of privacy statutes (N.Y. Civ. Rights Law § 50 and 51) which protect against the "nonconsensual commercial appropriations of the name, portrait or picture of a living person”:

Here, there was no attempt to create a portrait or picture of Burck himself. Rather, the purportedly infringing images were M&M characters wearing Burck's signature outfit. The images were not portraits or pictures of Burck as The Naked Cowboy, but of M&Ms dressed as The Naked Cowboy. Thus, they do not violate sections 50 and 51, and accordingly, Burck's right of privacy claim is dismissed.

However, the judge denied Mars’ motion to dismiss Burck’s “false endorsement” claim under Section 43(a) of the Lanham Act because consumers may mistakenly believe that The Naked Cowboy himself endorsed the copying of his "trademarked likeness" because the M&M Cowboy characters appear in a commercial setting (i.e., on the video billboard and inside the M&M World store).

The court added that the issue of whether M&M’s ads would be viewed as parodies, and thereby negating any likelihood of confusion or constitute a First Amendment fair use affirmative defense, raises factual questions that are inappropriate for deciding on a motion to dismiss.

I think Ron Coleman’s post on the decision on his Likelihood of Confusion® blog summarizes the situation most appropriately:

This case will settle, in all probability. It is hard to understand, however, how any rational fact finder could consider this use of the “concept” of the Naked Cowboy, and what he does, to cause likelihood of confusion here, as opposed to merely alluding to it, having fun with it — an homage. Again, we ask: Is a mere reference to a cultural phenomenon likely to make the average viewer think that phenomenon is the origin, sponsors, or “approver” of the referencer?

Asked another way -- doesn't anybody have a sense of humor anymore? There was a time when this type of “homage” would have been appreciated by the referencee because it served to reinforce that person's pop culture stature.

Car Sticker Parody of famous INTEL INSIDE logo

Here is my pick for favorite trademark parody of the year (so far, anyway). I spotted it on the back of car today and it made me laugh (and definitely made me think of Intel’s famous INTEL INSIDE trademark – although for the record I was not confused by it).

For those of you who may be unfamiliar with the above slang term preceding INSIDE, I direct you to the Urban Dictionary for a proper explanation . . . or you could just do a Google search of the term, but make sure the kids aren’t around.

Unfortunately, I was unable to see the occupant of the car in order determine if the mark as applied in this instance was arbitrary and fanciful, suggestive, or merely descriptive.

California Milk Processor Board Threatens PETA with trademark infringement over "Got Pus?"

After years of allowing numerous parodies (and even some similar third party trademark registrations) of its famous "Got Milk?" trademark, the California Milk Processor Board ("CMPB") is threatening to sue People for the Ethical Treatment of Animals ("PETA") over its use of the phrase "Got pus? Milk does." on T-shirts, mugs, and other merchandise. See Associated Press article here.

In response to CMPB's cease and desist letter, PETA's lawyer wrote:

Your client cannot seriously contend that an appreciable number of consumers who see a T-shirt bearing the "Got Pus? Milk Does" slogan would be confused into thinking that your client is the source of the T-shirt, attempting to sell milk by letting the public know that when they drink milk they are also consuming pus.

So apparently, CMPB is ok with the myriad of "Got Milk?" ripoffs -- so long as you don't bash milk.

Got Trademarks?

Fourth Circuit Decision Puts Louis Vuitton's Trademark Infringement/Dilution Lawsuit in the Doghouse

I’m opting today to let other blogs relay the details of the Fourth Circuit’s decision in the Louis Vuitton trademark infringement and dilution lawsuit against Haute Diggity Dog over its Chewy Vuiton dog toys. See Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, No. 06-2267 (4th Cir. November 13, 2007). Click here for the decision.

The Filewrapper Blawg has a nice write-up (link here), but even they recognize the efforts of Rebecca Tushnet’s 43(B)log postings (link here).

Conclusions: 1) a good parody, even one that becomes a recognizable mark in itself, can be a defense against both trademark infringement and dilution; and 2) a mark’s strength can actually be a weakness in the face of a good parody.

