ANNALS OF TRADEMARK LAW: FIRESTONE SUES WALDO FOR "FIRSTTUBE" PARODY
Most lot merch aficianados know about Sean "Waldo" Knight of Knighthood Ts, who fought a copyright infringement battle with Phish, Inc. back in the day over the "song title" parody T shirts where someone other than Phish's IP (such as the manufacturers of Tide detergent, say, for the popular "Glide" T shirts) was arguably being infringed.
Waldo won that battle, and it's been assumed by lot merchants and "phan artists" that most companies other than Phish won't bother with similar trademark parodies. Companies like New England's H.P. Hood dairies, for instance, might even be amused by and benefit from the windfall of publicity and goodwill from Phish fans, on the "all publicity is good publicity" theory.
But not so fast says Bridgestone Brands a/k/a Firestone, which recently sued Waldo and his wife Joanne for copyright infringement. Firestone is not amused because it considers itself in the clothing business (NASCAR style race car driver attire) as well as slinging tires. Firestone's suit seeks an injunction against the sale of the infringing items and triple Waldo's profits as provided for by copyright law.
More details from trademark law blogger Lara Pearson's Brand Geek[r] blog here.
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Phish.net
The Mockingbird Foundation
So, I respectfully disagree with your assertion here.
Trademark and copyright law are complicated, so I wanted to just stick to the facts in the blog piece, but FWIW, the lawyer whose blog I cited would tend to agree with you.
She's a Phish fan who coincidentally happened to write a couple of weeks ago on this topic in her discussion of infringement in stuff she saw at the Tahoe lot Shakedown here:
http://phi.sh/~qs3WYO
She concludes a "Tahoe" shirt in the form of the Phish logo is infringing, but "song title parody" and "fishman dress pattern" merch is not.
vaccuum and sewing machine store.
You think DC Comics would be cool with this? Doubt it.
Think they'd win if they took them to court? I would guarantee it.
No difference at all to the Firestone hat.
Second, seems to me there's more similarity between the two Firestone shirts, given that you could legitimately confuse them if you were just looking from afar, which doesn't seem to be the case here.
Basically, the main touchstone (as I understand it) is likelihood of consumer confusion, and there doesn't seem to be much in your example. As I said, trademark isn't my area of law, so I could be wrong about some of this, but the point is that it's a bit more complicated than you're making it out to be.
Another factor is whether the trademark is for the same class of goods. As long as HP Hood is sticking to dairy products, T shirts and hats with a Hood logo or patch mignt not be infringing.
The two blog articles mentioned above by Lara Pearson, especially the one going through the Tahoe shakedown merch is a good introduction to the ins and outs of trademarks. Her blog article on Nike beating up the Jesuits over "Just Jesu it" is also an eye opener.
Tmwsiy boiled this down to its very essence , an is absolutely correct that the ultimate test applied here to determine the result (if practical decisions do not moot the point) is whether the alleged infringement causes consumer confusion; He is also right (or whoever raised it) that whether the mark at issue purports to be competing in the same industry/trade, increasing possibility of consumer confusion. Thx peeps.
And triple damages on a few gross of hats at $6 gross margin pop -- embroidered ball caps like those on the Phish.net store are relatively expensive, even if you can get $25 for them -- isn't going to cover even Firestone's legal costs.
(Google "Righthaven" for an analogy to a company formed to go after copyright infringement by people who copy their newspaper articles and photos in web blogs, the Denver Post being one such newspaper).
Everyone posting should check out the blog articles on fan merch, especially parodies. Parodies are really more tricky than people think.
The safe harbor is that you actually have to poke fun at a mark, there has to be humor. Parody is defined as "A literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule".
To be a "parody", the use can't just nonsensically substitute an obscure (to the general public) song title or word for the original mark. And even then, it might still not be protected on that free speech basis, there may still be elements of infringement that will protect the rightsholder (see Lara's blog post on Jesuit priests getting slapped down by Nike's trademark attorneys on an ostensible parody: Just Jesu It.)
The safest harbor is IMO to realize that trademarks, unlike copyrights, are not "free floating" rights...trademarks are registered for specific classes of goods and services (like clothing, general merchandise items) and that there is an elaborate filing system where trademarks can be registered and searched. So lot merchants doing "parody" items should find companies who are less likely to respond with infringement with their lawyers.
The root of all evil.
I hope Firestone gets slapped with a fine for filing a frivolous lawsuit.
Firestone is a major American corporation and I hope they decide to drop this suit and start spending their time and resources doing more productive things to help our economy. Criminitely.
i used to see these and think, "man, somebody could probably sue the crap out of them for taking the Phish logo and making it into a frat logo"
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http://jamieannonline.com/imgs_greek/PiBetaPhiFishShirt.jpg
not that phish in particular would care or want to, just an example...
Slideshow here (use next and previous to scroll):
http://www.flickr.com/photos/24140210@N05/4602695602/in/set-72157607329841191/
how can firestone trade mark a font. Thats all it is. and how can jon deer trade mark a shape and color scheme?
plus this parody is not taking any money away from firestone. no one on lot is accidentally buying thinking it says firestone or thinking it represents firestone in anyway.
this is just another case of a large corporation using their size to intimidate a smaller company into settling in some way.
waldo needs to stand up to these d-bags like he did last time. he will win.
You don't trademark a font, per se. (Well, maybe you do if you are a type designer or foundry selling type fonts themselves, like Helvetica, but I digress).
You trademark a NAME or WORD that indicates a brand, like "Firestone" for tires, or "Zappos" for an online shoe store, or "Phish" for a musical act.
You can just trademark the word itself, OR, if the word is rendered in a unique way, or uses a graphic logo, or even specific colors, like the white and red scheme used by Target Stores or the yellow and red used by McDonalds, you can trademark THAT TOO, as a graphic mark, which is searchable on the US Patent and Trademark database website. The logos are searchable not only by the words, but by categories, such as logos that are abstractions of animals, like the Phish logo which looks like a fish.
NOW, where this is all going is that you can't trademark a "color" or "font" in a free floating manner, like trying to trademark the color yellow so only you can use it.
BUT, let's say you want to sell "Flintstone" tires, and happen to render the word "Flintstone" in the same font as "Firestone". That's probably infringement, because it's obvious that you want consumers to confuse your cheap knockoffs with Firestone tires.
Or you have a hamburger joint named "MacDonahues" and just happen to render that name in Helvetica font and use yellow, red and swooping circles in your store and packaging designs. Probably infringement, even if your name really is MacDonahue.
That's not trademarking a "font" or "color", but it is trademarking the "trade dress" which is associated with the registered mark.
Although the tests are more complicated, the key is whether the challenged use is similar enough to the registered trademark so that some consumers are confused and buy the knockoff thinking it's the real item, or a similar appearing item at a bargain price.