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Phish Phans Beware! Waldo Sued for TM Infringement (Again!)
Where’s Waldo and why does everyone pick on him?
If you’re not into the “jam band” scene, then there’s a good chance you don’t even know who Waldo is. Waldo is Sean Knight. Or is it the other way around? Is Sean Knight Waldo? I’m not really sure. And I doubt I’m going to figure it out. I’ve heard that having worn “Where’s Waldo?” shirts so often, Sean became known as Waldo. I don’t know it’s true, and I don’t know if he still goes by Waldo, but I like it, so I’m sticking with it.
Waldo makes t-shirts that combine Phish song titles and/or lyrics with popular brand logos, like those I wrote about here. These shirts are known as “lot shirts,” cause they’re sold in the parking lots of concert venues, rather than at the “merch booth” inside the venue. Waldo & his shirts glided right into court when he had a run in with Phish in 2001.
Phish sued Waldo first in California and then in Vermont. At one point during the lawsuit, Waldo’s team presented the court with a photo of Phish drummer, Jon Fishman, wearing the Glide T-shirt shown here. That did not make the judge very happy. I imagine Waldo’s team also shared how rare it is for fans to see Fishman in anything other than, well . . .
Fishman — a “trade dress” double entendre
Waldo meanwhile scored his second trademark lawsuit for his clever T’s. Just three weeks ago today, Bridgestone Brands sued Waldo, his business partner and their corporation in Tennessee. The Complaint states that jurisdiction over Vermont residents is proper in Tennessee because, “Defendants sell the Infringing Cap through their Internet website, located at www.jamgoods.com, which targets and is accessible by consumers in this District.” I’m thinking there’s more to the story and I’m gonna guess that Waldo probably sold some shirts to the wrong person on Shakedown Street at Bonnaroo this June. Bummer for Waldo, but as least he’s keeping his trademark lawyer busy! Hats off to him for that!
* tires and automobile maintenance and repair services
Apparently, Firestone sells a wide variety of goods under its allegedly famous mark, including:
* industrial, building, and specialty products
* air springs
* high-quality fibers and textiles
* an array of apparel, including hats, shirts and shoes
* sporting goods
* golf tournaments, facilities, and services
The Complaint asserts at least ten U.S. trademark registrations for various goods and services, the earliest dating back to 1921. The suit accuses Waldo of trademark infringement, unfair competition, dilution, and unfair and deceptive trade practices.
Under the DuPont factors, here’s how I see the infringement claim:[framed_box] * Overall commercial impression: (sight (Firestone), sound (Waldo) meaning (Waldo)) WALDO
* Similarity of goods/services: FIRESTONE
* Channels of trade: WALDO
* Fame of prior mark: FIRESTONE
* Actual consumer confusion: WALDO
* Defendant’s good or bad faith: FIRESTONE
* Quality of Defendant’s goods: Neutral
* Sophistication of consumers: Neutral
Ok, so it’s even. Who knows what that means? On the other hand, Firestone’s resources favor its success. And on the dilution claim, so long as Firestone can prove the fame of its mark I think it will prevail on dilution by blurring. The Firstube hats intentionally depict the word Firstube in the same font and color as the Firestone logo, arguably reducing the distinctiveness of the Firestone mark. A parody defense isn’t going to save Waldo this time, as it did in the Phish case, since the product does not make any commentary about, nor does it poke fun at, the Firestone brand — at least from what I can tell. While I would love to see the outcome of a trial on these facts, that’s not in either party’s best interest, so I hope and imagine that this case will settle fairly quickly.
If your company’s products or services incorporate other company’s IP it’s generally a good idea to get permission first. Clearly, you risk being sued if you don’t; good for IP law firms, bad for you.
This Post Has 11 Comments
I am soooo glad he is getting sued. I hope he gets pinned for a ton of loot. He stole one of my logos. He’s about as creative as oatmeal.
Hey now, that’s not nice. Nonetheless, I do appreciate your reading and making the time to comment on my post.
I disagree. My gut tells me Waldo wins on parady/fair use, etc. But you know more than me. But I still think Waldo will win.
But just what is Waldo parodying? Parody requires some form of social commentary or poking fun at something, and I don’t see how Waldo’s products (or most other lot shirts) do that.
Waldo is the man! Support him by buying gear at jamgoods.com
Firestone is suffering from the hubris that infects many brand owners. The hat is apparently a reference to a well known Phish song called FirstTube. Note that the back of the hat has a PH. Waldo has very loosely copied the look and feel of one Firestone hat. And he has used their typeface. He has used similar tactics for other hats directed at Phish loyalists.
But, based on one of the most important DuPont factors- similarity of marks- you get FIRSTUBE and FIRESTONE. That spells loser for Firestone. As does the fact that Firestone’s soft goods are really meant to display loyalty for its tires.
Unless there is a mystique that connects Firestone tires and the music of Phish, or unless its a battle of deep pockets, I think Firestone loses. Dilution? Check the stats. The number of successful cases is in the single digits.
