”I’m within my First Amendment right to parody, and the shirt is just criticizing smoking,” the 26-year-old says.
Shatz, who is from Yonkers, New York, used to have a T-shirt store at the Palisades Mall in New York, but that closed and he took his shirt business on the road to tattoo conventions and eventually put the collection online. His cigarette shirt starts with same a Marlboro cigarette pack and color scheme that is famous the world over, but in his version, the red is bleeding, and instead of saying ”Marlboro” on the pack, large black letters spell out ”death.”
Big tobacco wasn’t exactly enchanted by the design. The takedown letter, sent earlier this month by Roberta L. Horton of the white-shoe D.C. law firm Arnold & Porter, says Shatz should have known that ”Marlboro is the most recognized brand of cigarettes in the United States” when he decided to crib from its iconic cigarette box. It says Shatz ”calculated to mislead consumers into believing that [Philip Morris USA] endorses [them].”
To avoid a lawsuit, Shatz has to quit selling the shirt immediately, ”deliver up for destruction” his entire inventory of the shirts and promise never to sell Marlboro-related merchandise again, the letter says.
But Shatz’s lawyer has fired back his own letter, saying the shirt is plainly parody and Marlboro’s trademark infringement claims ”are nonsense.”
”When we spoke on the telephone you told me that there were hundreds of other cases where sellers of like designs had caved to your client’s demands. I am very disappointed to learn that you have been so successful at bullying other parodists. Skylar Shatz is not going to be one of your victims,” says Paul Alan Levy, of the Public Citizen Litigation Group, in the letter.
A spokesman for Philip Morris USA refused to comment about the Shatz case, but confirms that the company swats lots of gnats like him every year. Last year alone, the letter says, Philip Morris forced the removal of ”over 2,000 brand related references from social networking and e-commerce websites.”
Should Philip Morris and Shatz wind up in a legal showdown, David would probably prevail over Goliath, according to one trademark lawyer with whom we talked. ”If this goes to a judge or jury the defendant would likely win,” says Lisa Ramsey, a law professor at the University of San Diego. ”It’s unlikely there would be any infringement on the trademark here because people wouldn’t think that Marlboro would be putting out T-shirts that say ‘death’ on them.”