On Monday, a federal judge drew the line at an attempt by Lionsgate to use its Dirty Dancing trademarks as a sword against an advertisement from TD Ameritrade with the tagline, “Nobody puts your old 401(k) in the corner.” A new ruling from California federal judge Dean Pregerson represents a blow to Lionsgate — and perhaps other Hollywood studios who would dress up their infringement claims by asserting false association and unfair competition.
Lionsgate objects to a commercial from the brokerage giant showing a cartoon image of a man holding a piggy bank above his head reminiscent of an iconic dance move from Dirty Dancing. (Have a look at the ad in question below.)
In Lionsgate’s complaint, the studio contended that it has owned common law trademark rights to the famous movie line, “Nobody puts Baby in a corner,” owns pending federal applications to register the mark formally, licensed its mark for merchandising and that TD Ameritrade was attempting to “deceive customers into believing that the Advertising Campaign was a Lionsgate-licensed, authorized or sponsored work, when, in fact, it was not.”
But after the judge takes care of a jurisdictional issue, the subject of Dastar comes up.
For those unfamiliar with Dastar, it represents what is perhaps the late Supreme Court Justice Antonin Scalia’s biggest mark left on Hollywood, a decision that holds that entertainment companies and others can’t camouflage plagiarism-type copyright claims into trademark claims so as to make an end-run around the public domain. For those who don’t understand the difference between copyright and trademark law (and maybe based on Monday’s opinion, Lionsgate doesn’t either), the first protects against the misappropriation of expression while the latter guards against confusing the origin of a signature mark of identity. To use Scalia’s example, trademark law is designed to protect consumers from “the Coca-Cola Company’s passing off its product as Pepsi-Cola or reverse passing off Pepsi-Cola as its product.”
Scalia’s job 13 years ago was deciding whether a 1949 TV series about World War II that had slipped into the public domain (thanks to a lapsed copyright registration) could be repackaged by a new producer under a new title. The latest Dirty Dancing case is somewhat different as it involves the use of a famous movie line in another company’s advertisement. But importantly, Scalia drew a line when it came to trademark lawsuits. The high court allowed origin claims when it involved the “producer of the tangible goods that are offered for sale,” but not when it involved “the author of any idea, concept, or communication embodied in those goods.”
Lionsgate argued that consumers viewing the TD Ameritrade ads would be confused — they might assume the film company had authorized use of “Nobody puts Baby in a corner.”
Pregerson responds, “The Court cannot see how this is different from a copyright infringement claim, or a claim that Defendants have failed to obtain the permission of the author of the ‘idea, concept or communication embodied in those goods’ … Plaintiff alleges that this would cause consumer confusion as to Lions Gate’s association with the TD Defendants and their services. But this exact claim and theory can and is made in Plaintiff’s copyright infringement cause of action: that the protected elements of Dirty Dancing, including the line ‘Nobody puts Baby in a corner,’ were publicly used without the authorization of the sole licensor of Dirty Dancing, Lions Gate.”
The judge’s 35-page ruling (read here) that determines Lionsgate’s trademark claims are preempted by copyright law goes into more detail on the analysis.
In the meantime, Lionsgate can still pursue TD Ameritrade for allegedly committing copyright infringement, but that’s not without its challenges: The studio will have to show the ad featured substantially similar expression as its movie, and even if the judge buys that TD Ameritrade’s ad is a rip-off of Dirty Dancing, the defendant can argue its commercial is a protected parody as it had fair use to the copyrighted material. Defending against origin claims would have presented a more slippery defense for the brokerage company.