Saturday 08/20/2011 by jackl

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.


Comments

, comment by PiNT23
PiNT23 I'll never buy a Firestone / bridgestone anything. Good work lawyers!
, comment by tmwsiy
tmwsiy @PiNT23 said:
I'll never buy a Firestone / bridgestone anything. Good work lawyers!
I don't fault a company at all for protecting their marks. I'd wouldn't be surprised if John Deere was next in slapping Waldo with papers. You simply shouldn't purloin others' designs as your own and expect to use them commercially. Slippery slope, but if they let this slide, pretty soon they lose their marks. It is incumbent on a mark owner to protect it. That's part of the law. Sucks perhaps but they are not being dicks. And neither is Phish by protecting their own trademarks. Big difference between GD goods and Phish goods... Phish has been very careful with their (lack of) licensing and that is their decision and nothing wrong with it.
, comment by MyFellowPrisoners
MyFellowPrisoners @tmwsiy said:
@PiNT23 said:
I'll never buy a Firestone / bridgestone anything. Good work lawyers!
I don't fault a company at all for protecting their marks. I'd wouldn't be surprised if John Deere was next in slapping Waldo with papers. You simply shouldn't purloin others' designs as your own and expect to use them commercially. Slippery slope, but if they let this slide, pretty soon they lose their marks. It is incumbent on a mark owner to protect it. That's part of the law. Sucks perhaps but they are not being dicks. And neither is Phish by protecting their own trademarks. Big difference between GD goods and Phish goods... Phish has been very careful with their (lack of) licensing and that is their decision and nothing wrong with it.
, comment by MyFellowPrisoners
MyFellowPrisoners Actually, Pint, parodies of registered trademarks/names, service marks/names, etc. are generally deemed by courts to be NON-infringing of mark/name being parodied. f course, large corps often sue for leverage anyway, and usually the parody maker goes away. But when they can and do fight back, often times the parody will prevail as non-infringing.

So, I respectfully disagree with your assertion here.
, comment by jackl
jackl @MyFellowPrisoners

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.
, comment by tmwsiy
tmwsiy here's an interesting one I saw in a couple of days ago.
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.

Image
, comment by spaced
spaced One thing to keep in mind here is the fact that even if Firestone might ultimately lose here, it's expensive to litigate these issues, especially if you bring in complicated defenses like parody, etc. The question for this Waldo guy is whether it's worth it to spend the time and money just to sell some t-shirts (obviously depends on just how much he's actually making from this little enterprise). Obviously, he's shown he's willing to fight before, and perhaps principle comes into play a bit here, but this is ultimately going to have to be a business decision for him.
, comment by spaced
spaced @tmwsiy said:

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.
Don't be so sure. I'm no trademark law expert by any means, but I can spot at least a few relevant differences here. Firestone apparently sells clothing, increasing the likelihood of consumer confusion between the two products. I'm pretty sure that DC comics hasn't opened a line of vacuum cleaner or sewing shops, nor would any consumer think they had.

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.
, comment by HotPale
HotPale They are just mad cuz their company sucks monkey balls...They overcharge, try to get people to make unnecessary repairs to their vehicles and they didn't write First Tube, arguably one of the greatest instrumentals of all time, hence, I say it all boils down to jealousy!
, comment by antipop20
antipop20 Is there such a problem without an actual logo involved? All I see is the same font being used which makes me question if that has been trademarked as their own. If not, I don't see enough of an infringement here to sue over. If that is their font, I'm not sure how to get out of this lawsuit. Any thoughts?
, comment by jackl
jackl @antipop20 said:
Is there such a problem without an actual logo involved? All I see is the same font being used which makes me question if that has been trademarked as their own. If not, I don't see enough of an infringement here to sue over. If that is their font, I'm not sure how to get out of this lawsuit. Any thoughts?
Yes. A trademark is the word or a graphic "mark", which includes a distinctive font like Firestone. It doesn't have to be a "logo". The word "Firestone" is rendered in a distinctive font and something in that same font like "Flintstone" might be confusingly similar to consumers. Or it could "dilute" the value of the Firestone trademark by allowing many "knockoffs" to use similar looking logos.

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.
, comment by MyFellowPrisoners
MyFellowPrisoners @spaced raises an excellent view from the practical perspective. I completely agree with him.

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.
, comment by PhanArt
PhanArt The author has removed all of the text from their comment
, comment by PhanArt
PhanArt The way i have understood the law via producing the PhanArt book and working with my lawyer is that a logo spoof/parody cannot be negative or cause a proven loss of money. This is a case waldo can and should win. Its not negative.in the least and how can firestone prove they lost money as a result of this being sold to a non-firestone demographic?
, comment by switz
switz In my experience with tshirt design, one can not be at fault for copy write infringement for a parody. The fact that Firestone is in the "clothing business" (which to be honest, I don't know if that can prove that having fan gear is the same is being in the business. You don't see firestone clothing stores around) makes it a little more difficult, but I don't believe Firestone will win this one. As PhanArt said they have to prove that this hat was detrimental to their business, which I think they will have a hard time corroborating.
, comment by jackl
jackl Think the last few posters are right that Firestone's case is less than clear cut. The Brand Geek blog articles linked above list the mixed factors going one way or the other and think it's a weak case, meaning that it will settle, probably by Waldo having to cease and desist with Firestone; it's not like the other companies he parodies will care unless he gets damages.

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.
, comment by AbePhroman
AbePhroman $$$$
The root of all evil.
, comment by Mega_Pupil
Mega_Pupil oooooooooooooooooooooooooooooooooooooooooooooooo
, comment by EsthersDoll
EsthersDoll I just did a google search to see if I could purchase an official Firestone tee shirt that they are so worried about and all I could find were some old promotional tee shirts that they most likely gave away many years ago that are now for sale on ebay and a real infringement on their trademark! - Someone is selling tee shirts with antique Firestone advertisements on the front of them and they appear to have no affiliation with Firestone. So if they are so worried about their trademark and image and market saturation, why don't they sue those people?

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.
, comment by bmrobin
bmrobin on a related note, i've always wondered why Fraternities and Sororities never got in trouble for trademark infringement before. i went to school in the south and i was never in a frat, but saw all the t-shirts that the greek life designed for their countless parties. every single one was a parody or ripoff of some popular jamband, clothing line, or what-have-you with the original slogans having some silly fraternity twist to them.

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"
-->
http://jamieannonline.com/imgs_greek/PiBetaPhiFishShirt.jpg

not that phish in particular would care or want to, just an example...
, comment by jackl
jackl Talking about the wider issue of artists "infringing" (borrowing, stealing, paying homage to) prior artists, a phan poster artist pointed out this wonderful Flickr slide show of dozens of posters which have been appropriated over the years, including this famous one:

Image

Slideshow here (use next and previous to scroll):

http://www.flickr.com/photos/24140210@N05/4602695602/in/set-72157607329841191/
, comment by RobesPierre
RobesPierre i think this is silly...

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.
, comment by EsthersDoll
EsthersDoll @RobesPierre said:
i think this is silly...

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.
I think a lot of corporations have trade-marked their fonts, including Disney. But I'm not sure that is what Firestone's claim is here. If it is, I don't think Waldo has a prayer.
, comment by jackl
jackl @RobesPierre

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.
 
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