NIKE, Inc. v. "JUST DID IT" Enterprises

6 F.3d 1225, 1993 WL 382494
CourtCourt of Appeals for the Seventh Circuit
DecidedSeptember 28, 1993
DocketNo. 92-3303
StatusPublished
Cited by32 cases

This text of 6 F.3d 1225 (NIKE, Inc. v. "JUST DID IT" Enterprises) is published on Counsel Stack Legal Research, covering Court of Appeals for the Seventh Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
NIKE, Inc. v. "JUST DID IT" Enterprises, 6 F.3d 1225, 1993 WL 382494 (7th Cir. 1993).

Opinion

MANION, Circuit Judge.

Humor, like beauty, is in the eyes of the beholder. When artist Michael Stanard designed and sold t-shirts and sweatshirts with a “swoosh” design identical to Nike, Inc.’s, but with the word Mike instead, Nike saw no humor and sued for trademark infringement. Stanard responded with a parody defense. The district court granted Nike’s motion for summary judgment, 799 F.Supp. 894. We reverse and remand.

I. Background

Nike manufactures and markets footwear, apparel and related accessories. To identify with its products, it has used the word NIKE and/or a swoosh design as its trademarks.1 Since 1971, Nike has invested substantial sums in promoting its products. For example, from 1977 through 1991, Nike spent more than three hundred million dollars advertising the trademarks, now known to nearly every athlete and sports fan in the world. Aggregate sales revenues since 1971 for items bearing the trademarks have exceeded ten billion dollars. Beginning in 1989, Nike has used the phrase JUST DO IT as a slogan for its sweatshirts; the slogan has been subsequently used on t-shirts, caps and other accessories.2 Aggregate sales of JUST DO IT items have exceeded fifteen million dollars. As a result of these expenditures, NIKE, the swoosh design, and JUST [1227]*1227DO IT have gained widespread public acceptance and recognition.

Stanard is an award-winning commercial artist whose works include, among others, the trademark “Louisville Slugger,” printed on its baseball bats. As a summer project, he and his daughter decided to market his first name, Mike, as a takeoff on the NIKE logos. They named the enterprise JUST DID IT. Stanard marketed t-shirts and sweatshirts ($19.95 to $39.95) to the general public with the given or first name of Michael, focusing on the northern suburbs of Chicago. He also mailed brochures to college athletes and celebrities named Michael. Approximately two-thirds of those purchasing his shirts were named “Mike.” Stanard asserts that the other one-third probably bought a t-shirt for a friend, relative or loved one named “Mike.” Although JUST DID IT Enterprises mailed over 1,400 brochures, the project lost money.

Only one letter separates MIKE from NIKE. Even Stanard admits that a person might not notice the difference between the two from across the room. In fact, Stanard admitted that his “whole point” was to give someone viewing from a distance the impression that the shirt actually read NIKE. In essence, Stanard believes that the word play (such as his own personal logo of STANARD with the background of the Standard Oil trademark) is humorous and deserves First Amendment protection as a fair use of trademarks. He sees this whole matter as a “joke on Nike’s image which has become a social phenomenon,” a “trick upon the perception of the viewer,” and his own “personal pun.” The district court disagreed. Although the record contains no mention that anyone ever actually confused the two designs, the court concluded as a matter of law that MIKE and NIKE were too similar and likely to confuse consumers. The court granted Nike’s motion for summary judgment and this appeal followed.

II. Discussion

Trademarks consist of words or symbols that identify and distinguish goods for the benefit of consumers. 15 U.S.C. § 1127. Manufacturers and merchants invest a great deal in trademarks for the good will of their businesses. Obviously they hope the public. at large identifies their trademarks. • When businesses seek the national spotlight, part of the territory includes accepting a certain amount of ridicule. The First Amendment, which.protects individuals from laws infringing free expression, allows such ridicule in the form of parody. Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988). Webster defines parody as “a writing in which the language and style of an author or work is closely imitated for comic effect or in ridicule.... ” Webster’s International Dictionary (3d ed. 1981). Parodies date as far back as Greek antiquity. See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir.), cert. denied, 483 U.S. 1013, 107 S.Ct. 3254, 97 L.Ed.2d 753 (1987); see also Acuff-Rose Music, Inc. v. Campbell, 972 F.2d 1429, 1440 (6th Cir.1992) (Nelson, J., dissenting), cert. granted, — U.S. -, 113 S.Ct. 1642, 123 L.Ed.2d 264 (1993).

Parody or satire, as we understand it, is when one artist, for comic effect or social commentary, closely imitates the style of another artist and in so doing creates a new art work that makes ridiculous the style and expression óf the original.

Rogers v. Koons, 960 F.2d 301, 309-10 (2d Cir.), cert. denied, — U.S. —, 113 S.Ct. 365, 121 L.Ed.2d 278 (1992).

But parodies have a legal hurdle to overcome. Federal law prohibits copies or imitations that confuse consumers. 15 U.S.C. §§ 1114(1)(a), 1125(a). This protects trademarks as a form of intellectual property, L.L. Bean, 811 F.2d at 29, and guards against confusion, deception or mistake by the consuming public. See James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (7th Cir.1976) (“people do not confuse trademarks—trademarks confuse people” (citations omitted)).

To prevail against an alleged abuser, the plaintiff “must show a valid trademark and a likelihood of confusion on the part of the public.” A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903, 906 (7th Cir.1986); see McGraw-Edison Co. v. Walt Dis[1228]*1228ney Prods., 787 F.2d 1163, 1167 (7th Cir.1986). The parties do not dispute' that Nike has secured valid trademarks in the terms NIKE and/or its Swoosh Design and JUST DO IT. The ultimate question presented in this case is whether Stanard’s goods confuse customers. Parodies do not enjoy a dispensation from this standard. In the more common commercial exploitation arena, see Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Group, Inc., 886 F.2d 490, 495 & n. 3 (2d Cir.1989), the court is required to consider several factors when assessing whether or not there is a likelihood of confusion by the general public:

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6 F.3d 1225, 1993 WL 382494, Counsel Stack Legal Research, https://law.counselstack.com/opinion/nike-inc-v-just-did-it-enterprises-ca7-1993.