IP Law Daily TD Ameritrade’s Dirty Dancing parody commercial may amount to dilution
Tuesday, August 2, 2016

TD Ameritrade’s Dirty Dancing parody commercial may amount to dilution

By Jody Coultas, J.D.

The federal district court in Los Angeles granted Lions Gate Entertainment Inc.’s motion for reconsideration of the dismissal of its trademark dilution claims against TD Ameritrade Services Company, Inc. in a dispute over TD Ameritrade’s parody commercial. The court revived its previous order granting TD Ameritrade’s motion to dismiss Lions Gate’s claims that TD Ameritrade’s slogan infringed its copyright and trademark rights in the movie Dirty Dancing (Lions Gate Entertainment Inc. v. TD Ameritrade Services Company, Inc., August 1, 2016, Pregerson, D.).

Lions Gate claims to own all right and interest in the copyright in the film Dirty Dancing, as well as the common-law trademark rights in DIRTY DANCING and NOBODY PUTS BABY IN A CORNER, a famous line from the movie. Lions Gate also claimed to have registered the trademark DIRTY DANCING and to have applied for trademark registration in NOBODY PUTS BABY IN A CORNER.

TD Ameritrade’s advertising campaign included the line: "Nobody puts your old 401k in a corner," The advertisements often included images of "a still and/or moving image of a man lifting a piggy bank over his head after the piggy bank ran into the man’s arms." Some versions of the advertisements invoked the song, "(I’ve Had) the Time of My Life," which played during the final dance scene in the movie, with lines like "[b]ecause retirement should be the time of your life." Lions Gate contacted TD Ameritrade about the campaign, and while TD Ameritrade ceased the campaign, it refused to pay Lions Gate for their alleged infringing use.

Because Lions Gate’s trademark and unfair competition claims related to subject matter within the scope of the Copyright Act, the court previously found that copyright preemption applied. With regard to the dilution claim, the court had held that Lions Gate failed to state a claim because it did not allege that TD Ameritrade used Lions Gate’s mark, or a mark nearly identical to it, as the mark for TD Ameritrade’s own goods. Lions Gate moved for reconsideration.

The court’s statement that a trademark dilution claim "require[s] the defendant to be using a mark that is identical or nearly so to the plaintiff’s mark" was an error, according to the court. A claim for trademark dilution no longer requires a showing that the defendant’s mark was identical, nearly identical, or substantially similar to the plaintiff’s mark. The prior order was not clear about the effect the lack of identity between the marks had on that determination. Lions Gate’s concern that the parties were not adequately aware that the court was considering dismissing the trademark dilution for failure to state a claim rather than on preemption grounds was noted by the court. Given that the identity of the marks is no longer a threshold requirement to state a claim for trademark dilution, the court’s prior ruling was erroneous and had to be reconsidered.

The trademark dilution claims survived a motion to dismiss, and the court would reconsider whether TD Ameritrade’s use of the slogan "Nobody puts your old 401k in a/the corner" amounted to dilution. The parties did not dispute a slogan can be used as a trademark. Lions Gate’s alleged that TD Ameritrade intended to use this phrase as part of branding campaign, and its admission that the phrase was used as a slogan was the same as admitting that they used the phrase as a trademark or, at least, that it may have been recognized by consumers as a trademark. The claims were sufficient, and the court revived its prior order to deny TD Ameritrade’s motion to dismiss.

The case is No. CV 15-05024 DDP (Ex).

Attorneys: Benjamin O. Aigboboh (Sheppard Mullin Richter and Hampton LLP) for Lions Gate Entertainment Inc. Andrew B. Lustigman (Olshan Frome Wolosky LLP) and Laura Kassner Christa (Christa and Jackson) for TD Ameritrade Holding Corp., TD Ameritrade Services Co., Inc. and Havas Worldwide New York, Inc.

Companies: Lions Gate Entertainment Inc.; TD Ameritrade Services Co., Inc.; Havas Worldwide New York, Inc.; Ameritrade, Inc.; Amerivest Investment Management, LLC

MainStory: TopStory Trademark CaliforniaNews

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