Winchester Mystery House v. Global Asylum, Inc.
148 Cal. Rptr. 3d 412
Cal. Ct. App.2012Background
- Winchester Mystery House, LLC sues Global Asylum, Inc. for trademark infringement, unfair competition, and torts (interference with contract and economic advantage) after film Haunting of Winchester House (2009) is released.
- Plaintiff owns the Winchester Mystery House marks (word and architectural), registered since Feb 2010, and licenses rights to third parties for filming on site.
- Defendant produced a film using the title and imagery associated with the Winchester property, including packaging and promotional materials.
- Plaintiff grieved that the title and packaging misrepresent endorsement/sponsorship and infringe its marks; defendant asserted First Amendment defenses and a descriptive/transformative use argument.
- Trial court granted summary judgment for defendant; on appeal, court upheld, applying Rogers v. Grimaldi to evaluate First Amendment defense and rejection of interference claims.
- Court’s decision affirms judgment for defendant on all asserted claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rogers test applies to First Amendment defense in Lanham Act claims | Winchester argues threshold analysis required before Rogers | Rogers test appropriate; marks may have artistic relevance | Rogers test applies; first prong satisfied; no misdescription under second prong |
| Whether title/packaging are explicitly misleading as to source | Titles/packaging misleading about sponsorship/endorsement | No explicit source misleads; 'A MARK ATKINS Film' appears; content relates to film | Second prong satisfied; no explicit misleading as to source/content |
| Whether plaintiff proved triable facts on interference with contract/economic advantage | Defendant knew of IDW contract and acted to disrupt; triable facts exist | No evidence tying actions to IDW contract; no knowledge/intent shown | No triable facts; summary adjudication in defendant’s favor on these claims |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (First Amendment defense to Lanham Act when title has artistic relevance; explicit misstatement required if no relevance)
- MCA Records, Inc. v. MCA Records, 296 F.3d 894 (9th Cir. 2002) (adopts Rogers framework for titles with iconic marks in culture)
- Walking Mountain Productions v. Barbie, 353 F.3d 792 (9th Cir. 2003) (applies Rogers to Barbie context; cultural significance of mark matters)
- Twin Peaks Prods., Inc. v. Publications Int’l, Ltd., 996 F.2d 1366 (2d Cir. 1993) (discusses limitations of Rogers where post-Rogers decisions integrate likelihood of confusion into prong two)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (sets eight-factor test for likelihood of confusion; used in plain trademark analyses)