JAMS ADR Blog by Chris Poole
Many recent entertainment cases have involved claims of trademark infringement by film or television producers. Such claims may arise out of the use of a trademarked item in a scene, like a character drinking a well-known brand of beer, or an actor wearing a trademarked piece of clothing, such as a New York Yankees cap. Trademark disputes can also extend to the use of titles, such as the well-known case Rogers v Grimaldi, 875 F. 2d 994 (2nd Cir. 1989) involving the title “Fred and Ginger.”
Taking these disputes to court carries risks as to outcome, cost, and timing. Entire projects may hinge on the results of a case, and delays or uncertainty can be costly – and even sink a production.
Mediation can be particularly useful in entertainment trademark disputes. It allows the parties to select the mediator of their choice, as opposed to being assigned randomly to a judge. This allows the parties to utilize the services of a mediator with entertainment and intellectual property experience and a style that fits the personalities of the parties. Knowledge of industry customs and practice, as well as of the leading major trademark cases, can provide fair and quick resolution, in line with parties’ expectations.
Additionally the use of private mediation — as opposed to a very public lawsuit — allows parties to keep the existence of the dispute and its resolution private and confidential. This is especially true if the parties wish to enter into a private and non-precedential agreement, which will not bind them to act in a certain way in the future. For example, the trademark owner may not wish to litigate a matter if losing would create an unfavorable precedent. A private license agreement negotiated through mediation will prevent that.
Another benefit is that parties can control the timing of the resolution of the dispute. Instead of being subject to the court’s calendar, the parties and the mediator can work to resolve the matter quickly. This can be especially important if a project hinges on resolving the dispute.
Mediation allows the parties to work out win-win solutions that not only allow the project to continue but also provide a positive resolution for the trademark holder. Mediation can also allow for creative settlements that are not only about how much the infringer will or will not pay for use of the trademarked item. For example, there might be an objection by a trademark holder to use its mark in a particular fashion or in a particular context or scene, while the use is otherwise harmless. Discussing this issue in mediation could result in a compromise agreement whereby the trademarked item is used in certain scenes, but not in others. So too, the prominence of the trademarked item can be reduced so that the trademark holder is no longer concerned that it appears to have endorsed the film or television episode.
In sum, parties who find themselves in a dispute over the use of a trademarked product or title should consider a private mediation before rushing to court where the outcome is uncertain, and unlikely to come quickly.
(Editors Note: I recently interviewed Kenneth Feinberg for Mediate.com about his career over the last 30 years. He has managed the settlement of complex and difficult claims in the wake...By Robert Benjamin