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Magazine Takes Long Shot in ‘Tiger King’ Trademark Tangle

Aug. 3, 2020, 10:01 AM

Netflix may have made Joe Exotic a household name, but Hollywood Weekly magazine says it made him “The Tiger King.”

The magazine sued Netflix for infringing its unregistered trademark rights for “Tiger King”—a moniker it claims it coined in four articles published between 2013 and 2018.

The lawsuit raises questions about what a publication has to do to brand and protect a series of articles. The publication is seeking damages and an injunction against one of the streaming giant’s most successful productions ever: “Tiger King: Murder, Mayhem and Madness.”

Netflix will have trouble, at least early in the suit, escaping the allegation that a consumer would believe its “Tiger King” show had been sanctioned by the magazine, multiple attorneys said.

“It’s going to have to be one of those things a jury has to decide,” intellectual property attorney Michael Smith of Birch Stewart Kolasch & Birch LLP said. “You can make a plausible argument both ways.”

But as the lawsuit progresses, the magazine may struggle to establish that four articles in five years would lead consumers to connect “Tiger King” to the magazine before Netflix’s blockbuster series, attorneys said.

“I don’t know if that would be enough to say the column acquired distinctiveness,” Flavia Campbell of Dickinson Wright PLLC said. “And even if they establish valid trademark rights, they still have to show likelihood of confusion between their mark and the one used by Netflix” to prove infringement.

Not Enough ‘Tiger King’

Netflix’s true crime docuseries on imprisoned former exotic animal park operator Joseph Maldonado-Passage, known as Joe Exotic, drew 34 million streamers in its first 10 days, according to estimates from The Nielsen Company LLC.

But Hollywood Weekly said the “tawdry” show had alarmed advertisers and sullied its trademark “No Gossip, Strictly Entertainment” family-friendly image. It filed a complaint in the U.S. District Court for the Central District of California, also alleging that Netflix had pilfered copyrighted material from its articles.

Netflix declined to comment on the allegations.

The magazine has evidence, not cited in the complaint, that customers perceived links between The Tiger King and Hollywood Weekly, and later between the magazine and docuseries, its attorney, Matthew Schwartz of Schwartz Law Group, said.

“Many of Hollywood Weekly’s customers began to associate the magazine with the Netflix show. They did not want to patronize the magazine,” Schwartz said. “So that’s the gold standard for evidence of trademark infringement and trademark damages: when you start to lose business.”

Film and television productions sometimes acquire licenses to copyrighted or trademarked material in published media. Articles from Wired and Vanity Fair received writing credits in the movies “Argo” and Richard Jewell,” trademark attorney Joel Feldman of Greenberg Traurig LLP noted.

But such licenses are generally a low-cost courtesy to tie up loose ends, and often may not be legally necessary, Feldman said. A publication can’t own historical facts, only how it expresses them.

Now that a suit has been filed alleging Netflix didn’t seek legally required permission, Netflix could pay “nuisance money” to settle the case and save attorneys’ fees, but that may entice future litigants and be costly long-term, Feldman added.

‘Eat Them Alive’

The magazine didn’t apply to register its trademark until June—after the series took off. But the rights to the trademark would have been created much earlier, as soon as the mark was used in commerce as an indicator of who produced the product.

Although trademarks can’t protect single titles, they can protect a series of books or movies, such as the Star Wars or Harry Potter franchises. The U.S. Court of Appeals for the Ninth Circuit, reversing a lower court, ruled in 1993 in Metro Publications vs San Jose Mercury News that trademark rights can extend to a series of articles, such as a regular column.

It’s difficult to protect a column title, James Donoian, an intellectual property attorney with McCarter & English LLP said. Metro Publications convinced the Ninth Circuit that a column name could be a valid trademark but couldn’t convince a lower court later that its “Public Eye” column qualified.

When considering whether a series of articles qualifies for a registered trademark, a court could consider factors like the frequency of installments, how consistently the trademark was used, and the advertising promoting the trademark, attorneys said.

Smith said the fundamental issue is whether the magazine used the name to identify a person or the seller of the product.

“It can be kind of difficult to disentangle what the purpose of the use is,” he said.

As for the infringement, Donoian said the complaint likely has enough in it to survive an early dismissal but is unlikely to survive after discovery.

“The more you start to pick apart the complaint, the more you realize there’s nothing there. There are so many flaws” including that the magazine is essentially trying to protect a person’s nickname, he said. “Netflix is going to eat them alive.”

The case is Jackson v. Netflix, Inc., C.D. Cal., No. 20-6354, Complaint 7/17/20

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Melissa B. Robinson at mrobinson@bloomberglaw.com, Keith Perine at kperine@bloomberglaw.com

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