It appears that the drama over Brian Lichtenberg's designer drugs t-shirts has only just begun. Three major drug manufacturers are contemplating filing suit against Los Angeles-based boutique Kitson (and Lichtenberg?) for selling t-shirts bearing their brand names. The makers of Adderall, Vicodin and Xanax are reportedly set to take legal action against Kitson, and with the drug companies' nearly unlimited budgets for legal proceedings, Lichtenberg and Kitson likely don't stand a chance.
A representative from one of the producers of Adderall said: "We had no involvement NOR do we approve of the sale of such a product using Adderall to glorify the misuse of our product."
Further, a spokesperson from Abbott, the firm behind Vicodin, claims: "Prescription drug use should not be trivialized. It is a serious issue and we will be taking legal action to stop the clothing company from trying to sell such a product."
Exactly what claims the drug manufacturers will bring is not clear just yet. While each of the prescription drug companies has active federal trademark registrations that cover the names Adderall, Vicodin and Xanax, these marks are only valid in the class of goods related to pharmaceuticals. None of the registrations extend to clothing or accessories. With this in mind, the drug makers could likely sue for trademark dilution (per the Trademark Dilution Revision Act of 2006, regardless of actual or likely confusion, assuming the drug companies' marks are "famous"), which comes in two forms. One type of dilution is by blurring, which involves the gradual whittling away of the identity and distinctiveness of the mark or name by its use upon non-competing goods (aka the use of the company's mark by another makes the brand less recognizable).
The other type is tarnishment, which generally arises when a party's trademark is linked to products of inferior quality or is portrayed in an unwholesome or unsavory context. Generally, tarnishment has been found in cases where a distinctive mark is depicted in a context of sexual activity, obscenity or illegal activity. If Kitson/Lichtenberg want to claim the affirmative defense of parody/fair use, they will have to prove it. Generally, a parody must be clever enough so that customers will not assume the original trademark owner is connected with or approving of the parody. So, the critical issue for achieving a valid parody, is whether the party that created the "parody" sufficiently exaggerated or distorted the trademark so that it is clearly distinguished from the original. You may recall that in 2007, the Fourth Circuit Court of Appeals held that Haute Diggity Dog's “Chewy Vuiton” plush dog toys were successful parodies that did not infringe or dilute the famous LOUIS VUITTON trademarks or trade dress. We'll see how this plays Lichtenberg's "parody" tees play out. More to come ...