Twiharder 3

Case 2:14-cv-00104-R-PJW Document 94 Filed 10/20/14 Page 1 of 31 Page ID #:3781
1
2
3
4
5
6
7
8
9
JAMES H. FREEMAN,ESQ.
Admitted Pro Hac Vice
JH FREEMAN LAW
3 Columbus Circle, 15th Floor
New York, NY 10019
Tel: (212) 931-8535 /
Fax: (212) 496-5870
james@jhfreemanlaw.com
STEVE LOWE, ESQ. (Cal. Bar #122208)
LOWE & ASSOCIATES, P.C.
11400 Olympic Blvd., Suite 640
Los Angeles, CA 90064
Tel: (310) 477-5811 / Fax: (310) 477-7672
steven@lowelaw.com
Attorneys for Counter-Defendant BTLP
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
WESTERN DIVISION
10
11
12
13
14
15
16
17
18
19
20
21
22
BETWEEN THE LINES

PRODUCTIONS, LLC, a
California limited liability
company,
25
26
27
28
Hon. Judge Manuel L. Real
Plaintiff,
COUNTER-DEFENDANT
BETWEEN THE LINES
LIONS GATE ENTERTAINMENT
PRODUCTIONS LLCS [BTLP]
CORP., a British Columbia
MEMORANDUM OF POINTS AND
corporation, and
AUTHORITIES IN SUPPORT OF
SUMMIT ENTERTAINMENT,
LLC, a Delaware limited liability
ITS MOTION FOR SUMMARY
company
JUDGMENT ON COUNTS I-V OF
Defendants.
SUMMITS COUNTERCLAIMS
-----------------------------------------SUMMIT ENTERTAINMENT, LLC, PURSUANT TO
a Delaware limited liability company FED. R. CIV. P. 56(c)
vs.
Counterclaimant
23
24
Case No. 2:14-cv-00104-R (PJWx)
vs.
BETWEEN THE LINES
PRODUCTIONS, LLC, a California
limited liability company
Counter-Defendant.
Hearing Date: November 17, 2014

10:00 a.m.
Trial Date: November 25, 2014

Case 2:14-cv-00104-R-PJW Document 94 Filed 10/20/14 Page 2 of 31 Page ID #:3782
TABLE OF CONTENTS
1
2
3
4
5
6
7
8
9
10
11
STANDARD OF REVIEW .......................................................................................1

ARGUMENT .............................................................................................................1
POINT I: A JURY COULD NOT RETURN A VERDICT IN SUMMITS
FAVOR AS TO SUMMITS COPYRIGHT CLAIMS [COUNT V] ................1
A. BTLPS IMAGINATIVE WORKS CONSTITUTE PRIVILEGED FREE SPEECH
UNDER THE FIRST AND FOURTEENTH AMENDMENT TO THE U.S.
CONSTITUTION ..................................................................................................1
B. BTLP HAS ESTABLISHED AN OBVIOUS FAIR USE
UNDER 17 U.S.C. 107 ......................................................................................6
12
13
14
15
16
17
18
19
20
21
22
23
POINT II: A RATIONAL TRIER OF FACT COULD NOT RETURN A

VERDICT FOR SUMMIT ON COUNTS I AND II OF THE
COUNTERCLAIMS ................................................................................................7
A. THE FIRST AMENDMENT IMMUNIZES BTLP WITH RESPECT TO THE
TWIHARDER FEATURE AND MOVIE PROMO MATERIALS ..................................7
(1) WALKING MOUNTAIN THRESHOLD: Summit Concedes that the
TWILIGHT Marks are Culturally SignificanT ........................................9
(2) ROGERS PRONG #1: Summit Concedes that BTLPs Use of the
TWIHARDER Mark is Artistically Relevant to the Subject Matter
of BTLPs Imaginative Works .....................................................................11
(a)
BTLPs Use of TWIHARDER as a Work Title to Describe the

Twiharder Feature or Movie Promo Materials is Artistically
Relevant to the Subject Matter of BTLPs Imaginative Works ..12
(b)
BTLPs Use of the TWIHARDER Marks Within the Body of the

Relevant .............................................................................................13
24
25
26
27
28

Case 2:14-cv-00104-R-PJW
Document 94 Filed 10/20/14 Page 3 of 31 Page ID #:3783
(3) ROGERS PRONG #2: SUMMIT CONCEDES THAT BTLPS USES OF THE
TWIHARDER MARKS ARE NOT EXPLICITLY MISLEADING AS TO THE
SOURCE OR CONTENT OF BTLPS IMAGINATIVE WORKS ...............................15
2
3
4
B. ALL CLAIMS BASED ON SUMMITS TWIHARD MARKS FAIL BECAUSE THERE

IS NO MATERIAL DISPUTE CONCERNING BTLPS PRIOR USE OF THE
TWIHARDER MARKS ....................................................................................17
5
6
7
8
9
10
11
12
13
14
15
16
17
18
C. SUMMIT HAS FAILED TO PRODUCE EVIDENCE THAT BTLP USED THE

TWIHARDER MARKS IN ACTUAL COMMERCE WITH RESPECT TO ANY
MERCHANDISE OR CLOTHING .........................................................................19
D. AS A MATTER OF LAW, BTLPS USE OF THE TWIHARDER MARKS ARE NOT
CONFUSINGLY SIMILAR TO SUMMITS TWILIGHT MARKS .. 20
POINT III: SUMMIT HAS FAILED TO PRODUCE EVIDENCE TO

SUPPORT A COGNIZABLE TRADEMARK DILUTION CLAIM
UNDER COUNT III ..............................................................................................21
A. UNDER THE TDRA, BTLPS USES OF THE TWIHARDER MARK ARE NONCOMMERCIAL AND THEREFORE NON-ACTIONABLE ....................................22
B. SUMMITS TARNISHMENT CLAIM FAILS BECAUSE THE MARKS ASSOCIATED
WITH THE TWILIGHT SAGA MOVIES ARE TARNISH-PROOF .............................23
19
20
21
POINT IV: ALL STATE LAW CLAIMS FAIL (COUNTS I-IV) BECAUSE
THEY RESTS ON ALLEGATIONS THAT ARE SUBSTANTIALLY
CONGRUENT TO THE FEDERAL CLAIMS ................................................24
22
23
CONCLUSION........................................................................................................25
24
25
26
27
28
BTLPs Motion for Summary Judgment as to Counts I-IV of Summits Counterclaims Pursuant to Fed. R. Civ. P. 56

TABLE OF AUTHORITIES
Cardtoons, L.C. v. Major League Baseball Players Assn,

95 F.3d 959, 971 (10th Cir. 1996) ------------------------------------------------------- 9
3
4
5
6
7
8
9
10
11
12
13
14
15
Cosmetically Sealed Indus., Inc. v. ChesebroughPond's USA Co.,

125 F.3d 28, 3031 (2d Cir. 1997)----------------------------------------------------- 17
Denbicare U.S.A., Inc. v. Toys R Us, Inc.,
84 F.3d 1143, 1152 (9th Cir. 1996) ---------------------------------------------------- 25
Diller v. Barry Driller, Inc, 2012 WL 4044732, *10. (C.D. Cal. Sept. 10, 2012) 11
Dillinger, LLC v. Electronic Arts, Inc.,
2011 WL 2457678, at *6 (S.D. Ind. Jun. 16, 2011) --------------------------------- 15
ETW Corp. v. Jireh Pub., Inc.,
332 F.3d 915, 928, n. 11 (6th Cir. 2003) --------------------------------------------- 13
Fortres Grand Corp. v. Warner Bros. Entertainment Inc. 2013 WL 2156318
(N.D. Ind. 2013) -------------------------------------------------------------------------- 15
16
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008) ---------------- 22
17
L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir.1987) ------- 11
18
19
Mattel Inc. v. Walking Mountain Prod.,

