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
* 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:
* 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.