First Amendment protects right to make film referencing trademarked attraction

Winchester Mystery House, LLC v. Global Asylum, Inc., --- Cal. Rptr. 3d ----, 2012 WL 5243809 (Cal. App. 6 Dist.)

If you don’t know what the Winchester Mystery House is, you should.  Both parties here agree on that, at least.  As the court explains:

The Winchester Mystery House is known for the mansion built by Sarah Winchester. After Sarah and William Winchester were married, they had a daughter who died shortly after her birth. When William died in 1881, he left his wife a substantial interest in the Winchester Repeating Arms Company. It is popularly believed that a psychic medium told Sarah Winchester in 1884 that her family was cursed by the spirits of those who had been killed by the Winchester rifle. Based on the medium's advice, Sarah Winchester moved to California and bought a farmhouse in what is now San Jose. She then began renovating and adding more rooms to the house. The construction continued 24 hours a day, seven days a week, 365 days a year for the next 38 years, and only stopped when she died in 1922. This work resulted in a 160-room Victorian-style mansion ….

Global Asylum released the film “Haunting of Winchester House,” and plaintiff WMH, which operates this popular tourist attraction, sued for trademark infringement and intentional interference with contract/economic advantage.  The trial court granted Global Asylum’s motion for summary judgment, and the court of appeals affirmed.

In 2010, WMH secured registrations for Winchester Mystery House as a word mark and for an “architectural” mark consisting of the three-dimensional design of the Winchester mansion.  (The various registrations say, in the description field, “The mark consists of the three-dimensional architectural design of a building,” but the image in TESS is from a particular perspective; on the WMH website, there doesn’t seem to be a consistent use of particular images of the house.) It had made various marketing efforts for the attraction, which has also received publicity in various venues.

In 2008, WMH granted exclusive rights to Imagination Design Works to use the House site as a location to film and produce a movie, and also granted it rights to use certain WMH trademarks and copyrights.  In April 2009, a director affiliated with IDW was asked about his future plans.  He ended his response: “The last one, which I really wish I could tell you the title of, but we're still dotting i's and crossing t's, is on a very well known haunted house. We're coming to terms on doing the first movie ever based on this house.”  In June, Global Asylum’s production coordinator asked WMH for location rates to use the property for a “low budget haunted house/ghost story movie” that was to begin production on June 13.  WMH responded that it had just signed a contract with another company for “exclusive rights” to the Winchester story.  In July, WMH and IDW announced that a “Major Hollywood Feature-Film” on the House would begin filming by the end of the year, and that this would be “the first film granted permission to shoot on location.”

In late July, WMH learned that Global Asylum had announced that it was producing “Haunting of Winchester House.”  It sent a letter “regarding possible infringement” of its marks, and then another letter stressing its objection to use of any unauthorized footage of the House.  It didn’t mention its contract with IDW.

The DVD cover for Global Asylum’s film has its title, “HAUNTING OF WINCHESTER HOUSE,” and states that it is a “A MARK ATKINS Film” and that it is “THE TERRIFYING TRUE STORY.”  It also shows a Victorian-style structure. The back jacket cover states: “A family moves into the 160 room mansion to act as caretakers, but when a malevolent force abducts their daughter they discover why the house deserves its reputation as one of the most haunted places in America.”  The content of the DVD also includes the title and the image of the Victorian-style structure, which appears in the movie but isn’t the actual House.  The plot includes the ghosts of Sarah Winchester, her adolescent daughter, her deaf brother, and the ghosts of those killed by Winchester weapons; the daughter and brother are not true historical figures.

On appeal, WMH argued that the trial court erred by applying Rogers v. Grimaldi without first determining that WMH’s marks “had transcended their source-identifying purpose as trademarks and become an integral part of the public discourse, thus taking on an expressive function.”  The 9^th Circuit’s Barbie cases emphasized that Barbie had an important role in American culture, and WMH argued that such a finding was a precondition for Rogers treatment.  It cited Rebelution, LLC v. Perez, 732 F. Supp. 2d 883 (N.D. Cal. 2010), which quite wrongly held that the 9^th Circuit has limited Rogers to cases in which the plaintiff’s mark was “of such cultural significance that it has become an integral part of the public's vocabulary.”  According to WMH, the question was whether its marks had become “cultural icons or terms of cultural significance” or “integral to the public discourse,” or instead “continue[d] to function as source identifiers for the goods and services that it offers,” and in the latter case no First Amendment issues were implicated by its claim.  Among other things, this erroneously frames Rogers as a test for genericity, which it is not; Barbie remains a perfectly valid mark even though Mattel can’t control expressive uses of that mark.  The court of appeals wisely determined that Rogers should not apply only when a mark is “iconic”:

Here, plaintiff's marks identify not only a world famous tourist attraction, but also the property of its former eccentric owner. There was an actual Sarah Winchester, who, according to legend, created a Victorian-style mansion to fend off ghosts. A film that is based on a “true” story will inevitably have a more powerful impact on those who enjoy ghost or horror films. Thus, defendant has used “Winchester House” in its title and a Victorian-style mansion on its DVD cover, which are similar to plaintiff's marks, and created a fictional work based on the historical figure Sarah Winchester and her allegedly haunted mansion. In our view, where marks have historical significance and similar marks are used in the title of an artistic work or advertising, the Rogers test adequately ensures protection of both the public interest in avoiding consumer confusion and the public interest in free expression.