When I saw this comment I thought: Who is this trademark troll and does he have any idea what he’s talking about? Does he even know what a trademark troll is?
(A trademark troll is someone who wrongfully obtains trademark registrations in order to “enforce rights” against others — just like copyright and patent trolls do with copyright and patents). Turns out, not only does the Trademark Troll know what he’s talking about, he probably knows a lot more than me!
So Mr. Trademark Troll, former TM counsel for BP and Harley Davidson, among other illustrious positions . . .
Thanks for reading and commenting on my post. I think Firestone will win.
The marks are similar visually and aurally. Even though their meanings differ, I still think the first DuPont factor — overall commercial impression — goes to Firestone. Moving on to the second DuPont factor — similarity of goods — the goods are identical: clothes. How is it relevant that clothing is not Firestone’s core product? I see how that is relevant to channels of trade, but not to similarity of goods. Since in my world, Firestone wins on the first two DuPont factors, and on fame of its mark, I think Waldo loses on infringement. And, yes, given Firestone’s resources, I don’t see Waldo walking away on this one. I know dilution wins are rare (heck, read my blog post about G.A.P Adventures in which dilution by blurring seemed more likely, but the court called it infringement), but I think that’s a stronger case here than infringement. Nonetheless, I doubt we’ll get to find out.
Since you brought it up, I’ve notice that logo on many Phish “lot shirts” and other unofficial merch, presumably not all manufactured by Waldo. I wonder what the story behind that is.
First let’s get one thing straight. I don’t know any more than you. Let me shout it out to anyone who is listening I DON’T KNOW ANY MORE THAN YOU.
But thank you for your kind words. He says as he climbs up on his soapbox.
I believe that Firestone is making the mistake that many corporate brand owners make when they are confronted with this sort of situation. Essentially Firestone’s legal position is ” We are a famous company. We’ve been in business forever. We make many different products. So ANY sort of calling to mind of our our company(not just a product) is forbidden. Never mind that the conduct may not rise to the level of infringement.
I find support for this view in Firestone’s Complaint. After you strip away all the glitter and the trademark puffing, Firestone’s essential claim is that the Infringing Cap mimics the look and feel of a Firestone cap. Rather than debate the weight of the various DuPont factors let me suggest that before cranking through the factors, it is important to first ask ” What’s going on here?
It would seem that Waldo has figured out how to take certain elements of well known logos or brands, modify them and apply them to hats meant for Phish fans. Frankly his hat with the modified John Deere logo seems much closer to infringement than the FIRESTONE/FIRST TUBE hat.
I would bet somebody a diet coke that if Firestone conducted any sort of trademark survey they would quickly pack their tent and go home. Interestingly, it appears that Waldo is no longer selling the FIRST TUBE hats on his website.
Let me end by asking you a question: What if Waldo had made the same hat with a block letter FIRST TUBE?
I don’t know if anyone else is listening but it’s an enjoyable debate.
I don’t know if anyone’s listening either. I do know Ms. Warner from The Daily Show called me this Spring after seeing BrandGeek. I’m still riding that high. Just wait till my YouTube videos launch next month. She’ll be calling back for sure.
Back to the FIRESTONE / FIRST TUBE debate (which I too am enjoying, thank you):
FIRESTONE / FIRST TUBE in block letters — Waldo wins, no doubt. But that’s not what we are talking about here. We are talking about a guy whose whole business model is to sell clothes bearing famous logos in which the famous brand is replaced by Phish song titles or lyrics. On these facts, I think Firestone wins on infringement because they have a clothing line bearing the logo Waldo copied. Would I say the same thing about MasterCard? Probably not (I reserve the right to learn that they have a clothing line too, in which case I would change my position). While I know dilution opinions are rare, this sure seems like a textbook case of blurring. As I said in my post, I would love to see this case go to trial so we’d have some law on the issues (and maybe I could win a few more debates!).
Another issue here, besides the merits of the legal claims and defenses, is the strategy used. Did Firestone reach out to seek a compromise first? Did they send a nasty letter, gentle letter, no letter? The suit may end up bringing more attention – and more sales – to Wado/jamgoods. Instead of being an item known to a small (in the scheme of Firestone’s sales) group as a parody, Firestone has drawn attention the issue. Sales of a few hundred or thousand shirts (a guess) could after litigation result in media and backlash on a larger scale. Is that a good business strategy? They will argue that brand owners have a duty to protect their trademark rights or else they get weakened, but surely there were other creative options to explore here. Of course, Firestone is probably also banking that a tee shirt vendor won’t have or want to spend the money to fight them. But see South Butt and others for examples of claims gone bad.
See here for a recent example where a soft touch yielded the desired results and probably avoided a backlash: http://www.nytimes.com/2011/08/18/arts/music/web-site-for-the-met-obsessed-closes.html?_r=2
Thanks for commenting, Erik (and sorry for my delayed response; today is my first day back in the office after some time off). I think the complaint stated that Firestone contacted Waldo to no avail, but I doubt it tried too hard, as he seems pretty easy to reach (he responded straight away to my FB friend request). It will be interesting to see how this plays out in court and in the media.