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Summit Entertainment, no doubt celebrating the smash box office success of the latest Twilight film, has scored another victory. The studio has prevailed on most of the issues in a summary judgment ruling against a retailer that was advertising for sale a jacket worn by “Bella Swan.”
In 2010, B.B. Dakota was hit with a copyright and trademark infringement claim for promoting a blue cotton canvas jacket by telling young girls that “Bella Swann (sic) wears this jacket in Twilight and scores the hottest vampire in high school, and so can you!”
Bella’s jacket quickly became part of fashion lore.
Entertainment Weekly detailed how it got into the film; Women’s Wear Daily wrote that it was “the stuff that legends are made of”; MTV pronounced that the jacket “brings you this much closer to Robert Pattinson“; Stylist.com called it “love at first bite, er, sight.” And SoJones.com mooned that it was “very vampirelicious.”
Only problem was that Summit had never licensed the jacket. A trade dress vampire had bitten the goodwill of its own mark, so Summit demanded destruction of the jacket stock.
B.B. Dakota defended itself several ways. First, the retailer claimed that it had a valid license. B.B. Dakota initially wanted to republish the image used on Entertainment Weekly‘s website on its own, but was told that it needed permission from Summit. One of BB Dakota’s public relations reps then had an e-mail conversation with Amanda Boury, a Summit PR rep, and asked for permission to “highlight the jacket on [the] website along with the image from the movie,” Boury responded “Ok.”
But B.B. Dakota was alleged to have not used the EW image. Rather, she created “hangtags” affixed to another image of the Bella character. The image came from Summit’s promotional posters.
Nevertheless, B.B. Dakota said it still was in the clear because its use was a “nominative fair use,” meaning that the retailer was deploying the trademark to describe Summit’s product rather than its own. In the past, courts have allowed such “nominative fair use” so long as the product in question is not readily identifiable without use of the mark, that a user only uses so much of the mark as necessary, and that the use of the mark doesn’t suggest sponsorship or endorsement.
(Twi-hards, let us introduce thee to what the 9th Circuit has to say about New Kids on the Block merchandise.)
Judge Gary Allen Feess has rejected B.B. Dakota’s fair use arguments. He finds that “there is a real question as to whether any use was necessary given the fact that the jacket had been successfully marketed for two to three years before the first Twilight movie was released.”
Perhaps even more damaging, the judge rules that the defendant “made far more extensive use of Summit’s marks and copyrighted materials than was necessary,” including taking the image of Bella and the actual Twilight mark with its particular font.
If B.B. Dakota can take any solace in Judge Feess’ decision, it’s that Summit hasn’t fully prevailed just yet on the issue of damages, or whether its trademark was diluted by the retailer’s use.
Strangely, that’s only because Summit hasn’t been fully convincing on whether its mark is famous and distinctive enough.
Sure, the films have grossed more than $1 billion, but the judge points out that the Twilight marks are used elsewhere and that the studio hasn’t presented evidence such as consumer surveys that show the public recognizes Twilight marks as sufficiently famous. The judge rules this is an issue of material fact that could be subject to a trial.
Still, Summit has a strong edge here. The studio has established a likelihood of dilution, based on various other factors, Meaning that Summit at least gets a favorable decision as it continues to diligently police its trademarks on Twilight. It’s now up to the studio to decide whether to rest there or go further.
Don’t be surprised to see Summit, which has made some $63 million from licensed merchandise, have its own jacket in store. According to the decision, Summit has sold clothing bearing Twilight marks since 2008.
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