353 F.3d 792, 807-808 (9th Cir. 2003) -------------------------------------------------- 8
20
21
22
23
24
25
26
27
New Kids on the Block v. News America Publishing, Inc.,

971 F.2d 302, 307 (9th Cir. 1992) ----------------------------------------------------- 17
One Industries vs. ONeal See Acad. Of Motion Picture Arts & Scis. v.
Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir. 1991) ----- 25
Parks v. Laface Records, 329 F.3d 437 (6th Cir. 2003) ------------------------------- 9
Ringling Bros. Barnum & Bailey Combined Shows, Inc. v. B.E. Windows
Corp., 937 F.Supp. 204 (S.D.N.Y. 1996) -------------------------------------------- 24
28

1
2
3
4
5
6
7
Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) -------------------------------- 8
Roxbury Entertainment v. Penthouse Media Group,
669 F.Supp.2d 1170, 1176 (C.D.Cal. 2009) ----------------------------------------- 11
Seale v. Gramercy Pictures, 949 F.Supp. 331, 339 (3d Cir. 1996) ----------------- 9
Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 (5th Cir. 1999) ---------------- 9
Twin Peaks Prods., 996 F.2d at 1379 -------------------------------------------------- 16
Twin Peaks Prods., Inc. v. Pubs. Int'l, Ltd.,

996 F.2d 1366, 1370 (2d Cir.1992) ---------------------------------------------------- 12
10
11
12
Univ. of Alabama Bd. of Trustees v. New Life Art, Inc.,

683 F.3d 1266, 1278 (11th Cir. 2012) --------------------------------------------- 13, 16
13
14
15
16
17
STATUTES
15 U.S.C. 1125(a) ------------------------------------------------------------------------ 7, 8
15 U.S.C. 1125(c), ------------------------------------------------------------------------ 24
Lanham Act, 1125(c), ------------------------------------------------------------------- 21
18
19
20
21
22
23
24
25
26
27
28

STANDARD OF REVIEW
1
2
Under Fed. R. Civ. P. 56, [w]here the record taken as a whole could
not lead a rational trier of fact to find for the non-moving party, there is no
genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 587 (1986). Summary judgment is therefore mandated where
the non-moving party fails to sufficiently establish the existence of an
element essential to its claim on which it will bear the burden of proof at
trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 2552, 91 L.
Ed. 2d 265, 273 (1986). The moving party is not required to negate its
10
opponents claim; instead, the burden on the moving party may be
11
discharged by showingthat is, pointing out to the district courtthat
12
13
14
15
16
17
18
19
there is an absence of evidence to support the nonmoving partys case. Id.

at 325. A summary judgment motion cannot be defeated by relying solely
on conclusory allegations unsupported by factual data. Taylor v. List, 880
F.2d 1040, 1045 (9th Cir. 1989).
establish the presence of a genuine dispute, or that a party with the trial
burden cannot produce admissible evidence to carry its burden as to the fact
(FRCP 56(c)(1)(B)).
20
21
ARGUMENT
POINT I
22
A JURY COULD NOT RETURN A VERDICT IN SUMMITS FAVOR AS

TO SUMMITS COPYRIGHT CLAIMS [COUNT V]
23
24
25
26
27
28
Showing that the materials cited do not
A.

BTLPs Imaginative Works Constitute Privileged Free Speech Under

The First And Fourteenth Amendment to the U.S. Constitution
[S]peech on public issues occupies the highest rung of the hierarchy
of first amendment values and is entitled to special protection. Snyder v.


Phelps, 562 U.S. __(2011), quoting Connick v. Myers, 461 U. S. 138. Speech
is of public concern when it can be fairly considered as relating to any
matter of political, social, or other concern to the community. Id., at 146.
Expression by means of motion pictures is included within the free
speech and free press guaranty of the First and Fourteenth Amendments.
Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 499-502 (1952). Motion pictures
are a particularly valuable form of free speech because they may affect
public attitudes and behavior in a variety of ways, ranging from direct
espousal of a political or social doctrine to the subtle shaping of thought
10
which characterizes all artistic expression. Id. Banning the exhibition of a
11
motion picture because it advocates unconventional ideas str[ikes] at the
12
13
14
15
16
17
18
19
very heart of constitutionally protected liberty.
Kingsley Int'l Pictures
Corp. v. Regents of the Univ. of N.Y., 360 U.S. 684, 688 (1954). Since
motion pictures . . . are protected forms of expression, any restriction
upon their dissemination must be carefully tailored in order to ensure full
protection of First Amendment rights. St. Martins Press, Inc. v. Carey, 440
F.Supp. 1196, 1204 (S.D.N.Y. 1977).
A grave danger to copyright may lie in the failure to distinguish
20
between the statutory privilege known as fair use, and an emerging
21
constitutional limitation on copyright contained in the First Amendment.'' M
22
Nimmer, NIMMER ON COPYRIGHT 1.10[D], at 1-85 (1978). Some day [courts
23
may be required] to distinguish between the doctrine of fair use and an
24
emerging constitutional limitation on copyright contained in the first
25
amendment. Wainwright Secs. Inc. v. Wall Street Transcript Corp., 558
26
F.2d 91, 95 (2d Cir. 1977), cert. denied, 98 S. Ct. 730 (1978) (quoting M.
27
Nimmer, Does Copyright Abridge the First Amendment Guarantees of Free Speech
28

and Press?, 17 U.C.L.A. L. REV. 1180, 1200 (1970). While Congress may limit
[first amendment] rights to prevent . . . copyright infringement . . . such
limitation must be drawn narrowly, so as . . . [to avoid] unnecessary
impingement on the right of free speech.
Council, Inc. v. E. F. Timme & Son, Inc., 364 F. Supp. 16, 22 (S.D.N.Y. 1973).
Professor Nimmer argues that if the copying of the expression is essential
effectively to convey the idea expressed, then copyrighted material may be
copied under the First Amendment. Los Angeles Times v. Free Republic,
Case No. cv-98-7840-MMM (AJWx) (C.D. Cal. 1999), citing Harper & Row,
10
Publishers, Inc. v. Nation Enter., 471 U.S. 539, 563 (1985); M. Nimmer & D.
11
Nimmer, NIMMER ON COPYRIGHT, 1.10[D] (1999).1
12
13
14
15
16
17
18
19
20
Fur Information & Fashion
It cannot be denied that if the first amendment's objective is the

maximization of the spectrum of available thought, parody is part of that
spectrum. Richard A. Bernstein, Parody and Fair Use in Copyright Law, 31
COPYR. L. SYMP. (ASCAP) 1, 31 (1984). Because parody implicates core
constitutional concerns, Cardtoons, L.C. v. Major League Baseball Players
Assn, 95 F.3d 959, 972 (10th Cir. 1996), courts uniformly have noted the
broad scope permitted parody in First Amendment law. Cliffs Notes, Inc.
v. Bantam Doubleday Dell Publg Group, 886 F.2d 490, 493 (2d Cir. 1989).
21
For purposes of copyright law, the U.S. Supreme Court defines
22
parody as literary or artistic work that imitates the characteristic style of
23

1 See also Michael D. Brittin, Constitutional Fair Use, WILLIAM AND MARY LAW REVIEW,
Vol. 20, Issue 1, page (1978) (the scope of copyright protection is limited by the first
amendment. This limitation divides infringement and fair use. If a use promotes progress
in science and useful arts, is reasonably necessary, and threatens no harm to the value of
the allegedly infringed copyright, that use is fair. Toleration of such a use is not
discretionary; it is compelled by the guarantee of free speech, which demands an
uninhibited flow of ideas and information.)

