Saving people, suing things: TM lawsuit over -hunter suffix continues

Kenyon v. Clare, No. 16-cv-00191, 2016 WL 6995661 (M.D.
Tenn. Nov. 29, 2016)
Sherrilyn Kenyon sued Cassandra Clare alleging trademark/copyright
violations arising from Clare’s books, the “Shadowhunter Series”; this opinion
addresses only trademark claims, where a motion to dismiss proves fruitless
(though state law unfair competition was dismissed as time-barred under a
one-year statute of limitations).
Kenyon published the “Dark-Hunter Series,” a series of
books, short stories, and other original material and alleged that she owned
the trademark rights to certain marks, such as “Dark-Hunter,” “Dream-Hunter,”
and “Were-Hunter.” Kenyon used “dark-hunter.com” to promote her series and
provide additional content regarding the Dark-Hunter world. Kenyon also
produced several television commercials and videos, as well as a variety of
Dark-Hunter merchandise, such as a line of collectible dolls, clothing,
coloring books, jewelry, and novelty items.
In 2006, Clare began marketing a work that allegedly incorporated
one of Kenyon’s Dark-Hunter trademarks as the name of one of Clare’s
protagonists. At Kenyon’s demand, Clare replaced the term with “Shadowhunters.”
Clare and her publishers allegedly assured Kenyon that “Shadowhunters” would be
used solely for the name of Clare’s protagonists and that they would not expand
the use of the “Shadowhunters” term or adopt it as a trademark.
A few years later, Clare’s publisher printed approximately
100,000 copies of a Shadowhunters book, mistakenly referring to the story’s
protagonists as “Darkhunters” instead of “Shadowhunters” on the back cover. Kenyon
demanded a correction and a recall.  Clare’s publisher destroyed some of the
mislabeled books, but refused to recall the books already in stores or sold.
These books allegedly led to confusion in the marketplace, where some
purchasers thought that Clare was one of Kenyon’s pennames.
Recently, Clare began using the website domain name
“shadowhunters.com” to promote her novels, which the website describes as
“Cassandra Clare’s Shadowhunters.” A related movie, “Mortal Instruments: City
of Bones,” was released in 2013 and was primarily promoted and discussed
through the use of the term “Shadowhunters.” Clare also wrote a television
series, titled “Shadowhunters: The Mortal Instruments,” which was released in
2015 and promoted on “shadowhunterstv.com.” Also in 2015, Clare released
redesigned book covers that printed the words “A Shadowhunters Novel” along the
right side or bottom of the covers.
Kenyon alleged that the books were similar, which enhanced
confusion.  They were allegedly “promoted,
discussed, and celebrated in similar online forums and at similar conventions”;
shared similar themes, origin stories, and target audiences; used “shadow”
(Kenyon’s “creed and tagline” said: “We are Darkness. We are Shadow. We are
Rulers of the Night. We are the Dark-Hunters.”); and had similar visual
representations.
The court refused to find laches on the trademark claims on
the pleadings, even though Kenyon learned about the alleged infringement in
2006.  Without evidence about the
reasonableness of the delay or evidence of prejudice, a ruling on laches was
inappropriate.
Clare also argued that, as a matter of law, there could be
no confusion between the marks because the proper author’s name is on the cover
of her books, and that Kenyon couldn’t hold a “trademark monopoly” on the word
“hunter” in the supernatural creative works context. Having the author’s names
on the books wasn’t dispositive, because likely confusion extends beyond point
of sale confusion.  Plus, Kenyon’s claims
went beyond just the books to TV shows, movie, and merchandise.  And there wasn’t sufficient evidence to
resolve whether Kenyon was wrongfully seeking a “trademark monopoly” for any
–hunter suffixed word in the field of supernatural creative works; she did
allege secondary meaning and confusion.

There’s a lot of room here for thinking about First
Amendment constraints on trademark claims brought against expressive
works.  Rogers, by its terms, doesn’t apply to title v. title contests, but
this isn’t exactly a title v. title contest, more franchise v. franchise, and
also the Second Circuit’s later Cliffs
Notes
decision points out that First Amendment principles should also
affect analysis of title v. title claims, given that authors have expressive
interests in naming and that interest doesn’t disappear when another author is
the plaintiff.

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