Make no mistake: Lionsgate scored a decisive victory in defending federal trademark and unfair competition claims brought over last year’s Seth Rogen and Joseph Gordon-Levitt film “50-50.” But looking beyond Pryor Cashman attorneys Tom Ferber and Ross Bagley’s first round knockout via 12(b)(6) dismissal, future “movie title” litigators may find three key “take-aways” nestled in the decision.
The Case: Eastland Music Group et al v. Lions Gate Entertainment et al
Eastland Music Group brought trademark claims against Lionsgate, Summit, and Mandate Pictures in federal court in Illinois last November. Eastland does own the federal mark for “PHIFTY-50” in a category that includes CDs and DVDs. They also claimed the common law rights to the mark “50-50.” This was a challenging case from the outset. Plaintiffs’ attorney (himself a co-plaintiff) had not made a “Claim 3” in pleading seven federal and state claims. There were standing issues; the co-plaintiff-attorney had not proven he had any for his own claims. Brandgeek noted the “absurdity” that neither of two plaintiffs had a pixel of web presence to its name, beyond mentions associated with the case.
Although dismissed on July 19 on the pleadings, before discovery, U.S. District Judge George W. Lindberg did view the film. He applied the Rogers v. Grimaldi (a “misleading titles” case discussed below) to find that the plaintiffs had “not plausibly argued any possibility of confusion between “50/50 and Eastland’s musical group.” Because they both are films and have visually similar title treatments, the 1992 action film “Fifty/Fifty” hypothetically might have provided a stronger plaintiff. (To save you 20 seconds of IMDB research, this is the logline: Robocop overthrows a southeast Asian dictator.)
Take-away No. 1: Judges may view a work at any point in proceedings
Because the plaintiffs had referenced the defendant’s work and made it a “central” part of “all” of their complaints, Lindenberg concluded that he could both (a) view the work in question; while (b) avoid treating Lionsgate’s motion to dismiss as a motion for summary judgment. This is good news for future defendants with a strong case. Without going in to discovery, the defense shoehorned in the most helpful facts: the movie plot’s relevance to its title and the packaging.
Take-away No. 2: Precedents don’t hold equal sway across circuits
Rogers v. Grimaldi is the seminal case on movie title confusion. 875 F.2d 994. In Rogers, actress Ginger Rogers failed to prove her false designation of origin and false endorsement claims over the film “Ginger and Fred,” in which she did not appear. Instead, the film told a fictional story of two dancers who represented the dance-world-analog to a Ginger Rogers and Fred Astaire tribute band. Rogers lays out the test for a misleading movie titles. It provides two avenues to sustain the claim. (A) The title must have no artistic relevance to the underlying work whatsoever, or (B) if the title does have some artistic relevance to the work, the title nonetheless explicitly misleads as to the source or content of the work.
Rogers, 875 F. 2d at 999.
As a Second Circuit case, Rogers v. Grimaldi was not binding in the Seventh Circuit. Lindberg advised that he was applying the Rogers test because the parties had stipulated that this test controlled, but to be said the “Seventh Circuit has not spoken on the propriety of this test,” and that he was not “definit(ively) deciding the question.” While this analysis proved favorable for past defendants like MCA Records in the Aqua “Barbie Girl” suit and others, future Second Circuit stakeholders should take note.
Take-away No. 3: Don’t neglect the cost of business
Because Lindberg did not find the facts to be “exceptional,” he declined to award Lionsgate attorneys fees as the prevailing party. See 15 USC § 1117(a). While hardly news, this is another reminder that studios must be resigned to defending even weak claims out of pocket as a cost of doing business. At Lionsgate, of course, the “Hunger Games” franchise is providing a big, multiyear infusion of revenue.
Photo Illustration: “50/50” production still via Lionsgate. Magnifying glass clipart courtesy of cksinfo.com.