I wonder if Carole Baskin has something to do with this …
On June 17, Hollywood Weekly Magazine, Inc. (“HWM”) and its Publisher/Founder Prather Jackson filed suit against CBS, Imagine, Netflix, and Viacom in federal court alleging (among other claims) federal and common law trademark infringement, and federal and common law copyright infringement. (C.D. Cal., Case No. 2:20-cv-06354). Today I will only address the trademark claims, but I’ll keep following the case and provide updates as it develops.
HWM’s Trademark Allegations Surrounding “The Tiger King” Phrase Are Weak
HWM alleges that it started using the phrase “The Tiger King” beginning in 2013 “in connection with” the eccentric, mulleted icon Joe Exotic before Tiger King provided us blissful distraction for a couple weeks (or days depending on your binge-watch skills). However, HWM didn’t bother to file the application for the federal trademark until July 2, 2020. To be fair, limited common law trademark rights attach with valid “use in commerce,” but it is telling that HWM didn’t file for the mark until a couple weeks before it filed suit.
HWM essentially argues that because it used “The Tiger King” on its magazines, it has rights superior to the Defendants, and that Netflix’s use of the phrase harmed HWM’s reputation. Specifically, HWM alleges that soon after the series launched, advertisers expressed concerns that it was starting to become a tabloid gossip magazine due to the “very easily plausible and obvious” connection between the series and HWM… (See Complaint Para 26 below).
Here’s the problem with that argument: HWM did not use “The Tiger King” as a trademark!
In order for a plaintiff to be bring a claim for damages for trademark infringement, that plaintiff has to show it has rights in that mark in the first place. However, trademark rights cannot attach to a phrase that merely describes goods or services, unless that phrase has been used so much in connection with the trademark’s source that it “acquires distinctiveness” or “secondary meaning.” Indeed, the purpose of trademark law is to help consumers recognize the source of goods or services. Here, HWM’s early use of the phrase “The Tiger King” merely describes the person Joe Exotic, and was not used by HWM to identify itself as the source of any goods or services. As a result, HWM will have a very hard time demonstrating it has trademark rights to “The Tiger King.”
HWM’s Trademark Allegations Surrounding “Hollywood Weekly” Are Less Weak
HWM also alleges that the Defendants’ usage of “Hollywood Weekly” in the show harmed HWM’s reputation and created confusion in the marketplace. In slight contrast to the bogus claim surrounding “The Tiger King” noted above, Jackson appears to have legitimate rights surrounding the “Hollywood Weekly” trademark.
(Curiously, Jackson filed for the “Hollywood Weekly” trademark in his personal capacity and obtained the registration on July 18, 2017 … I’m genuinely flummoxed as to why he would open himself to personal liability to a counterclaim in this lawsuit. He easily could have assigned the mark to HWM, or granted it an exclusive license. I digress.)
Even though Jackson likely has legitimate rights to this mark, that still doesn’t make the Defendants’ use of “Hollywood Weekly” unlawful. In my humble opinion , the Defendants’ usage of “Hollywood Weekly” in connection with the Tiger King show will fall squarely within the “Nominative Fair Use” Doctrine for trademarks, which permits usage of another’s trademark. The Ninth Circuit Court of Appeals laid out a nice statement of this doctrine:
“First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. “
New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992). Here, the Defendants appear to only have used the term “Hollywood Weekly” to describe Hollywood Weekly Magazine, and such use is permissible under trademark law.
HWM’s Evidence of Supposed Consumer Confusion
Evidence of actual confusion as to the source of goods among consumers is pretty hard to find in trademark cases. As a result, trademark plaintiffs will sometimes find other types of consumer confusion to support a claim of infringement, and HWM is no different (look right):
Essentially HWM is arguing that the Defendants’ use confused Hollywood Weekly with that of a tabloid. This is not the sort of actionable confusion as to the source of goods that is relevant for a trademark action. To be clear, this might be actionable as a different business tort, but given that HWM has no rights in “The Tiger King,” and Defendants’ use of “Hollywood Weekly” was nominative, this allegation of confusion should not dictate the outcome to the trademark claims here.
I would be shocked if the Defendants don’t file a motion to dismiss the trademark allegations outright. HWM’s allegations surrounding “The Tiger King” are incredibly weak, and I would be very surprised if they could point to enough evidence to support their claim to the mark. The question of “nominative fair use” can be decided as a matter of law where there are no legitimate disputes to facts, but claims pitted up against this defense can sometimes make it all the way to trial.
I’m calling it now: I think the trademark infringement claims will be dismissed before this case ever gets close to trial. Feel free to disagree! Reach out to me and we can chat about it.
Chat later, you cool cats and kittens!