Kitson, a Los Angeles boutique, has found itself in the crosshairs of a pharmaceutical giant for using a trademarked prescription drug name, Vicodin, on its clothing designs. This case raises interesting questions on whether the parody or commentary of a registered trademark can triumph over a brand owner’s duty to act on public health grounds against alleged infringers.

Pharma company AbbVie Inc has asked a federal judge in the US District Court in Los Angeles to stop Kitson and clothing designer Brian Lichtenberg from promoting and selling the attire in question, and is seeking an unspecified amount in damages (which it claims it will donate to drug abuse outreach). In a press release AbbVie stated: “We did not approve nor do we condone the use of our brand in this manner… these medications treat serious health conditions and we believe they should never be trivialised.” AbbVie’s complaint also states that the company intentionally avoids the direct marketing of Vicodin to consumers and has invested in promoting against prescription drug misuse. AbbVie contend that Kitson’s clothing “not only misappropriates its trademarks, but also harms the public by promoting irresponsible prescription drug use”.

In response, Lichtenberg, whose clothing designs are marketed by Kitson under the promotional tag-line ‘Just What the Doctor Ordered’, released a statement, via Kitson’s Facebook page, countering: “This particular collection of prescription tees is simply a commentary on what I see happening in our society… these tees are not meant to encourage prescription drug abuse.”

However, Michelle Mancino Marsh, partner at Kenyon & Kenyon LLP, says that, “in a case like this, where sound public policy arguments can be made and the accused use is a commercial one (the selling of t-shirts), the brand owner has a very high likelihood of success. This is really not a case where parody or similar arguments are going to win the day because the use is so clearly commercial and not commentary. There is a lot of precedent for this type of case – the one that springs to mind is ENJOY COCAINE instead of Enjoy Coca-Cola.”

In many respects, this is a straight trademark case but the public health dimension adds complexity and places additional emphasis on the need to police marks for reasons of public safety. Marsh suggests that, in addition to trademark infringement and dilution under the Lanham Act, pharmaceutical companies could try to claim trade libel in such instances, arguing that the clothing coupled with the commentary by the designer disparages the company’s property by associating the drugs with improper casual or recreational use of regulated drugs. “Generally speaking, pharmaceutical companies have been very proactive in stopping misuses of their brand not only for their own brand integrity but also to protect consumers, especially young people.”

Another aspect that makes the case noteworthy is that, in these times of anti-IP sentiment, there has been public support for the brand owner taking action. With an online petition calling for Pfizer and Shire – who produce drugs Adderall and Xanax which also appear in Lichtenberg’s designs – to also take action against Kitson and celebrities using social media to bash the designer, it does not appear that the public mood is with the boutique and Lichtenberg.

This blog was first published in World Trademark Review on 10 December 2013