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 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.