Television Shows and Trademark Protection

The court concluded that the plaintiff 'failed to establish a material issue of a likelihood of consumer confusion[,] ' especially so in this case where the finding of likelihood of confusion must be 'particularly compelling' to outweigh NBC's significant First Amendment interest in the title of its program.'

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The U.S. District Court for the Southern District of New York dismissed a federal trademark-infringement claim over use of the phrase 'WHAT'S YOUR PROBLEM?' to promote the TV series 'Boston Legal.' Arnold v. ABC Inc., 06 Civ. 1747(GBD). The plaintiff owned a registered trademark for and hosted a public-access series titled 'WHAT'S YOUR PROBLEM?' ABC used the phrase on outdoor advertisements and on the 'Boston Legal' Web site.

The network raised a fair-use defense. The district court agreed, explaining: '[I]n the context of how it is used in the advertisements and on the website ' with 'WHAT'S YOUR PROBLEM?' appearing immediately above the phone number '1-877-SUE-2-WIN' ' the phrase is generically descriptive to the potential viewing public that Defendants' product is a show about fictional lawyers in a fictional law firm offering legal services. If any confusion with plaintiff's television show might result, 'that is the risk plaintiff accepted when [she] decided to identify [her show] with a mark that uses a well known descriptive phrase' ' On both the advertisements and the website, the identity of show, and the fact that the show's source is ABC and not plaintiff, is clearly evidenced by the prominent display of the show's title, ABC's own famous and recognizable trademark, and large photos of the show's three stars.'

The court further ruled that there was no state-statutory trademark dilution or common-law unfair competition. 'Plaintiff does not make any allegation that 'WHAT'S YOUR PROBLEM?' has gained some secondary meaning associating the phrase with her show,' the court noted of the dilution claim. The court added, 'A claim of unfair competition under New York Law is analyzed in the same manner as a trademark infringement claim under the Lanham Act.'

The U.S. District Court for the Eastern District of New York dismissed a federal trademark-infringement action filed over NBC's use of the title 'American Dream' for a TV series. Lemme v. National Broadcasting Co. Inc., 04-CV-2501 (DRH)(WDW). Since 1997, the plaintiff hosted an 'American Dream' regional cable show that 'demonstrat[es] the American Dream by emphasizing ' family heritage, struggles, goals, dreams and accomplishments.' In 2002, NBC began broadcasting its 'American Dream,' a fictional series that intertwined clips from the 'American Bandstand' TV show with characters' lives in the 1960s. The plaintiff obtained a federal-trademark registration for her show's title in 2003. NBC's series aired until 2005, though the network planned to syndicate the series and distribute it on DVD.

The district court first found in the plaintiff's suit that her use of 'American Dream' was suggestive and entitled to higher protection because viewers must use their imaginations to connect the title to the show's concept. But the court then noted: 'Here, neither party has suggested that 'American Dreams' is of no relevance to Defendant's show. The question then is whether the title 'explicitly misleads as to the source or content of the work.' '

Addressing this, the district court explained in part that NBC 'has proffered evidence which demonstrates extensive third-party use of the term 'American dream,' thereby suggesting that the mark is not particularly distinctive in the marketplace ' Among the most important differences [between the plaintiff and the defendant's use of 'American Dream'] is the fact that Defendant's program has only been shown and advertised with its distinguishing NBC logo in the bottom right corner of the screen. ' [In addition, a] review of the record reveals that although both parties produce television programs, their shows are quite different from one another, both in substance and theme. Moreover, Plaintiff's show is broadcast locally and reaches thousands of viewers while NBC's show was broadcast nationally and reached millions of viewers.'

The court concluded that the plaintiff 'failed to establish a material issue of a likelihood of consumer confusion[,] ' especially so in this case where the finding of likelihood of confusion must be 'particularly compelling' to outweigh NBC's significant First Amendment interest in the title of its program.'

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The U.S. District Court for the Southern District of New York dismissed a federal trademark-infringement claim over use of the phrase 'WHAT'S YOUR PROBLEM?' to promote the TV series 'Boston Legal.' Arnold v. ABC Inc., 06 Civ. 1747(GBD). The plaintiff owned a registered trademark for and hosted a public-access series titled 'WHAT'S YOUR PROBLEM?' ABC used the phrase on outdoor advertisements and on the 'Boston Legal' Web site.

The network raised a fair-use defense. The district court agreed, explaining: '[I]n the context of how it is used in the advertisements and on the website ' with 'WHAT'S YOUR PROBLEM?' appearing immediately above the phone number '1-877-SUE-2-WIN' ' the phrase is generically descriptive to the potential viewing public that Defendants' product is a show about fictional lawyers in a fictional law firm offering legal services. If any confusion with plaintiff's television show might result, 'that is the risk plaintiff accepted when [she] decided to identify [her show] with a mark that uses a well known descriptive phrase' ' On both the advertisements and the website, the identity of show, and the fact that the show's source is ABC and not plaintiff, is clearly evidenced by the prominent display of the show's title, ABC's own famous and recognizable trademark, and large photos of the show's three stars.'

The court further ruled that there was no state-statutory trademark dilution or common-law unfair competition. 'Plaintiff does not make any allegation that 'WHAT'S YOUR PROBLEM?' has gained some secondary meaning associating the phrase with her show,' the court noted of the dilution claim. The court added, 'A claim of unfair competition under New York Law is analyzed in the same manner as a trademark infringement claim under the Lanham Act.'