Can Wham-O Sue Over Dickie Roberts?

Wham-O, the company that makes Slip’n Slide, filed suit on Monday against the makers of Dickie Roberts: Former Child Star, claiming that the film infringes on their trademark. (In one scene, Spade’s character hurls himself onto a dry Slip’n Slide and comes to a welt-raising halt.) How can a movie infringe on a trademark, and does Dickie Roberts really infringe on Wham-O’s?

Under U.S. trademark law, the makers of Dickie Roberts might be liable in two ways: They could have violated the venerable ban on trademark misrepresentation, or the new-fangled prohibition against trademark dilution. The first U.S. misrepresentation law harks back to 1870, when U.S. trademark enforcement law was designed to prevent one company from using another’s name to make money. If Explainer owned a restaurant called Next Question Hoagies, and someone opened a Next Question Deli across town, there would a strong argument that the newcomers were coasting off Explainer’s company name. Misrepresentation suits typically don’t succeed unless the defendant is actually marketing a similar product with a name close enough to the trademark that it confuses consumers. Since the makers of Dickie Roberts aren’t in the business of selling water-logged rubber sheets, a misrepresentation argument is unlikely to pass muster in court.

It’s far more likely that Wham-O’s lawyers will focus on the dilution argument codified by the U.S. Federal Trademark Dilution Act of 1995. Companies have come to view brand image as property in and of itself, and protecting brand names is now a central concern of intellectual property law. The Trademark Dilution Act allows holders of “famous” trademarks to sue the responsible parties when their marks are “tarnished” or “blurred.” Wham-O can argue that for a Dickie Roberts viewer, the Slip’n Slide reputation for safety will be tarnished by Spade’s idiot antics. They may even argue that the Slip’n Slide brand has been blurred by its connection with the movie—conceivably, consumers might see the trailer and wonder if Wham-O has started making films.

The problem with banning dilution is that it’s tough to measure. Before 1995, many states already had dilution laws requiring trademark owners to prove only that an infringing product would “likely” dilute their brand. The Federal Trademark Dilution Act used different language in its formulations, and in the March 2003 decision Moseley v. V Secret Catalogue, the Supreme Court took advantage of the new act’s ambiguity to change the rules a bit. In the case, the makers of the Victoria’s Secret catalog sued the owners of Victor’s Secret, an “adult novelty” store in Kentucky, when they refused to drop the name (the store did try changing its name to “Victor’s Little Secret,” but Victoria’s was not amused and pressed the suit). A  skeptical court eventually decided that “likely” dilution wasn’t good enough—Victor’s was not liable because nobody could prove that dilution had actually occurred. In his majority opinion, Justice John Paul Stevens explained that prosecutors need not document the economic “consequences” of dilution, but they must provide at least “circumstantial evidence” that it took place. So, to prove that Dickie Roberts infringed its trademark, Wham-O will have to produce some kind of evidence that the movie has hurt their sales or their image.

Next question?

Explainer thanks Ted Davis of Kilpatrick Stockton LLP.