A DISCUSSION OF LAW AND JOURNALISM

“High” Fashion Lawsuit

By Nicole Rowlands

Los Angeles designer Brian Lichtenberg exploded on to the fashion scene by spoofing high fashion designer logos like Hermès and Miu Miu with his BLTEE line of graphic tee shirts.  Exclusively designed for and sold by Kitson, these $58 tees mock high fashion designers by using the brands’ colors and logos, but with the lettering spelling words like “Homies” (in place of Hermès) or “Meow Meow” (instead of Miu Miu).

Lately, he’s come up with a new prescription for success by using prescription drug brands like Xanax, Vicodin, and Adderall on his tee shirts.

Mr. Lichtenberg’s idea of satire has had some unpleasant side effects. The three prescription drug brands are threatening to sue for trademark infringement.

The media has been reporting the story for months, but haven’t analyzed whether the prescription drug brands would prevail, or whether they should take a chill pill and let it go.

LASIS will.

The matter is complicated by the seeming altruism of Mr. Lichtenberg. Kitson’s website proudly declares that a “portion of the proceeds from the sale of this collection will be donated to The Medicine Abuse Project.”  At first, this would seem to be a point in Mr. Lichtenberg’s favor. The drug companies (already nobody’s nominees for Miss Congeniality) would surely appear Scrooge-like to sue somebody who was just mildly spoofing their products, and donating proceeds of his sales to charity, to boot.

But the charity has publicly stated that it wants nothing to do with this line of tees, and refuses to accept “any direct donation from Kitson while they flagrantly, and without remorse, continue to sell these products.”

In fact, one of the elements of trademark violation is the likelihood of consumer confusion regarding “the “origin, sponsorship, or approval” of trademarked goods. The seeming philanthropy, then, actually hurts Mr. Lichtenberg, in that it suggests a (non-existent) association with the prescription brand drugs. On the other hand, Mr. Lichtenberg is quite well known for parody-tees, and it is improbable that anyone would believe that these teesare in any way related to the pharmaceutical companies that manufacture them.

The drug companies may try to sue for dilution.  Dilution by “blurring” occurs when an alleged infringer weakens the trademark owner’s ability to evoke the product in the consumer’s mind. Dilution by “tarnishment” occurs when an alleged infringer uses the trademark in an unsavory or distasteful way (which almost always involves some use of drugs, sex, or nudity), and ultimately harms the reputation of the famous mark. .

In 2010, Victoria’s Secret sued “Victor’s Secret,” a mom and pop store in Elizabethtown, Kentucky that sold lingerie and adult novelties and gifts, for trademark infringement. The U.S. Supreme Court held that under the Federal Trademark Dilution Act, an owner of a trademark might obtain an injunction if the commercial use of that trade-name causes dilution of the distinctive quality of the mark. The Court found some blurring factors – such as the intent on the part of the shop owners to create a mark associated with Victoria’s Secret – but ultimately decided that the distinctiveness of the Victoria’s Secret trademark meant no one would confuse Victor – Victoria; Victoria stood supreme. But the Court didn’t stop there.

Instead, the Court also considered dilution by tarnishment, and ruled that creating the false appearance of an association between sexy lingerie and bawdy sexual activity disparaged the original trademark and reduces the commercial value of its selling power. “Victor’s Secret” was not only lewd, but the owner intentionally branded the store as it did in order to make a semantic association with the Victoria’s Secret mark. That association was enough to decide thatthe shop owner could not keep a “Secret” in his trademark.

A dilution claim is often defended by the defense of nominative fair use, . Which can offer protection to someone who uses another’s trademark for the purpose of identifying the brand without suggesting affiliation. Parodies or satire, for example, are often defended as nominative fair use and do not typically violate a trademark owner’s rights.

In 2002, Mattel, Inc., the creators of Barbie, sued Danish-Norwegian dance-pop group, Aqua, claiming the band violated the Barbie trademark with their song “Barbie Girl.” Mattel argued that the song tarnished the reputation of its trademark, with lyrics calling the multi-billion dollar brand “a blonde bimbo girl.”  The U.S. Supreme Court disagreed, and held that the song was protected as a parody under the trademark doctrine of nominative fair-use.

Mr. Lichtenberg uses the words on a graphic tee in a manner similar to the way Aqua used “Barbie” in the song, or to howrapper Eminem made light of the use of Vicodin in his “Deja Vu” lyrics: “So I take a Vicodin, splash it hits my stomach and ah.” Or even like Danny Brown, who wrote an entire song dedicated to Adderall (“Adderall Admiral”).

There’s no reason for the drug companies to have sued Mr. Brown (they didn’t), and there’s no reason for them to sue Mr. Lichtenberg (they shouldn’t).  In fact, they’re lucky for the free publicity that doesn’t even require them to list their drugs’ side effects.

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