24
25
26
27
28

an author or a work for comic effect or ridicule. Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 580 (1993) quoting AMERICAN HERITAGE
DICTIONARY, 1317 (3d ed. 1992).
quote from existing material, is the use of some elements of a prior authors
composition to create a new one that, at least in part, comments on that
authors works. Id.
[T]he heart of any parodists claim to
Here, the subject matter of the copyright infringement claim is BTLPs
feature-length motion picture parody Twiharder which comments on matters
of public concern raised by The Twilight Saga, including domestic violence,
10
racial supremacy, self-loathing, sexual abstinence and female subordination.
11
See Compl., R. 1, 35-36.
12
13
14
15
16
17
18
19
The alleged infringing works also include
graphic/pictoral works (depicting the identical caricatures featured in the

Twiharder Feature).
Plaintiffs act of imitating certain elements of The
Twilight Sagas expression in the Twiharder Feature and Movie Promo

Materials is essential to effectively convey BTLPs viewpoints about the
ideas propagated by The Twilight Saga, as well as to achieve the comedic
effect that frames the underlying message for audiences. It is self-evident
that BTLPs very purpose of making a feature length Twilight movie spoof
20
would be entirely frustrated if BTLP were foreclosed from cleverly imitating
21
the expressive elements of the Twilight Saga movies. Independent-minded,
22
unauthorized parodies must be contributed to society and the useful Arts.2
23
Under the facts presented at bar, BTLPs defenses to Summits
24
copyright infringement claims should not be confined to the four corners of
25
26
27

2 Courts in passing upon particular claims of infringement must occasionally
subordinate the copyright holder's interest in a maximum financial return to the greater
public interest in the development of art, science and industry."' Berlin v. E.C.
Publications, Inc., 329 F.2d 541, 544 (2d Cir.), cert. denied, 379 U.S. 822 (1964).
28

the Copyright Act of 1976. As a Bill of Right reserved to the People by the
Founding Fathers, the First Amendment acts as a restrictive clause on
Congressional power; not vice-versa. Cases which have found that the
codified version of Fair Use is sufficient, standing alone, to safeguard First
Amendment rights are constitutionally suspect because a Bill of Right
accorded to the People cannot be subjugated to a mere Act of Congress. 3
Based on the foregoing principles, BTLP first urges the Court to
recognize the critical distinction between a First Amendment constitutional
defense and a Fair Use statutory defense in the specific context of feature-
10
length motion pictures which target famous fiction as the object of criticism.4
11
BTLP then asks the Court to find that the Twiharder Feature and Movie
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
Promo Materials constitute artistic parody whose interpretation of elements

found in The Twilight Saga series is essential effectively to convey the idea
expressed. Harper & Row, 471 U.S. at 563. Upon such affirmative finding,
BTLP respectfully submits that its Imaginative Works are constitutionally
immunized from liability under the Copyright Act and that an independent

3 The preamble to the Bill of Rights, as proposed by the First Congress of the United
States on September 25, 1789, states: THE Conventions of a number of the States, having
at the time of their adopting the Constitution, expressed a desire, in order to prevent
misconstruction or abuse of its powers, that further declaratory and restrictive clauses
should be added: And as extending the ground of public confidence in the Government,
will best ensure the beneficent ends of its institution. (emphasis added).

4 The U.S. Supreme Courts landmark decision in Acuff Rose v. Campbell does not
preclude such a distinction. Although the High Court analyzed the work parody in that
case through the lens of codified fair use under the Copyright Act, it certainly does not
mandate such treatment. See Acuff Rose vs. Campbell (parody, like other comment or
criticism, may claim fair use under 107). Moreover, unlike the Lanham Act, the word
parody is nowhere to be found in the Copyright Act of 1976. This exclusion should be
deemed purposeful under the doctrine of statutory construction expressio unio est
exclusion alterius.
28

Fair Use analysis under section 107 thereafter becomes redundant.5
B.
4
5
6
7
BTLP HAS ESTABLISHED AN OBVIOUS FAIR USE UNDER 17 U.S.C. 107

As to the first factor under 17 U.S.C. 107(1), the question is simply
whether a parody may reasonably be perceived in the content. Campbell,

510 U.S. at 582. The original work need not be the sole subject of the
parody; the parody may loosely target an original so long as the parody
reasonably could be perceived as commenting on the original . . . .
Walking Mountain. What is critical is how the work in question appears to
10
the reasonable observer. 714 F.3d 694, 708 (2013). A transformative parody
11
comment[s], through ridicule, on what a viewer might reasonably think is
12
the undue self importance conveyed by the subject of the [original work].
13
Leibovitz v. Paramount Pictures, 137 F.3d 109, 114-115 (2d Cir. 1998).6
14
Evidence establishing the authors intent to create a parody further
15
demonstrate[d] that the creators expected their viewership to understand
16
the joke. Murphy vs. Millenium Group, 650 F.3d 295, 309 (3rd Cir. 2011). In
17
the Ninth Circuit, the parodic nature of a defendant's work is a
18
question . . . of law to be decided by the court. Walking Mountain. [I]n
19
copyright infringement actions, the works themselves supersede and control
20
21
22
23
24
25
26
27
28
contrary descriptions of them, including any contrary allegations,

conclusions or descriptions of the works contained in the pleadings." Allen
v. Scholastic, 739 F. Supp. 2d 642, 645 n.l (S.D.N.Y. 2011).

5 This conclusion is bolstered by the fact that since Campbell v. Acuff Rose was decided
in 1994, no U.S. Court has ever found an artistic parody to constitute an infringement.
[C]opying is not only helpful, but often necessary, in creating a parody, and even
extensive copying of creative expression may be fair use in genres which rely for their
artistic effect, at least in part, on the evocation of the original Bourne Co. v. Twentieth
Century Fox Film Corp., 602 F. Supp. 2d 499, 508 (S.D.N.Y. 2009).
6

Here, BTLPs Imaginative Works constitute genuine artistic parody as
a matter of law because they products of BTLPs intellectual labor as authors
and because they obviously comment on the target of their ridicule.
Whether the works were generated, in part, due to a profit motive is
irrelevant as BTLP is parodying a work of entertainment.
having satisfied the first factor of Section 107 of the Copyright Act on the
basis of artistic parody, factors two, three and four must weigh in favor of
the finding of Fair Use consistent with public policy and stare decisis.
Indeed, here is no reported case where an artistic parody has been found
10
Accordingly,
infringing under the Copyright Act of 1976.7
11
12
POINT II
13
A RATIONAL TRIER OF FACT COULD NOT RETURN A VERDICT

FOR SUMMIT ON COUNTS I AND II OF THE COUNTERCLAIMS
14
15
w Count I of Summits counterclaims pleads False Designation of
16
Origin and Unfair Competition under 15 U.S.C. 1125(a). [Counterclaims at
17
31-38, ECF p. 35-36]8.
18
19
w Count II pleads Trademark Infringement under 15 U.S.C. 1114

(and common law) [Id. at 39-46; ECF p. 36-37].
20
21
22
23
24
25
26
27
A.
THE FIRST AMENDMENT IMMUNIZES BTLP WITH RESPECT TO THE

TWIHARDER FEATURE AND MOVIE PROMO MATERIALS
Summit claims that BTLPs use of the TWIHARDER Marks in

