Trademark Decisions Update

False Endorsement Claims

The U.S. District Court for the Southern District of New York granted a preliminary injunction barring the use of the 'Lil' Kim' mark to advertise or promote a DVD documentary of the rap group Junior M.A.F.I.A. Jones v. Ground Zero Entertainment, 05 Civ. 6461(JSR). Prior to her solo career, Lil' Kim (Kimberly Jones) had been a member of Junior M.A.F.I.A. She filed suit after her likeness and 'Lil' Kim' name were used on the documentary's cover and promotional materials. The complaint alleged, among other things: false endorsement and false advertising in violation of Sec. 43(a) of the Lanham Act; deceptive trade practices; unfair competition; misappropriation; and unjust enrichment. The district court explained: 'Although not persuaded that Jones is likely to prevail on certain of her claims, the Court finds that Jones is likely to prevail on her claim that the defendants' use of her trade name, 'Lil' Kim,' constitutes false endorsement in violation of the Lanham Act. Because the 'Lil' Kim' mark appears prominently on certain of the covers of the DVD, as well as some of the promotional material, in a manner that suggests endorsement, 'an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question' ' Defendants say that the use of 'Lil' Kim' is simply descriptive of one of the prominent persons featured in the documentary. The doctrine of fair use … permits use of a protected mark by others to describe certain aspects of the user's own goods ' but is inapplicable here, as the Court finds (for purposes of preliminary injunctive relief only) that the use here strongly suggests en-dorsement and, in any event, was not in good faith.'

(No Counsel of Record listed in court decision.)

First-Amendment Defense

The U.S. District Court for the Central District of California ruled that the First Amendment protected the defendants' depiction of the 'Pig Pen' strip club in the videogame 'Grand Theft Auto: San Andreas' from a trade-dress- and trademark-infringement suit by the owner of the 'Play Pen' strip club. E.S.S. Entertainment 2000 Inc. v. Rock Star Videos Inc., CV 05-02966 MMMJTLX. Granting summary judgment for the defendants Rockstar Games, Take-Two Interactive Software and Sony Computer Entertainment, the district court noted: 'When creating [the videogame city] Los Santos, defendants' artists sought to mimic the look and feel of real-life locations and businesses. They altered aspects of the actual locations, however, to fit their vision of Los Santos and the Series' signature brand of humor. ' The Pig Pen has artistic relevance to defendants' twisted, irreverent image of urban Los Angeles. 'Whether or not [the] depiction of the Pig Pen is a 'parody,' it satisfies the first element of the First Amendment balancing test. ' Any visual work that seeks to offer an artistic commentary on a particular subject must use identifiable features of that subject so that the commentary will be understood and appreciated by the consumer.'

Counsel of record: Robert F. Helfing of L.A.'s Sedgwick, Detert, Moran & Arnold LLP and Ernest J. Franceschi Jr. of L.A. represented the plaintiffs. Mark D. Litvack, Karin G. Pagnanelli and Eric J. German of L.A.'s Mitchell, Silberberg and Knupp LLP represented the defendants. (Note: Litvack is now with Manatt, Phelps & Phillips LLP in L.A.)

Sublicensing Limits

The U.S. Court of Appeals for the Ninth Circuit held that a licensee of a trademark and related right of publicity is barred from sublicensing the rights without the authorization of the licensor. Miller v. Glenn Miller Productions Inc. (GMP), 454 F.3d 975. The suit was filed by the children of bandleader Glenn Miller. The appeals court explained that it agreed 'with this extension of the well-established 'sublicensing rule' from copyright and patent law to the licensing of trademark and related publicity rights such as occurred here.'

The appeals court added: 'We reject GMP's contention that because it [federally] registered the 'Glenn Miller Orchestra' mark and the mark has become incontestable, it has rights to the mark independent of the rights to the 'Glenn Miller' mark licensed by Helen Miller in [a] 1956 agreement. This argument misapprehends a fundamental principle of trademark law: Registration does not create a mark or confer ownership; only use in the marketplace can establish a mark. ' Neither the registration nor the incontestable status of [GMP's] 'Glenn Miller Orchestra' mark affects [the Miller heirs'] ownership of the 'Glenn Miller' mark, which (a jury could find) was acquired through use in the marketplace.'

Counsel of record: Brian G. Wolf and Paul Karl Lukacs of Los Angeles' Lavely & Singer P.C. represented the plaintiffs. Sheldon Eisenberg, Adam J. Thurston and Melissa B. Bonfiglio of Bryan Cave LLP in Santa Monica, CA, for the defendant.

