from the parody-to-a-tee dept
The last time we found niche grocery chain Trader Joe’s playing intellectual property bully, it was over one enterprising Canadian man who drove across the border, bought a bunch of good stuff from Trader Joe’s, and then resold it at his Canadian store called “Pirate Joe’s”. While that whole setup is entertaining, Trader Joe’s sued for trademark infringement in the United States, which made zero sense. The store was in Canada, not the States, reselling purchased items is not trademark infringement, and Trader Joe’s was free to open up Canadian stores if it chose.
Fast forward to the present and Trader Joe’s is trying to stretch trademark law yet again, this time to go after one man’s website that is selling parody t-shirts with a picture of Joe Biden and the moniker “Traitor Joe”, all mocked up to look like the store logo. Trader Joe’s sent a threat letter to the man, Dan McCall, who was represented by friend of the site Paul Alan Levy.
I recently had the pleasure of representing Dan McCall again — author of such wicked parodies as NSA – the Only Part of Government That Actually Listens (we got to sue the NSA for a declaratory judgment of noninfringement); Ready for Oligarchy (over which we came with hours of filing suit against Hillary Clinton’s exploratory committee); and Bernie Is My Comrade (Sanders’ committee had the smarts to retract quickly). Last week, I sent a response to a demand letter sent on behalf of Trader Joe’s from a BigLaw attorney lawyer who, considering his claim to be a “seasoned intellectual property litigator,” really should have known better than to subject his client to the Streisand Effect.
You can see the image in question below.
I’ve included Levy’s response embedded below so that you can read it in full. Now, if McCall sounds at all familiar to you, it’s because he’s made a habit out of annoying large institutions by creating parody logos of their branding. Hillary Clinton, Bernie Sanders, the NSA, and DHS have all come calling for him at some point. This is part of the context of Levy’s note that competent counsel really should know better than to send this threat letter: McCall and Levy have been through this before and they’ll get through it again.
As to the merits of supposed trademark infringement, well, the response letter does a fairly thorough takedown of any such arguments. Levy starts off by pointing out to Trader Joe’s that literally nobody is going to think it endorsed or produced this t-shirt. In fact, the company’s own threat letter notes how this puts the company in a bad light, so why would it also think the public would think the shirt came from Trader Joe’s?
But the real trump card in all of this is that the t-shirt is protected speech as parody.
Trademark law aside, McCall’s use of the image to comment on the President of the United States, while playing on the name of a leading grocery store chain, is speech squarely protected by the First Amendment. Consequently, any application of trademark law to quash such uses would be highly suspect. Although McCall’s products are sold, their contents are noncommercial speech, which qualifies for full First Amendment protection.
There’s a bit more in there, including an odd copyright claim over some of the imagery and the fact that Trader Joe’s invoked the DMCA against McCall even though his company, Liberty Maniacs, is not an interactive website allowing user input, but that’s more icing on the cake type stuff. What is made clear in all of this is that Trader Joe’s has a legal team that is making quite spurious threats that would be highly likely to be defeated in court.