Dirty Dancing remake: court grants reconsideration on dilution

Lions Gate Ent. Inc. v. TD Ameritrade Servs. Co., No. cv 15-05024  (C.D. Cal. Aug. 1, 2016)

Previous discussion and images from the campaign here.  Lions Gate claims common-law marks in DIRTY  DANCING and NOBODY PUTS BABY IN A CORNER, while Ameritrade’s ads used the line  “Nobody puts your old 401k in a corner” and a depiction of a man  lifting a piggy bank over his head.  The court granted reconsideration of the dismissal of the trademark dilution claims, because it previously required the that the defendant use a mark identical or nearly identical to the plaintiff’s mark.  The Ninth Circuit has held (wrongly, in my opinion) that the defendant’s mark need not be identical, nearly identical, or even substantially similar to the plaintiff’s mark under the TDRA.  Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633  F.3d 1158, 1172 (9th Cir. 2011).  

RT: The court of appeals based its reasoning on the existence of a multifactor statutory test for blurring which mentions only the degree of similarity, without setting a threshold for similarity.  But the multifactor test also lists various elements of distinctiveness/fame, without setting a threshold—and nonetheless, in order to be “famous,” the mark at issue will already have satisfied a threshold requirement of very high distinctiveness.  Given the power accorded the owner of a “famous” mark under the dilution statute, and the lack of clarity over what dilution even is, not to mention the fact that the legislative history exclusively discusses identical marks such as “Buick Aspirin,” a requirement of (near) identicality would be more appropriate.  However, the district court here can’t ignore circuit precedent—it’s not as if the district court is a 9^th Circuit panel.

Anyhow, revisiting the issue, while the court initially concluded that Ameritrade didn’t seem to be using the mark as a mark for its own goods and services, which is a requirement under the TDRA, it now devoted more attention to the issue and found that Lions Gate had sufficiently alleged use as a mark.  Ameritrade allegedly admitted that they used “Nobody puts your old 401k in a/the corner” as a tagline, which was tantamount to admitting use as a mark.  (What about the dance lift with the piggy bank?)  Slogans can be trademarks, and Ameritrade has previously sought registration for other slogans.  Because the complaint alleged that the tagline, “used alone and with other allusions to the  motion picture, such as the Dance Lift and the reference to the  song … is likely to cause people to falsely or  incorrectly believe that Lions Gate has approved, licensed,  endorses, sponsored, and/or authorized, or is associated with, TD  Ameritrade’s products and/or services,” that was sufficient to allege use as a mark.  Note the oddity here that allegations about confusion, which don’t seem to have been revived, turn into allegations about trademark use—perhaps another reminder of the poor fit of dilution into American theories about what trademarks are for.