On October 24, 2012, a California Court of Appeal released its decision on Winchester Mystery House LLC v Global Asylum Inc, 2012 WL 5243809 (Cal App 6 Dist). The result may be frightful for trade-mark holders in the United States.
The Winchester Mystery House, located in San Jose, California, was built at the behest of Sarah Winchester after the death of her only child and her husband, the late gun mogul William Winchester. Apparently, a medium told Mrs. Winchester to move west from New England and appease the spirits of those who were killed by the Winchester Rifle during the Civil War by building a great house for them.
The Plaintiff owns the registered word mark “Winchester Mystery House” and the design mark based on the Winchester mansion. The Defendant, Global Asylum, produced a film entitled “Haunting of Winchester House”. The DVD jacket contained the movie title as well as an image of a Victorian-style building, albeit not the same one as the Winchester Mystery House.
The Plaintiff originally sued on the basis of seven causes of action, three of which were at issue on appeal, namely, 1) use of its trademark (15 USC § 1114), 2) unfair competition (15 USC § 1125(a)) and 3) interference with contract and economic advantage. The Superior Court granted the Defendant’s motion for summary judgment. The Court of Appeal dismissed the Plaintiff’s appeal on all grounds, however this blog will only touch on the issue of trade-mark infringement.
The Plaintiff claimed that the use of “Winchester House” and the image of the Victorian-style mansion would cause confusion in the minds of the public by leading them to believe that the Plaintiff approved, sponsored, or associated itself with the Defendant. The Defendant argued that its right to freedom of expression provided an absolute defence to trade-mark infringement.
In the United States, freedom of expression is protected by the First Amendment of the U.S. Constitution and plays a major role in limiting the scope of intellectual property rights. The test that is commonly used for balancing the interests of trade-mark owners against those who use the marks in titles for artistic works in the name of freedom of expression arose from Rogers v Grimaldi. The court in Rogers held that the Lanham Act (the federal statute governing U.S. trade-mark law) would apply to allegedly misleading titles only if the title has no artistic relevance to the underlying work whatsoever or if the title is explicitly misleading as to the source, even if the title has some artistic relevance.
In the Winchester case, it was held that where marks have historical significance and similar marks are used in the title of an artistic work, the Rogers test properly protects both the public interest in avoiding consumer confusion and the public interest in freedom of expression. The Court of Appeal found that the Plaintiff’s marks identify not only a world famous tourist attraction, but also the property of its former eccentric owner. Ultimately, the Court held that the use of the “Haunting of Winchester House” title and the Victorian-style mansion passed the two pronged test from Rogers in that 1) they had some artistic relevance to the underlying work and 2) that the title and cover picture did not explicitly mislead as to the source or content of the work; the Defendants did not use the marks as registered, the DVD cover attributed production to other sources and the title related to the content of the movie, which was the story of Sarah Winchester.
It is well established that freedom of expression is more vigorously protected in the U.S. than in Canada. Nonetheless, courts in Canada have seen the importance of balancing freedom of expression against trade-mark protection (see, for example, British Columbia Automobile Assn v OPEIU, 2001 BCSC 156, 10 CPR (4th) 423). Freedom of expression was also at play in a case where a trade-mark for a book title was expunged because it prohibited the public use of the title after the copyright had expired (Drolet v Stiftung Gralsbotschaft, 2009 FC 17, 85 CPR (4th) 1). As in Winchester, a Canadian court should allow trade-marks to be incorporated into titles when they relate to historically significant works.
Andrew Wayne is a JD Candidate at Osgoode Hall Law School and is currently enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program. As part of the program requirements, students are asked to write a blog on a topic of their choice.