Foxworthy v. Custom Tees, Inc.
879 F.Supp. 1200 (1995)

  • Foxworthy was a comedian who wrote a lot of jokes that started with, "You might be a redneck if...." Custom Tees began producing a line of T-shirts that had Foxworthy's jokes on them, slightly reformatted. Foxworthy sued in order to get an injunction for trademark infringement.
    • Custom Tees argued that they had changed the jokes just enough to avoid infringing on Foxworthy's trademark.
  • The Trial Court found for Foxworthy.
    • Foxworthy never had a registered trademark.
      • Under 15 U.S.C. 1125(a), unregistered trademarks are still protected.
      • That's called a common law trademark.
    • Custom Tees argued that the term "You might be a redneck" was purely functional and therefore not trademarkable. However, the Trial Court disagreed.
      • The term became a catch phrase when used in connection to humor. Due to Foxworthy's efforts, the term was easily identifiable with Foxworthy.
      • Therefore the trademark was descriptive but had taken on a secondary meaning. That made it trademarkable.
    • The Trial Court found that Foxworthy did not have a claim to all redneck humor, but just those jokes that distinguishes his humor from other comedians.
      • In a similar case, the Dallas Cowboys cheerleaders were successful in stopping other teams from using similar cheerleader outfits even though they didn't claim a trademark to the concept of cheerleader outfits. Only ones of similar color and style to theirs.
    • The Court found that Custom Tees use of the jokes would confuse the public into assuming they were Foxworthy-approved products.
      • The standard for trademark infringement is whether the infringing product is likely to cause confusion with the trademarked product. There are a number of factors that the courts can use to determine if an infringing product is liable to cause confusion:
        • How unique is the trademark?
          • Suggestive or fanciful trademarks have a stronger case than descriptive trademarks.
        • How well known is the trademark?
        • How similar are the two names/phrases?
        • How similar are the two products?
        • How similar are the sales methods?
        • How similar is the advertising?
        • Is this a product that people think a lot about before purchasing?
        • Is the infringing product actively trying to cause confusion?
        • Is there any actual data that that general public is confused?
    • A trademark can never be used to bar competitors from marketing a different product. If Custom Tees could successfully make a case that it was impossible to tell a joke about rednecks without using the phrase, Foxworthy would not be able to maintain the trademark.
  • Foxworthy was selling t-shirts, but even if he wasn't he still would have a case. He could argue that he might market t-shirts (since many similar comedians do), and therefore it's trademark infringement even though he didn't have a similar product.
    • If he had never marketed any products, he would probably be out of luck.