On Parody and Trademark Infringement

DC Comics characters The Green Lantern, Batman, and Superman

When a claim of parody is made to counter a trademark infringement complaint based on likelihood of confusion, it can be difficult to analyze whether the parody claim is a legitimate defense. Sometimes the existence of parody overcomes an infringement claim and sometimes it doesn't. The party making the claim of parody must show that true parody exists and that it is a non-confusing parody as opposed to a confusing parody.

Judge Dean D. Pregerson of the United States District Court for the Central District of California dove into this difference in his December 15, 2015 order denying a motion to dismiss in DC Comics v. Mad Engine, Inc.  The case involves the well-known Superman shield, which DC Comics has licensed to various clothing producers. You've probably seen a proud father (or thrift shopper) wearing a "Super Dad" t-shirt emblazoned with the Superman shield. Mad Engine began selling a similar shirt featuring a graphic which DC Comics thinks looks a lot like the Superman shield. Instead of the "S," Mad Engine filled its shield with the word "DAD." DC Comics sued, and Mad Engine moved to dismiss, arguing primarily that its shirt is a parody.

Judge Pregerson explained the Ninth Circuit's treatment of claims of parody by citing to Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc. In that case, the Court explained: 

In a traditional trademark infringement suit founded on the likelihood of confusion rationale, the claim of parody is not really a separate "defense" as such, but merely a way of phrasing the traditional response that customers are not likely to be confused as to the source, sponsorship or approval.  Some parodies will constitute an infringement, some will not. But the cry of 'parody!' does not magically fend off otherwise legitimate claims of trademark infringement or dilution. There are confusing parodies and non-confusing parodies. All they have in common is an attempt at humor through the use of someone else's trademark.  A non-infringing parody is merely amusing, not confusing.
To elaborate on the explanation from Seuss, Judge Pregerson provided three examples from three additional cases out of the 2nd, 4th, and 10th circuits. In one, the mark "Chewy Vuiton" was found to be a non-infringing parody of Louis Vuitton's luxury mark because it was non-confusing parody. Similarly, the mark "Lardashe" jeans was found to be a non-infringing, non-confusing parody of Jordache jeans. On the other hand, in a third case, a motorcycle repair shop not licensed by Harley Davidson but which used a logo substantially similar to the Harley Davidson shield and bars was found not to be a confusing parody if it was parody at all.
Applying the concepts from these decisions, Judge Pregerson rejected Mad Engine's parody argument as insufficient to dismiss DC Comics' complaint, because Mad Engine's t-shirt makes the same statement as a shirt licensed by DC Comics (i.e. there's a likelihood of confusion by consumers) and Mad Engine's t-shirt does not truly lampoon Superman. Thus, he found the Mad Engine shirt to be a humorous use to promote t-shirt sales rather than a parody of Superman.
Claims of parody can present a complicated analysis when introduced into an infringement suit. When considering using someone else's mark in a supposed parody of that mark, tread carefully and consider whether your use is true non-infringing parody.
Image by Phalinn Ooi from Kuala Lumpur, Malaysia.  Licensed under Creative Commons Attribution 2.0 Generic license.