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What’s In a Name? Trademark Infringement and Artistic Expression

Posted in Trademark Law

By Nathan H. Geronimo

A recent case in California’s Sixth District Court of Appeal, Winchester Mystery House, LLC v. Global Asylum, Inc., illustrates California’s treatment of trademark infringement with regard to claims involving artistic works.  Winchester Mystery House is a well-known tourist attraction in San Jose, California.  It is a large, Victorian-style mansion built and expanded by Sarah Winchester, the wife of William Winchester of Winchester Repeating Arms Co. fame.  Legend has it that after her husband’s death in 1881, Sarah Winchester became convinced that she and her family were haunted by the ghosts of those who fell to Winchester rifles.  To combat the haunting, Sarah Winchester bought a farmhouse in San Jose and began the unrelenting task of adding rooms and peculiar features to the house, such as stairways that lead to ceilings in an effort to confuse and thwart the ghosts.  Construction at the Winchester mansion continued constantly for 38 years until Sarah’s death in 1922.  By this time the mansion had swelled to 160 rooms.

The mansion was later bought and established as a museum, and is now controlled by Winchester Mystery House LLC (“Winchester”), which owns the “Winchester Mystery House” trademark and an architectural mark comprised of the three dimensional shape of the Winchester mansion.  In 2008, Winchester granted Imagination Design Works the exclusive right to film at the Winchester Mystery House as well as the rights to use Winchester’s marks and copyrights in association with a film about the house.  Defendant Global Asylum (“Global”) thereafter asked Winchester for permission to film at the mansion, at which time Winchester informed Global of its deal with Imagine Design Works.  Nonetheless, Global produced and distributed a film called, “Haunting of Winchester House.”  The film claims to be a true story about a family that moves into the 160 room mansion to act as caretakers and is haunted by Sarah Winchester and other ghosts.  Winchester sued Global for trademark infringement, alleging that Global’s use of the term “Winchester House” and images of a Victorian-style mansion exploited Winchester’s marks and lead the public to believe that the film was sponsored or otherwise sanctioned by Winchester. 

The federal trademark act, or the Lanham Act (15 U.S.C. sections 1051 et seq.), allows for registration of trademarks to distinguish a person’s goods from those produced by others, and provides for a cause of action where the use of a word, term, name, or symbol is likely to cause confusion as to the origin, sponsorship, or approval of a producer’s goods.  The First Amendment can provide a complete defense to Lanham Act claims regarding artistic works where the public interest in avoiding consumer confusion is outweighed by the public interest in free expression.  Global won on summary judgment and Winchester appealed.

On appeal, the Court applied the Second Circuit’s test for trademark infringement set forth in Rogers v. Grimaldi (the “Rogers test”).  In Rogers, Ginger Rogers sued over the title of a movie called “Ginger and Fred,” alleging that the public would be lead to believe she endorsed the film and that the film was about her and Fred Astaire.  The Rogers Court recognized films as artistic works, and held that with regard to their titles, the Lanham Act “would not apply unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source of the content of the work.” 

The first prong of the Rogers test is whether the title has minimal artistic relevance to the content of the film. This is a low threshold, and is often easily met.  For instance, here, the Winchester Court found that the title “Haunting of Winchester House” and the picture of a mansion on the cover both have artistic relevance to the film about the haunted mansion.  The second prong of the test is whether the title and the cover explicitly mislead the public as to the source or content of the work.  As to this question, the Court found that because the DVD cover does not contain the phrase “Winchester Mystery House,” and states, “A Mark Atkins Film,” there was no suggestion that the film was authorized or endorsed by Winchester.  Accordingly, the film satisfied the second prong of the test.  The Court affirmed summary judgment.

The purpose of a trademark is to identify the source of a product so consumers know where a product comes from.  Similarly, trademark infringement law is designed to protect the public from consumer confusion.  This protection, however, must be balanced against the right of free speech and artistic expression.  After all, free speech is one of the fundamental tenets of American ideology, as is commercialism.  The Winchester case is a perfect example of these competing interests at play, and perhaps, the relative importance attributed to each.