Use of Trademarks in Movie Titles Phifty-50 and 50/50 (Seventh Circuit Says Not Enough Facts to Support Actual Likelihood of Confusion as to Origin!)

In a recent, Seventh Circuit Case, the Eastland Music Group v. Lionsgate Entertainment, Summit Entertainment and Mandate Pictures, the Plaintiff’s alleged the use of the terms “50/50” violated their registered and common law trademark rights to the use of the PHIFTY-50 mark for songs, rap music, movies and entertainment.  However, there was no actual indication or allegations that the use of the terms “50/50” was actually causing confusion as to the source of the origin for the movie.  The Seventh Circuit stated the PHIFTY-50 mark is not the same in appearance as the “50/50” mark.  Although the marks sound the same, the Court, performed a cursory examination of the similarities of the marks and stopped with the lack of similarity in the appearance of the mark.  The Court, found that the PHIFTY-50 mark is too weak and a descriptive mark, so that “50/50” mark could be used in a descriptive sense to describe that the main character had a “50/50” percent chance of surviving a surgery involving spinal cyst that had degenerated into cancer of the spine.

Moreover, the Court considered the fact that Wikipedia defined “50/50” as essentially, a fifty to fifty probability of some event occurs or eventuality actually happening.  The Court went on to state that there were many third party users that used the terms “50/50” in a descriptive sense and there may be prior users of the mark.  However, the Court did not perform an actual “prior user” or “failure to police” analysis.  The prevalent of the use of the mark by third parties indicated that the mark was entitled to weaker protection.  The Seventh Circuit ignored Second Circuit Case Law considering the constitutional concerns involving the Freedom of Speech, under the First Amendment, in analyzing infringement of descriptive marks.  Instead, the Seventh Circuit found that Constitutional issues should not be the first issues to consider in a case. Thus, if a case or final judgment can be entered without considering of a constitutional issue at the pleadings stage, then the constitutional should not be considered as moot.

In this particular case, it appeared that although the Plaintiff alleged prior trademark rights, it would have been a junior user with respect to the other third party users.  Moreover, the Supreme Court, precedent indicated that the use of a mark in the title of the intellectual property work can only, infringe the original author’s trademark rights, if, it indicates that the latter author is the origin for the work.  This seems to crossover slightly, into the right of attribution in the original author’s copyrights.  However, since the Right of Attribution must always be complied with and the title of the original copyrighted work must be cited and referenced; it is hard to imagine how there can be a potential likelihood of confusion?  The mark must be placed far away from the actual reference or citation to the original author to engender some likelihood of confusion that may or may not be alleviated based on how close the citation is to the mark or the point of sale or purchase.

Moreover, the Seventh Circuit, seemed to focus on the cost and expense of trademark litigation in holding in light, of the small likelihood of actual confusion the Plaintiff’s had not asserted a trademark infringement claim and dismissed the case on a 12 (b) (6) motion to dismiss.  It appeared that the Seventh Circuit seemed to be moving towards a Tomboy and/or Irbal or plausibility analysis for trademark infringement claims.  We will see if, this trend continues and if, defense attorneys have a new tool in their arsenal to combat marginal trademark infringement claims.

If you have any concerns or questions on how to prosecute or defend a trademark infringement matter, then please feel free to contact us at http://www.vrplawgroup.com

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