False Endorsement Claims

The U.S. District Court for the Southern District of New York granted a preliminary injunction barring the use of the 'Lil' Kim' mark to advertise or promote a DVD documentary of the rap group Junior M.A.F.I.A. Jones v. Ground Zero Entertainment, 05 Civ. 6461(JSR). Prior to her solo career, Lil' Kim (Kimberly Jones) had been a member of Junior M.A.F.I.A. She filed suit after her likeness and 'Lil' Kim' name were used on the documentary's cover and promotional materials. The complaint alleged, among other things: false endorsement and false advertising in violation of Sec. 43(a) of the Lanham Act; deceptive trade practices; unfair competition; misappropriation; and unjust enrichment. The district court explained: 'Although not persuaded that Jones is likely to prevail on certain of her claims, the Court finds that Jones is likely to prevail on her claim that the defendants' use of her trade name, 'Lil' Kim,' constitutes false endorsement in violation of the Lanham Act. Because the 'Lil' Kim' mark appears prominently on certain of the covers of the DVD, as well as some of the promotional material, in a manner that suggests endorsement, 'an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question' ' Defendants say that the use of 'Lil' Kim' is simply descriptive of one of the prominent persons featured in the documentary. The doctrine of fair use … permits use of a protected mark by others to describe certain aspects of the user's own goods ' but is inapplicable here, as the Court finds (for purposes of preliminary injunctive relief only) that the use here strongly suggests en-dorsement and, in any event, was not in good faith.'

(No Counsel of Record listed in court decision.)

First-Amendment Defense

The U.S. District Court for the Central District of California ruled that the First Amendment protected the defendants' depiction of the 'Pig Pen' strip club in the videogame 'Grand Theft Auto: San Andreas' from a trade-dress- and trademark-infringement suit by the owner of the 'Play Pen' strip club. E.S.S. Entertainment 2000 Inc. v. Rock Star Videos Inc., CV 05-02966 MMMJTLX. Granting summary judgment for the defendants Rockstar Games, Take-Two Interactive Software and Sony Computer Entertainment, the district court noted: 'When creating [the videogame city] Los Santos, defendants' artists sought to mimic the look and feel of real-life locations and businesses. They altered aspects of the actual locations, however, to fit their vision of Los Santos and the Series' signature brand of humor. ' The Pig Pen has artistic relevance to defendants' twisted, irreverent image of urban Los Angeles. 'Whether or not [the] depiction of the Pig Pen is a 'parody,' it satisfies the first element of the First Amendment balancing test. ' Any visual work that seeks to offer an artistic commentary on a particular subject must use identifiable features of that subject so that the commentary will be understood and appreciated by the consumer.'

Counsel of record: Robert F. Helfing of L.A.'s Sedgwick, Detert, Moran & Arnold LLP and Ernest J. Franceschi Jr. of L.A. represented the plaintiffs. Mark D. Litvack, Karin G. Pagnanelli and Eric J. German of L.A.'s Mitchell, Silberberg and Knupp LLP represented the defendants. (Note: Litvack is now with Manatt, Phelps & Phillips LLP in L.A.)

Sublicensing Limits

The U.S. Court of Appeals for the Ninth Circuit held that a licensee of a trademark and related right of publicity is barred from sublicensing the rights without the authorization of the licensor. Miller v. Glenn Miller Productions Inc. (GMP) , 454 F.3d 975. The suit was filed by the children of bandleader Glenn Miller. The appeals court explained that it agreed 'with this extension of the well-established 'sublicensing rule' from copyright and patent law to the licensing of trademark and related publicity rights such as occurred here.'

The appeals court added: 'We reject GMP's contention that because it [federally] registered the 'Glenn Miller Orchestra' mark and the mark has become incontestable, it has rights to the mark independent of the rights to the 'Glenn Miller' mark licensed by Helen Miller in [a] 1956 agreement. This argument misapprehends a fundamental principle of trademark law: Registration does not create a mark or confer ownership; only use in the marketplace can establish a mark. ' Neither the registration nor the incontestable status of [GMP's] 'Glenn Miller Orchestra' mark affects [the Miller heirs'] ownership of the 'Glenn Miller' mark, which (a jury could find) was acquired through use in the marketplace.'

Counsel of record: Brian G. Wolf and Paul Karl Lukacs of Los Angeles' Lavely & Singer P.C. represented the plaintiffs. Sheldon Eisenberg, Adam J. Thurston and Melissa B. Bonfiglio of Bryan Cave LLP in Santa Monica, CA, for the defendant.