Hallmark Files Motion to Dismiss Against Paris Hilton

On November 2, 2007, Hallmark Cards, Incorporated (“Hallmark”) filed its Rule 12(b)(6) Motion to Dismiss for failure to state a claim upon which relief can be granted against Paris Hilton’s right of publicity and trademark infringement lawsuit over a Hallmark greeting card that used her image and her registered trademark “That’s Hot” (the “Card”) (Vegas™Esq blogged here). A copy of the motion can be downloaded here (courtesy of pitch.com).

The filing gave news reporters today great fodder for witty headlines. See MSNBC (“Hallmark thinks Paris’ lawsuit is not hot”), the Post Chronicle (“Hallmark Cold To Paris Hilton Over "That's Hot" Lawsuit”), Entertainmentwise.com (“Hallmark To Paris Hilton: 'You're A Publicity Seeker!'”), and Glosslip.com (“Hallmark: When You Care Enough To Make Fun Of Paris Hilton”).

From the very first paragraph of Hallmark’s Memorandum of Points and Authorities (“Memo”), Hallmark comes out with guns blazing: “Paris Whitney Hilton (‘Hilton’) is a privileged, jet-setting heiress to the Hilton family fortune, the center-of-attention ‘celebutante’ at the most lavish parties and exclusive events, and a consummate self-promoter who, by her own admission, considers working ‘manual, low-paying jobs’ and serving the public to be her ‘private nightmare.’” Memo at 1.

Hallmark seeks to dismiss Hilton’s claims for misappropriation of her common law right of publicity, false designation of origin, and federal trademark infringement.

First Amendment Argument
Hallmark’s primary argument is that its greeting cards constitute expression protected by the First Amendment. Hallmark cites to Tenth Circuit’s decision in Cardtoons, L.C. v. Major League Baseball Players Assn., 95 F.3d 959 (10th Cir. 1996) which found parody baseball cards to be protected speech. Hallmark argues that its greeting cards are just as expressive if not more so than trading cards and that greeting cards have been recognized as “the embodiment of humor, praise, regret or some other message in a pictorial and literary arrangement.” Memo at 8. Hallmark characterizes the Card as “not only entertainment and parody, but also social commentary and criticism of Hilton’s lifestyle and belief system.” Id.

Right of Publicity Claim
With respect to Hilton’s common law right of publicity claim, Hallmark argues that its use of Paris Hilton’s name and likeness was not for a commercial purpose (i.e. advertising, endorsements, or commercials) as required to state a right of publicity claim, but rather expressive speech (citing Cardtoons).

Hallmark then goes through a long discussion regarding the “transformative use” test to “determine whether a work merely appropriates a celebrity’s economic value, and thus is not entitled to First Amendment protection, or has been transformed into a creative product that the First Amendment protects.” Winter v. DC Comics, 30 Cal. 4th 881, 888 (2003). In short, the use of a celebrity’s image is protected by the First Amendment and does not violate such celebrity’s right of publicity when the work using the image contains such transformative elements as parody, caricature, and other types of distortion as to create a new expression (in contrast to a literal depiction of such celebrity). Hallmark argues that the Card used Hilton’s image in a transformative way – placing an oversized photograph of Hilton over a cartoon body making her appear as a waitress (which Hilton apparently calls her own “private nightmare” in her Amended Complaint) with a dialogue that uses her catchphrase in a literal sense in describing the patron’s food.

Finally, Hallmark cites the “public interest” as a defense to Hilton’s right of publicity claim citing Hilton’s notoriety and public figure status make her a fair target for Hallmark’s expression.

False Designation of Origin
With respect to Hilton’s allegations that Hallmark’s use of her name and likeness create a false designation of origin in violation of Section 43(a) of the Lanham Act (15 USC §1125(a)), Hallmark cites to several cases for the proposition that the First Amendment bars Hilton’s Lanham Act claim in much the same way it bars her right of publicity claim. See Kirby v. Sega of America, 144 Cal.App.4th 47 (Cal. App. 2nd 2006); ETW Corp. v. Jireh Publ’s, Inc., 332 F.3d 915 (6th Cir. 2003); Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001).

Hallmark also argues that the “nominative use doctrine” protects Hallmark’s use of Hilton’s name and likeness (the mark at issue in the Lanham Act claim) which were used to express commentary about and parody of Hilton. The doctrine (sometimes called the “nominative fair use defense”) allows a party to use or refer to another party’s trademark if the product or service in question cannot readily identifiable without use of the trademark, the use is only so much as is reasonably necessary to identify the product or service, and the use does nothing that would suggest sponsorship or endorsement by the trademark holder. See New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). Without commenting on the first two prongs of the test, Hallmark argues that its use of Hilton’s name and likeness, as a parody, did not suggest sponsorship or endorsement by Hilton.

