When Worlds Collide: Trademark Disputes Pitting Fictional Entertainment Works Against ‘Non-Fictional’ Businesses

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There have been numerous disputes in the last few years involving a name, trademark or personal image appearing in a fictional work clashing with similar names, marks and other indicia being used by or for ‘non-fictional’ products, businesses or individuals.

In some cases, the senior party provides entertainment works in which an element of the fictional story-line has become a source-indicator for the goods and services, and the junior party uses the same term for a corresponding ‘non-fictional’ product or service, for example the SpongeBob SquarePants “THE KRUSTY KRAB” restaurant in the recent 5th Circuit case Viacom International v. IJR Capital Investments, and the Star Wars “SABACC” card game in the Lucasfilm v. Ren Ventures case.  There have also been disputes running in the opposite direction, where the senior party provides ‘nonfictional’ products or services under a given name or mark, and the junior party is using that name or mark in connection with a fictional entertainment work (such as the recent Empire Distribution case, in which the 9th Circuit dismissed the infringement claim of an actual record label named Empire Distribution against makers of the “Empire” television program about a fictional “Empire” record label).  In yet other cases, celebrities and athletes have objected to the use of their likenesses within video games asserting federal and state law claims, in which they have faced various preemption and first amendment defenses.

Join the NYIPLA for a panel discussion with practitioners who have been on the firing line in these disputes.  There will be in-depth discussion of the claims, defenses and strategies in these cases, as well as an opportunity to pose questions to the panel. 

Panelists
• Kaydi Osowski,  Counsel, Trademark, Viacom Media Networks
• Cory Struble,  Senior Associate, Quinn Emanuel Urquhart & Sullivan, LLP
Moderator  David Leichtman,  Founding Partner, Leichtman Law PLLC

CLE Credit 1 Areas of Professional Practice

Schedule
6:00-6:15 PM Registration
6:15-6:30 PM Trademark Law & Practice Committee In-person Meeting and Networking (Non-Members Welcome)
6:30-7:30 PM CLE Presentation
7:30-8:00 PM Refreshments

Hosted by the NYIPLA Trademark Law & Practice committee

Sponsored by
Quinn Emanuel Urquhart & Sullivan