Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP Rotating Header Image

Playing Chicken with Trademark Infringement

I’ve got a new hero.

He’s this guy in Vermont named Bo Muller-Moore.

Apparently he’s a folk artist, and is known for the tee shirts he makes that proclaim “Eat More Kale.” In fact, according to what I’ve read, he’s known as the “Eat More Kale” guy. But really, how much kale can you eat?

Well, Mr. Muller-Moore (aka Mr. EMK) received a letter from the fast food chain, Chick-Fil-A. Now while it’s always nice to receive mail (unless it’s from the IRS), the chain was not offering him any special discounts. Instead, they were threatening to sue him for infringing their registered trademark, “Eat Mor Chikin’.”

Quick trademark primer: The hallmark to any trademark infringement claim is a likelihood of consumer confusion. Specifically, a likelihood of confusion exists when consumers are likely to assume that a product or service is associated with a source other than its actual source because of similarities between the marks or the parties’ marketing techniques. See Metro Publishing Ltd. v. San Jose Mercury News, 987 F.2d 637, 639 (9th Cir. 1993). In fact, all trademark cases, including parodies, are subject to the likelihood of confusion test. See Dr. Seuss Enter. L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997) (affirming preliminary injunction prohibiting publication and distribution of Dr. Juice’s The Cat Not In The Hat, an account of the O.J. Simpson murder trial composed in the styling of Dr. Seuss’ Cat In The Hat); but see Mattel, Inc. v. MCA Records Inc., 296 F.3d 894 (9th Cir. 2002).

In Mattel, a case in which the toy company sued the record company based on its release of a single entitled “Barbie Girl,” the Ninth Circuit held that there was no trademark infringement because the song was artistically relevant not explicitly misleading as to its source. (You’ll remember the lyrics: “I’m a Barbie girl, in a Barbie world, Life in plastic, it’s fantastic/ You can brush my hair, undress me everywhere . . .”) 296 F.3d at 902. The Ninth Circuit reaffirmed that line of reasoning in another dispute involving the Barbie trademark, Mattel Inc. v. Walking Mountain Prod., 353 F.3d 792 (9th Cir. 2003), holding that plaintiff’s photographs entitled “Food Chain Barbie” and depicting Barbie in various absurd positions did not infringe on the Barbie trademark because the title was artistically relevant and not explicitly misleading.

Which brings us back to Bo and his shirts. Now a show of hands, please, who believes that these tee-shirts reading “Eat More Kale” are likely to cause consumer confusion with respect to a fast food chair who’s logo is “Eat Mor Chikin’”?

I suppose, in fairness, I should mention the Sleekcraft factors, as these might influence your vote. In AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), the Ninth Circuit set forth the following eight-factor, fact-based test that is now used by most courts to evaluate a likelihood of confusion: (1) the strength of the plaintiff’s mark, (2) the similarity of the marks, (3) the proximity or relatedness of the goods or services, (4) the intent of the defendant in selecting the mark, (5) evidence of actual confusion, (6) the marketing channels used, (7) the likelihood of expansion of product lines, and (8) the degree of care consumers are likely to exercise. Id. at , 348-49.

Ok, now anyone want to change their vote?

It is often said that the sixth factor of the Sleekcraft test, the examination of marketing channels used, which is particularly significant. So here we have national chicken chain (which apparently does not have many outlets in Vermont) and freelance artist located exclusively in Vermont. Hmmm. Well I, for one, am not confused. But maybe that’s just me.

In fact, even if he intended to reference the Chick-folks, I think there’s a good argument that his shirts are artistically relevant and not explicitly misleading. And even if the Chick-chain is entitled to protection in “Eat Mor Chikin’,” just how far does and should this mark really go? How about just “Eat More”? What if I’m obese and believe everyone else should be too, so I start making shirts that say “Eat More.” Does this infringe? Or maybe I’m worried about people who don’t eat enough, so I make a shirt that just says “Eat,” would this infringe? How about a shirt that says “Chicken” and nothing else? What about another frequently consumed animal, e.g. “Fish”? I’m just not sure how far they think this mark extends.

Speaking of overreaching, I need to stretch. Ah, that feels better.

Anyway, so why is Bo my hero? No, it’s not because I love kale (although it is healthy, and I do enjoy it from time to time, and yes I probably should eat more). And no, it’s not because I want to see people needle the big guy. It’s because he’s come up with a very creative solution. Brilliant, in fact.

Rather than shut down and turn over his website as the chicken people want, Bo is making a documentary about his fight, and he is raising the funds to make the film on Kickstarter. Now that is great! Of course, as he acknowledges on his blog, he may not win, but then again, he may (see show of hands, above). And if nothing else, he may end up with a very interesting film. And I’m all in favor of that.

So here’s to you, Bo. You’ve got a fan in me.

Jonathan Pink is an intellectual property attorney in Los Angeles and Orange County. He chairs the Internet and New Media team at Bryan Cave, LLP and can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

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