Trader Joe's Sends Demand Letter over "Traitor Joe" T-Shirts

Paul Alan Levy (Public Citizen) reports on the threat, and on his response. "No reasonable person is going to think that your client had any involvement in the creation of this image, or that it approves of this image in any way." (Sounds right to me.) And, "Trademark law aside, McCall's use of the image to comment on the President …, while playing on the name of a leading grocery store chain, is speech squarely protected by the First Amendment." (That too.) Read more in Levy's post.

Comments

[dwb68]

who these moronic BigLaw lawyers. Maybe they were too focused on social justice and avoiding triggers, they ignored the law. This does not even look like a Trader Joe's logo.
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[dwb68]

well, it looks like the logo as much as any other circle with red letters on the inside does.

[kotodama]

Are you dense? Did you read the response? If the t-shirt logo didn't actually resemble the TJ's one, that would be a full defense to the claims. But, the response didn't attempt to raise that defense. So, the similarity is implicitly conceded—by the guy selling the t-shirts himself (via counsel). It's also conceded a second way. The response asserts a parody defense. How can one possibly claim to be parodying a logo without admitting the similarity between that and the parody? That's right, it's impossible. Since the alleged parodist himself already admitted the similarity in multiple ways, your opinion on that score is pretty much irrelevant.

[Milhouse]

But, the response didn’t attempt to raise that defense.

Um, yes, it did. Did you not see the demand that TJ's lawyer send a copy of the copyright registration, so it could be determined what aspect is alleged to be an infringement? The letter denies any infringement, pointing out that typefaces cannot be copyright, the circles are very unlikely to be copyright, and that's where the similarity ends.

Parody does not have to be very similar to the thing it's parodying; it only has to be close enough to invoke the original in the audience's mind. Here it's the typeface, the circles and layout, and the phonetic similarity of the name. None of which is a copyright infringement.

[kotodama]

Whether TJ has a valid copyright registration or whether it’s infringed as a legal matter is of course irrelevant to the factual issue of whether the t-shirt resembles the logo.

dwb86 was talking about the latter, the fact question. He/she/it said obviously they aren’t similar. I pointed out multiple places where Levy implicitly conceded the opposite.

For good measure now, here’s an explicit admission too. Levy straight up said “McCall[] use[d] … the image” (start of 3rd paragraph). It doesn’t get any plainer than that really.

[Gandydancer]

What dwb actually stated was that the degree of resemblance was minimal. Obviously parody requires some resemblance. For you to be banging on about how his one sentence didn't draw every fine distinction that could have been drawn is absurd and self-discrediting.

The demand by TJ's lawyers deserves the derision it is getting.

And you do too.

[kotodama]

I remember last time around I wrote a short paragraph and you complained about a “wall of text” without managing to address the substance. Now it’s just more of the same. Maybe if I can find a way to get comments in large type (that is definitely a pun on this case!) working here you’ll be able to keep up for a change?

[dwb68]

If someone did not tell me about the connection, I would have never guessed it was a Trader Joe's logo.

[santamonica811]

Whereas I got it immediately. Not sure if you and I are the "reasonable person" that courts have in mind when determining . . . but obviously, it could not be both of us. 🙂

[Craig Johnston]

I don’t think they expect to win if it comes to that; I think they just want to discourage.

[Rossami]

Trader Joe's response is not moronic - at least, not under current trademark law. Even though it was an obvious loser under the First Amendment, they had to create a paper trail that they attempted to defend their mark from infringement. Failure to create that paper trail could have lead led to an entire loss of their right to the mark as a new "generic".

[M L]

Right. Do we send a cease and desist letter? Yes. Hard to see the legal advice being otherwise. Though I'm not sure it's quite as extreme as the entire mark being threatened if they don't respond to this one parody. Not an expert on this, but I could imagine a call being made to not send a letter if this thing wasn't too big yet and they wanted to avoid a Streisand effect.

As far as the resemblance, it's quite obvious in the unique font and it's meant to be resembling. But that doesn't matter. As the OP indicates, what matters is the likelihood of confusion among consumers.

[santamonica811]

+1

[kotodama]

Reserving judgment on the copyright issue (although I tend to agree that claim seems like it was thrown in as more of an afterthought), the first amendment defense to the trademark claim seems incredibly weak.