7 BTLP reserves the right to address the remaining Section 107 factors in greater detail on
reply, if required.

8 ECF, as used herein, shall only refer to Docket No. 16. The number which follows
ECF is the page number and, if applicable, line on the page.
28

connection with BTLPs Imaginative Works infringe the TWILIGHT Marks.
See Counterclaims, 10; ECF p. 24:3.9 Count I and II of Summits
counterclaims should be dismissed as a matter of law with respect to BTLPs
Imaginative Works because they are immunized by the First Amendment
under Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (Rogers) and
Mattel Inc. v. Walking Mountain Prod., 353 F.3d 792, 807-808 (9th Cir. 2003)
(Walking Mountain).
In Rogers, the defendant created a motion picture entitled Ginger
and Fred about two fictional cabaret performers who imitated Ginger
10
Rogers and Fred Astaire in their performances. 875 F.2d at 99697. Rogers
11
sued under the Lanham Act, 15 U.S.C. 1125(a), arguing that the movies
12
13
14
15
16
17
18
19
title falsely implied that she was endorsing, associated with or featured in
the defendants movie. Id. at 997. The Court of Appeals held in favor of the
defendant-filmmaker because: (1) the movie title Ginger and Fred was
artistically relevant to the subject matter of the defendants film; and (2)
there was no evidence of any explicit misleading statements as to source of
the film. Id. at 999-1001.
The two-prong Rogers test has been adopted by the Ninth Circuit in
20
Mattel, Inc. v. MCA Records, Inc. (MCA Records), 296 F.3d 894, 902 (9th
21
Cir. 2002), cert denied, 537 U.S. 1171 (2003),10 as well in the majority of sister
22
23
24
25
26
27
28

9 Notably, Summit represented to the Court under lead counsels sworn declaration that
Summits TWIHARD registration is for clothing, not the Twilight Motion Pictures. [See
Declaration of James H. Freeman In Support of this Rule 12(c) Motion (Freeman Declr.)
at 4]. Accordingly, BTLP will not herein address the First Amendment argument as to
Summits two (2) TWIHARD mark registrations, which can only extend to use in clothing
under Class 025.

10 In MCA Records, Mattel, the trademark holder of the iconic Barbie mark, brought a
claim against the producers of a song entitled Barbie Girl, that contained lyrics that

circuits.11
For the Rogers test to apply, the Ninth Circuit requires the
Lanham Act defendant to make a threshold showing that plaintiffs
trademarks have acquired cultural significance or have become an
integral part of our vocabulary. E.S.S. Entmt 2000, Inc. v. Rock Star Videos,
Inc., 547 F.3d 1095, 1099 (9th Cir. 2008), quoting Walking Mountain, 353 F.3d
at 807.
Thus, to establish its First Amendment defense under the law of the
Ninth Circuit, BTLP must prove three elements: (1) Summits TWILIGHT
Marks must have cultural significance or have entered the public discourse;
10
(2) BTLPs use of its TWIHARDER Marks must be artistically relevant to
11
the subject matter of BTLPs Imaginative Works; and (3) BTLPs use of the
12
13
14
15
16
17
18
TWIHARDER marks cannot be explicitly misleading as to the source or

content of BTLPs Imaginative Works.
As demonstrated below, Summit has already conceded each one of
these elements and, moreover, has failed to produce any evidence to raise a
genuine dispute of material fact for trial.
19
WALKING MOUNTAIN THRESHOLD: SUMMIT CONCEDES THAT

THE TWILIGHT MARKS ARE CULTURALLY SIGNIFICANT
20
By Summits own admission, BTLP satisfies the Ninth Circuits
21
23

parodied and mocked Barbie. 296 F.3d at 894. Recognizing that First Amendment
concerns in free expression are particularly present in the realm of artistic works, the
Ninth Circuit rejected Mattels claim. Id. at 902.
24
11
22
25
26
27
28
(1)
The Rogers test has also been adopted by the U.S. Courts of Appeals for the Third,
Fifth, Sixth, Tenth, and Eleventh Circuits as the most appropriate way to balance the
competing interests of artists and trademark holders. Seale v. Gramercy Pictures, 949
F.Supp. 331, 339 (3d Cir. 1996); Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 (5th Cir.
1999); Parks v. Laface Records, 329 F.3d 437 (6th Cir. 2003); Cardtoons, L.C. v. Major
League Baseball Players Assn, 95 F.3d 959, 971 (10th Cir. 1996).


threshold showing that the TWILIGHT Marks have obtained cultural
significance. See, e.g., Counterclaims, R. 16, ID# 406:28, 9 (Each of the
Twilight motion pictures was phenomenally successful at the theatrical box
office and in the home media market.); R. 16, ID# 409:2, 12 (By virtue of
the popularity of the Twilight Motion Pictures, the significant sales of
licensed merchandise, and the significant publicity relating to the Twilight
Motion Pictures, among other things, the TWILIGHT Marks have developed
secondary meaning in the marketplace and become famous.); R. 16, ID#
421:1, 49 (Summits TWILIGHT marks . . . have attained a high degree of
10
actual recognition amongst the public.); R. 16, ID# 421:5, 51; (Summits
11
TWILIGHT marks . . . are famous and distinctive within the meaning of
12
13
14
15
16
17
18
19
20
1125(c)(1) and 1127).12

Accepting the truth of Summits allegations in the light most favorable
to Summit, the TWILIGHT marks are just as famous and culturally
significant as the Barbie marks at issue under MCA Records and Walking
Mountain. Thus, BTLP satisfies the threshold because there is no dispute
that the Twilight Saga have become an integral part of the publics
vocabulary. MCA Records, 296 F.3d at 900; Walking Mountain, 353 F.3d at
807-808.
21
22
23
24
25
26
27
28

12 See also Counterclaims, R. 16, 17, 9, PageID# 406: (Summit is the producer and
distributor of the highly successful Twilight motion picture franchise.); Pre-litigation
correspondence, R. 16, ID# 541 (referring to the widespread popularity of the Twilight
Motion Pictures); Summits Answer, R. 16, ID# 387:24, at 21 (admitting that The
Twilight Saga: New Moon was based on the best-selling book New Moon); Summits
Answer, R. 16, ID# 388:17, 25 (admitting that Twilight has a dedicated and loyal fan
base, the fact of which was documented by the media); Summits Answer, R. 16, 35,
ID# 389:23, (admitting that The Twilight Saga is popular).
10

1
2
3
4
5
6
(2)
ROGERS PRONG #1: SUMMIT CONCEDES THAT BTLPS USE OF THE

TWIHARDER MARK IS ARTISTICALLY RELEVANT TO THE SUBJECT
MATTER OF BTLPS IMAGINATIVE WORKS
The first prong of the Rogers test artistic relevance - establishes a
purposely low threshold which is satisfied unless the use has no artistic
relevance to the underlying work whatsoever. Rogers, 875 F.2d at 999;
accord E.S.S. Entmt, 547 F.3d at 1100 (under Rogers the level of relevance
merely must be above zero); Diller v. Barry Driller, Inc, 2012 WL 4044732,
*10. (C.D. Cal. Sept. 10, 2012) (If the work containing the mark is artistic, . . .
10
the use of the mark is not actionable unless the use has no artistic relevance
11
to the underlying work whatsoever).
12
Here, under Rogers prong #1, the underlying subject matter of BTLPs
13
Imaginative Works makes obvious reference to The Twilight Saga movie
14
series, characters, dialogue, plotlines, themes, and teen celebrity actors. This
15
is because BTLPs filmmakers intended to produce a feature-length movie
16
spoof which targets The Twilight Saga series as the object of criticism and
17
commentary.
18
19
20
21
Accord MCA Records, 296 F.3d at 901-902 ([T]he use of
Barbie in the song title clearly is relevant to the underlying work, namely,
the song itself . . . the song pokes fun at Barbie and the values that
[defendant] contends she represents.).13
22
23
24
25
26
27

13 See also Roxbury Entertainment v. Penthouse Media Group, 669 F.Supp.2d 1170, 1176
(C.D. Cal. 2009) (holding that the First Amendment provided a complete defense to
Lanham Act claims where defendant's reference to the term Route 66 in a porn film
related to the mental imagery associated with the [plaintiff's] term Route 66, e.g., road
trips [and] cross-country travel.); L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29
(1st Cir. 1987) ([t]rademark rights do not entitle the owner to quash an unauthorized use
of the mark by another who is communicating ideas or expressing points of view.)
28
11

