Earlier this week, the owner of the Dallas Cowboys Cheerleaders brand sued alternative rock band My Chemical Romance over the use of look-alike DCC uniforms during the band’s five-night run at the Hollywood Bowl, which pays homage to its iconic 2006 album, The Black Parade. 

According to DCC, dancers wearing the look-alike uniforms took to the stage with rifles and participated in a staged gunfight in which they pretended to shoot one another. DCC alleges that the costumes copied the distinctive elements of its signature uniform: white boots and shorts, blue tops tied above the midriff, and white vests decorated with blue stars.

Are cheerleading uniforms eligible for trademark protection? Yes: trademark protection extends not only to names and logos, but also to “trade dress,” which refers to a distinctive look or design that consumers associate with a particular source. DCC asserts trade dress rights in the specific combination of white boots, white shorts, a white belt decorated with blue stars, a blue bolero blouse, and a white vest decorated with blue stars and white fringe.

The trademark claims hinge on whether MCR’s use of “look-alike” cheer uniforms in the stage production creates the mistaken impression that DCC participated in, sponsored, approved, or endorsed MCR’s performance. The federal trademark dilution claim hinges on whether (1) the DCC uniform is famous, and (2) the use by MCR is likely to tarnish DCC’s reputation. DCC says that putting dancers in the look-alike uniforms during a staged gunfight associates its carefully cultivated brand with simulated gun violence.

What about the First Amendment? Because we are talking about the use of a trademark in an expressive work (as opposed to a situation where MCR is selling knockoff DCC uniforms), DCC’s trademark rights must be balanced with MCR’s First Amendment rights. 

Anticipating a First Amendment challenge, DCC alleges that MCR can convey its message without using the DCC uniform, and makes clear it is not asking MCR to change its music, politics, choreography, storyline, or even its decision to put armed cheerleaders onstage. 

DCC’s “alternative means of expression” argument harkens back to its 1979 lawsuit against the creators of an adult film. In Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema Ltd., DCC got an injunction barring the distribution or exhibition of the “sexually depraved” motion picture Debbie Does Dallas, a film about a fictional high-school cheerleader who eventually becomes a “Texas Cowgirl” and dons a cheer uniform that was, according to the court, “strikingly similar” to DCC’s. Rejecting the filmmaker’s First Amendment argument, the Court held that the mere fact that a film conveys a message does not mean the filmmaker can use a protected trademark to do so, especially where there are  ways to deliver commentary without violating anyone’s intellectual property rights.

But Pussycat Cinema predates the Second Circuit’s landmark 1989 decision in Rogers v. Grimaldi, which recognized that when a trademark is used in an expressive work, the trademark owner’s rights must be balanced against the creator’s First Amendment rights. Under Rogers, trademark claims involving expressive works** face an uphill battle where the challenged use has artistic relevance to the work and does not explicitly mislead consumers as to its source.

Unfortunately for those hoping to see the First Amendment issue tested (me), the question will remain unresolved, at least for now. According to the docket, the parties reached an agreement, and the court canceled a hearing scheduled for today on DCC’s request for emergency relief barring MCR from continuing to use the uniforms. 

MCR returns to the Hollywood Bowl on Friday, October 30. We may never know whether MCR’s use of look-alike uniforms is protected expression under the First Amendment, but we should soon get an answer to another question: what will the cheerleaders be wearing?

**The 2023 U.S. Supreme Court decision in Jack Daniel’s v. VIP Products limited application of the Rogers test to cases where, like here, the defendant is NOT using a protected trademark as a designation of source for their own goods or commercial products.