Metropolitan News-Enterprise


Friday, October 26, 2012


Page 1


Court of Appeal Rejects Suit Over ‘Mystery House’ Trademark




The maker of a film about the mysterious home of an heiress to the Winchester firearms fortune did not infringe on the trademarks of the property’s current owner or tortiously interfere with the owner’s own prospective move deal, the Sixth District Court of Appeal has ruled.

The justices affirmed Santa Clara Superior Court Judge Peter H. Kirwan’s award of summary judgment to Global Asylum, Ltd., which released “Haunting of Winchester House” straight to video in 2009. The film tells the popular story of Sarah Winchester, widow of the son of the founder of the Winchester Repeating Arms Company.

Sarah Winchester came to what is now San Jose in 1884, three years after her husband died of tuberculosis. Said to have been profoundly depressed by his death, and by the death of their infant daughter 15 years earlier, Winchester allegedly consulted a spiritualist, who supposedly told her that the family was cursed by the spirits of those who had been killed by the Winchester rifle, called “The Gun That Won the West.”

Huge Mansion

Winchester came to California, and built a huge Victorian-style mansion, living largely in seclusion. Construction and renovation work is said to have taken place 24 hours daily, seven days a week, until the extremely wealthy widow—said to have owned nearly half the company’s stock—died in 1922.

The property later came to be owned by John and Mayme Brown, who turned it into a popular tourist attraction, with a museum and gift shop, and offering tours of the house and surroundings.

Winchester Mystery House, LLC, founded by the Brown’s descendants, registered the word mark “Winchester Mystery House” and related architectural mark in 2010.

The previous year, the company had learned that Global Asylum was planning to release a film related to the house. It sent Global Asylum two letters, warning that any use of footage of the house was unauthorized.

The film depicts a Victorian-style mansion, but there are no scenes of the actual Winchester house. Its characters include ghosts of Sarah Winchester and her fictionalized daughter and deaf brother.

Infringement Claim

In filing suit, Winchester Mystery House, LLC claimed that use of the name “Winchester House” and images used in the film infringed the trademarks, and that the plaintiff’s intellectual property had been used to promote the film and to confuse consumers into believing that the plaintiff had approved of its release.

The plaintiff also alleged that it had previously informed Global Asylum that it had made an agreement with another company to film on the premises, and that by making its own film, Global Asylum had intentionally interfered with that arrangement.

In moving for summary judgment, Global Asylum argued that it had an absolute First Amendment defense to the trademark/unfair competition claims, as well as a fair- use defense, and that there was no intent to interfere with the plaintiff’s film deal.

The trial judge agreed and granted the motion.

Justice Nathan Mihara, writing for the Court of Appeal, said the appropriate test for First Amendment protection for a film title is that adopted in Rogers v. Grimaldi (2d Cir. 1989) 875 F.2d 994 and subsequently relied on by the Ninth Circuit and other federal courts.

‘Ginger and Fred’

In Rogers, actress Ginger Rogers claimed that the makers of the film “Ginger and Fred,” a fictional story about the reunion of a couple who had portrayed Rogers and Fred Astaire in their cabaret act, were infringing trademarks and likely to confuse the public into thinking that the movie was about her or endorsed by her.

The court said a film title and related media are constitutionally protected from trademark infringement claims if the title has some artistic relevance to the underlying work and do not “explicitly mislead[] as to the source or content of the work.” 

Global Asylum, he said, had satisfied both prongs, since the film and the plaintiff’s mark reflect the same historical story—the defendant’s use of some fictionalized characters notwithstanding—and the defendant having made “no suggestion that the film was authorized, endorsed, or produced by plaintiff.”

Turning to the tortious interference claim, Mihara said the information the defendant was given about the plaintiff’s filming deal was too non-specific to charge the defendant with knowledge that it would be interfering with a contract by making and distributing its film.

Global Asylum, the justice noted, was not told “the type of production company or whether the contract related to the production of a feature film, a documentary, a cartoon, a commercial, an in-house video or audio tour, a novel, or a television show.”

Saul D. Brenner and Melanie Howard of Loeb & Loeb LLP in Los Angeles represented the plaintiff, along with attorneys from the San Jose firm of Hopkins & Carley. Scott A. Meehan of Westlake Village represented the defendant.

The case is Winchester Mystery House, LLC v. Global Asylum, Inc., 12 S.O.S. 5432.           


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