As reported by the Houston Chronicle, the Dallas Morning News, and the local Austin TV station KVUE, FremantleMedia, owner of the popular FOX television program American Idol, has sued local Austin strip club Palazio Men’s Club (reasonably safe for work) for the Club’s creation of a weekly amateur special called “Stripper Idol.”
FremantleMedia, which owns the country’s most-watched TV show, says Palazio’s weekly amateur stripping contest is a trademark violation, one that tarnishes the company brand and could lead the public to believe the TV show is sponsoring the event.
Palazio managers, who first thought the lawsuit was a joke, say they have no intention of ending the Thursday night strip-off.
They say the contest – where girls have 60 seconds to dance topless, then are ranked by audience applause to win $500 – bears no resemblance to the hit TV show.
FremantleMedia’s lawsuit takes issue more with the club’s marketing than with the contest itself. The suit notes that Palazio uses the word “idol” in the contest name – a direct link to American Idol, which starts its new season Tuesday. And it has designed a contest logo that uses a “color scheme, design and font” mirroring that of the TV show. In addition to using the logo in advertisements, the club has waitresses wear T-shirts emblazoned with it – T-shirts cut, tied and tailored in revealing ways.
The suit’s claims are hogwash, said “Kinky” Kelly Jones, a club manager and the show’s emcee. Fremantle can’t lay claims to the word “idol,” he said.
“That word is biblical,” he said, “and has been around for thousands of years.”
And while Stevenson said the club would alter the logo if necessary, he added that he thought the whole suit was a bum deal.
“I didn’t know you could copyright an oval,” he said.
This is seriously a hard case. “Kinky” is probably right–it will be a stretch for Fremantle to say that any entertainment service featuring a contest in the United States cannot use the word “Idol” in its title. What Kinky doesn’t realize, though, is that the Lanham Trademark Act protects a junior trademark user from using any mark likely to cause consumer confusion or mistake not only as to the source of goods or services (that is, who provides the service or produces goods) but also “as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” In other words, if Kinky markets his stripper competition in such a way that a customer is likely to be confused or deceived that Stripper Idol is been sponsored by, or is affiliated with, American Idol, then American Idol can win its lawsuit. Most courts use a multi-factor test to determine likelihood of confusion, which usually includes balancing the fame and distinctiveness of the senior user’s mark, the similarities of the trademarks, the care of the consumers, the channels in which the products are marketed, any instances of actual confusion, and the intent of the junior user in adopting the mark. If you examine the STRIPPER IDOL advertisement above, there are certainly similarities with the well-known (and perhaps famous) AMERICAN IDOL and Design logo that is used on the TV show:
The consumers of both American Idol and Stripper Idol are not particularly careful (just look at the voting on the show!) or “sophisticated”, and while stripping and musical talent aren’t exactly the same, one could argue that the goods and services are “related” enough (just look at the promo for the new season, with the girl singing in a bikini and Simon allowing her to go on.) When you consider that Kinky probably didn’t just “come up” with the “Stripper Idol” name on his own, but rather likely intended his prospective customers to at least think of the Fox show, it would appear that many of the factors would favor Fremantle.
Kinky’s quote also illustrates a common misconception (and confusion) among Americans. Fremantle doesn’t have a “copyright” on an “oval,” (you likely cannot copyright the shape of an oval, as it lacks minimal creativity) but that is a design element of its trademark, which can be used to determine whether confusion is likely.
I haven’t even addressed the issue of “trademark dilution,” the concept that regardless of competition, a “famous” trademark’s market power and presence can be “diluted” by a similar (usually identical) use by a junior user. Trademark dilution comes in two flavors — dilution by blurring (blurring the unique distinctiveness of the mark) or dilution by tarnishment (a connection that causes harm to the reputation of the senior user). Associating an amateur strip contest with American Idol just may fall into that latter category.
On the other hand, I’m sure Fremantle’s attorneys thought long and hard about filing suit in this case. Because rather than shutting down a potential (embarassing) infringer, it has made the club (and its amateur strip competition) more famous and more popular. On the one hand, trademark owners have to police their rights, or otherwise the marks will become “diluted” and unprotectable (and perhaps even generic–like aspirin and almost Xerox). On the other hand, fighting needless battles against small proprietors delivering unrelated goods and services just creates negative goodwill. My guess is that they saw a rather unsympathetic defendant using a very similar logo to create a knock-off competition and believed this could be a prime case to “set an example” to prophylactically prevent others from using the IDOL trademarks or trade dress in simiar ventures.
I’m not sure that stuffing a few smelly singles into Fremantle’s g-string alone will put a smile on this media giant’s face. But it wil be a fun one to watch.
(All puns, intended.)
UPDATE: Conde Nast Portfolio.com has posted a similar story, except that the author contends that it’s a case of “copyright infringement.” Indeed, there is sometimes some crossover between articles that are copyrighted and articles that may be entitled to trademark protection– the characters Mickey Mouse or Popeye may be examples. But, alas, it appears that the Conde Nast journalist is just as clueless as strip club owner Kinky on the differences between copyright and trademark. I’ll blog on this more soon, but for now, here’s a handy primer from the PHOSITA blog.
UPDATE No. 2: