By Monique Brown, 3L at University of Tennessee College of Law and Spring 2019 Semester-in-Residence Participant. Photo: “Alita: Battle Angel” (2019). IMDb.
Twentieth Century Fox (“Fox”) released its highly-anticipated featured film Alita: Battle Angel on February 14, 2019. Prior to the film’s release, Epic Stone Group (“Epic”), a Florida company, filed a federal trademark infringement and unfair competition lawsuit against Fox in the United States District Court for the Southern District of Florida. Epic claims that it owns the “Battle Angel” federal trademark and that it has been selling merchandise bearing the “Battle Angel” mark for more than a decade. Fox has also been selling action figures and toy figurines bearing the “Battle Angel” mark.
What is a trademark?
Trademark law exists not only to protect your brand, but to prevent consumer confusion as to the origin of goods or services. The Lanham Act is the federal statute that governs trademark law. The Lanham Act makes it unlawful for someone to use a trademark in a manner that confuses consumers about the source of goods or services. A trademark can include any word, name, symbol, or device used or intended to be used to identify and distinguish the goods or services of one seller or provider from others. For example, Apple has one of the most widely recognized trademarks. If a person sees the Apple trademark on a product, they will associate that product with Apple. Trademark owners have the option to seek state trademark protection or federal trademark registration.
State v. Federal Registration
State trademark registration is exactly what it sounds like: it protects your trademark in the state where you register it. Federal trademark registration, however, protects your brand in the entire United States, and allows you to file a trademark infringement suit in federal court. Although you aren’t required to federally register your trademark, it is a good idea to do so because it puts the public “on notice” that you own the exclusive rights to that trademark in connection with the goods/services listed in the registration. It is a good idea to visit the United States Patent and Trademark Office (“USPTO”) trademark electronic search system to view approved and pending trademark registrations.
What if I didn’t register at all?
If you are using the trademark in commerce and fail to register it, you are afforded the same protections as a state registration would give you in the form of common law protection. However, since no registration is required in order to establish common law rights, it makes it difficult to prove potential infringers were “on notice” that you own the rights to that trademark. Common law trademark rights are limited to the geographic area where the mark was in use.
The Battle Angel Case
Epic federally registered the term “Battle Angel” in 2009 in connection with computer games, and again in 2014 in connection with action figures and toys. Additionally, Epic claims that they filed for registration again in 2018 in connection with a long list of things, including “downloadable audio and video recordings, DVDs, etc.”
Epic’s complaint states that Fox’s “Battle Angel” mark “appears, and sounds confusingly similar [to Epic’s “Battle Angel” mark], and will likely cause consumer confusion and deceive the public regarding the source,” in direct violation of the Lanham Act.
This case is a perfect illustration of why it is important to federally register trademarks. If Epic had only registered “Battle Angel” within the state of Florida, instead of federally, it would only be able to try and prevent a company from using the “Battle Angel” trademark in Florida, instead of nationwide.
The Future of the Battle Angel Case
Although Epic filed their complaint on January 30, 2019, Fox has yet to file an answer with the court. If Fox is found to have infringed on Epic’s trademark, Epic may be entitled to recover Fox’s profits, actual damages, and attorneys’ fees.
Want more information on trademark law?
Don’t miss our upcoming workshop, Legal and Business Issues for Filmmakers on March 22! You can also become a member of the Arts & Business Council of Greater Nashville for access to our Volunteer Lawyers & Professionals for the Arts program, and all of the additional information and resources we have available to help you understand your trademark rights.