Other cases have found trademark infringement even when titles refer to historical locations or events, but those were cases involving movie titles similar to those of previously released films—classic consumer confusion in the market for films, a situation provided for in Rogers but not present here.

Rogers requires that the title have “minimal artistic relevance” to the content, which the title and cover image here did.  Deviation from historical fact didn’t put the film outside the First Amendment’s protection.  WMH argued that the title and image were “merely a crass marketing tool, not an artistic decision based upon the subject matter” of the film, because a Global Asylum officer/director was asked at deposition, “[Y]ou could have told the story without relating it to The Winchester House, couldn't you?” and responded, “We could have, but as I indicated in the beginning, we found that a true story increases interest ... in the film....” That didn’t create a triable issue of fact on artistic relevance: artistic and commercial elements of titles are “inextricably intertwined.”  Basing a film on a true story “to generate interest” didn’t take away from the artistic relevance of the title/cover to the film that was actually produced.

WMH also cited American Dairy Queen Corp. v. New Line Prods., 35 F.Supp.2d 727 (D. Minn. 1998), the case in which New Line was enjoined from calling its film about rural beauty contests Dairy Queens.  Dairy Queen distinguished Rogers on the ground that New Line denied any reference to the plaintiff’s restaurants (a worthless distinction, by the way, and a bad decision), which was not the case here.

The second Rogers prong require that the title/cover not explicitly mislead as to source.  It didn’t: there was no suggestion that the film was authorized, endorsed, or produced by WMH.  The cover didn’t even use the phrase “Winchester Mystery House” or “Winchester Mystery House, LLC.” Nor did the use explicitly mislead as to the content of the film.  That was all that was needed.

WMH argued that Rogers was inappropriate for trademark claims and should be limited to publicity rights claims, but Rogers itself applied the test to both.  WMH also questioned whether California state law would adopt Rogers.  No Doubt v. Activision Publishing, Inc., 192 Cal.App.4th 1018 (2011), declined to adopt Rogers because “[a]lthough the ‘explicitly misleading’ requirement of the Rogers test makes obvious sense when the title of an artistic work is at issue, and thus conventional ‘speech’ is involved, we question whether it should apply when the actionable wrong is the misappropriation of a celebrity's likeness in a video game.”  While No Doubt makes no sense given that video games are “speech” too, and we now have a Supreme Court case confirming that, the court here didn’t reach that issue, pointing out that a movie is “conventional speech.”  (Though that wasn’t always the case; like video games, movies too went through a period when the courts weren’t clear that they were protected by the First Amendment.)  Other pre-Rogers California cases involved titles confusingly similar to other titles and were inapposite.

Then, showing that plaintiffs will work relentlessly to get likely confusion incorporated into any exception or limitation, WMH argued that likely confusion should be incorporated into the second prong of the Rogers test.  Rather than explicitly rejecting this argument on its merits, the court quoted Twin Peaks v. Publications Intern., 996 F.2d 1366 (2d Cir. 1993), for the proposition that “the finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interest recognized in Rogers.”  Then it noted that there weren’t full facts on all the confusion factors (e.g., the parties didn’t set forth sufficient facts to figure out whether they used the same marketing channels).  Because a likely confusion analysis would require the court of appeals to consider new factual questions and because WMH failed to raise the issue below, the issue was forfeited.

The tortious interference claims also failed.  The evidence was insufficient to raise a triable issue on Global Asylum’s knowledge of WMH’s contract with IDW and Global Asylum’s intentional acts to disrupt the relationship.  WMH’s response to Global Asylum’s filming request said, “Thank you for your interest in the beautiful, but bizarre Winchester Mystery House. The Winchester Mystery House just signed a contract with another company for the exclusive rights to the Winchester story. I am unable to give further details at this time.”  This didn’t identify the production company, describe the terms of the deal, or indicate that the contract related to any trademarks.  It didn’t explain what kind of production (film, documentary, cartoon, commercial, novel, in-house video, TV show, etc.) was contemplated.  “Based on this information, defendant could not have determined that producing and distributing its film would interfere with plaintiff's contractual obligation to provide exclusive story rights to an unidentified third party.” 

The C&D letters asserting infringement didn’t mention any contracts or economic relationships with third parties.  WMH’s second letter said: “Winchester has previously granted filming rights of the Winchester Mystery House property to other production companies. Unlike [defendant], other movie, television, and video production companies have recognized and respected the rights of Winchester to regulate the filming of images of the Winchester Mystery House property as necessary for the protection of a proprietary and valuable business asset.”  The letter focused on WMH’s demand that Global Asylum not use any actual footage of the WMH in the film.  This evidence couldn’t show either knowledge or intent.  (Also, though the court didn’t need to reach the issue, it is hard to see how a use fully protected by the First Amendment could be “independently wrongful” in a way that would rise to tortious interference.)