5th Circ. decision in favor of “Krusty Krab” as a trademark provides a word of warning to craft brewers looking to pay homage to their favorite things.

What do the Daily Planet, the General Lee, Kryptonite, and Conan the Barbarian all have in common with the Krusty Krab from SpongeBob SquarePants? You’ll likely be sued for using them as names or in association with your beer without authorization.

In addition to copyright protection, certain popular elements from series – think the Millennium Falcon, the Enterprise, or Xavier’s School for Gifted Youngsters – carry such weight and association and have been used or licensed by their creators in things like video games, merchandise, even musicals, that they are afforded trademark protection through those uses and the association with the greater work. This issue was recently tested and affirmed in a 5th Circuit decision in favor of Viacom – the owner of the popular SpongeBob SquarePants cartoon – against IJR Capital Investments – a company looking to open a seafood restaurant which had applied for an intent to use the mark “THE KRUSTY KRAB.”

The opinion from the 5th Circuit provides enough detail and background to be a great example and guidepost for people considering a fanboy/fangirl alcoholic beverage product named after someone else’s creative work.

In the case, Viacom had won judgment against the putative restaurateur based on a theory that it had a common law trademark to the Krusty Krab name and that a use by the defendant as a name for its seafood restaurant would infringe, causing confusion and the impression that Viacom – via SpongeBob – had some association or sponsorship or licensed relationship with the business.

Noting that the Lanham Act provides ownership of a trademark through use, and not registration, the court held that specific elements from within a television show – as opposed to the title itself – receive trademark protection. Citing to examples from other courts finding in favor of protections for the General Lee from the Dukes of Hazard, Conan the Barbarian, and Kryptonite and the Daily Planet from Superman, the Court found that trademark protection was available:

We conclude that they can.  While this court has never explored this precise issue, we have affirmed a judgment against the junior use of Conan the  Barbarian—the title character of a comic book series—in a restaurant concept. This holding suggests that trademark protection may be granted to certain characters,  places, and elements of a broader entertainment entity. Additionally, other courts have unequivocally extended this protection to fictional elements of entertainment franchises.    In Warner Bros., Inc. v. Gay Toys, Inc., the Second Circuit held that trademark protection may extend “to the specific ingredients of a successful T.V. series.”  The Second Circuit held in that case that the General Lee—an orange muscle car with a Confederate flag emblem that was “prominently featured” on the successful television series “The  Dukes of Hazzard”—fell “within the ambit of Section 43(a)” of the Lanham Act. Subsequently, the Seventh Circuit also affirmed an injunction barring the junior user from making  a model of the “General Lee.” The underlying purposes of trademark are to protect goodwill and “to protect consumers against confusion and monopoly,” and “to protect the investment of producers in their trade names to which goodwill may have accrued and which goodwill free-riders may attempt to appropriate by using the first producer’s mark, or one that is deceptively similar.” Extending trademark protection to elements  of television shows that serve as source identifiers can serve those purposes.

The Court noted the popularity of SpongeBob SquarePants and the use of the Krusty Krab as a feature in over 80% of its episodes along with the fact that Viacom licensed the Krusty Krab in Lego sets, as part of plastic aquarium sets, as a musical, and in online video games as factors in determining that Krusty Krab was a source identifier and created “a separate and distinct commercial impression … [it] performs the trademark function of the identifying source.”

Because it was a mark (common law mark earning protection based on use and not registered by Viacom) that was “integral” to SpongeBob SquarePants, and had acquired distinctiveness through use in association with the products mentioned above and in connection to the popular TV series, the mark deserved protection and the Court upheld the judgement in favor of Viacom keeping the restaurant from using the name.

While we’ve written before on this blog about parody in copyright and finding methods for allowing spoofs or uses that have association with popular memes or shows, the notion that an element you might be using for your beer, wine, spirits or other products might be so integral and carry such an association with the show/movie/comic/product you’re paying homage to that it, through other factors like being used in licensed products, might carry trademark protection in addition to copyright protection should give you pause and convince you to reconsider (or at least consider) using such a name or reference.

Ashley Brandt

Hi there! I’m happy you’re here. My name is Ashley Brandt and I’m an attorney in Chicago representing clients in the Food and Beverage, Advertising, Media, and Real Estate industries. A while back I kept getting calls and questions from industry professionals and attorneys looking for advice and information on a fun and unique area of law that I’m lucky enough to practice in. These calls represented a serious lack of, and need for, some answers, news, and information on the legal aspects of marketing and media. I've got this deep seeded belief that information should be readily available and that the greatest benefit from the information age is open access to knowledge... so ... this blog seemed like the best way to accomplish that. I enjoy being an attorney and it’s given me some amazing opportunities, wonderful experiences, and an appreciation and love for this work. I live in Chicago and work at an exceptional law firm, Goldstein & McClintock, with some truly brilliant people. Feel free to contact me at any time with any issues, comments, concerns… frankly, after reading this far, I hope you take the time to at least let me know what you think about the blog and how I can make it a better resource.

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