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According to the U.S. Trademark Office, there are about 250,000 new marks registered each year. Every time a TV show writer creates a character name, there’s a chance of stumbling upon a surname that is not only protected but has the potential of causing confusion.
For the past few weeks, NBCUniversal has been trading letters with an attorney for Rizzoli Publications, a publishing house that specializes in coffee-table books on art, architecture, interior design and, oh yes, photography.
Rizzoli Publications claims that Parenthood has spawned a character that infringes upon its trademark rights to “Rizzoli.”
For those who want to know why having insurance is so essential in Hollywood, character names are a good start. In showbiz these days, few obey the Shakespearean dictum, “A rose by any other name would smell as sweet.”
For instance, there was Michael Costanza, who once sued his old college mate Jerry Seinfeld for $100 million alleging that, just like “George Costanza,” he too was bald, stocky and nicknamed “Can’t stand ya” by a high school teacher. The real Costanza claimed his privacy was invaded. There also were Scott and Melinda Tamkin, real estate agents who brought a lawsuit against CBS after selling a writer on CSI a home and then seeing an episode featuring a slick, attractive, hard-drinking, bondage/porn-watching character named “Scott Tucker” who became a suspect in the murder of his wife, “Melinda Tucker.” The real Scott and Melinda alleged they were defamed. Both of these lawsuits were unsuccessful.
For Rizzoli Publications, it’s all about its trademark.
In a letter sent Wednesday to NBCU’s intellectual property counsel Gillian Lusins and obtained by The Hollywood Reporter, attorney Jesse Alan Epstein wrote:
“In your show, your character, Hank Rizzoli, owns a business ‘Rizzoli Photography’. Given the nature of Hank Rizzoli’s business, photography, the public could be easily confused into believing that the goods and services in your TV show are our Clients’ goods and services. Your show gets the benefit of our Clients’ Marks which are known to designate goods and services which are of the highest quality. Meanwhile our Clients face the danger of their Marks being diluted through association with your characters.”
NBC hasn’t yet responded to our request for a response. But if history is any judge, Rizzoli Publications will have a tough time if the dispute ends up in court.
Because Parenthood is a creative work, it enjoys broad First Amendment protection. In the past, producers of TV shows and movies have leaned on such protections to defeat trademark claims.
For instance, there’s Rogers v. Grimaldi, where Ginger Rogers sued the filmmakers of Ginger and Fred and unsuccessfully argued that the film’s title falsely implied that she was endorsing or was featured in the film. There, the 2nd Circuit ruled that an expressive use of a trademark would not violate the Lanham Act unless the use has no artistic relevance to the underlying work whatsoever or, if it has some artistic relevance, unless the use explicitly misleads as to the source or the content of the work.
The question could become whether viewers of Parenthood were pointedly duped into believing the publishing house was either the source of Romano character or in some way sponsored, endorsed or approved him. However, perhaps the name of a character isn’t so artistically relevant to the show but rather an unfortunate choice of surname — an arguably trivial element.
Even so, Rizzoli Publications still seems to have an uphill battle.
Take the lawsuit brought by Wood Newton, a country music performer, against CBS over the name of Burt Reynolds‘ character in Evening Shade. The plaintiff brought an unfair competition claim under the Lanham Act alleging that until 1990, he was the only person using “Wood Newton” in the entertainment field. The 2nd Circuit weighed eight factors to see if there was any likelihood of confusion, and Newton came up short. In particular, Newton wasn’t able to show “name recognition broad enough to cover those viewers in all sections of the country to whom [producers] direct the TV Series,” had a hard time presenting relevant evidence of actual confusion and “presented no evidence that [producers] intended to profit by confusing viewers into believing that Newton, the songwriter and performer, was affiliated with the TV Series.”
Of course, all this is just legal theory, and there will be legal bills to pay for NBC if Rizzoli Publications sues. Which might be why some producers will just pay a small fee to make a potential claim go away.
According to Epstein’s letter, when NBC originally was sent a cease-and-desist letter, it pointed to the TNT series Rizzoli & Isles as one precedent.
To which Epstein responded, “Your reference to the TV show ‘Rizzoli and Isles’ does not help your position, as the owner of that show arranged to pay our Clients for a non-exclusive license to use the Marks.”
E-mail: firstname.lastname@example.org; Twitter: @eriqgardner
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