Judge Easterbrook gives a 7th Circuit-standard breezy treatment of the trademark claim here. Eastland owns a registered mark for Phifty-50, a rap group, which produced a CD in 2003 (and a t-shirt). Eastland sued Lionsgate for using 50/50 as the title of a 2011 movie.
The district court dismissed the complaint on the ground that the movie’s title was descriptive: the main character had a 50% chance of suviving cancer. Eastland argued that this was a defense, not an element of the claim, and should have been done on summary judgment, which it expected to be expensive enough to make defendants settle. “Counsel was surprised when reminded, at oral argument, that a motion for summary judgment can precede discovery, leaving the adverse party with an obligation to show a need for discovery under Rule 56(d).”
The court of appeals didn’t need to tackle the issue of whether the movie ought to be treated as part of the complaint on a motion to dismiss as integral to the complaint (I don’t think this is a “difficult” question, but ok). Nor did it need to decide whether to adopt the rule of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which would be unnecessary constitutional adjudication (or, I guess, unnecessary constitutional avoidance).
This complaint failed because it didn’t allege that the use of 50/50 caused any confusion about source, “and any such allegation would be too implausible to support costly litigation.” At oral argument, counsel conceded that no confused consumer has ever contacted Eastland looking for the film or complaining about its contents/quality. Nor did the complaint allege that anyone went to defendants looking for a rap group. There was no survey. (Given the previous statement about implausibility, it’s not clear why alleging a survey should matter, especially when surveys are so often picked apart by courts upon inspection.)
Apparently calling back to an older understanding of incontestability, the court then said that if the film’s title had been Phifty-50, “allegations of confusion or secondary meaning could be omitted from the complaint,” because the mark was incontestable. (Even under the older understanding, this seems wrong because a film is not a rap group; incontestability could have meant a presumptively exclusive right to use the mark on the registered goods before KP Permanent, but as far as I can tell the registration here doesn’t extend to films.) But 50/50 isn’t Phifty-50, and the latter was registrable principally because “it is a made-up homophone of a familiar phrase, which in ordinary usage is suggestive or descriptive. It takes a powerful showing of association between such an expression and a particular producer of goods to establish a trademark claim—and Eastland Music has not attempted such a showing.” (Interesting conflation of suggestive and descriptive, as well as of protectability and confusion.)
50/50 and soundalikes have been used in titles for a long time. Wikipedia lists eight films with that title, six of which predate Eastland’s use, and one of those is by and about a rock band. Wikipedia also lists three TV shows with that name, an episode of a fourth show, and three songs whose titles contain the phrase. Nor is this list comprehensive; Wikipedia omits Phifty-50 and “doubtless” other examples. (OK, there are many things one could say about Wikipedia and its omissions, but how about: if you hemmed and hawed over considering the film on a motion to dismiss, what is this discussion doing here? Is it relevant to Iqbal/Twombly plausibility? I would find that claim persuasive, in fact, but it deserves discussion.) Given all these examples, Eastland “is a very junior user and in no position to complain about the 2011 film.” Phifty-50 “entered a crowded field, and its rights are correspondingly weak and narrow.” (It seems to me that Phifty-50 did not enter the movie title field at all.)
Judge Easterbrook turned to a different argument: A work’s title can infringe another author’s mark only if it falsely implies that the author is the work’s origin. Dastar. Thus, Truman Capote’s Breakfast at Tiffany’s, and the resulting movie, don’t infringe the rights of Tiffany & Co. “because no reasonable reader or moviegoer thinks that the jeweler is the source of the book or the movie.” Parenthetically, the court noted that it wasn’t considering the possibility of dilution, which is good, since such a claim against a title wouldn’t be available under the federal statute/constitutional under state statues.
Dastar held that “trademark law cannot be used to obtain rights over the content of an artistic work; that would amount to an indefinite extension of a copyright. Titles of songs and movies cannot be copyrighted; Dastar tells us not to use trademark law to achieve what copyright law forbids.” Only confusion about origin—the producer of the tangible product sold in the market—suffices, and the complaint did not and could not plausibly allege that consumers treat Eastland as the producer or source of 50/50, or treat Lionsgate as the producer of the 2003 rap album.
Final note: that last paragraph’s language might be of great interest not just with respect to trademark claims but also to the right of publicity. If copyright is the body of law that governs intellectual property/misappropriation claims about the content of an artistic work, then neither trademark nor the right of publicity should interfere—the more so since the right of publicity, being a state right, is subject to conflict preemption while federal tradmark claims are not.