California Trademark Attorney® Blog

August 2012 Archives

Sam Raimi Wins Trademark Injunction Against Rival Evil Dead Filmmaker

August 29, 2012,

film.jpgCalifornia - A Los Angeles federal judge last week handed down a permanent injunction in favor of the filmmaker Sam Raimi, barring a rival film production studio from making an unauthorized sequel to the cult classic Evil Dead horror films.

Raimi's company Renaissance Pictures Ltd. sued Award Pictures LLC in May alleging the latter production company was threatening to infringe on the trademarks for the phrase "Evil Dead" in relation to motion pictures.

Judge Dale S. Fisher of the Central District of California granted Renaissance a default judgment on Aug. 23 prohibiting Award from using the Evil Dead name.

Renaissance was formed in 1979 by three general partners -- writer-director-producer Sam Raimi, producer Robert Tapert and actor-producer Bruce Campbell -- for the purpose of producing the trio's first motion picture, The Evil Dead.

Since its formation, Renaissance has continued to produce numerous motion pictures, including the films The Evil Dead, Evil Dead II,Evil Dead Ill: Army of Darkness; Darkman, Hard Target, and Timecop, as well as the television series Hercules: The Legendary Journeys and Xena: Warrior Princess, according to the complaint.

Raimi, who directed all of the Evil Dead films, "is one of the most sought-after directors in Hollywood," according to the complaint. The three Spiderman films he directed set opening day box office records upon their theatrical release in the United States and all three are included in the 25 highest-grossing domestic films of all time, the complaint says.

Renaissance claims it received a letter in 2004 from Award Pictures asserting its right to make a motion picture entitled Evil Dead 4: Consequences. Renaissance responded that any attempt to make a motion picture under the Evil Dead name and mark would constitute a violation of Renaissance's copyright and trademark rights.

Following the exchange of letters, Renaissance did not hear from Award again until it came to Renaissance's attention that Award had announced on its website an "upcoming series of Evil Dead motion pictures" with Evil Dead: Genesis of the Necronomicon as the first installment in development.

Additionally, in February, Award filed a notice of opposition with the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board, against Renaissance's 2010 application to register the Evil Dead trademark, alleging that Award had a bona fide intent to use the title in its upcoming motion picture productions.

Award is using Renaissance's Evil Dead mark "for the improper purpose of summoning interest in its own business and films by falsely associating itself with Renaissance's cult hits to induce investors," the complaint asserts.

In 2011 the Renaissance team announced that they would be remaking the original The Evil Dead, once again co-written by Raimi and co-produced by Raimi, Campbell and Tapert. Evil Dead LLC, a company set up by the three men and licensed by Renaissance to use the Evil Dead trademark, is currently in pre-production on the new film, which is expected to see release in 2013.

Jersey Shore's "Situation" Battles With MTV For Catchphrase TMs

August 23, 2012,

mtv logo.jpgCalifornia - Mike "The Situation" Sorrentino of MTV's hit reality series "Jersey Shore" is embroiled in a feud with MTV parent Viacom over the trademark rights to his popular catchphrases from the show.

The catchphrases include "GTL," an acronym for "gym, tanning and laundry," and "twinning," a reference to seducing a pair of twins. The phrases are Viacom's property by authority of Sorrentino's "Jersey Shore" participation agreement, Viacom argued in an opposition lodged last week with the Trademark Trial and Appeal Board in response to Sorrentino's trademark application.

Sorrentino is attempting to trademark "twinning" in reference to men's and women's apparel, including T- shirts, tank tops, long sleeve t-shirts, sweat shirts, baseball hats, wool hats, shorts, panties, underwear and footwear, according to Viacom's opposition.

But Sorrentino is not and was not, at the time of the filing of its application for that registration, the rightful owner of the claimed mark, Viacom claims. The company already owns trademarks for the phrase "twinning" and "GTL," it says.

Sorrentino's participation agreement for the show, moreover, explicitly says he does not have the right to feature quotes from the show on t-shirts, according to Viacom. By signing the participant agreement, Sorrentino and all the other cast members disclaimed all rights to intellectual property created in relation to "Jersey Shore," including all trademark rights, Viacom's opposition says.

Viacom's attorneys did not respond to emails seeking comment.

During an August 2011 episode of Jersey Shore, Sorrentino became romantically interested in a woman and her twin sister. When one of the show's interviewers asked him, "Is it a twin for the win right now?", Sorrentino responded, "Winning. Twinning. Now, that's a good one. Oh, man, that's a good one, yeah. That's, that's good one, twinning. Twinning, that's a good one."

Cast member Paul DelVecchio, known as Pauly D, also said on camera during the episode, "When you get twins it's cool, so you're winning, but you're twinning because you got two twin chicks."

Sorrentino placed himself at the center of another trademark dispute last year when he filed a $4 million infringement suit against Abercrombie & Fitch. A&F allegedly sparked the conflict by offering him $10,000 to stop wearing its clothing on the show, while simultaneously selling its own line of merchandise featuring his catchphrases.

California Based North Face Sues Tongue-In-Cheek Competitor For Trademark Infringement

August 10, 2012,

hiker.jpgCalifornia - A wide portion of the American public recognizes North Face, the outdoor lifestyle company, and its distinctive logo trademark. However, that distinctive logo became the "butt" of a Missouri teenager's parody when he created a new brand in 2007 that encouraged consumers to "Never stop relaxing". The South Butt was the brainchild of Jimmy Winkelmann, as an alternative to "sheep-like" following of fashion trends. The Alameda, California based retailer did not find anything funny about the spoof of its trademarks and took Winkelmann and The South Butt, LLC to court for trademark infringement.

On April 10, 2010, the United States District Court for the Southern District of Missouri, Eastern Division, issued a permanent injunction against The South Butt and its creators. The injunction prohibited the use of the offending South Butt trademarks and designs including, "The South Butt, Never Stop Relaxing". At the conclusion of the original lawsuit, The South Butt agreed to drop its brand and cease using any and all of the offending logos.

However, the saga did not end when The South Butt was disbanded. To the delight of Winkelmann and his family, the publicity created by the lawsuit generated increased sales and created a show of support from the surrounding community. Bolstered by family and friends, The South Butt creator used the lawsuit as a marketing ploy and formed a new company, Why Climb Mountains, LLC. As part of its new identity, the Missouri based company created Butt Face brand, which again copies the look and feel of the North Face trademark.

Like the previous case, Winkelmann's lawyer is using the "parody defense". Trademark parody involves the appropriation of another company's trademark that is well known in popular culture, and then using it to create something new for humorous effect or social commentary. In a parody defense, a defendant argues that consumers know the real difference between the two brands and that use of a copycat trademark does not dilute or tarnish the original trademark. Accordingly, Winkelmann claims that consumers know the difference between the two brands, and that Butt Face represents a protected First Amendment parody of The North Face's trademark rights.

Representatives for North Face claim that the Missouri Company is blatantly copying its trademarks and disregarding the court's previous holding. To support its case, North Face submitted documentation showing that 35% percent of consumers believe the Butt Face logo is in some way connected to the North Face trademark. North is asking for Winkelmann and his company to be held in contempt of court, and is seeking a disgorgement of profits and costs of suit.