DC Comics and Trademark Parody

A federal judge in the Central District of California denied a motion by a clothing wholesaler to dismiss a claim by DC Comics that the defendant’s “Superdad” t-shirt infringed DC’s “Superman” trademark.

DC Comics is, of course, a comic book publisher. Its intellectual property rights include those relating to the Superman character.

According to the complaint,

One of the indicia most strongly associated with Superman is the red and yellow five-sided shield that appears on Superman’s chest.

DC has registered a trademark for the shield design for products including “adults’ and children’s clothing, including t-shirts.”

DC has also licensed the shield trademark for use on t-shirts, including a “Super Dad” shirt.

Mad Engine

Defendant Mad Engine is a clothing wholesaler that sold a shirt with a five-sided yellow and red shield with the word “Dad” inside of it. When it learned about the shirt, DC sent Mad Engine a “cease and desist” letter.

According to the court:

Defendant failed to respond until June 19, 2015, because Defendant wanted the shirt to sell during the Father’s Day sales period.

When Mad Engine ignored a second cease-and-desist letter, DC filed suit.

Parody Defense

Mad Engine argued that:

Mad Engine’s DAD Image is an obvious parody of Superman and his Shield, commenting on the real-world futility and even pretentiousness of Superman and his Shield. Whereas Superman proudly bears the Shield on his chest as he flies around saving people in a fantasy world, “DAD” lacks any superpowers, but is a real-world hero to his kids. Superman wears a cape and uses superhuman strength to stop trains and catch airplanes, while your real-world DAD wears a t-shirt and sometimes helps do the dishes.

Amusing or Confusing?

According to the Ninth Circuit:

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.

Chewy Vuiton

For example, noted the court,

A parody pokes fun at the senior mark, like “Chewy Vuiton” dog toys parodying Louis Vuitton’s luxury mark, or “Lardashe” jeans parodying Jordache jeans.

In the present case, the court found that it was:

unclear from the briefing and the complaint if there is a true parody here, like in the Louis Vuitton and Jordache cases, or if there is instead a somewhat humorous use that confuses consumers as to the source of the product…

Bagzilla

The defendant cited a case in which Sears was allowed to parody Toho’s “Godzilla” character with its “Bagzilla” garbage bags:

Sears sells garbage bags. Toho produces or sponsors only literary works and toys. Sears uses “BAGZILLA” instead of “GODZILLA” and puts the Sears name prominently on the package. The representation of the creature is a humorous caricature rather than an exact copy.

However, the court distinguished the Bagzilla case as follows:

Unlike in Toho, the alleged infringing product here does not contain a prominent indication that the shirt comes from the defendant rather than the plaintiff. That is, in Toho, Sears had its name and mark prominently displayed on the garbage bags. Here, by contrast, Mad Engine does not have a prominent indication that the t-shirt is from it and not from the creator and licensor of Superman.

The case is DC Comics v. Mad Engine, Inc.

Photo Credit: DC Comics.