93 USPQ2d 1132 (S.D. Tex. Nov. 12, 2009)

ABSTRACT

The Southern District of Texas found use of “Finding Rin Tin Tin: The Adventure Continues” as the title for a film about the famous dog Rin Tin Tin was a fair use of plaintiff’s RIN TIN TIN mark registered for German Shepherd dogs of Rin Tin Tin lineage. Because defendants established all three elements of the fair-use defense, they were not required to rebut allegations of likelihood of confusion and summary judgment was appropriate.

CASE SUMMARY

FACTS

Rin Tin Tin was a German Shepherd dog who became famous in the 1920s after starring in several major motion pictures. His owner began a dog-breeding program and sold the dogs under the name RIN TIN TIN. The dogs continued to appear in films and television shows, always under the RIN TIN TIN mark. Plaintiffs Rin Tin Tin, Inc. and Daphne Hereford are the successors to the original breeder and the owners of federal trademark registrations for the mark RIN TIN TIN for live German Shepherd dogs of Rin Tin Tin lineage and related animal performances.

Defendants First Look Studios, Inc. and their related entities (collectivelly “First Look”) produced a film based on the life story of the original Rin Tin Tin dog and distributed the DVD under the title “Finding Rin Tin Tin: The Adventure Continues.” The DVD cover stated its affiliation with First Look and credited only the human actors in the film. No affiliation with plaintiffs or the Rin Tin Tin bloodline was claimed.

Plaintiffs brought suit claiming that the unauthorized use of their RIN TIN TIN mark would cause confusion among consumers and dilute the mark. First Look moved for summary judgment, arguing that its use of the RIN TIN TIN mark within the title of its film was not a trademark use but a descriptive fair use protected under the First Amendment.

ANALYSIS

To succeed on a fair-use defense, defendants must establish that they used plaintiff’s mark (1) descriptively, (2) fairly, and (3) in good faith. Descriptiveness is established, according to the court, if the term denotes a characteristic or quality of the service. The court pointed to decisions of other federal courts, finding that motion pictures titled after a historical figure’s name, in a film about that historical figure, were descriptive uses, in support of its finding that First Look’s use of the historical dog Rin Tin Tin’s name in the title of its motion picture was a descriptive use.

To qualify as “fair” under the second element of the fair-use defense, the defendant was required to demonstrate that its use of the mark in its title was the most precise way to describe its film. Because the film title “Finding Rin Tin Tin: The Adventure Continues” truthfully tells consumers that defendants’ movie is about the historical dog Rin Tin Tin, the court found the use was fair.

To satisfy the third and final element of the fair-use defense—good faith—First Look was required to establish that its use of the RIN TIN TIN mark in the film title conveyed no information about the film’s origin as contrasted with its subject. Noting that other federal courts have found that inclusion of a trademarked name in a title does not convey information about a film’s origin as long as defendants employed their own source designations elsewhere, the court viewed the appropriate test as whether First Look made clear on its DVD cover that it, and not plaintiffs, was the source of the DVD. Because the only listed source identifiers on defendants’s DVD cover, disc, and within the film itself were First Look and its related entities, the court found defendants’s use of the RIN TIN TIN mark conveyed no information about the origin of the film and was in good faith.

Although First Look satisfied all three elements necessary to make a defense of fair use, plaintiffs argued that because the film featured a dog not actually of Rin Tin Tin lineage, consumer confusion was likely. The court rejected this argument, finding that a defendant who has established a fair-use defense need not rebut the likelihood of consumer confusion or dilution from its use of a descriptive term. Accordingly, the court found First Look to be entitled to summary judgment.

CONCLUSION

This decision is important as it clarifies that, where a defendant can satisfy all three elements of the fair-use defense, its burden is satisfied and further likelihood-of-confusion analysis and argument is not appropriate or required.