19 January, 2016
Co-authored by Ms. Divya Srinivasan, LexOrbis Associate and Mr. Vatsal Dhar, fifth year student of Symbiosis Law School, Noida Humorous jibes and takes are common these days, especially a Parody. Under the law point of view, Parody in the literal sense refers to a work, which humorously or critically comments on an existing work with the sole intention of exposing the flaws of the original work.[i]
Recently, the DC Comics(hereinafter, the Plaintiff) has been in news for having filed a complaint against Mad Engine Inc. (hereinafter, the Defendant), after the latter ignored the Cease and Desist notice sent to them by the former. The complaint in question was for manufacturing and distributing a ‘Superdad’ T-Shirt which was based on the Superman Logo, owned by the Plaintiffs.The logo which is known to children and adults alike, consists of a Red colored S within the Yellow coloured five sided diamond at the Chest, also known as the Superman Shield or Superman Logo. It is a popular logo which can be seen on various apparels and merchandise spanning from T-Shirts, to key-chains, mugs, action figures, posters etc. The Plaintiffs have ensured that requisite intellectual property protection is accorded to its logos through several registered trademarks and copyright registrations for the specific or exclusive design.
The defendants, Mad Engine Inc. is a licensed apparel wholesaler which delivers innovative products in every category to various customers throughout the United States and Canada.Refuting the allegations made by the Plaintiffs in their complaint filed against the Defendants, the latter contended that the T-Shirt sold by them containing ‘Superdad’ was an ‘obvious parody’ of the Superman logo and hence less likely to be confused by the consumers as originating from the Plaintiff’s or connecting them as the source or affiliation of the product in dispute. Moreover, they further contended that the plaintiffs already owned licensed Super Dad T-shirts which comprised of Superman Logo with Dad written below it. They added that the main idea behind using ‘Dad’ with the superhero shield was to represent the real life hero with respect to kids i.e. their fathers being the ‘Superdad’ for their kids.
The California Federal Court in Los Angeles laid down the following main issues to be considered with respect to parody in trademark infringement;
- That the parody was not the absolute defense, considering as a general principle, the argument of parody could only succeed if the product was less likely to cause confusion as to the origin or source with the trademark owner.
- That the parody must make some comment on another mark. Sometimes the commentary may be obvious, especially when the product or work involved is an expressive work, for e.g. a book or a magazine. In such matters copyright law with respect to doctrine of fair use will be analyzed. But when a product is purely commercial in nature, a defendant’s use of the plaintiff’s mark may need to be more than just funny – the humorous use of a similar mark, with the sole purpose of increasing sales without meaningful comments or review is more likely to be deemed as an infringing use.
- That the parody is more likely to succeed if the goods in question and/or marketing channels are different or if there are other stronger indications of the origin or source are distinct from the trademark owner through which the consumers are less likely to be confused about the origin or affiliation of the products.
Keeping the above in mind, the Court denied the motion to dismiss the Complaint, observing that the plaintiff’s had their own similar shirts; there was less likelihood of a parody emerging and more likely that there would be confusion.[ii]The Court opined that the defendant’s contentions were more of a lost cause, as it ignored the plaintiff’s cease and desist letter prior to the filing of the case. While this is not the final judgement given by the Court, the chances of success for the plaintiff seem positive.
[i]Van Hecke, B.W., “But seriously Folks: Toward a coherent standard of parody as fair use”, (1999) 77, Minnesota L. Rev., p. 465.
[ii] “Not a Super Parody: Judge refuses to dismiss ‘Superdad’ infringement lawsuit”, Michael Lee, Pirated Thoughts, Dec. 17, 2015, Available at: http://piratedthoughts.com/judge-refuses-to-dismiss-superdad-case/.
For further information, please contact:
Divya Srinivasan, LexOrbis
mail@lexorbis.com
