- In trademark infringement action, court denies plaintiff’s ex parte application for a temporary restraining order, concluding that plaintiff is unlikely to establish a protectable trademark for its motion picture “The Illusionist” or any likelihood of confusion.
The plaintiff filed an ex parte application for a temporary restraining order. In that application, the plaintiff argued that the defendants’ promotion, marketing, distribution, and release of their animated motion picture constituted trademark infringement. The court disagreed.
A plaintiff seeking injunctive relief must show that (1) it is likely to succeed on the merits; (2) it is likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in its favor; and (4) an injunction is in the public interest. The court determined that plaintiff failed to demonstrate a likelihood of success on the merits.
The court began by noting that because plaintiff had not registered “The Illusionist” with the USPTO, plaintiff could only establish a protectable interest if its mark were sufficiently distinctive or had acquired secondary meaning in the market. Acknowledging that “The Illusionist” was a descriptive mark, the plaintiff sought to establish secondary meaning through evidence that it had spent nearly $30 million to market and advertise “The Illusionist” during its theatrical and DVD release windows. The court found this evidence to be insufficient. The court wrote, a “large expenditure of money . . . does not in itself create legally protectable rights.”
Turning to the likelihood of confusion prong of its analysis, the court applied the so-called Sleekcraft factors, outlined by the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). Although the court acknowledged that the marks at issue were identical, the court nevertheless concluded that the plaintiff’s mark was “weak.” A multitude of other works with the title “Illusionist” contributed to that conclusion. The court found that this weakness, coupled with differences in the two works’ setting, plot, and intended audiences, prevented any likelihood of consumer confusion. Among other things, the court observed that the plaintiff’s motion picture is based on a 1989 short story written by Pulitzer prize-winning novelist Steven Millhauser and takes place in early twentieth century Vienna, while the defendants’ motion picture is an animated art film based on a screenplay written in the 1950s by famed French mime, actor, and film director Jacques Tati, and is set in Scotland in the 1950s.
In addition, the court found that the defendants had a strong First Amendment defense based on Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under the Rogers’s test, later adopted by the Ninth Circuit, the Lanham Act only applies to the title or other aspect of an artistic work where the public interest in avoiding confusion outweighs the public interest in free expression. That balance is struck through application of the artistic relevance test. Under that test, the artistic use of a trademark is permitted where it has some artistic relevance to the work at issue and does not explicitly mislead as to the source or content of the work. In this case, the court concluded that the defendants used the title “The Illusionist” to describe the main character of the film, and that it thus had artistic relevance to that film. The court also concluded that the title of the defendants’ motion picture did nothing to mislead as to the source of the work.
Finally, the court found that the balance of hardships favored defendants. After noting that the plaintiff was attempting to protect the remaining revenue streams of a nearly five-year-old film from unlikely confusion, the court concluded that an injunction would cause irreparable damage to the prospects of the defendants’ motion picture. The court observed that any delay of the release of the defendants’ film would jeopardize the film’s chances for year-end awards consideration, which consideration can often significantly increase box office receipts.
Accordingly, the court denied plaintiff’s ex parte application. Following the court’s denial of plaintiff’s application for a temporary restraining order, on November 23, 2010, the parties filed a stipulation for dismissal of the entire action.