Titles of Artistic Works – Implications of Dastar

Posted by on Sep 10, 2013

The United States Court of Appeals for the 7th Circuit recently decided the case of Eastland Music Group v. Lionsgate Entertainment.  This action for trademark infringement, and the court’s subsequent analysis helped settle an issue long weighed by courts and commentators – to what extent may the title of an artistic work infringe the trademark of another?  The case also developed the implications of the famous (or infamous) case of Dastar Corp. v. Twentieth Century Fox, one of the most important trademark decisions of the 21st century to date.

Background of the Case

Eastland Music Group (“Eastland”) is a music group that owns the rights to the rap duo known colorfully as “Phifty-50.”  This duo is hardly a wellspring of artistic output (perhaps choosing to focus on quality rather than quantity) as their online store features one album, over a decade old, a T-shirt, and two types of “official” earphones.  Their music, in the opinion of at least one commentator, will probably never be mistaken for greatness.

Lionsgate Entertainment is a major independent film studio.  In 2011 they released the movie “50/50” featuring Joseph Gordon-Levitt and Seth Rogen that opened to favorable critical reviews, a welcome change from some of Rogen’s recent failures.  The movie was apparently a dramatic comedy focusing on the issue of the main character’s battle with cancer; the title refers to his chances of survival.

Eastland, outraged that this upstart movie would have the temerity to use a similar-sounding title to its valuable brand, filed an action for trademark infringement that was disposed of via summary judgment by the district court.  Eastland then filed this appeal, noteworthy because of the 7th Circuit’s view that the district court made the correct decision for a possibly incorrect reason – and that the real grounds for dismissal should have been Dastar.

Analysis

As a threshold matter, the 7th Circuit ruled that Eastland’s complaint was defective, because they did not make any allegation of customer confusion and the record did not indicate that even a single person was confused about the origin of the movie and the rap duo, respectively.

The court said that the only reason the mark “Phifty-50” was registrable in the first place was because it contained a homonym/mis-spelling of an otherwise merely descriptive term “50-50” in common usage.  It would take a “powerful showing” for Eastland to make a valid claim to the descriptive term, and the plaintiff has failed its burden here.

Finally, the court turned to Dastar (perhaps to prevent similar lawsuits in the future).  They stated that the title of an artistic work can infringe another’s trademark only if there is some kind of false designation – i.e. the title implies that the trademark holder is the author of the artistic work.  If I hypothetically created a short movie entitled “Why Sugar is Bad for You: a production of the Coca-Cola Company” (assuming I were not affiliated with the company) I would indeed by liable for trademark infringement under this rule.  However, in the vast majority of cases, such a false designation is not made, and absent this designation, titles cannot infringe trademarks.  Dastar was very concerned with the indefinite “back-door” extension of copyrights via the abuse of trademark law.  If trademark law could be used in the way Eastland suggested, it would allow for an indefinite extension of the copyrights on artistic works – a phenomenon contrary to basic policies behind copyright-as-intellectual-property. Titles of movies and songs also cannot be copyrighted to avoid similar problems.