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.
1 comment:
Thanks for this post. Right now I am studying a similar case, one in which someone has registered as a trademark the english version of a client's book (that is in Spanish) and now is claiming rights over it.
Of course, I'll have to hire an american lawyer but this have come handy as a primer: I wasn't aware of the Dastar rule.
I am a regular reader of this blog and I find it most helpful.
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