The spooky and haunted WINCHESTER MYSTERY HOUSE is the source of a trademark dispute. Last week, a California appellate court affirmed a grant of summary judgment against Winchester Mystery House, which had claimed that a movie production company had infringed its trademark by making a film, “Haunting of Winchester House,” based on the haunted tourist attraction.
QUESTIONS: Does the movie title, “Haunting of Winchester House,” infringe the trademark “WINCHESTER MYSTERY HOUSE”? Does the use of a sketch of a fictional representation of the Victorian-style mansion on the DVD cover infringe the design trademark of the house?
The court held that there is no infringement. Here is an excerpt from the court’s holding:
Here the plaintiff’s marks identify not only a world famous tourist attraction, but also the property of its former eccentric owner. There was an actual Sarah Winchester, who, according to legend, created a Victorian-style mansion to fend off ghosts. A film that is based on a “true” story will inevitably have a more powerful impact on those who enjoy ghost or horror films. Thus, defendant has used “Winchester House” in its title and a Victorian-style mansion on its DVD cover, which are similar to plaintiff’s marks, and created a fictional work based on the historical figure Sarah Winchester and her allegedly haunted mansion. In our view, where marks have historical significance and similar marks are used in the title of an artistic work or advertising, the Rogers test adequately ensures protection of both the public interest in avoiding consumer confusion and the public interest of free expression.
The Rogers test is a two prong test, applied by the court in this case, to test trademark infringement. The first prong requires that the title of the film have artistic relevance to the content of the film (low threshold of minimal artist relevance). Here in this case, both the Victorian-style mansion on the DVD (which is not the actual Winchester House) and the title “Haunting of Winchester House” have some artistic relevance to the film. The second prong of the test requires that the title and cover of the DVD do not “explicitly mislead as to the source or content of the work.” Here in this case, since there is no suggestion that the film was endorsed, authorized or produced by the plaintiff (Winchester Mystery House or Winchester Mystery House, LLC) there is no misleading nor misrepresentation as to the source or content of the film.
Happy Halloween! Read more about the spooky legend of the Winchester Mystery House –> http://www.winchestermysteryhouse.com/
See also: the holding for the California Court of Appeal, 6th Cir; USPTO trademark registrations 85294333 and 3749783; and www.kasterlegal.com; @iplegalfreebies and www.kasterlegal.com.
BY: Vanessa Kaster, Esq., LL.M.
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