Movies/ Books Infringing on Trademarks

[Molly12]

If a book or a movie is infringing on your trademark, who do you send the Cease and Desist to?

Movie: producers? Studio? Writer?

Books: author? Publisher?

 

[FlyingRon]

Studio for movies, publisher for books.

What are you alleging is infringing?

 

[quincy]

If a book or a movie is infringing on your trademark, who do you send the Cease and Desist to?

Movie: producers? Studio? Writer?

Books: author? Publisher?

Molly12, what is the name of your state or, if not in the U.S., what is the name of your country?

If in the U.S., is your trademark federally registered?

And, finally, what is it you hope to accomplish with a cease and desist?

While a cease and desist letter can be an effective way to inform the recipient/infringer that they are infringing on your trademark rights, and a cease and desist letter can be a way to introduce terms of a settlement agreement, if the book has already been published and the movie has already been distributed, you will probably find the letter does little to remedy the infringement or get you the satisfaction you may seek. A cease and desist letter has no force of law behind it and the recipient/infringer is under no legal obligation to either respond to your cease and desist letter or meet any demands you may make.

If you are interested in stopping the infringement and/or you expect to be compensated for the economic harm suffered as a result of the infringement, you should be prepared to file a trademark infringement suit. For this, you will want to seek out the assistance of an intellectual property attorney in your area. Because many uses of trademarks are legal, the attorney can review the facts of the use of your trademark to help you determine better if you have a trademark suit with merit.

Trademark infringement suits are not only costly, they can take years to work their way through the court system. For this reason, it may be necessary for you, after filing suit, to seek from the court a cease and desist order.

A cease and desist order, or injunction, can be issued by a court against your alleged infringer if the court finds, based on the evidence presented, that such an order is warranted. This temporary injunction can halt publication of the book and/or distribution of the movie during the tenancy of the infringement action if the court determines continued publication and/or distribution will result in the likelihood of further or future economic harm.

This temporary injunction can become a permanent injunction if/when the infringement suit is resolved in your favor. It can also be a compelling reason for your infringer to come to a settlement with you prior to trial.

For a trademark suit involving a movie accused of infringing, you can search online for the following, to get an idea of what is involved in proving infringement and what it takes to prevail in a trademark action: Caterpillar, Inc v Walt Disney Co, 287 F.Supp. 2d 913, 920 (C.D. Ill. 2003), a suit filed by Caterpillar over the use of Caterpillar equipment in the Disney movie "George of the Jungle2."

For a recent action filed in May of this year, you can search online for Fortres Grand Corp v Warner Brothers Entertainment, Inc, 2013 WL 12156818 (N.D. Ind, May 16, 2013), a suit over the registered trademark Clean Slate.




Although this does not relate in any meaningful way to the trademark problem discussed in this thread, it may be of interest to others who are familiar with Harper Lee and "To Kill a Mockingbird." Both the name "Harper Lee" and Harper Lee's book title are registered trademarks. Author Harper Lee recently filed suit against the Heritage Museum for trademark infringement. See Nelle Harper Lee v Monroe County Heritage Museum, Inc., 1:13-cv-00490-WS-B, filed last month in the Alabama Southern District Court. The complaint can be reviewed at: http://www.nortonrosefulbright.com/files/20131018-lee-v-monroe-county-heritage-museum_complaint-106909.pdf.