1
2
3
4
5
6
(a)
BTLPs Use of TWIHARDER as a Work Title to Describe the

Relevant to the Subject Matter of BTLPs Imaginative Works
In Rogers, the Second Circuit found that the defendant-filmmakers
use of the movie title Ginger and Fred was immunized from a Lanham
Act suit by celebrity Ginger Rogers because the title was artistically relevant
to the subject matter of the film, which referenced Ms. Rogers through the
actors imitation of her cabaret act. 875 F.2d at 999.
Similarly, in MCA Records, the Ninth Circuit rejected Mattels claim
10
that the defendants use of the song title Barbie Girl infringed on the
11
iconic mark Barbie. Again, this was because the defendants irreverent
12
song was paying imitative reference to the culturally significant Barbie doll.
13
296 F.3d at 902.14
14
In this case, Summit admits that BTLPs use of the mark TWIHARDER
15
as a movie title artistically relates to the meaning associated with the famous
16
Twilight Saga movies. See, e.g., Counterclaims at R. 16, ID# 411:26-28, 19
17
(The motion pictures title, Twiharder, is derived from the term twihard,
18
19
20
21
22
23
24
which is associated with the Twilight Motion Pictures and fans thereof.); see
also Summits Answer, R. 16, ID# 388:21-25, 26-27 (admitting that the
term twihard has been used to refer to fans of The Twilight Saga.).
Because
Summit
concedes
the
artistic
relevance
between
TWIHARDER as BTLPs movie title and the subject matter of BTLPs

Imaginative Works, there is no genuine issue of material fact.
25
26
27
28

14 See also Twin Peaks Prods., Inc. v. Pubs. Int'l, Ltd., 996 F.2d 1366, 1370 (2d Cir.1992)
(book title referring to plaintiff's television series named Twin Peaks).
12

BTLPs Use of the TWIHARDER Marks Within the Body of the

Relevant
While Rogers was focused on the title of an artistic work, numerous
courts have expanded the Rogers test to apply to the underlying content of
artistic works as well. See, e.g., E.S.S. Entm't 2000, Inc., 547 F.3d at 1099
([a]lthough this test traditionally applies to uses of a trademark in the title
7
8
9
10
11
12
13
14
(b)
of an artistic work, there is no principled reason why it ought not also apply
to the use of a trademark in the body of the work.); Univ. of Alabama Bd.
of Trustees v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012)
(concluding that defendants paintings, prints, and calendars were protected
under the Rogers test where the depiction of the University's uniforms in
the content of these items is artistically relevant to the expressive underlying
works because the uniforms colors and designs are needed for a realistic
15
portrayal of famous scenes from Alabama football history.); ETW Corp. v.
16
Jireh Publ'g, Inc., 332 F.3d 915, 91819 (6th Cir. 2003), (the Rogers test is
17
[not] limited to titles of artistic works ... [and is] generally applicable to all
18
cases involving literary or artistic works where the defendant has articulated
19
a colorable claim that the use of a celebrity's identity is protected by the First
20
Amendment).15
21
Here, Summit admits on the record that the meaning associated with
22
the TWILIGHT marks has been referred to within the audio-visual content
23

15 In ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915, 91819 (6th Cir. 2003), the Sixth Circuit
addressed a claim of false endorsement under the Lanham Act where an artist had
painted a collage of Tiger Woods images. Woods's publicity company sued the artist, and
the court applied the Rogers balancing test and found that Woods' image on the painting
had artistic relevance to the underlying work and did not explicitly mislead as to the
source of the work. Id. at 93637. As a result, the painting was protected by the First
Amendment against a claim of false endorsement. Id. at 937.
24
25
26
27
28
13

of the Twiharder Movie. See Counterclaims, R. 16, 19 ID# 411:24-26, (The
motion pictures title, Twiharder, is based on the Twilight motion pictures
specifically Twilight and New Moon and their plotlines and characters.).
Moreover, Summit also concedes that BTLPs use of the stylized
TWIHARDER movie logo makes reference to the stock typefont employed
in Summits stylized mark TWILIGHT. See Counterclaims, R. 16, 19
PageID# 412:1-8 (To promote its motion picture, Plaintiff, without
Summits authorization, uses the word twiharder in a font intentionally
similar to Summits Stylized TWILIGHT Mark.). Thus, there is no genuine
10
issue of fact as to whether BTLPs TWIHARDER movie logo conjures up
11
associated values of The Twilight Saga movie series. See MCA Records, 296
12
13
14
15
16
17
18
19
20
F.3d at 899. Summit has already admitted on the record that the stylized
TWIHARDER mark, as used within the body of BTLPs Twiharder Movie
and Related Promotional Materials, has artistic relevance to the subject
matter of BTLPs Imaginative Works.16
As a matter of law, the Court should hold that BTLPs use of the
TWIHARDER mark - whether as a movie title (word mark) or as a movie
logo (stylized mark) - readily meets the minimal level of artistic relevance
to satisfy the first Rogers prong, 875 F.2d at 1000.
21
22
23
24
25
26
27

16 In addition, BTLPs use of TWIHARDER within the body of its artistic works, whether
used as a stylized mark or word mark, artistically relates to the term twi-hard, which
Summit concedes is associated with the loyal fans of The Twilight Saga movies. See
Counterclaims, R. 16, ID# 411:26-28, 19; Summits Answer, R. 16, ID# 388:21-25, 2627.
28
14

ROGERS PRONG #2: SUMMIT CONCEDES THAT BTLPS USES OF THE

TWIHARDER MARKS ARE NOT EXPLICITLY MISLEADING AS TO THE
SOURCE OR CONTENT OF BTLPS IMAGINATIVE WORKS
The second prong of the Rogers test requires that the defendants use
of the challenged trademarks cannot explicitly mislead as to the source or
the content of the work. Rogers, 875 F.2d at 999-1000; Walking Mountain,
353 F.3d at 807; E.S.S. Entertainment 2000, 547 F.3d at 1100-1101. To be
7
8
9
10
11
12
13
14
(3)
explicitly misleading, the defendants work must make some affirmative

statement of the plaintiff's sponsorship or endorsement, beyond the mere
use of plaintiff's name or other characteristic. Dillinger, LLC v. Electronic
Arts, Inc., 2011 WL 2457678, at *6 (S.D. Ind. Jun. 16, 2011).17 Evidence that
the trademark use might implicitly suggest that the [rightsholder] had
endorsed the work or had a role in producing it is outweighed by the
danger of restricting artistic expression. Rogers, 875 F.2d at 999-1000.
15
Under the law of the Ninth Circuit, the absence of any evidence
16
showing an explicit, affirmative reference to SUMMIT ENTERTAINMENT
17
appearing on the face of any one of BTLPs Imaginative Works satisfies the
18
second prong of the Rogers test. See, e.g., MCA Records, 296 F.3d at 899
19
(The song title does not explicitly mislead as to the source of the work; it
20
does not, explicitly or otherwise, suggest that it was produced by Mattel. The
21
only indication that Mattel might be associated with the song is the use of
22
Barbie in the title; if this were enough to satisfy this prong of the Rogers test,
23
it would render Rogers a nullity); E.S.S. Entmt, 547 F.3d at 1100-1101.18
24
25
26
27
28

17 See also Fortres Grand Corp. v. Warner Bros. Entertainment Inc. 2013 WL 2156318
(N.D. Ind. 2013) (the fact that it has to be explicitly misleading makes this a high bar.)

