Scary News

With Halloween just around the corner, let’s take a second to look at the decision of the Eastern District Court of New York to grant his motion for summary judgment that has basketball fans of Terry Rozier are rejoicing.

Background

Easter Unlimited, Inc. owns the copyright for the original “Ghost Face” mask which was used (with licensing) by Dimension Films in the 1996 film Scream.

Easter Unlimited also holds trademark registration number 4,256,208 for “a stylized representation of a ghost outlined in red with a white face, black eyes, nose and mouth, a black cloak and holding a black and gray knife in its left hand…[t]he stylized wording "GHOST FACE" appears in shades of gray to white below the ghost design with a red drop hanging off the letter "F" in "FACE".”

Unlicensed sweatshirts were then sold having a cartoon rendering of the Scream mask on a cartoon basketball player (Terry Rozier) to lampoon the famous mask-wearing movie villain and killer in the context of NBA players, NBA fans, and even the NBA media. Easter Unlimited, Inc. sued Terry Rozier for both copyright and trademark infringement over the sale of the ‘Scary Terry’ sweatshirts and similar products (shown above).

Fair Use Doctrine

“The fair use doctrine seeks to strike a balance between an artist's intellectual property rights to the fruits of her own creative labor . . .`and the rest of us to express them—or ourselves by reference to the works of others." Blanch v. Koons,?467 F.3d 244, 250 (2d Cir. 2006)

In ruling in Rozier’s favor, the court found that Rozier's use of the copyrighted work was nonetheless parodic in nature because:

“the Scary Terry cartoon … successfully uses Defendant's humorous and whimsical reimagination of the Ghost Face Mask does, "at least in part," comment on Plaintiff or its work (as used in Scream), as required for protection as parody under copyright law, favoring a finding of fair use and summary judgment for Defendant.”

Trademark Infringement

To prevail on a trademark infringement claim under the Lanham Act, a plaintiff "must demonstrate that (1) `it has a valid mark that is entitled to protection' and that (2) the defendant's `actions are likely to cause confusion with [that] mark.'"?Tiffany & Co. v. Costco Wholesale Corp.,?971 F.3d 74, 84 (2d Cir. 2020)?(citing?The Sports Auth., Inc. v. Prime Hospitality Corp.,?89 F.3d 955, 960 (2d Cir. 1996)). In finding against a likelihood of confusion, the court stated:

“Plaintiff has failed to demonstrate that its registered trademark is entitled to a conclusive presumption of distinctiveness as an incontestable mark because Plaintiff has not proffered any evidence that its mark has been in continuous use for five years.?See?Hypnotic Hats,?335 F. Supp. 3d at 583,?(citing?Savin Corp. v. Savin Grp.,?391 F.3d 439, 457 (2d Cir. 2004)?("an incontestable registered trademark enjoys a conclusive presumption of distinctiveness.");?see also?Gruner + Jahr USA Pub. v. Meredith Corp.,?991 F.2d 1072, 1076 (2d Cir.1993)?("A registered mark becomes incontestable if it has been in continuous use for five consecutive years subsequent to its registration and is still in use[.]") (internal citations omitted).”

Trademark maintenance and docketing can be scary. If you have any questions about filing a Declaration of Incontestability under §15 or Declaration of Use under §8 of the Trademark Act. ?