Those of a certain age will recall watching “Rin Tin Tin” on TV as kids. The venerable canine recently was the subject of a trademark infringement suit (Rin Tin Tin, Inc., et al. v. First Look Studios, Inc., et al.). The defendants prevailed because of the trademark fair use defense.
Rin Tin Tin was a German Shepherd dog found in France during World War I. He became famous through movies and remains well-known to this day.
Plaintiffs breed German Shepherds descended from the original Rin Tin Tin and manage related business endeavors. Rin Tin Tin, Inc. obtained federal trademark registrations for “Rin Tin Tin” pertaining to puppies and dogs of the Rin Tin Tin lineage.
Movie Results in Plaintiffs’ Lawsuit
Defendants distributed a movie on DVD titled “Finding Rin Tin Tin: The Adventure Continues.” The movie is based on the life of the original Rin Tin Tin and features German Shepherd puppies and dogs with that name. The movie and the DVD cover make no reference to the plaintiffs and do not claim any affiliation to the Rin Tin Tin bloodline.
Plaintiffs brought suit in the U.S. District Court for the Southern District of Texas, alleging that unauthorized use of the name “Rin Tin Tin” will cause confusion as to the origin, sponsorship and nature of the movie, thereby injuring or diluting plaintiffs’ trademarks. Plaintiffs asked for destruction of all unsold DVDs, an injunction against use of the Rin Tin Tin name, and various damages, incidental costs and attorneys’ fees.
Defendants’ Trademark Fair Use Defense
Defendants countered that their use of the name falls under the trademark fair use defense. The court agreed, noting that all three elements of trademark fair use were satisfied.
- Defendants’ use of the name Rin Tin Tin was descriptive of the historical dog, rather than a reference to plaintiffs or their products.
- Defendant’s use of the name was fair in that it was the most precise way to describe the subject matter of the movie.
- Defendants acted in good faith because they did not use the name Rin Tin Tin to indicate the source of the movie (defendants clearly stated that they were the source).
Bottom line: This case illustrates that if one properly uses a mark in in a descriptive fashion, rather than as a reference to another’s company, products or services, the trademark fair use defense is available to protect such use.
Photo credit: Flixster
Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
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