For one, he (Levy) repeatedly insists it's a parody. But, vis-à-vis TJ—as opposed to a hypothetical scenario where Biden had sent the cease-and-desist—it has to be a parody of TJ, not Biden. And simply invoking the term "parody" by itself doesn't cut it. You have to, you know, actually show that it's a parody. But the response utterly fails on that score. It makes no attempt to explain how, say, the supposed "parody" is commenting or critiquing TJ. Worse still, the response admits McCall was only "us[ing] ... the [TJ] image to comment on the President of the United States[.]" Even if the defense might be good against Biden, that concession really undermines it against TJ, which is what actually matters here.

Also, following on from the above, all the cases he cites that involve copyright fair use or trademark first amendment defenses (so not including, e.g., Ayres v. Chicago) are quite easily distinguishable. In all those cases, the parody was actually directed at the trademark/copyright or the owner itself. But here of course, that's admittedly not what happened. Levy discusses by my count 3 other cases (NSA, Bernie, Hillary) on his accompanying blog post. Again, those cases are all distinguishable in the same way as those cited in the letter. There's even very recent caselaw that shows exactly how you lose (in that case, fair use) when you make big noises about "parody" but don't bother to back them up. Just last December, the Ninth Circuit held that ComicMix's Star Trek/Dr. Seuss mashup was "not a parody" of Oh, the Places You'll Go! That's because "ComicMix d[id] not seriously contend that [its mashup] critiques or comments on Go!" (BigLaw IP lawyers prevailed in that one, but surely that's a mistake, because according to Levy's blog post those folks don't have a clue.)

https://cdn.ca9.uscourts.gov/datastore/opinions/2020/12/18/19-55348.pdf

Finally, neither here nor there really, but the response has some sloppy typos and faulty cite checking.

[David Nieporent]

You are conflating copyright and trademark. Yes, for copyright, a parody needs to comment on the copyrighted work itself. But for trademark, that's not the test.

[kotodama]

Where did I say the tests were precisely the same? Did you also see where I took pains to note the Seuss case was fair use? I just said at a minimum the parody has to be directed at the mark/owner. The very trademark cases Levy cites fully support that. For example, LL Bean (“it has used the mark solely to identify Bean as the object of its parody”). (I also note that case didn’t involve the accused infringer selling goods or services, which cuts against McCall here.) There are more recent examples too, like the Chewy Vuiton case (“we agree … that the … dog toys are successful parodies of LVM handbags and the LVM marks”).

Again, I take no particular position on the other TM aspects or the copyright issue. But the first amendment defense is decidedly feeble. Ironically, I fully support McCall’s right to criticize Biden, even if the criticism here is unintelligible and incoherent. But the right to criticize public officials doesn’t also include a right to hijack a completely unrelated third party’s trademark.

[kotodama]

Oh and he can parody TJ too until the organic free-range cows come home for all I care. Based on his track record I just won’t hold my breath for a parody that’s particularly inspired or creative.

[mulch]

So now we get to the real heart of the matter. You just don't think it's funny when someone pokes fun at ol' Joe.

[santamonica811]

I think he said, "This particular parody is not funny. Or clever." (I'd agree with that assessment. And he seems to also say, "This particular source has not been funny or clever in the past either...so it's unlikely to yield something good in the future."

Nothing in he response comes remotely close to saying, "Attempts at humorous jabs at President Biden are automatically not funny, b/c...you know, Joe Biden." I think your own biases are coloring your judgment here.

[Dilan Esper]

You are conflating copyright and trademark. Yes, for copyright, a parody needs to comment on the copyrighted work itself. But for trademark, that’s not the test.

And even in copyright law, not being a "parody" just means you get placed within the normal fair use analysis without a thumb on the scale. It's entirely possible to win a copyright fair use defense even if your satire does not target the original (usually because it will have no effect on the market for the original, which is the most important of the 4 fair use factors).

[Shamie Ervin iv]

Too funny! TJ's might find a judge to go along with them, but the judge would be wrong. Imho.

Morning's best entertainment for me, for which I give thanks to the great litigator-prof, Eugene Volokh!

[Dilan Esper]

Anyone remember this t-shirt? I think one of the roadies wears it in Led Zeppelin's "The Song Remains the Same" movie:

https://www.google.com/search?q=enjoy+cocaine+t-shirt&rlz=1C1FHFK_enUS964US964&source=lnms&tbm=isch&sa=X&ved=2ahUKEwjUh6HJ5czzAhWGHjQIHbOSDvgQ_AUoAnoECAEQBA&biw=1366&bih=657&dpr=1

[santamonica811]

Interesting. Didn't Coca Cola used to have cocaine as an ingredient, ages ago? Or is that an urban myth?

[David Nieporent]

Well, not pure cocaine, but it was made from coca leaf, yes. In the 19th century.