This Tuesday, a California federal court in Los Angeles refused to dismiss DC Comics Inc.’s (“DC”) trademark lawsuit against Mad Engine, Inc. (“Mad Engine”) in connection with the business’ humorous take on DC’s iconic Superman shield logo.

Can a business use someone else’s design or logo in jest?

DC’s Trademark Lawsuit

Mad Engine is a clothing wholesaler. One of Mad Engine’s t-shirts released earlier this year featured a five-sided red and yellow shield design on the chest with the text “DAD” inside.

DC delivered a pair of cease-and-desist letters to Mad Engine due to the design’s similarity to the red and yellow five-sided shield that appears on the chest of Superman’s costume. DC alleges that Mad Engine waited to reply to the demand until after the Father’s Day sales period and ultimately chose to continue selling the “Superdad” shirt. This October, DC initiated a trademark lawsuit against Mad Engine in the U.S. District Court for the Central District of California, alleging federal trademark infringement and counterfeiting, unfair competition and false designation of origin, trademark dilution and unfair competition.

Court Denies Mad Engine’s Motion to Dismiss

In November, Mad Engine filed a motion to dismiss DC’s trademark lawsuit, arguing that the subject t-shirt is a parody of DC’s Superman shield trademark and, therefore, does not infringe or dilute DC’s mark. According to Mad Engine:

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.

However, the Court thought otherwise, finding this Tuesday that “it is unclear from the briefing and the complaint if there is a true parody here . . . , or if there is instead a somewhat humorous use that confuses consumers as to the source of the product.” With the denial of Mad Engine’s motion to dismiss, DC’s trademark lawsuit will continue into the discovery phase.

Brand Owners: Parody or Infringement?

Repurposing a recognizable third-party name, logo or brand comes with certain legal risks, as evidenced by the trademark lawsuit referenced above. To avoid such headaches, designs using third-party brands or otherwise relying on parody should be carefully vetted by an experienced intellectual property attorney as early as possible in the creative process.