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Finding No Likelihood of Confusion, Judge Denies Order to Block Sony’s Promotion of ‘The Illusionist’ Film That Is Set for Dec. 25 Release

November 4, 2010

A federal district court judge in California on Nov. 4 denied a request for a temporary restraining order to prohibit Sony Pictures from marketing its film “The Illusionist,” finding little likelihood that the public will confuse this film with one of the same name released in 2006 (Illusionist Distribution LLC v.Sony Pictures Classics Inc., C.D. Cal., No. CV 10-08062 DMG (MANx), 11/4/10).

Refusing to stop the marketing of Sony’s film that is set for a Christmas day release, the court said that the plaintiff’s “Illusionist” mark is “weak” and merely “generically describes a movie about an illusionist rather than Plaintiff’s product in particular.”

Fight Over ‘Illusionist’ Film Mark.

Plaintiff Illusionist Distribution LLC released its 2006 film called “The Illusionist” starring Ed Norton, Jessica Biel, and Paul Giamatti, which was nominated for an Academy Award. The plot centers on a stage magician named Eisenheim (played by Norton) who appears to possess extraordinary powers and falls in love with a duchess named Sophie (played by Biel). The climax of the film occurs when Eisenheim uses his superior skills as an illusionist to help Sophie flee a planned marriage to a crown prince, who is scheming to overthrow his aged father, the emperor.

“The Ilusionist” film set to be released by Sony Pictures Classics Inc. in December 2010 is an animated art movie based on a screenplay written in the 1950s by famed French mime, actor, and film director Jacques Tati. It is set in Scotland in the 1950s or 1960s, has virtually no dialogue or voiceovers, and involves a main character who is a struggling, aging magician whose life is transformed by a young girl who believes his tricks are real.

Illusionist Distribution brought this suit against Sony and others, charging that the film constitutes a false designation of origin, false designation of affiliation, and false or misleading representation of fact under the federal Lanham Act. Illusionist Distribution filed an ex parte application for a temporary restraining order against Sony’s promotion, marketing, distribution, and release of its picture.

Plaintiff’s Mark Is ‘Weak;’ Confusion Unlikely.

To prevail on a trademark infringement claim, a plaintiff must show that (1) it has a valid, protectable trademark; and (2) the defendant’s use of the mark is likely to cause, Judge Dolly M. Gee observed. As its “The Illusionist” mark is unregistered, Illusionist Distribution has a valid, protectable trademark only if its mark is sufficiently distinctive or has acquired a secondary meaning in the market, she explained. The company insisted that the mark had acquired secondary meaning as a “box office success,” citing $18 million in the theatrical release marketing and advertising in the United States, $11 million in DVD release marketing, and more than $88 million in gross receipts worldwide.

A “large expenditure of money,” however, “does not in itself create legally protectable rights,” Gee said, quoting Toyota Motor Sales U.S.A. Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). Other than these expenditures, she said, Illusionist Distribution provided no other evidence that its mark had acquired secondary meaning.

Gee went on to find that the two films were alike in name only and that there was no likelihood of confusion shown under the eight-factor test set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979): (1) the similarity of the marks; (2) the strength of the plaintiff’s mark; (3) the proximity or relatedness of the goods or services; (4) the defendant’s intent in selecting the mark; (5) evidence of actual confusion; (6) the marketing channels used; (7) the likelihood of expansion into other markets; and (8) the degree of care likely to be exercised by purchasers of the defendant’s product.

Gee stated:

Notwithstanding that the marks at issue are identical, there is little likelihood of consumer confusion. Plaintiff’s mark is weak. It generically describes a movie about an illusionist rather than Plaintiff’s product in particular. As SPC points out, there are works galore with that title, including a film released in 1983, as well as at least 14 books published since 1952, 12 of which are still in print. … In addition, a wide variety of consumer products employ the term “illusionist” in some variation in their registered trademark. … More still, thousands of magicians perform under the description “illusionist.”

Although both products are movies about illusionists, they are so different that there is little chance that consumer confusion will ensue.…

Defendants’ film has always been called “The Illusionist” (or, in the original French, “L’Illusionniste”) and their choice of title has nothing to do with Plaintiff’s film. … There is no indication that Defendants intend to market their film to the same audience as Plaintiff’s. Defendants’ movie is geared toward animation aficionados and fans of independent art films. Plaintiff’s movie has been advertised as a mainstream, live-action “period piece” of interest to the general public. … Plaintiff presents no evidence of actual consumer confusion. In sum, the Sleekcraft factors weigh against a finding of likely consumer confusion between the two films. Plaintiff is thus unlikely to meet either of the prongs to establish trademark infringement.

‘A Strong First Amendment Defense.’

In addition to finding that Illusionist Distribution lacked a protectable mark and failed to show a likelihood of confusion, the court pointed to another ally for Sony—the First Amendment. It found that Sony has “a strong First Amendment defense” under the test articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which was adopted by the Ninth Circuit. This test reads the Lanham Act to apply to artistic works—particularly an artistic work’s title—“only where the public interest in avoiding consumer confusion outweighs the public interest in free expression,” Gee said, quoting E.S.S. Entertainment 2000, Inc. v. Rock Star Videos Inc., 547 F.3d 1095 (9th Cir. 2008). “An artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work,” she added, quoting E.S.S. Neither element applies here, Gee said, noting that “The Illusionist” is artistically relevant in describing the main character of the film and that the title does not explicitly mislead as to the source of the work. “Accordingly, Plaintiff’s claim will likely fail on First Amendment grounds as well.”

Since the only basis for the unfair competition claim here is the allegation of trademark infringement, the court went on to conclude that Illusionist Distribution’s unfair competition claim “is also likely to fail.”

Finally, the court found that Illusionist Distribution was not entitled to injunctive relief based on the relevant factors: (1) a likelihood of success on the merits; (2) a likelihood of irreparable harm in the absence of preliminary relief; (3) the balance of equities in its favor; and (4) injunctive relief being in the public interest.

Illusionist Distribution clearly failed on the first two elements, and the third factor favors the defendants because they “cannot simply release their film under a different name,” the court said. Here, Gee noted that “[t]he December 25, 2010 release date was specifically chosen in order to make Defendants’ picture eligible for year-end award consideration, including consideration for Academy Awards,” and that any delay would jeopardize the film’s chances for such an award.

As to the final injunctive relief factor, Gee concluded this way:

While the public has an interest in trademark enforcement, it has no interest in seeing the enforcement of unprotectable marks. The public has a substantial interest in preventing artistic expression from becoming stifled by overzealous intellectual property protection.

The ex parte application was denied.

Illusionist Distribution was represented by Behzad Nahai and Edward Wei of Nahai Law Group, Los Angeles. Sony was represented by Asheley G. Dean and Neil R. O'Hanlon of Hogan Lovells US LLP, Los Angeles, and by Dori Ann Hanswirth and Nathaniel S. Boyer of Hogan Lovells, New York.

Read the Illusionist Distribution LLC v. Sony Pictures Classics Inc. ruling.

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