Rodney A. Smolla, President, Furman University
November 21, 2012
Courts have generally refused to superimpose on copyright law any additional free-standing layer of immunity emanating from the First Amendment for what would otherwise be considered copyright infringement. The reasoning has been that the substantive law of copyright already has doctrinal protections built in that provide adequate breathing space for freedom of speech, such as the fair use doctrine and the idea/expression dichotomy.
Not so, however, in all other fields of intellectual property law, in which the First Amendment does indeed often play an independent role, providing an additional layer of defense to what might otherwise constitute an infringement of intellectual property rights.
This point was recently illustrated in Winchester Mystery House, LLC v. Global Asylum, Inc.,1 involving the intellectual property rights to a haunted house. The Winchester Mystery House in San Jose, Calif., is a popular tourist attraction. The mansion was built by Sarah Winchester, of the Winchester rifle family. Sarah married her husband, William, and sadly, after their marriage, she bore a child who died shortly after birth. When William died in 1881, he left his wife a substantial interest in the rifle company. According to popular myth, a psychic medium subsequently told Sarah that her family was cursed by the spirits of those who had been killed by the Winchester rifle. The psychic advised Sarah to move to San Jose. Based on the medium’s advice, Sarah Winchester moved to California and bought a farmhouse in what would become San Jose. The 160-room Victorian mansion she built would, following her death, come into the possession of two enterprising folks, John Brown and Mayme Brown, who turned it into a haunted house museum, the Winchester Mystery House.
The proprietors of the House, in 2008, entered into an agreement with a film company, granting it the exclusive right to use the House for the filming of a movie. Subsequently, however, another film producer, Global Asylum, inquired about using the House for a horror film. The Global Asylum overture was politely declined, however, with the explanation that the proprietors of the House already had a contract with another film producer.
Undaunted if not unhaunted, Global Asylum barreled ahead, and produced its own film, under the title “Haunting of Winchester House.” The B-movie horror thriller purported to be based on a true story, though it did not use images of the actual Winchester House. As recounted by the court, the movie began with a shot of a Victorian house, not the actual Winchester House, and featured “the ghost characters of Sarah Winchester, her adolescent daughter, and her brother who was deaf and could not speak,” all of whom haunt the home. In actuality, however, Sarah Winchester did not have an adolescent daughter or a brother who was deaf and could not speak.2
Against this backdrop, the question before the court was whether the proprietors of the real Winchester Mystery House had a valid cause of action for violation of their intellectual property rights in the trademark of the House, specifically, a claim under the Lanham Act, or whether First Amendment principles preempted liability.
The California court applied the test of a venerable New York case from the U.S. Court of Appeals for the Second Circuit, Rogers v. Grimaldi,3 involving the great Ginger Rogers and Fred Astair, arising from the movie “Ginger and Fred.” The movie depicted the televised reunion of two fictional performers who had once imitated Rogers and Astaire in their cabaret act. Contrary to what the movie title might have thus suggested, the movie was not about Ginger Rogers and Fred Astair. The Second Circuit did not treat the issue as a routine Lanham Act case, but rather recognized that films are simultaneously “works of artistic expression and deserve protection” under the First Amendment and also valuable commodities “sold in the commercial marketplace.”4
So too, the titles of films, “like the artistic works they identify, are of a hybrid nature, combining artistic expression and commercial promotion.” 5 The trick is thus to construe the Lanham Act in a manner that gives sufficient breathing space to free expression, by applying it to “artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” 6 The court then adopted the “no artistic relevance test,” a test generally unfavorable to the plaintiff, pursuant to which no Lanham Act violation exists “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”7
Applying this standard, the court in Winchester Mystery House8 ruled against the owners of the House and their asserted trademark rights, and in favor of the moviemakers. The court reasoned that the House had a dual character. It was a world-famous tourist attraction, for which the owners did have trademark rights. The value of the House as intellectual property derived from its former eccentric owner, Sarah Winchester, and her story. Yet, the court reasoned, there was also “an actual Sarah Winchester, who, according to legend, created a Victorian-style mansion to fend off ghosts.”9 The filmmaker had, to be sure, used the phrase “Winchester House” in its title, and a Victorian-style mansion on its DVD cover, which were similar to legally protected trademarks of the House owners.10 Yet the filmmakers had also “created a fictional work based on the historical figure Sarah Winchester and her allegedly haunted mansion.” 11 The court concluded that history trumped the Lanham Act, reasoning that “where marks have historical significance and similar marks are used in the title of an artistic work or advertising, the Rogers test adequately ensures protection of both the public interest in avoiding consumer confusion and the public interest in free expression.”12