A trade mark gives its owner exclusive use of the mark as a badge of origin for specified goods and services. However, things become a bit tricky where the trade mark is for a pun that has been widely shared in a meme.

New York designer Elektra Printz Gorski recently commenced Federal Court proceedings against Australian retail giant Cotton On over the sale of clothing that displayed the words “LETTUCE TURNIP THE BEET”.

Gorski is the owner of an Australian registered trade mark filed in May 2013 for the words “LETTUCE TURNIP THE BEET” in respect of clothing (among other things). Gorski had been selling clothing, art, stickers and gift wrap with those words since 2011 (below).

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Image source: Natalja Katsaga

Cotton On, however, recently commenced selling clothing with those same words (below). Gorski commenced proceedings for copyright infringement and trade mark infringement.

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Image source: Cotton On

Cotton On denies having knowledge of any trademarks registered in Gorski’s name. From 2012 the scarecrow image (below) has been shared online over 150,000 times. The words have also appeared as a pun in various other contexts over the years.

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Image source: Quickmeme

The law

In order to establish infringement, a trade mark owner must show that the mark has been used as a “badge of origin”. It must be shown that use of the mark by the alleged infringer would be understood by consumers as being used so as to indicate a connection in the course of trade between the goods and the person using it. That may be difficult to prove where the mark is (at least on one view) a humorous pun, particularly where it has a history of being widely shared in a meme.

The rights holder in such circumstances may have a stronger case in copyright. Although four words alone will generally be too insubstantial for copyright to subsist, copyright may subsist in an artistic work printed on an item of clothing. Cotton On is no stranger to this precedent, having been found to infringe copyright in the artistic work printed on an Elwood t-shirt in 2008.

Of course, establishing copyright infringement requires proof of, among other things, copying. Gorski has alleged that a senior Cotton On designer ‘pinned’ a tank top bearing her design on Pinterest three years ago.

A mediation between Gorski and Cotton On has been set down for August this year.