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Dirty Dilution: District Court to Reconsider Lions Gate Infringement Claim

Source: Grill IP patents news

Dirty-Dilution-Court-ReconsiderationCan a throwaway line in a nearly 30-year-old movie be considered a trademark? And can an advertiser jokingly referring to it “dilute” the film studio’s trademark? Hollywood studio Lions Gate  and advertiser Havas (with its client TD Ameritrade) are set to find out.

A California District Court has agreed to reconsider the legal battle over an advertising campaign that took liberties with the line “Nobody puts Baby in a corner” from the iconic movie Dirty Dancing. The decision to reconsider comes after an admission by Judge Dean D. Pregerson of having accidentally citing an outdated opinion, nullifying the Court’s prior ruling.


    In 2014, Havas Worldwide, an advertising company, developed a campaign for investment group TD Ameritrade Holding Corp., TD Ameritrade Services, and other related TD entities. The featured tagline of the advertising series was “Nobody puts your old 401k in a corner,” which was accompanied by an image of a man lifting a piggy bank above his head. The following year, Lions Gate Entertainment sued Havas and TD, asserting that the trademark for its 1987 film “Dirty Dancing” was infringed by the ad campaign. “Nobody puts Baby in a corner” is an iconic line spoken by Patrick Swayze in the film’s final scene.

    The Court dismissed Lions Gate’s Lanham Act and related state law claims for infringement in a prior decision. Referencing the Supreme Court’s decision in Dastar v. Twentieth Century Fox Film Corp., whereby trademark-related claims were “based on Defendants essentially copying Plaintiff’s intellectual property and slightly changing the works—creating a derivative work, perhaps—and using the changed sentence in advertising its own products.” The plaintiff’s cause of action makes this exact claim, 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.” Dastar barred Lions Gate’s Lanham Act claims, since the allegedly infringed line was an aspect of the film’s text, rather than its title.

The Error

    The trademark dilution claim was also dismissed by the District Court, which found that Lions Gate did not satisfactorily plead that the defendants were “using a mark that is identical or nearly so” to Lions Gate’s mark as a source identifier for TD’s services. This dilution claim is now subject to reconsideration, since the Court erred in depending on a 2007 precedent set by the Ninth Circuit in Jada Toys, Inc. v. Mattel, Inc. Jada Toys found that any dilution claim requires that the offending mark be “identical or nearly so” to the plaintiff’s mark. The Circuit later asserted that the 2006 Trademark Dilution Revision Act superseded the decision in Jada Toys, removing the standard of “identical or nearly so” as a dilution requirement.

    TD and Havas maintained that any dilution claim should still fail, since the advertisement’s tagline was not employed as a source identifier for TD’s services. The District Court disagreed, stating that the alleged use of the tagline as a slogan relating to its campaign was enough to allege the use of said tagline as a trademark. In short, reconsideration is in order, and whether or not TD and Havas will be able to skirt legal liability for their ad campaign remains to be seen.

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Author: grill-ip

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