Rappers and beach umbrellas rarely cross paths, but that changed when Eminem launched proceedings against Australian beachwear brand “Swim Shady”. The dispute raises a broader question that businesses increasingly face: how far can humour go before it becomes trade mark infringement? And should the UK adopt a clearer parody defence in trade mark law, like the US has?
Slim Shady vs Swim Shady
Eminem, who also goes by ‘Slim Shady’, owns several trade marks containing the word SHADY covering music and merchandise, including applications and registrations for SLIM SHADY in Australia and the US. Swim Shady, a Sydney beachwear start-up, secured a US registration for SWIM SHADY and sought protection in Australia.
Eminem is now challenging both, arguing the name suggests a commercial link or endorsement. Swim Shady insists its brand is a sun-protection pun rather than a hip-hop reference and is seeking to knock out some of Eminem’s older marks for alleged non-use.
At the heart of the dispute is whether “Swim Shady” is a playful nod that consumers will see as humour, or a brand name trading on the reputation of a world-famous persona.
“Lord of the” Problems – Bins and Fries
Playful branding has landed businesses in trouble before. Brighton waste business “Lord of the Bins” received a legal threat from the owners of the Lord of the Rings franchise, objecting to its name, colour scheme and ring-style logo. Although the case didn’t reach judgment, the waste company ultimately rebranded – illustrating the pressure small businesses face when parody edges too close to a famous mark.
In Australia, vegan chain “Lord of the Fries” fared better. Middle-Earth Enterprises opposed its trade mark application, but the Australian Trade Marks Office allowed it to proceed. The conceptual distance between fast food and fantasy novels helped tip the balance, suggesting that humour can survive where the goods, imagery and messaging are sufficiently removed from the original.
Lessons from abroad: Chewy Vuiton and friends
US courts have been more willing to acknowledge parody explicitly. The “Chewy Vuiton” case – dog toys mimicking Louis Vuitton handbags – is the classic example. The toys were obvious jokes, and the court found no likelihood of confusion or dilution.
US cases tend to draw a line between:
- ‘Expressive humour’, where it is clear the joke is not a real product source; and
- Unfair ‘commercial free-riding’, where the parody is used as a brand in a way that capitalises on the original’s reputation.
Where the parody is blatant and consumers won’t assume endorsement, US law can be forgiving. But when the parody functions as a trade mark, identifying the source of goods, the tolerance diminishes.
Where does that leave UK trade mark law?
Unlike for copyright, UK trade mark law contains no explicit parody exception. The legal tests for infringement in the context of parodies invariably focus on:
- Likelihood of confusion; or
- Unfair advantage or detriment to distinctive character or reputation of a mark with reputation.
Parody/humour can be a contextual factor to be taken into account when assessing trade mark infringement (e.g. pointing against a likelihood of confusion), but it is not a defence. Even if consumers aren’t confused, a parody can still infringe, for example, if it “free rides” (i.e. takes unfair advantage) on a well-known brand or harms its image.
Should the UK adopt a parody defence?
Some argue for a specific parody carve-out, similar to the copyright exception introduced after the CJEU Deckmyn decision.[1] They say strong brands risk chilling humour, commentary and cultural expression.
But a statutory exception carries risks. A broad parody defence could:
- Hand third parties a licence to piggyback off famous marks;
- Undermine brand investment and distinctiveness;
- Create reputational harm through tasteless or negative advertisements passed off as ‘jokes’.
Most trade mark practitioners prefer the current framework: parody does not give rise to a defence for trade mark infringement proceedings and a parodic trade mark can be refused by the UKIPO on the basis of bad faith. As the Hearing Officer found in Swatch v Apple[2]:
“whilst parody was an important part of free speech, there was a difference between parody in commercial communications and registering trade marks consisting of parodies of a rival’s marketing signs, and using the trade mark registration system to obtain exclusive rights to such signs went far beyond what was necessary to engage in legitimate parody.”
Back to Swim Shady (Please Stand Up?)
Eminem’s actions are not really about whether Swim Shady’s name is funny. They are about whether the pun is being used as a trade mark in the course of trade and whether it unfairly leverages the goodwill/reputation in SLIM SHADY.
These actions will likely focus on:
- The strength of Eminem’s reputation and existing trade mark portfolio
- How closely “Swim Shady” evokes “Slim Shady”
- Whether consumers might assume endorsement/ association or be confused
- Whether the parody gives Swim Shady an unfair advantage
Practical take-aways for businesses
For UK companies – especially in fashion, tech and consumer goods – playful branding is tempting. But:
- Don’t assume parody will save you: unlike copyright, UK trade mark law offers no exclusion from liability for parodies and parodic trade mark applications are vulnerable to refusal by the UK IPO.
- Distance is your friend: the further away the brand can be in terms of visual, aural or conceptual similarity to the earlier registered mark the better.
- Consider the rights-holder: The more famous (and potentially litigious) the brand, the higher the litigation risk.
- Get trade mark/branding advice early: Abandoning a pun during the naming stage is cheaper than rebranding after a legal challenge.
The Swim Shady dispute may reignite calls for a clearer parody defence in UK trade mark law. But for now, strong brands – from ring-bearing wizards to Detroit rappers – retain the tools to cast shade on imitators whose humour strays too close to their trade marks.
[1] Deckmyn v Vandersteen (C-201/13)
[2] Swatch AG v Apple Inc [2021] EWHC 719 (Ch)
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