Friday, December 02, 2016

Saving people, suing things: TM lawsuit over -hunter suffix continues

Kenyon v. Clare, No. 16-cv-00191, 2016 WL 6995661 (M.D. Tenn. Nov. 29, 2016)

Sherrilyn Kenyon sued Cassandra Clare alleging trademark/copyright violations arising from Clare’s books, the “Shadowhunter Series”; this opinion addresses only trademark claims, where a motion to dismiss proves fruitless (though state law unfair competition was dismissed as time-barred under a one-year statute of limitations).

Kenyon published the “Dark-Hunter Series,” a series of books, short stories, and other original material and alleged that she owned the trademark rights to certain marks, such as “Dark-Hunter,” “Dream-Hunter,” and “Were-Hunter.” Kenyon used “” to promote her series and provide additional content regarding the Dark-Hunter world. Kenyon also produced several television commercials and videos, as well as a variety of Dark-Hunter merchandise, such as a line of collectible dolls, clothing, coloring books, jewelry, and novelty items.

In 2006, Clare began marketing a work that allegedly incorporated one of Kenyon’s Dark-Hunter trademarks as the name of one of Clare’s protagonists. At Kenyon’s demand, Clare replaced the term with “Shadowhunters.” Clare and her publishers allegedly assured Kenyon that “Shadowhunters” would be used solely for the name of Clare’s protagonists and that they would not expand the use of the “Shadowhunters” term or adopt it as a trademark.

A few years later, Clare’s publisher printed approximately 100,000 copies of a Shadowhunters book, mistakenly referring to the story’s protagonists as “Darkhunters” instead of “Shadowhunters” on the back cover. Kenyon demanded a correction and a recall.  Clare’s publisher destroyed some of the mislabeled books, but refused to recall the books already in stores or sold. These books allegedly led to confusion in the marketplace, where some purchasers thought that Clare was one of Kenyon’s pennames.

Recently, Clare began using the website domain name “” to promote her novels, which the website describes as “Cassandra Clare’s Shadowhunters.” A related movie, “Mortal Instruments: City of Bones,” was released in 2013 and was primarily promoted and discussed through the use of the term “Shadowhunters.” Clare also wrote a television series, titled “Shadowhunters: The Mortal Instruments,” which was released in 2015 and promoted on “” Also in 2015, Clare released redesigned book covers that printed the words “A Shadowhunters Novel” along the right side or bottom of the covers.

Kenyon alleged that the books were similar, which enhanced confusion.  They were allegedly “promoted, discussed, and celebrated in similar online forums and at similar conventions”; shared similar themes, origin stories, and target audiences; used “shadow” (Kenyon’s “creed and tagline” said: “We are Darkness. We are Shadow. We are Rulers of the Night. We are the Dark-Hunters.”); and had similar visual representations.

The court refused to find laches on the trademark claims on the pleadings, even though Kenyon learned about the alleged infringement in 2006.  Without evidence about the reasonableness of the delay or evidence of prejudice, a ruling on laches was inappropriate.

Clare also argued that, as a matter of law, there could be no confusion between the marks because the proper author’s name is on the cover of her books, and that Kenyon couldn’t hold a “trademark monopoly” on the word “hunter” in the supernatural creative works context. Having the author’s names on the books wasn’t dispositive, because likely confusion extends beyond point of sale confusion.  Plus, Kenyon’s claims went beyond just the books to TV shows, movie, and merchandise.  And there wasn’t sufficient evidence to resolve whether Kenyon was wrongfully seeking a “trademark monopoly” for any –hunter suffixed word in the field of supernatural creative works; she did allege secondary meaning and confusion.

There’s a lot of room here for thinking about First Amendment constraints on trademark claims brought against expressive works.  Rogers, by its terms, doesn’t apply to title v. title contests, but this isn’t exactly a title v. title contest, more franchise v. franchise, and also the Second Circuit’s later Cliffs Notes decision points out that First Amendment principles should also affect analysis of title v. title claims, given that authors have expressive interests in naming and that interest doesn’t disappear when another author is the plaintiff.

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