Goodnight for Twilight unofficial collectors' guide

Summit Entertainment, LLC v. Beckett Media, LLC, 2010 WL 147958 (C.D. Cal.)

Summit owns copyrights and trademarks associated with Twilight and New Moon, the movies. Beckett sold two "fanzines" (labeled unofficial collectors' guides, and not corresponding to my idea of a fanzine, but ok) reproducing numerous images from the films, along with trademarks and promotional images related to the films. In particular, Summit alleged that the fanzines used Summit’s stylized Twilight trademark on their covers; contained unauthorized reproductions of photos, including photos not available from Summit’s website and photos altered in violation of the site’s terms of use; contained removable posters and images of trading cards that were also unauthorized reproductions of Summit’s works. Covering the internet bases, Beckett also featured one of the fanzine covers on its Facebook pages and attempted to auction the printing plates for the covers on eBay.

Summit had little trouble with its copyright and trademark claims, apparently with little dispute from Beckett. Of note: the court rejected Beckett’s argument that Summit’s website gave Beckett permission to use many of the images. Beckett didn’t show likely success on that defense, as was its burden, most notably because it couldn’t explain the use of photos not present on the website. Moreover, the license here didn’t allow alterations of the photos (the terms of use said that users “will not edit, alter or modify any of the Content without Summit's prior written approval”), and Beckett altered them, exceeding the scope of the license.

On trademark, the court accepted Summit’s argument that it owned a valid, protectable mark in a stylized, block-lettered TWILIGHT, and Beckett displayed a virtually identical mark in the fanzines, including on the outside front covers and pull-out posters. Moreover, Summit has licensed its mark for a “seemingly endless” list of goods, including posters, which both indicated the strength of the mark and the relatedness of the goods. In the absence of opposing evidence or argument, the court found likely success on the merits.

The court then presumed irreparable injury for both causes of action, despite Beckett’s argument that it had voluntarily ceased the troublesome activities, recalling the fanzines, terminating the eBay auction, and removing the offending cover image from its Facebook page. But as of the day Beckett’s opposition was filed, the fanzines were still “widely available” in retail stores and over the internet. Thus the dispute was not moot. Then, the balance of hardships followed: if an injunction was wrongly denied, Summit’s copyrights and trademarks are “at risk of being devalued,” while granting an injunction would just force Beckett to keep doing what it said it would (cease all offending activity). And there’s a public interest in vindicating copyright rights and avoiding confusion.

The court did agree with Beckett’s objection to the scope of the requested injunction, which would cover fair use as well as foul. Thus, any injunction needed to make express allowance for §107 fair use, and also needed to define Summit’s marks expressly, especially if any marks other than the stylized TWILIGHT were to be covered.

HT Eric Goldman; further discussion here.