T-shirt controversy

(disclaimer: Not a lawyer, not even close to one.)

Sept 24, 2010

This situation, highly relevant to my interests, came to my attention via both The Protomen's Twitter feed and personal ally Cait Costello's blog. Forever21's men's line has issued a "Light up the Night" shirt - we are not currently clear how long this shirt has been in circulation. It's caused some ripples in the Protomen fandom for being perceived as potentially infringing - both due to the phrase and the colors.

How strong of a case would The Protomen have if they chose to pursue this? You might be interested to know that Forever21 was sued three times in 2007 by designers Anna Sui, Diane von Furstenberg, and Gwen Stefani. (Thanks, Wikipedia! ) In fact, F21 have done this so many times there's a whole seperate blog devoted to their plagiarisms! (Thx RaeBeta)

Take a look for yourself and be the judge:


Unfortunately, a major problem here is that "light up the night" is not a trademarkable phrase - it's been used as a song title by many other bands and to promote several organizations' events. Even though it is one of The Protomen's signature songs, the song featured prominently on their website, and one of their most popular and widely known pieces - hardcore fans will make an immediate connection to the phrase, combined with the color combination as shown on the shirt - there is no actual physical graphic produced by the group that would give stronger credence to an infringement claim - apart from the currently existing "video" logo.

However, one could argue that the specific colors chosen alone are distinctive enough, even if inverted, to create trademark confusion - and there is case history that can support such an argument. I take a look at this: "Trademark Protection for Color: A Practitioner's Guide"

A relevant quote here is from Qualitex Co. v. Jacobson Products Co., Inc. :

"Both the language of the [Lanham] Act and the basic underlying principles of trademark law would seem to include color within the universe of things that can qualify as a trademark. The language of the Lanham Act describes that universe in the broadest of terms. It says that trademarks "includ[e] any word, name, symbol, or device, or any combination thereof." [T]his language, read literally, is not restrictive.

[O]ver time, customers may come to treat a particular color on a product or its packaging…as signifying a brand. And, if so, that color would have come to identify and distinguish the goods i.e. to "indicate" their "source" much in the way that descriptive words on a product…can come to indicate a product's origin.

[The Court]…cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where that color has attained "secondary meaning" and therefore identifies and distinguishes a particular brand (and thus indicates its "source")

What I had initially written off as a mere annoyance may actually have some legal legs. The band may well have a case between the establishment of a history of infringement (Cait notes that current case law does not protect infringers who use variant font styles, either) and the argument of color as secondary trademark.

The shirt could also be interpreted as a dilution of The Protomen's trademark.

Lastly, they could attempt claim of unfair competition under the Lanham Act, since they also sell t-shirts (and depend on sales of these for their survival); the combination of elements could imply that they had given permission to Forever21 to produce this shirt, when they were clearly as surprised as us. Such a claim does not require the trademark to be federally registered to be defensible.

An interesting sub-angle to this whole mess (and something I'd need to read deeper into) has been raised as to whether The Protomen can actually defend anything they create because of their status as an unaffiliated 'spin-off' from Capcom's IP. My initial reading would be that they would still have a number of valid legal fair use, transformative use and visual and audio protections for their work even if their printed material contains a number of references to Mega Man. Might be worth another post…

It would probably not be worth the time of the band to take this issue to court; however, they could present arguments to the above that would lend some weight to a claim. If they wanted to pursue this, their first step would be to send a trademark infringement letter to Forever21- call it the big brother of a cease and desist notice. These sorts of claims are labor-intensive, though, and it's an unfortunate fact that many legitimate claims are never filtered through the court system because of the time and expense involved, which place excessive burdens on small entities.

I think it goes without saying nobody should be dumb enough to actually wear one of these to a Protomen show. Do not purchase this shirt; it is not approved by the band and will not support their activities. Buy real shirts that come from the band instead.

Unless otherwise stated, the content of this page is licensed under Creative Commons Attribution 3.0 License