Why it matters: There is a fine line between parody and trademark infringement. Just ask DC Comics, which on December 16, 2015, successfully defeated a T-shirt maker's parody defense brought in a motion to dismiss DC Comics' infringement lawsuit involving its distinctive trademarked five-sided Superman shield design. The case is DC Comics v. Mad Engine, Inc.—read on for the details.

Detailed discussion: On December 16, 2015, a Central District of California judge in DC Comics v. Mad Engine, Inc. denied the motion to dismiss filed by apparel maker Mad Engine, Inc. (Mad Engine) in a trademark infringement lawsuit brought by DC Comics (DC). DC sued Mad Engine in connection with Mad Engine's "Superdad" T-shirts that used DC's "iconic" red and yellow five-sided Superman shield design. The facts alleged in DC's complaint state that DC sent a cease and desist letter to Mad Engine on June 1, 2015, but that Mad Engine did not respond until June 19, 2015, so as to maximize the Father's Day sales period. When Mad Engine continued to sell the Superdad T-shirts after DC sent a second cease and desist letter, DC filed suit in the Central District of California alleging trademark infringement under the Lanham (Trademark) Act. Mad Engine filed a motion to dismiss, claiming that its "Superdad" shield design was a parody of DC's trademark—not likely to cause consumer confusion or dilution as required under trademark law—and thus DC failed to state a claim.

Judge Dean D. Pregerson denied Mad Engine's motion to dismiss, allowing DC's lawsuit to proceed. Judge Pregerson began his analysis by examining federal case law on the parameters of what constitutes permissible parody in trademark lawsuits. The judge looked first to the Ninth Circuit's 1997 case of Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., which held that parody claims are not so much separate defenses to trademark infringement suits but, rather, go to the fundamental question of consumer confusion: "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.' " (internal citations omitted).

Judge Pregerson then cited Fourth and Tenth Circuit case law that established that a successful parody "pokes fun at a senior mark," such as "Chewy Vuiton" dog toys or "Lardashe" jeans. By contrast, the judge cited to a Second Circuit case where a motorcycle repair shop used a logo substantially similar to Harley-Davidson's trademark and the Second Circuit ruled that this was not a parody because it made "no comment on Harley's mark; it simply use[d] it somewhat humorously to promote [its] own product and services, which is not a permitted trademark parody use." In the case before him, Judge Pregerson stated that the complaint and pleadings were "unclear" as to whether Mad Engine's "Superdad" logo fell into the "true parody" category (like "Chewy Vuiton" or "Lardashe" jeans) or if it was instead a "somewhat humorous use that confuses consumers as to the source of the product" as in the Harley-Davidson logo case, and that this is what his analysis would focus on.

Mad Engine argued that the 1981 Ninth Circuit case of Toho Co. v. Sears, Roebuck and Co. should be controlling. In that case, the Ninth Circuit found in a similar motion to dismiss context that the department store's uses on garbage bags of the terms "Bagzilla" and "Monstrously Strong Bags" together with an image of a "comic, helpful personified reptilian creature" were a "humorous caricature" of Toho's famous Godzilla mark and thus "not confusing to consumers as a matter of law." The Ninth Circuit came to this conclusion after applying the eight factors for determining consumer confusion established in the Ninth Circuit's 1979 decision in AMF, Inc. v. Sleekcraft Boats, finding, among other things, that the marketing channels as well as the actual goods themselves were unrelated as a matter of law and that the department store was intending to "only make a pun" and not confuse consumers. Judge Pregerson distinguished Toho from the case at hand because the T-shirts contained no "prominent indication that the shirt comes from the defendant rather than the plaintiff" (the bags in Toho prominently displayed the department store's name). In addition, the shield on Mad Engine's T-shirts was almost identical to DC's mark, differing only in the word "DAD" (versus "S") on the shield. Last, and most importantly to Judge Pregerson, DC itself markets many types of T-shirts and other apparel with its Superman logo—including its own version of a "Superdad" T-shirt—and thus the marketing channels and goods being sold were related so as to sufficiently confuse the consumer as to the source of the product.

Mad Engine next cited to the 2007 Central District of California case ofBurnett v. Twentieth Century Fox Film Corp., where the Court granted the defendant's motion to dismiss because the plaintiff failed to state a claim for trademark infringement in a case involving Carol Burnett's "Charwoman" character being lampooned by the animated TV show "Family Guy." There, the Court held that, given the TV show's penchant for depicting public figures in "awkward, ridiculous and absurd" situations and the "distasteful and bizarre, even outrageous and offensive" manner in which Burnett's character was depicted, no reasonable consumer was likely to be confused as to whether that was a parody or not. Judge Pregerson was easily able to distinguish the Burnett case from the case before him because (as previously noted) the infringing T-shirt made the same "Superdad" joke as a T-shirt marketed by DC itself, and there is "no lampooning of Superman by making a play on 'Superman' with 'Superdad.'"

The judge thus concluded that, because Mad Engine's T-shirt was "saying something like, 'My dad is like Superman—he's Superdad,' " the T-shirt was not a parody of DC's mark and instead fell into the Second Circuit's Harley-Davidson logo category of being "more like a humorous use to promote the t-shirt's sales rather than a parody of Superman." Judge Pregerson ended his analysis by applying the eight Sleekcraft factors for determining consumer confusion to the facts of the case before him and held that they "do not weigh in favor of dismissing the complaint at this stage."

Click here to read Central District of California Judge Pregerson's 12/16/15 Order Denying Motion to Dismiss in DC Comics v. Mad Engine, Inc.