WHAM-O GETS SLAMMED, JUDGE DENIES TRO AGAINST PARAMOUNT

May 6, 2004

In this newsletter:

PRODUCTION ARTICLE ON INCENTIVES IN MAY ISSUE OF LOS ANGELES LAWYER

Mark's article on international film production incentives is running in the May 2004 edition of "Los Angeles Lawyer" magazine. A PDF version of the magazine is available online at www.lacba.org/showpage.cfm?pageid=40.

CONGRATULATIONS TO OUR CLIENTS

Kudos to our clients Joseph Mealey and Michael Shoob. Their film, "Bush's Brain" is an official selection of the TriBeCa Film Festival and will be screening at 7:30PM on Thursday, May 6, at the Tribeca Performing Arts Center 1. Tickets are $10 and are available at the door only. For more information about the Tribeca Film Festival, visit www.tribecafilmfestival.org .

Congratulations to our client Eileen Craft. She is co-producing the film "Mrs. Hotchkiss' Ballroom Dancing and Charm School," which began production this week. The film stars Robert Carlyle, Marisa Tomei, John Goodman, Mary Steenburgen, Sean Astin, David Paymer, Donnie Wahlberg, Camryn Manheim, Ernie Hudson, and Danny DeVito.

WHAM-O GETS SLAMMED, JUDGE DENIES TRO AGAINST PARAMOUNT

Last year's comedy release "Dickie Roberts: Former Child Star" memorably featured a "Slip 'N Slide" in its advertisements and the film. The product's manufacturer, Wham-O Inc., didn't find it so funny and consequently sued the film's distributor, Paramount Pictures, for trademark infringement and dilution. In addition, Wham-O requested a temporary restraining order (TRO). Wham-O had not paid for product placement; Paramount had not contacted Wham-O for permission to include the product in its film.

In a succinct decision that will likely be cited in future trademark infringement and dilution cases, Federal District Judge Marilyn Patel denied Wham-O's requests and rejected its claims.

Wham-O alleged that the "Slip 'N Slide" scene showed its product being misused in a painful and dangerous manner, and therefore diluted its trademark. Furthermore, featuring the product in the film blurred the distinctiveness of its marks and created consumer confusion.

In denying Wham-O's claims, Judge Patel determined that it was "obvious and unmistakable" that the slide was being misused, and the characters even go so far as to say that the slide is being misused. The judge further noted that "it is not unusual for movie producers to use … products and props … to cultivate interest in a film. … Nothing … suggests that [Paramount] used [Wham-O's] marks to imply that [Wham-O] placed its imprimatur on the film; nowhere in [Paramount's] publicity efforts is [Wham-O's] mark unreasonably displayed or abused."

Wham-O, Inc. v. Paramount Pictures Corp., 286 F.Supp.2d 1254, 2003 U.S.Dist.LEXIS 21762 (N.D.Cal. 2003)