18 In E.S.S. Entmt, a scene in the defendants video game featured the trademark of the
plaintiff's entertainment club located in Los Angeles, the Ninth Circuit found that the
15

Indeed, Summit has failed to produce any evidence that any one of
BTLPs Imaginative Works have affirmatively or explicitly misled
consumers as to the source or content of the Twiharder Movie. Summit
admits that it has known about the Twiharder Feature since late 2011.19
Summit has therefore had, according to its own admission, more than three
(3) years to conduct diligence of all published works, including BTLPs
feature-length
pictoral/graphic works, website designs. Yet, Summit has failed to produce
any factual evidence on the record showing that BTLP included an explicit,
10
affirmative statement that SUMMIT ENTERTAINMENT endorsed or
11
otherwise sponsored BTLPs Twiharder Feature or Movie Promo Materials.20
12
13
14
15
16
motion
picture,
audio-visual
trailers,
music
videos,
Finally, Summit also admits on the record that BTLP openly

promoted its very own registered tradename, BETWEEN THE LINES
PRODUCTIONS,21 in connection with the Twiharder Feature and Movie
Promo Materials. See, e.g., Counterclaims, R. 16, 19 [PageID# 412:5]
20

First Amendment protected the defendants use because it did not contain any explicit,
affirmative reference to the plaintiff or plaintiffs club as the source of the video game.
547 F.3d at 1100-1101. See also University Of Alabama Board Of Trustees vs. New Life
Art, Inc., 683 F.3d 1266, 1278-79 (11th Cir. 2012) (finding no evidence that defendant ever
marketed an unlicensed item as endorsed or sponsored by the plaintiff).
21
19
17
18
19
22
23
See Counterclaims, R. 16, 19, [PageID# 411:22-23] (Around late 2011 or early 2012,
Summit became aware of the fact that Plaintiff had produced or was producing a motion
picture entitled Twiharder.)
26
Moreover, no rational consumer would believe that BTLPs motion picture intended to
refer to Summit Entertainment as the source of BTLPs work. See Twin Peaks Prods., 996
F.2d at 1379 (explaining that the relevant question is whether the defendants use of the
mark is misleading in the sense that it induces members of the public to believe [the
work] was prepared or otherwise authorized by the plaintiff).
27
21
24
25
28
20
See USPTO registration certificate for BTLPs mark.

16

(BTLPs tradename appears top right above -arder in TWIHARDER
stylized mark); R. 16, ID# 412:25, 20 (same); ID# 413:6, 20 (same); ID#
413:17, 20 (BTLPs tradename appears over the word way).
Where the tradename BETWEEN THE LINES PRODUCTIONS
appears on the face of the allegedly infringing works in question, no
reasonable
ENTERTAINMENT is the producer or sponsor of the Twiharder Movie.
See Cosmetically Sealed Indus., Inc. v. ChesebroughPond's USA Co., 125
F.3d 28, 3031 (2d Cir. 1997) (non-trademark use of a phrase is evident
10
where the source of the defendants product is clearly identified by the
11
prominent display of the defendants own trademarks.); see also New
12
13
14
15
16
17
18
19
consumer
believe
that
SUMMIT
(9th Cir. 1992) (holding that infringement laws simply do not apply to a
non-trademark use of a mark).
Based on the foregoing, there are no genuine disputes of material
fact concerning any one of the three elements required to establish
BTLPs First Amendment immunity under Rogers and Walking
Mountain. Judgment should therefore be granted against Summit on
Counts I and II.
21
B.
23
objectively
Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 307
20
22
could
ALL CLAIMS BASED ON SUMMITS TWIHARD MARKS FAIL BECAUSE

THERE IS NO MATERIAL DISPUTE CONCERNING BTLPS PRIOR USE OF
THE TWIHARDER MARKS
24
To prevail on its Lanham Act claims based on the mark TWIHARD,
25
Summit must first prove that it has a protectible ownership interest in the
26
mark. Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d
27
1137, 1144 (9th Cir. 2011) (quoting Dep't of Parks & Recreation v. Bazaar Del
28
17

Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006).
trademark law that the standard test of ownership is priority of use. To
acquire ownership of a trademark it is not enough to have invented the
mark first or even to have registered it first; the party claiming ownership
must have been the first to actually use the mark in the sale of goods or
services. Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.
1996) (citing 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION 16.03 (3d ed. 1996)). Therefore, it is the actual use of a
designation as a mark that creates rights and priority over others. 2
10
11
12
13
14
15
16
17
18
19
It is axiomatic in
McCarthy, 16.1.22
Here, there is no material dispute as to the fact that Summits intentto-use registration of the TWIHARD mark did not take place until
September 14, 2010, at least five months after BTLP had already begun using
its own mark TWIHARDER in commerce. Moreover, Summit did not begin
to use the TWIHARD mark in actual commerce until sometime after
December 2011. Summit has failed to produce evidence to show priority of
use of the TWIHARD mark. There is no evidence on the record of Summits
actual sales of merchandise bearing the TWIHARD mark at any time before
20
September 2010, such as purchase orders generated by any bona fide
21
purchasers in interstate commerce. 423 F.Supp.2d at 1150-51. Summit has
22
also failed to show any evidence of continuous use of the TWIHARD marks
23

22 Constructive use priority, obtained by filing an application for federal registration,
can always be defeated by another party's evidence of a prior actual use. Id. Neither
application for, nor registration of, a mark at the federal level wipes out the prior nonregistered, common law rights of others. The non-registered rights of a senior user
continue and are not trumped by the later federal registration by a junior user. Thermion,
Inc. v. Thermion Metalizing Systems, Ltd., 423 F.Supp.2d 1146, 1151-52 (2006); 2
McCarthy 16.2, 16.18, 16.18.1.

24
25
26
27
28
18

from the time it claims to have begun using the mark in commerce
(September 2008) through the date of its ITU application (September 2010).23
In the absence of any evidence showing bona fide sales of clothing bearing
the TWIHARD mark in actual commerce prior to its September 2010 ITU
application, all claims against BTLP based on the TWIHARD mark must fail
as a matter of law.
7
8
9
10
C.
SUMMIT HAS FAILED TO PRODUCE EVIDENCE THAT BTLP USED THE

TWIHARDER MARKS IN ACTUAL COMMERCE WITH RESPECT TO ANY
MERCHANDISE OR CLOTHING
For both goods and services, the use in commerce requirement
11
includes (1) an element of actual use, and (2) an element of display. Chance
12
v. PacTel Teletrac Inc., 242 F.3d 1151, 1159 (9th Cir. 2001) citing 15 U.S.C.
13
14
15
16
17
18
19
1127 )). Actual use must be in a way sufficiently public to identify or

distinguish the marked goods in an appropriate segment of the public
mind. New West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1200 (9th Cir.
1979). A bona fide 'use in commerce' does not include a token use. Chere
Arnie, Inc. v. Windstar Apparel, Corp., 2002 WL460065, at *3-4 (S.D.N.Y.
Mar. 26, 2002); Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1340
20
(N.D. Ga. 2008) (finding CafePress merchandise accusing Wal-Mart of being
21
Wal-Qaeda were de minimus in sales and otherwise constituted non-
22
23
24
25
26
27
28

23 De minimis use may not be sufficient to establish priority of use. Thermion at 1151,
citing 2 McCarthy, 16.6. Further, use of the mark must also be in a bona fide sale and
not an intra-corporate, non-arms length business transaction. Id., citing McCarthy 16.7.
Finally, to establish priority, use of the mark must be continuous, rather than sporadic. 2
McCarthy, 16.9 (To establish ownership of a mark, the prior user must establish not
only that at some date in the past it used the mark, but that such use has continued to the
present. Such a continuous use implies something more than mere sporadic or de minimis
sales.).

