First Look Studios, Inc. successfully defended itself against federal and state claims of trademark infringement and dilution related to its film Finding Rin Tin Tin: The Adventure Continues.  Daphne Hereford, owner of the rights to the trademark RIN TIN TIN, claimed that the unauthorized use of the mark in First Look’s film would cause consumer confusion in regards to the sponsorship of the movie.

The registered RIN TIN TIN mark is used in relation to live German Shepherd dogs of the Rin Tin Tin lineage.  First Look Studios released Finding Rin Tin Tin: The Adventure Continues on DVD in September 2008.  The film’s plot revolves around the early life of the original Rin Tin Tin.  First Look defended the lawsuit by arguing that it was protected from the infringement claims because the film title was fair use of the RIN TIN TIN mark. 

A U.S. district court in Houston, Texas, granted summary judgment in First Look’s favor on November 12, 2009.  The court found that studio had established all necessary elements of the fair use defense: (1) the film used the RIN TIN TIN mark descriptively, to indicate the film’s subject matter or content; (2) the RIN TIN TIN mark was used fairly, in a non-trademark manner, because did not indicate the film’s source; and (3) the film studio demonstrated good faith in its use of the mark because its DVD packaging clearly identified First Look as the film’s producer. 

Because First Look had proved that it had used the mark fairly, the court denied the plaintiff’s federal and state trademark infringement and dilution claims.  The court further found that it did not need to consider whether the film’s title might lead to a likelihood of consumer confusion because First Look had already proven that its use of the mark was a fair use protected by the First Amendment.

Intellectual property matters are increasingly influenced by First Amendment law.  It is prudent for media and entertainment companies to seek legal advice to ensure that they have complied with all relevant laws.  To learn more about this issue, please contact:

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Matthew R. Mills
mills.matthew@arentfox.com
202.715.8582

Grace L. Applefeld
applefeld.grace@arentfox.com
202.857.6498