Owner of Winchester Mystery House Fails To Pass Rogers Test in Dispute Over Movie

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The producer of a movie that used the name of a supposedly haunted California mansion and an image of the building on the cover of a DVD box of a ghost movie is not liable under trademark law to the owner of the building, the California Court of Appeal (Sixth Appellate District) ruled Oct. 24 (Winchester Mystery House LLC v. Global Asylum Inc., Cal. Ct. App., No. H036253, 10/24/12).

Affirming summary judgment of noninfringement, the court said that the cultural and historical importance of the legend surrounding the house bar the building's owner from preventing references to it in a partly historical and partly fictional story.

Winchester Mansion Has Ghostly Reputation.

The Winchester Repeating Arms Co. of New Haven, Conn., founded in 1866, was a prominent manufacturer of firearms. (In 2006, the New Haven factory was closed and the company's trademarks were licensed to other manufacturers.)

William Wirt Winchester (1837-1881) was the son of the company's founder and also the company treasurer. After he died, his widow, Sarah, inherited considerable assets.

According to popular legend, Sarah Lockwood Winchester came to believe that she was being haunted by the spirits of all the people who had been killed by Winchester rifles. She moved to San Jose, Calif., and began building a mansion to house those haunting spirits. Rooms continued to be added while she lived and by the time of her death in 1922, the mansion, Llanada Villa, had 160 rooms.

Later, Llanada Villa was purchased and converted into a private museum, accessible to the public on a fee basis. In 1998, the owners, Johyn and Mayme Brown, created Winchester Mystery House LLC, the entity that owns several trademarks registered in 2010 with the Patent and Trademark Office, including the phrase “Winchester Mystery House,” and a three-dimensional representation of the building.

Starting in 2008, Winchester Mystery House LLC contracted with Imagination Design Works Inc. for the production of a motion picture and granted it rights to use certain trademarks as well as copyrighted works.

In 2009, Global Asylum Inc. contacted Winchester Mystery House for permission to film a “low budget haunted house/ghost story movie.” Winchester Mystery House declined, stating that it had already granted exclusive rights to another producer. A month later, Winchester Mystery House and Imagination Design Works issued a press release announcing the plans for their movie, specifying that it would be “the first film granted permission to shoot on location.”

Soon after, Winchester learned that Global Asylum was moving forward with its production plans and later obtained a DVD of Global Asylum's Haunting of Winchester House. Winchester sued, alleging trademark infringement, unfair competition, and other claims.

Judge Peter H. Kirwan of the Santa Clara County (Calif.) Superior Court Granted Global Asylum's motion for summary judgment and Winchester Mystery House appealed.

Rogers Test Balances Free Speech, Trademark Rights.

In considering the balance between free speech rights and trademark rights, Justice Nathan D. Mihara applied a test set forth in Rogers v. Grimaldi, 875 F.2d 994, 10 USPQ2d 1825 (2d Cir. 1989), which was applied by the U.S. Court of Appeals for the Ninth Circuit in Mattel Inc. v. MCA Records Inc., 296 F.3d 894, 63 USPQ2d 1715, 1718 (9th Cir. 2002) (150 PTD, 8/5/02).

In MCA, Mattel Inc., the producer of the Barbie line of dolls, objected to the use of its trademarks in a musical work, “Barbie Girl” by the Scandinavian popular music group Aqua.

According to MCA, it was important to consider “when a trademark owner asserts a right to control how we express ourselves--when we'd find it difficult to describe the product any other way (as in the case of aspirin), or when the mark (like Rolls Royce) has taken on an expressive meaning apart from its source-identifying function.”

Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792, 69 USPQ2d 125 (9th Cir. 2003) (06 PTD, 1/12/04), similarly applied Rogers to block Mattel from asserting its trademark rights to quash images depicting an unclothed Barbie.

Although the state appeals court was not bound by the federal appeals courts' decision, it determined that “the Rogers test is appropriate in the present case.”

The court began by noting the cultural significance of the Winchester house, apart from its function as a trademark for the private museum:  

Here, [Winchester Mystery House'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.  



The court thus found that Global Asylum's use of the Winchester trademarks were protected under the Rogers test.

Specifically, under the first prong of the test, the title Haunting of Winchester House as well as the cover of the DVD box had “minimal artistic relevance” and were intended to refer to the factual and historical house and Sarah Winchester. The fact that Global Asylum might have added some fictional elements to its story did not render it unprotected.

The court also rejected the argument that the use of the trademarks were not relevant to the film because Global Asylum admitted that it could have made a movie that did not make reference to the Winchester story.

“That [Global Asylum] based its film on a true story to generate interest does not meant hat the title and the cover of the DVD were not artistically relevant to the underlying film,” the court said.

Turning to the second prong of the Rogers test, the court determined that the title and the DVD box cover did not “explicitly mislead[ ] as to the source or content of the work.”

Here, the court noted that the DVD referred to “Winchester house,” not “Winchester Mystery House” or “Winchester Mystery House LLC.” Furthermore, the box cover stated that it was a “Mark Atkins Film.”

“[T]he film's setting is the house built by Sarah Winchester and it is haunted by the ghosts associated with her,” the court said.

Thus, the court affirmed the trial court's award of summary judgment in Global Asylum's favor on the trademark claims.

The court's opinion was joined by Justices Eugene M. Premo and Franklin D. Elia.

Winchester Mystery House was represented by Eugene Ashley of Hopkins & Carley, San Jose. Global Asylum was represented by Scott A. Meehan of Malibu, Calif.

By Anandashankar Mazumdar  

Opinion at http://pub.bna.com/ptcj/Winchester2012Oct24.pdf

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