Fictitious phrases feed off infringement victory

Wouldn’t we all like to pop down to Central Perk, The Hog’s Head, or Monk’s Café for a drink and to reminisce about our favourite characters from Friends, Harry Potter, or Seinfeld?

Well, it turns out that we’re unlikely ever to do so unless their creators have a hand in opening the stores.

Recent U.S. case law has held that fictional brands, such as those created in film and television, can constitute use as a trade mark.

In two notable decisions, courts in the U.S. have recognised trade mark protection in fictional brands:

1. the Krusty Krab restaurant from SpongeBob SquarePants; and
2. the Sabacc card game from the Star Wars franchise.

In both cases, unrelated businesses sought to name their brands after familiar elements of fictional universes, being the underwater world of SpongeBob SquarePants and the other the Star Wars universe.

Attempts to leverage the popularity of hit television shows are not foreign to the Australian market. A South Australian beverages company attempted to name a product after ‘Duff Beer’, a fictional brand popularised by The Simpsons.

The rights holders in Australia, Twentieth Century Fox Film Corporation and Matt Groening Productions Incorporated, commenced proceedings in the Federal Court of Australia, which ultimately held that the beverage company engaged in misleading and deceptive conduct, and was engaging in the tort of passing off by using the fictional trade mark as part of its branding efforts (ie it was attempting to unfairly use the reputation created in the word Duff to enhance the sales of its beer).

Common points to consider

A common thread runs through all three cases, which provides some insight into what factors of a fictional element may be considered:

1. Is the fictional element a source identifier? I.e., is the fictional element (e.g., the Krusty Krab restaurant) seen as a way to identify the show itself?
   • The Krusty Krab restaurant appears in the vast majority of episodes, so it was found to be intimately connected to the show itself as a source identifier;
2. Has the fictional element acquired distinctiveness through a secondary meaning? ie has the fictional element almost taken on a life of its own that continues to lead viewers to identify the source?
   • E.g, Sabacc is a card game created within the Star Wars universe that is so distinctive and connected to the franchise that to use the word SABACC in relation to any game would be to imply an association with Star Wars; and
3. Has the unauthorised use of the fictional element by a third party created a likelihood of confusion about whether the third party is affiliated with the source?
   • E.g, if someone tried to sell us some Duff Beer, it’s highly likely a consumer would assume that there is some affiliation with The Simpsons as it’s the source of that fictional brand.

Keeping watch over your brands

However, rather than relying on common law rights in Australia and incurring increasingly higher costs to commence court proceedings, a far more commercial approach would be to conduct a watch on the Australian Trade Marks Register and stop any attempt to use a similar brand before that use commences.

It is notable that in the case of the unauthorised Krusty Krab restaurant, the parent company had successfully applied for a trade mark without opposition (presumably as Viacom, the rights holder for SpongeBob SquarePants, weren’t monitoring the US Trade Mark database). It was only after the Krusty Krab had opened that Viacom sought to stop the company from using the Krusty Krab branding.

It’s likely that Viacom, even though it was successful, would have been financially (and possibly reputationally) worse off having to enforce its rights through the Court, than if it had opposed the registration of the trade mark before registration was granted.

The take-home points for businesses are two fold

1. On the one hand, businesses must ensure the brands they use are available and don’t infringe third parties’ rights: conduct freedom to operate searches, and know your industry.
2. On the other, once trade mark protection is secured, business must strategise effectively to enhance the protection of their intellectual property rights going forward: vigilantly monitor, on an ongoing basis, the use of similar trade marks to yours by third parties, and the trade marks of your competitors.

Businesses with valuable intellectual property need to be vigilant to prevent the unauthorised use of their creations.

An effective intellectual property protection strategy can guard a brand against external forces.

Macpherson Kelley first published a version of this article, and to the extent that elements of this article are the same as or similar to another version, they are published here with permission.