Ginger Rogers Comes To Illinois
by Jerry Glover
July 23, 2012
In the motion picture, “50/50”, a young man who has been diagnosed with cancer is told by his doctor that he has a fifty-fifty chance of survival. The owners of the U.S. trademark, PHIFTY-50, didn’t like those odds. So the owner sued the film’s producers and distributor for infringement of that mark in the United States District Court for the Northern District of Illinois. Eastland Music Group, OLLC v. Lionsgate Entertainment, Inc., No.11-C-8224 (N.D. Ill. July 19, 2012).
The plaintiffs included not only Eastland Music Group (whose business was described in the complaint only as being in the entertainment business) but also an individual, Raynarldo Whitty, who was the manager of Eastland. Eastland first used its trademark in 2000 and registered it in 2005. It was registered in Class 9 for “electrical apparatus, names, series of pre-recorded phonograph records, compact discs, audio and video cassettes and dvds featuring music.” The plaintiffs alleged that the motion picture’s title caused confusion among the consuming public and, thus, infringed on their trademark. The plaintiffs also alleged a violation of Section 43(a) of the federal trademark law (the Lanham Act) which prohibits use of a trademark that is likely to cause confusion or mistake or deception as to the origin of the movie. 15 U.S.C. Sec. 1125(a). The defendants moved to dismiss the complaint for failing to state a cause of action.
The court first disposed of a standing issue. The court noted that Whitty was not the owner, registrant or assignee of the trademark, PHIFTY-50. Therefore, he had no rights to assert in connection with the mark and was dismissed from the case.
The defendants contended that they had a First Amendment right to use the motion picture title, “50/50.” Typically, a court relies solely on the plaintiff’s complaint to rule on a motion to dismiss under Federal Rules of Civil Procedure 12(b)(6) and defenses cannot be entertained. Defenses are usually reserved for a motion for summary judgment. But the court noted that when a plaintiff “plead[s] itself out of court when it ‘admits all the ingredients of an impenetrable defense,’ it would be appropriate to entertain a defense argument. Citing Xechem, Inc. v. Bristol-Myers Squibb Co., 372 F.3d 899, 901 (*7th Cir. 2004). The court added that plaintiff’s invocation of the motion picture allowed the court to view it at this stage and, perhaps, avoid prolonged litigation which is “destined not to succeed.”
The defendants’ First Amendment defense rested on a test developed by the U.S. Court of Appeals for the Second Circuit to determining whether a motion picture title violated a trademark. In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The district court noted that the U.S. Court of Appeals for the Seventh Circuit, whose decisions govern in the Illinois federal courts, had never decided whether the Rogers case was the appropriate test to use for this issue. But since both parties’ seemed to agree that the Rogers test was appropriate for this case, the court assumed it applied without deciding the question of whether the Rogerscase would be accepted by the Seventh Circuit.
In Rogers, iconic movie star Ginger Rogers sued the producers of an Italian film entitled “Fred and Ginger” which concerned two people who in the 1940’s and 1950’s had performed a cabaret act in the mold of Ginger Rogers and Fred Astaire. Thirty years later the duo was brought back for a televised reunion. Ms. Rogers claimed the viewing public would believe she had endorsed the film or was somehow associated with it since “Fred and Ginger” would evoke in their minds the dancing duo of which she was a part in the 1930’s. The Second Circuit adopted the following test to determine whether a motion picture title violated a plaintiff’s trademark rights: “[T] the [Lanham] Act will not apply unless the title has no artistic relevance to the underlying work whatsoever or, if it has some relevance, unless the title explicitly misleads as to the source of the content of the work.” Id. at 1000.
The district court stated there was “no question” that the motion picture’s title had some artistic relevance to the film’s content since the young man is told at the beginning of the movie that he has a 50/50 chance of surviving. The court added that the remainder of the movie focuses on whether the man will actually survive. The court noted that the movie and its advertising made clear that the title referred to a medical diagnosis. Since the plaintiff had not alleged any facts in its complaint that would show public confusion between the movie and the plaintiff’s musical group or entertainment business, the court dismissed the complaint.