19

commercial, political speech subject to First Amendment protection).
Here, Summit has failed to produce any evidence that BTLP actually
sold a single article of clothing or merchandise to anyone other than: (a)
BTLPs principals and agents; and (b) Summits counsel (Sheppard Mullin).
There were no other bona fide purchasers in actual commerce. Accordingly,
Summits merchandise claims under paragraph 22 of the counterclaims are
non-actionable.24
8
9
D.
AS A MATTER OF LAW, BTLPS USE OF THE TWIHARDER MARKS ARE

NOT CONFUSINGLY SIMILAR TO SUMMITS TWILIGHT MARKS.
10
Likelihood of confusion exists when consumers viewing the mark
11
would probably assume that the goods it represents are associated with the
12
source of a different product identified by a similar mark. KP Permanent
13
MakeUp, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608 (9th Cir.2005).
14
A district court may rely upon its own visual inspection in making a
15
threshold determination as to whether SUMMIT can establish a likelihood of
16
17
18
confusion with respect to the similarity of marks. See Venetianaire Corp. of

America v. A & P Import Co., 429 F.2d 1079, 1081 (2d Cir. 1970).
19
Federal law presumes that the author of an artistic parody does not
20
target an existing work with the intent to confuse the public. See,e.g., EA
21
Entertainment Television, Inc. v. Entertainment One GP Ltd., 363 Fed. Appx.
22
510, 511 (9th Cir. 2010) (affirming district court's holding that there was no
23
likelihood of confusion between two marks); Jordache Ents., 828 F.2d 1486
24
(where a party chooses a mark as a parody of an existing mark, the intent is
25
26
27
28

24 Moreover, BTLPs Cafepress account was disabled by Summit in July 2012 and there
have been no sales of any merchandise since. The alleged use of TWIHARDER marks on
merchandise was token, de minimus, trivial, intra-corporate and non-bona fide. There was
no actual use in commerce whatsoever. Any Lanham Act claim which is not based on a
defendants actual use cannot survive summary judgment.
20

not necessarily to confuse the public but rather to amuse; Jordache and
Lardashe blue jeans); Cardtoons, L.C. v. Major League Baseball Players
Assoc., 95 F.3d 959, 975 (10 Cir. 1996) ([U]se of celebrity names or
likenesses in parodies in general ... are not likely to confuse or deceive
customers.). If a parody is obvious, an in-depth likelihood of confusion
analysis is unnecessary. Emily Adelman, Trademark Parodies: When Is It Ok
To Laugh?, 6 J. MARSHALL REV. INTELL. PROP. l. 72 (2006), p.84.
Here, no juror could rationally find a likelihood of confusion between an
obvious parody mark (TWIHARDER) and a famous mark (TWILIGHT or
10
TWILIGHT SAGA). Indeed, BTLP has proffered admissible evidence showing
11
that the Twiharder Feature and Movie Promo Materials have been objectively
12
13
14
15
16
17
18
19
perceived as parody in the actual marketplace. Under these circumstances, no

juror could rationally find that the 34 TWILIGHT word marks alleged by
Summit are confusingly similar to the TWIHARDER word mark.
Summit
cannot own a monopoly over every slang word which uses the prefix TWIsimply because it owns the TWILIGHT marks. Finally, no juror could
rationally find that the 15 TWILIGHT stylized marks are confusingly similar to
the TWIHARDER stylized mark. Indeed, the logo being parodied from The
20
Twilight Saga: New Moon (2010) movie is NOT even the stylized mark that
21
has been registered by Summit.
22
POINT III
23
SUMMIT HAS FAILED TO PRODUCE EVIDENCE TO SUPPORT A

COGNIZABLE TRADEMARK DILUTION CLAIM UNDER COUNT III
24
25
26
27
28
In its third cause of action, Summit alleges trademark dilution under the
Lanham Act, 15 U.S.C. 1125(c), and its analogue state law. [Counterclaims
at 47-56; ECF p. 37:22]. To state a claim for trademark dilution, a plaintiff
21

must show that (1) the mark is famous and distinctive; (2) the defendant is
making use of the mark in commerce; (3) the defendant's use began after the
mark became famous; and (4) the defendants use of the mark is likely to
cause dilution by blurring or dilution by tarnishment. Jada Toys, Inc. v.
Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008).
6
7
8
9
10
11
12
13
A.
UNDER THE TDRA, BTLPS USES OF THE TWIHARDER MARK ARE

NON-COMMERCIAL AND THEREFORE NON-ACTIONABLE
Under the Trademark Dilution Revision Act, non-commercial use of a
mark is non-actionable as a matter of law. See 15 U.S.C. 1125(c)(4)(B). In

the Ninth Circuit, noncommercial use refers to a use that consists entirely
of non-commercial, or fully constitutionally protected, speech. Mattel, Inc.
v. MCA Records, Inc., 296 F.3d 894, 904 (9th Cir. 2002).25 If speech is not
14
purely commercialthat is, if it does more than propose a commercial
15
transactionthen it is entitled to full First Amendment protection. Id.
16
Walking Mountain Prods., 353 F.3d 792, 812 (9th Cir. 2003) Burnett, 491 F.
17
Supp. 2d 962, 965 ([u]nder MCA, Foxs artistic and parodic work is
18
considered non-commercial speech and, therefore, not subject to a
19
trademark dilution claim.); Lucasfilm Ltd. v. Media Market Group, Ltd.,
20
182 F. Supp. 2d 897, 901 (N.D. Cal. 2002) (dismissing tarnishment claim filed
21
by the owner of the STAR WARS films against an animated pornographic
22
film called Starballz); Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp.
23
24
25
26
27
28

25 In MCA Records, the court observed that although the defendant-record company had
diluted the Barbie mark through blurring, the song was not pure commercial speech,
and therefore fell within the non-commercial use exemption of the valid at that time
Federal Trademark Dilution Act. 296 F.3d at 904; accord Walking Mountain, 353 F.3d at
812 (Mattel cannot use trademark laws to censor all parodies or satires which use its
name or dress) (internal quotation marks omitted).

22

2d 1161, 1166-67 (C.D. Cal. 1998) (noncommercial expression includes
parody, satire, editorial and other forms of expression that are not a part of
a commercial transaction.).26
Here, none of BTLPs Imaginative Works, which constitute artistic
parody, are remotely actionable based on a federal trademark dilution claim
as they fall into the non-commercial speech exception.
7
8
B.
SUMMITS TARNISHMENT CLAIM FAILS BECAUSE THE MARKS

ASSOCIATED WITH THE TWILIGHT SAGA MOVIES ARE TARNISH-PROOF
Dilution may occur where use of a trademark whittle[s] away the
10
value of a trademark by tarnishing them with negative associations.
11
MCA Records, 296 F.3d at 903.
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Summits tarnishment claim is not
cognizable on grounds that Breaking Wind, which Defendants concede27 is

a Twilight parody film distributed by Lionsgate and licensed by Summit to
U.S. audiences, depicting tawdry, unwholesome and grotesque images.
BTLP has asked the Court to take judicial notice of the Breaking Wind DVD
[Docket No. 58] and respectfully requests the Court to view the first ten (10)

26 Under trademark dilution law, an artist does not lose First Amendment protection just
because part of the artists expressive work was created for a commercial purpose. See
Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1185 (9th Cir. 2001). Any commercial
aspects that are inextricably entwined with a works expressive elements will not make
the work ineligible for First Amendment protection as free speech. Id. at 1185 (quoting
Gaudiya Vaishnava Socy v. City & Cnty. of S.F., 952 F.2d 1059, 1064 (9th Cir. 1990); see
also 4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
24:105, at 24225 (2007). [t]arnishment caused merely by an editorial or artistic parody
which satirizes plaintiff's product or its image is not actionable under an anti-dilution
statute because of the free speech protections of the First Amendment....).

