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California court of appeal affirms grant of defendant’s motion for summary judgment, finding that defendant established First Amendment defense under the Rogers test to claims of trademark infringement and unfair competition.
After defendant Global Asylum, Inc., released its film Haunting of Winchester House, plaintiff Winchester Mystery House, LLC, brought suit alleging trademark infringement and unfair competition under the Lanham Act and common-law claims for interference with contract and prospective economic advantage. Plaintiff owns and operates the Winchester Mystery House, a popular tourist attraction consisting most notably of the Winchester mansion, a 160-room Victorian home built by Sarah Winchester to, legend has it, fend off the ghosts of those killed by rifles manufactured by the Winchester Repeating Arms Company, her late husband’s family business. Winchester began construction on the house in 1884 and continued nonstop for 38 years until her death in 1922. Plaintiff registered the Winchester Mystery House word mark and the architectural mark for the design of the Victorian-style mansion in February 2010. In 2008, plaintiff granted a production company the exclusive rights to use plaintiff’s marks in connection with the production of a film about the mansion’s history. In April 2009, Andrew Trapani, who directed The Haunting in Connecticut and is affiliated with the production company that obtained the exclusive rights from plaintiff, mentioned in an interview his plans to make a new film at a famous haunted house. In June 2009, defendant contacted plaintiff about the possibility of using the mansion to film a movie about a house haunted by ghosts. The next day, plaintiff responded by stating that it had already granted another company exclusive rights to the Winchester story, and shortly thereafter issued a joint press release with the production company naming Trapani as the producer and stating that filming at plaintiff’s property would begin by year-end. After learning that defendant was producing a movie entitled Haunting of Winchester House, plaintiff sent two separate cease-and-desist letters, although defendant still produced the film. While the front cover of the DVD jacket depicted a Victorian-style structure similar to plaintiff’s architectural mark and the back cover described a 160-room mansion, the cover art did not contain the phrase “Winchester Mystery House.” Although the movie began with a shot of a Victorian structure, it was not filmed on location at plaintiff’s property. Defendant sought summary judgment on the grounds that the First Amendment provided an absolute defense to plaintiff’s trademark and unfair competition claims, and that plaintiff adduced insufficient evidence to support its tortious interference claims. The trial court granted defendant’s motion.
On appeal, plaintiff cited Rebelution, LLC v. Perez, 732 F.Supp.2d 883 (N.D. Cal. 2010), and argued that the trial court should not have applied the Rogers test because that test applies only in cases where marks have become “cultural icons or terms of cultural significance.” The court rejected that argument, reasoning that Rebelution was not binding authority and that, in any event, plaintiff’s marks had reached the requisite status, as they identified a world-famous tourist attraction as well as the property of its former eccentric owner. The court concluded: “In our view, where marks have historical significance and similar marks are used in the title of an artistic work or advertising, the Rogers test adequately ensures protection of both the public interest in avoiding consumer confusion and the public interest in free expression.”
Plaintiff also argued that defendant failed to meet its burden under the two-pronged Rogers test. The court described the first prong as an “appropriately low threshold of minimal artistic relevance,” and found that both the title Haunting of Winchester House and the Victorian-style mansion on the DVD cover had some artistic relevance to the underlying movie because the movie told the fictional story of caretakers who move into a Victorian-style mansion built by Sarah Winchester. The court rejected plaintiff’s argument that defendant failed to satisfy this prong as a matter of law because defendant had used the marks as a marketing tool and not for artistic reasons, concluding that the artistic and commercial elements of titles are inextricably intertwined.
Turning to the second prong, the court found that the title and cover art of the DVD did not explicitly mislead as to the source of the work because they did not contain plaintiff’s name (Winchester Mystery House, LLC) or mark (Winchester Mystery House), but instead clearly identified defendant and certain other entities involved in the film as the source of the movie. It also found that nothing about the title or cover art explicitly misled as to the content of the movie because the movie was set in a house built by Sarah Winchester, which is haunted by the ghosts associated with her. The court did not address defendant’s use in its cover art of the Victorian-style mansion (which the court found to be similar to plaintiff’s architectural mark) in its analysis of the second prong.
Plaintiff also argued that the trial court failed to properly apply the Rogers test because it failed to consider the important differences between trademark rights and rights of publicity, and incorrectly assumed that the original formulation of the test was equally applicable in the trademark context. The court of appeal disagreed, finding that plaintiff had misunderstood Rogers. It noted that the complaint in Rogers alleged a Lanham Act violation under the same section relied on by plaintiff, in addition to a common-law right of publicity claim. Although plaintiff argued that it was unclear whether California courts would adopt the Rogers test as the appropriate test for assessing a First Amendment defense, the court disagreed, finding the cases upon which plaintiff relied to be distinguishable, as they did not involve conventional speech, were decided before Rogers or compared titles to other titles.
In addition, plaintiff argued that the trial court erred by failing to recognize that post-Rogers decisions have incorporated the “likelihood of confusion” test into the second prong of the Rogers test. Because plaintiff did not argue this theory before the trial court, and because it would require the court to consider new fact questions, the court determined that the argument could not be reached.
Finally, the court found that plaintiff failed to produce sufficient evidence to raise a triable issue of fact concerning its interference claims. While plaintiff’s response to defendant’s initial inquiry indicated that plaintiff had just entered an exclusive agreement, it did not identify the production company, describe the terms or indicate that it related to the use of trademarks. Similarly, the cease-and-desist letters did not refer to any contractual or other economic relationship between plaintiff and any third party. As a result, the court found that plaintiff could not establish that defendant had knowledge of plaintiff’s commercial relationships or that defendant intended to disrupt these relationships.