Finally, Hallmark argues that the likelihood of confusion test is inappropriate for expressive works that incorporate a trademark. Hallmark cites the Ninth Circuit’s decision in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), where the court found that the use of the term “Barbie” in the “Barbie Girl” song was not trademark infringement and was protected by the First Amendment because the mark was relevant to the work and the use was not misleading as to sponsorship or endorsement. Hallmark asserts that in the case of Hilton’s “image and likeness,” Hallmark’s use in the Card was artistically relevant and not specifically misleading as to sponsorship or endorsement. Furthermore, even if the likelihood of confusion test were applied to Hallmark’s use of Hilton’s “image and likeness,” the parodic nature of the Card is so obvious that it would not cause any consumer to believe that Hilton created the Card or otherwise endorsed the Card.

Hallmark also adds that Hilton, as a public figure, fails to plead and prove with clear and convincing evidence that Hallmark’s use of her “image and likeness” was done with actual malice. Citing Hoffman, Hallmark argues that Hilton has not shown clear and convincing evidence that Hallmark intended to create a false impression in the mind of consumers that the image of Hilton on the Card was her or that Hilton was somehow endorsing the Card.

Federally Registered Trademark Infringement
With respect to Hilton’s allegations that Hallmark’s use of the word “That’s Hot” on the Card infringes Hilton’s registered trademark for THAT’S HOT, Hallmark reiterates most of the same arguments set forth to dispute Hilton’s false designation of origin claim. First, Hallmark’s Card is protected speech under the First Amendment, and Hilton’s allegation of infringement of the “That’s Hot” trademark is barred. Second, the use of the words “That’s Hot” is protected by the nominative use doctrine – such use was for parody and not to designate any goods or services or to serve as an indicator of source, sponsorship, or affiliation. Third, the likelihood of confusion test should not apply because the use of “That’s Hot” on the Card was artistically relevant to the Card and was not misleading as to suggest that the Card was sponsored or endorsed by Hilton. And even if such test were applicable, the obvious parodic nature of the Card would not cause any consumer to believe that Hilton created the Card or otherwise endorsed the Card.

Finally, Hallmark adds that Hilton’s registration for THAT’S HOT does not cover greeting cards. When Hilton originally filed her Section 1(b) intent-to-use application, it included among various goods and services “paper goods” and “printed materials” (in Class 16). However, on September 9, 2005, in response to the USPTO’s office action dividing her goods and services into several different classes, Hilton chose to delete the Class 16 goods and proceeded to prosecute the application for various clothing items in Class 25, and which was the scope of the application when it ultimately registered on February 13, 2007.

Summary
Hallmark summarizes its argument against Hilton very well early on in the Memo: “Hallmark’s Card parodies Hilton, her silver-spoon upbringing, her lavish lifestyle and her oft-repeated, vapid use of the catchphrase ‘that’s hot.’ Like the countless other parodies, comic strips and editorials that have taken aim at this self-described ‘cultural icon’ of society, the Card is fully protected speech under the United States and California Constitutions.” Memo at 2.

I should add that the Memo is full of interesting descriptions and characterizations of Hilton and her notoriety that could only come from a lawyer. My favorite -- “Hilton indisputably attracts vast amounts of attention and publicity – much of it as a result of her own efforts and actions. Seemingly every aspect of her life is fodder for the press and for water cooler conversation – form her television appearances, to the lavish lifestyle she leads, to her party hopping, to her romances and sexual escapades (whether videotaped or not), to her high fashion clothing, to her idioms, to her incarceration (and controversial early release) and to various other legal issues – including even the filing of this lawsuit.” Memo at 13-14

Now that’s hot!

Jesse James’s Cogwheel Logo – Trademark Infringement or Parody?

The Smoking Gun® reported the other day (link here) about a trademark infringement lawsuit filed by a U.S. labor organization against Jesse James, the head of the West Coast Choppers motorcycle empire (or Mr. Sandra Bullock, as he may be better known to some people), for using a logo confusingly similar to that used by the union.

