Attorney Jerry Glover, partner in Leavens, Strand & Glover LLC
All too often creative minds tend to neglect the practical business side until it’s too late. Enter attorney Jerry Glover, who will keep us legal and proper with his good advice.
Q. I am a producer of a new reality TV show with (I think) a very clever, original title. How can I make sure my title is not already being used by someone else? And what are the consequences of a conflict?
A. You’re on the right track, as clearing a title for a show is legally very important, as Discovery Communications learned the hard way, and was recently emphasized by a federal court in Washington State.
Discovery Communications produces a popular reality series called “Cake Boss.” The series is about a New Jersey baker and his family. The series has completed its third season. But apparently Discovery did not check to see if “Cake Boss” was being used by anyone else before greenlighting the series. The plaintiff in this case, Masters Software, was a small computer software manufacturer catering to the baking industry since 2006, with software using the trademark CakeBoss. The company also had a web site, cakeboss.com, that not only included information about the software but also offered CakeBoss-branded cake recipes and CakeBoss-branded baking tutorials.
When Masters heard about a series called “Cake Boss” that was to premiere on TLC, the company owner contacted Discovery to complain. Discovery, however, told her that there was no way a television series could be confused with a software product of the same name and refused to change the series title.
After the series went on the air, Masters sued Discovery for trademark infringement Discovery lost. The court found that people were confused as to whether there was a connection between the “CakeBoss” web site and the “Cake Boss” television series. Showing a likelihood of confusion is the hallmark of trademark infringement.
Masters pointed out that when a program in the series aired, so many people went to the Masters web site, caskeboss.com, that the site often crashed. Masters also noted that when Masters tried to create a line of merchandise using the “Cake Boss” name, the bakery owner in the television series complained to the manufacturer of the merchandise that Masters was using, and threatened a law suit.
It sounded like the bakery owner was admitting that the use of “Cake Boss” on merchandise by the software company would confuse people into believing that merchandise was sponsored by the television series.
The court ordered Discovery to cease using “Cake Boss” as the title of its television series and to stop selling merchandise bearing the “Cake Boss” mark. I’m guessing that Discovery decided to settle this case before they had to go to such drastic lengths.
This case illustrates that the producer of a television show (or a film, for that matter) must make an effort to determine whether the title of its show is already being used by someone else.
At the very least, a producer should conduct a “down and dirty” search of the Internet and a search of the U.S. Trademark Office’s on-line records.
Since this type of search may not uncover all third party uses of the proposed mark, best practices dictate that the producer order a title report from a professional search organization.
Jerry Glover is a partner Leavens, Strand & Glover, LLC, emphasizes the practice of entertainment law firm.
