Summit Entertainment, creators of the Twilight movie series, has prevailed on its motion for summary judgment in a lawsuit filed in 2010 for copyright and trademark infringement, false designation of origin, trademark dilution and unfair competition. The action involved B.B. Dakota, a retailer that sought to promote sales of a blue cotton canvas jacket by stating in its advertising copy: “Bella Swann wears this jacket in Twilight and scores the hottest vampire in high school, and so can you!” (see full decision here)
The jacket’s moment in the spotlight wasn’t exactly premeditated. As the story goes, the stylist on the movie originally planned for Bella to wear a brown hoodie in the scene. The director was unhappy with the way the color appeared on camera, prompting the stylist to go on a last-minute shopping run to a local Nordstrom Rack where she purchased the jacket. Two years later, after the movie’s release, B.B. Dakota reintroduced the coat in response to the high demand and marketed it as the “Twilight jacket”
The gear received a lot of media attention. According to The Hollywood Reporter, Esq., Entertainment Weekly ran a story detailing how the jacket got in the movie; WWD featured it in an article on BB Dakota’s attempt to capitalize on the attention by building a line around Twilight. And MTV announced to Twilight fans where they could get “The Bella Jacket” that would bring them “this much closer to Robert Pattinson.”
A Google search for “Twilight Jacket” generates numerous images and e-commerce links to the B.B. Dakota jacket.
B.B. Dakota invoked the nominative fair use defense to the infringement claim and argued that it used the Twilight trademark to describe Summit’s product rather than its own. As delineated in the Ninth Circuit Case New Kids on the Block v. News America Publishing, for a nominative fair use defense to succeed, the defendant must prove the following:
- the product or service must not be readily identifiable without use of the trademark
- only so much of the mark or marks may be used as is reasonably necessary to identify the product or service
- the user must not do anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder
U.S. District Judge Gary Allen Feess rejected B.B. Dakota’s fair use arguments since it failed all three requirements: the product was readily identifiable without the trademark since B.B. Dakota had marketed the jacket for two years before release of the movie; B.B. Dakota had used the mark more than necessary to identify the product by using Twilight marks and image of Bella from Summit’s promotional posters on hang-tags and in websites and advertising. B.B. Dakota’s use did not consist of a simple movie reference in association with the jacket. Its extensive use of Summit’s intellectual property suggested that the jacket was sponsored by Summit.
B.B. Dakota also tried to claim it had a valid license to the jacket from Summit. In April, 2009, a member of B.B. Dakota’s public relations team contacted Summit’s PR team and asked if they could use the Bella image to sell the jacket on retailer Metropark’s website. Summit’s PR rep said OK so long as the “As seen in the Twilight film” language was included. B.B. Dakota’s PR rep sent the Bella image to 200 other sales accounts via email, saying the firm had Summit’s permission to use the image on hang-tags and in promoting the jacket. B.B. Dakota clearly did not have a valid license, but only permission to use the image and reference for one specific account.
The judge also found that Summit satisfied the six factors for a valid dilution claim: 1) B.B. Dakota’s mark and Twilight’s mark were identical given the defendant use of the same stylized font and image 2) Twilight’s mark was distinctive due to Summit’s promotions of the film and the association of the movie with the word “twilight” 3) sale of goods under the Twilight mark was “substantially exclusive” 4) Summit’s sale of goods and services associated with the mark topped $1 billion, providing strong circumstantial evidence of the mark’s geographic reach and “degree of recognition” 5) B.B. Dakota had an intent to create an association with the Twilight franchise given its extensive advertisement and use of image; and 6) actual association of the jacket with the franchise did occur given the extent of advertising and promotional material produced by B.B. Dakota.
The judge did not grant Summit’s motion for summary judgment as to its trademark dilution claim because there was still a genuine issue of material fact as to the famousness factor that needs to be determined at trial.