27 In its Answer, Summit admits that Breaking Wind is an authorized parody of [The
Twilight Saga:] Eclipse and relates to characters and plotlines in The Twilight Saga. [See R.
16, Answer 66-69]. Summit also admits that Lionsgate marketed Breaking Wind as a
wildly funny spoof of the latest films from the Twilight Saga: New Moon and Eclipse and
that the parody featured [r]aunchy hilarity. [See R. 1, Compl. 72; R. 16, Answer, R. 16,
72].
23

minutes of the film to confirm its unwholesome nature. This video footage
renders the TWILIGHT marks tarnish-proof.
In Ringling Bros. Barnum & Bailey Combined Shows, Inc. v. B.E.
Windows Corp., 937 F. Supp. 204 (S.D.N.Y. 1996), defendant operated an
adult establishment in lower Manhattan called The Greatest Bar on Earth
where alcohol was served. Ringling Brothers sued claiming tarnishment
under the Lanham Act, 15 U.S.C. 1125(c), on grounds that the wholesome,
family-oriented image of THE GREATEST SHOW ON EARTH is being
adulterated by an association with [defendants] bar.
Id. at 210.
The
10
district court denied Ringling Brothers request for a preliminary injunction
11
for failure to prove likelihood of success on the merits. Id.
12
13
14
15
16
17
18
19
20
The court
reasoned that the circus had already played in some venues that served
alcohol and, thus, an association with alcohol could not be tarnishing to
Ringling Brothers trademarks. Id.
Here, the same logic applies: because Summits parent corporation
distributes an X-rated Twilight parody film, which by its very nature creates
an unwholesome or tawdry association with the TWILIGHT marks,
Summit cannot plausibly establish a claim that its marks will be tarnished or
whittled away by BTLPs materials.
21
POINT III
22
ALL STATE LAW CLAIMS FAIL (COUNTS I-IV) BECAUSE THEY

RESTS ON ALLEGATIONS THAT ARE SUBSTANTIALLY
CONGRUENT TO THE FEDERAL CLAIMS
23
24
25
Counts I-III sounding in state law and Count IV of Summits
26
counterclaims pleading Statutory and Common Law Unfair Competition
27
under 17200, et seq. California Bus. & Prof. Code. [See Counterclaims, R.
28
24

16, ID# 422:7, 57-63] are not sustainable. Where unfair competition and
infringement claims derived from state law follow directly from the federal
claims, the state law claims should be dismissed.
U.S.A., Inc. v. Toys R Us, Inc., 84 F.3d 1143, 1152 (9th Cir. 1996)
(dismissing state law claims which are substantially congruent to federal
Lanham Act claims); One Industries vs. ONeal See Acad. of Motion Picture
Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir.
1991) (An action for unfair competition under Cal. Bus. & Prof. Code 17200
et seq. is substantially congruent to a trademark infringement claim under
10
11
12
13
14
15
16
Denbicare
the Lanham Act.).28

Here, Summits cause of action under Count IV contains nothing more
than formulaic legal conclusions based on substantially congruent factual
allegations pled to support Counts I-III. The fourth cause of action should
therefore be dismissed with prejudice, and without leave to amend, on the
identical grounds and to the same extent as Count I, II, and III.
17
18
See, e.g.,
CONCLUSION
Based on the foregoing, BTLP respectfully requests that the Honorable
19
Court enter judgment against Summit as to all counterclaims (Counts I-V)
20
pursuant to Rule 56.
21
/jameshfreeman/
22
23
24
25
26
27
28

28 See also Planetary Motion, Inc. v. Techsplosion, 261 F.3d 1188, 1193 n. 4 (11th Cir.2001)
(Courts may use an analysis of federal infringement claims as a measuring stick in
evaluating the merits of state law claims of unfair competition.); Investacorp, Inc. v.
Arabian Inv. Banking Corp., 931 F.2d 1519, 1521 (11th Cir.1991) (where plaintiffs have
failed to establish a claim for federal trademark infringement and unfair competition,
related state law claims likewise fail).

25

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
26

Twiharder 3

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Twiharder 3

Uploaded by

Copyright:

Available Formats

Case 2:14-cv-00104-R-PJW Document 94 Filed 10/20/14 Page 1 of 31 Page ID #:3781

BETWEEN THE LINES

Hon. Judge Manuel L. Real

Case No. 2:14-cv-00104-R (PJWx)

Hearing Date: November 17, 2014

STANDARD OF REVIEW .......................................................................................1

POINT II: A RATIONAL TRIER OF FACT COULD NOT RETURN A

BTLPs Use of TWIHARDER as a Work Title to Describe the

BTLPs Use of the TWIHARDER Marks Within the Body of the

B. ALL CLAIMS BASED ON SUMMITS TWIHARD MARKS FAIL BECAUSE THERE

C. SUMMIT HAS FAILED TO PRODUCE EVIDENCE THAT BTLP USED THE

POINT III: SUMMIT HAS FAILED TO PRODUCE EVIDENCE TO

Cardtoons, L.C. v. Major League Baseball Players Assn,

Cosmetically Sealed Indus., Inc. v. ChesebroughPond's USA Co.,

Mattel Inc. v. Walking Mountain Prod.,

New Kids on the Block v. News America Publishing, Inc.,

Twin Peaks Prods., 996 F.2d at 1379 -------------------------------------------------- 16

Twin Peaks Prods., Inc. v. Pubs. Int'l, Ltd.,

Univ. of Alabama Bd. of Trustees v. New Life Art, Inc.,

the non-moving party fails to sufficiently establish the existence of an

opponents claim; instead, the burden on the moving party may be

discharged by showingthat is, pointing out to the district courtthat

there is an absence of evidence to support the nonmoving partys case. Id.

A JURY COULD NOT RETURN A VERDICT IN SUMMITS FAVOR AS

Showing that the materials cited do not

BTLPs Imaginative Works Constitute Privileged Free Speech Under

of first amendment values and is entitled to special protection. Snyder v.

is of public concern when it can be fairly considered as relating to any

matter of political, social, or other concern to the community. Id., at 146.

Expression by means of motion pictures is included within the free

public attitudes and behavior in a variety of ways, ranging from direct

espousal of a political or social doctrine to the subtle shaping of thought

which characterizes all artistic expression. Id. Banning the exhibition of a

motion picture because it advocates unconventional ideas str[ikes] at the

very heart of constitutionally protected liberty.

Kingsley Int'l Pictures

between the statutory privilege known as fair use, and an emerging

constitutional limitation on copyright contained in the First Amendment.'' M

Nimmer, NIMMER ON COPYRIGHT 1.10[D], at 1-85 (1978). Some day [courts

may be required] to distinguish between the doctrine of fair use and an

emerging constitutional limitation on copyright contained in the first

amendment. Wainwright Secs. Inc. v. Wall Street Transcript Corp., 558

[first amendment] rights to prevent . . . copyright infringement . . . such

limitation must be drawn narrowly, so as . . . [to avoid] unnecessary

impingement on the right of free speech.

Professor Nimmer argues that if the copying of the expression is essential

effectively to convey the idea expressed, then copyrighted material may be

Nimmer, NIMMER ON COPYRIGHT, 1.10[D] (1999).1

Fur Information & Fashion

It cannot be denied that if the first amendment's objective is the

For purposes of copyright law, the U.S. Supreme Court defines

parody as literary or artistic work that imitates the characteristic style of

an author or a work for comic effect or ridicule. Campbell v. Acuff-Rose

DICTIONARY, 1317 (3d ed. 1992).

composition to create a new one that, at least in part, comments on that

authors works. Id.

[T]he heart of any parodists claim to

Here, the subject matter of the copyright infringement claim is BTLPs

feature-length motion picture parody Twiharder which comments on matters

of public concern raised by The Twilight Saga, including domestic violence,

racial supremacy, self-loathing, sexual abstinence and female subordination.

See Compl., R. 1, 35-36.

The alleged infringing works also include