I heart New York, it’s true, but can that sentiment be trademarked? We love puns and catchphrases, but a recent case demonstrates just how hard it can be to protect them. David Kluft of Foley Hoag explains how artist Elektra Gorski tried to do just that, with a T-shirt she sells featuring the motto, “Lettuce Turnip the Beet,” which children’s clothes manufacturer Gymboree recently plastered all over its own T-shirt line.
Gorski claimed Gymboree violated her copyright and trademark rights in a suit in the U.S. District Court for the Northern District of California. With respect to the copyright claim, U.S. District Judge Lucy Koh explained that a short phrase is not copyrightable, no matter how it’s arranged. Kluft notes that Gorski had alleged the arrangement, shapes, typefaces and placement of the design elements were too close to hers, but this was dismissed by the court.
As for the trademark claim, Gorski had more luck, says Kluft. Gymboree argued that she was selling a pun as the product itself, and not a T-shirt. Kluft characterizes the main argument as follows: “Gymboree’s use of the term was simply a descriptive and nonsource-identifying reference to the pun (i.e., to the product), which could not possibly cause any confusion.” Fortunately for Gorski, the court wasn’t persuaded and the parties are now entering the discovery phase.