Moriarty, the quote you gave was from the first case. DC appealed it, though. Here are the details from Charles Atlas, Ltd. v. DC Comics, Inc.
Citation: 2000 WL 1224829 (S.D.N.Y.,2000)
Argued: August 28, 2000
Decided: August 29, 2000
Adjudicating Body: United States District Court, S.D. New York
Before: J. Buchwald
Topic: Trademarks; Entertainment
Abstract by: Marc Feldman
BACKGROUND & PROCEDURAL HISTORY
The Plaintiff's comic ad featuring Mac is well known and has repeatedly appeared in the Defendant’s comic books. The Defendant created a comic book character, Flex Mentallo, that basically mirrors the Plaintiff’s comic book advertisement character character, Mac. When a customer of the Plaintiff brought Flex Mentallo to the Plaintiff’s attention, the Plaintiff sued the Defendant for violation of the Lanham Act, as well as several New York statutes. The case was brought in the federal court in New York, where presently the Defendant has moved for a motion for summary judgment.
DISCUSSION
First, the court determined if the Defendant’s use of Flex Mentallo would likely cause confusion on the part of consumers with the Plaintiff’s character, Mac. Utilizing the Polaroid Factors, the court found that the likelihood of confusion would be minimal. First, the court determined that because the Plaintiff and the Defendant were not in competition with each other, the risk of confusion was slim. Moreover, the Defendant did not use the likeness of the Plaintiff’s character, Mac, in bad faith. Lastly, the likelihood of confusion was slight because the Plaintiff did not learn of Flex Montello’s likeness to Mac until seven years after Flex Mentallo appeared.
Second, the Defendant argued that because Flex Mentallo parodied the Plaintiff's comic ad featuring Mac, it was entitled to First Amendment free speech protection. The court said that the defendant’s rights under the First Amendement trumped the plaintiff’s trademark infringement claim. In order to determine whether a trademark violation had occurred, the court balanced the public interest in free expression against the public interest in avoiding consumer confusion.
The court found that the defendant used the plaintiff's comic ad to convey an idea, not to promote a competing product. Thus, his act was protected under the First Amendment.
CONCLUSION
The court held that although the Defendant’s use of a comic book character, Flex Mentallo, had a likeness to the Plaintiff’s advertisement character, Mac, the infringement was not so strong as to cause confusion between consumers. Moreover, because the Defendant used Flex Mentallo as a parity on the Plaintiff’s advertisements featuring Mac, they were afforded protection under the First Amendment which trumped the Lanham Act.. |