On October 4, 2007, the Sheet Metal Workers International Association (the “Union”) filed a trademark infringement complaint in the U.S. District Court for the District of Columbia against West Coast Choppers, Inc., Vanilla Gorilla, L.P., Jesse Gregory James, Meadwestvaco Corporation, and Wal-mart Stores, Inc.

At issue is the Union’s distinctive cogwheel logo with intersecting hammer, scissors, and poker.

The Union registered the logo as a trademark (Reg. 718,265) for its monthly publication titled "Sheet Metal Workers' Journal." The Union also registered the logo as a collective membership mark indicating membership in the Union. (Reg. 718,364). Furthermore, the Union incorporated the logo into a union label, which the Union registered as a certification marks. See Reg. 1,268,822, certifying that the goods (sheet metal, copper, lead, aluminum, and other common metals) are made by building trades journeyman and apprentice members of the Union; and Reg. 1,366,048 certifying that various products or component of a finished product were manufactured by members of the Union.

The logo used by Jesse James (pictured above) has the same cogwheel look and even features the identical tools as in the Union’s registered mark. The only differences are that Jesse James decided to replace the Union’s name on the top and bottom part of the wheel with “Jesse James Union” and the slogan “Less Talking More Working.” Jesse James’ logo also replaces the Union’s founding date (January 25, 1888) with the acronym "FTW” (“F**k the World”) and James’ year of birth (1969).

The Union asks for an injunction to stop James from using this colorable imitation of the Union’s logo, the destruction of all calendars and other materials bearing such logo, an accounting of profits, treble damages, and costs and attorney’s fees.

While the fame of the Union’s logo and the blatantness of Jesse James’ copy of its logo would seem to favor the Union, Jesse James may have one possible defense to the Union’s claim of trademark infringement – parody.

One reason that parody is a defense to trademark infringement is because with true parody, there is no likelihood of confusion. If the parody is successful, it will evoke humor and thought in the viewer’s mind, but will be recognized as a parody of the original trademark and not as a source identifier of goods or services that the public would confuse with the original trademark. See Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997) (a true parody will be so obvious that a clear distinction is preserved between the source of the target and the source of the parody); Mutual of Omaha Insurance Co. v. Novak, 648 F. Supp. 905 (D. Neb. 1986), aff’d, 836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988). If the parody does not go far enough to distinguish itself and to create a clear distinction that it is not the original, then arguably, the parody is not very good and will create a likelihood of confusion.

Jesse James’ logo does have some elements of classic parody. A famous trademark (the Union’s logo has been in use since 1924). The logo uses a portion of the famous trademark so that it brings to mind the original trademark (the cogwheel and work tools in James’ logo are identical to the Union’s logo). The issue is whether his logo distorts the Union’s famous trademark enough so that a member of the public would clearly distinguish it as a parody of the original.

The only distortions consist of James’ own name and slogan in his logo along with his own birth year and the acronym FTW. Not a very dramatic distortion, and certainly not evoking any humor or political statement (unless the “Less Talking More Working" is a commentary on the laziness of the Union's workers).

Another consideration is the extent to which the parody is being used in a commercial context as opposed to a non-commercial context. The complaint is not clear about what type of goods on which the James logo appears, other than calendars, but it does appear as if James is using his logo more in a commercial context, and not just as a parody of the Union’s logo.

In a case similar to this case involving the Hard Rock Cafe logo, the court rejected a parody defense of the maker of t-shirts emblazoned with a logo resembling the Hard Rock Cafe logo except that it read “Hard Rain Café.” See Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc., 776 F.Supp. 1454, 1462 (W.D. Wash. 1991) (parody is no defense where the purpose of the similarity is to capitalize on a famous mark’s popularity for the defendant’s own commercial use).

While parody may be a defense that James can assert, its chances of success are slim given the lack of any obvious commentary or social statement made by James’ logo. His imitation of the Union’s logo seems more likely used to get attention (and sell goods), and not to make a social commentary about the Union.

As for Meadwestvaco and Wal-Mart's role in all this, Meadwestvaco probably printed the calendars at issue and Wal-Mart probably sold some of these calendars in their stores; however, this is just speculation since the complaint is not exactly clear about their roles in the trademark infringement.