Women's clothing manufacturer B.B. Dakota, Inc., as a matter of law, infringed motion picture production company Summit Entertainment's registered TWILIGHT mark by using the mark in promotional materials and on hangtags attached to clothing items, the federal district court in Los Angeles has held.

In Summit's first blockbuster "Twilight" movie, Bella Swan, the film's main character, was shown wearing B.B. Dakota's cargo-style blue "Leigh" jacket. After Entertainment Weekly magazine published a photograph of the recently-discontinued Leigh jacket and a movie still image of Bella wearing the jacket, B.B. Dakota resumed manufacturing the jacket, renaming it and promoting it as the "Twilight jacket." Contrary to B.B. Dakota's assertion, a brief e-mail exchange between the parties did not grant a license to use the TWILIGHT mark.

Nominative Fair Use

B.B. Dakota argued that its use of the TWILIGHT mark constituted nominative fair use. The Ninth Circuit in Toyota Motor Sales, U.S.A., Inc. v. Tabari (TRADEMARK LAW GUIDE ¶61,651), held that the three-factor nominative fair use test "replaces" the traditional eight-factor Sleekcraft test as the proper standard for determining likely consumer confusion whenever a defendant asserts to have referred to the trademarked good itself. To succeed on a claim of nominative fair use, a defendant must show that: (1) the defendant's product or service could not be readily identified without use of the plaintiff's trademark; (2) the defendant used only so much of the mark as was reasonably necessary to identify the product; and (3) the defendant did nothing that would suggest sponsorship or endorsement by the trademark owner.

B.B. Dakota made far more extensive use of Summit's Mark than was necessary to make the "identification" arguably permitted by the first factor, according to the court. While B.B. Dakota could have referenced Summit's "Twilight" movie or the "Bella" character to explain how the jacket had been used in the film, B.B. Dakota was not justified in naming the jacket the "Twilight jacket" or using Summit's stylized TWILIGHT mark.

Under the "reasonably necessary" factor, the court explained that the key question is whether the defendant used the plaintiff's mark in a manner designed to appropriate the cachet of the defendant's product. B.B. Dakota "clearly sought to associate its product with the highly successful Twilight series to enhance its own profits," the court said.

Finally, B.B. Dakota intentionally suggested association with and/or sponsorship by Summit's Twilight films and created the misleading impression that it had obtained Summit's permission for the use of its images and marks, according to the court. The undisputed facts established all necessary elements of Summit's claims for trademark infringement, the court concluded.

Trademark Dilution

The court also ruled that Summit was likely to succeed on its trademark dilution by blurring claim. Summit satisfied all six factors set forth in the Trademark Dilution Revision Act (TDRA) of 2006: (1) similarity of the marks --the TWILIGHT mark and the mark used by B.B. Dakota's mark were identical; (2) distinctiveness of the famous mark --the TWILIGHT mark was arbitrary and made distinctive for vampire films by the Twilight movie franchise; (3) substantial, exclusive use of the famous mark --sale of goods under the stylized TWILIGHT mark was "substantially exclusive"; (4) recognition of the famous mark --Summit's sale of goods and services associated with the TWILIGHT mark exceeded $1 billion, providing strong circumstantial evidence of the mark's geographic reach and "degree of recognition"; (5) intent to create an association with the famous mark --B.B. Dakota intended to associate its jacket with the TWILIGHT franchise given its extensive advertisement and use of image; and (6) actual association with the famous mark --evidence showed that retailers had associated the jacket with the TWILIGHT franchise.

Despite strong evidence of dilution, however, the court could not dispose of the claim on summary judgment because Summit failed to prove that the TWILIGHT mark was sufficiently "famous" by April 2009, when B.B. Dakota began using the mark on its jacket.

Trade Dress Infringement Counterclaim

The court dismissed B.B. Dakota's trade dress infringement counterclaim. Secondary meaning --a necessary element of a trade dress claim --must exist prior to the defendant's use of the alleged trade dress, the court said. B.B. Dakota had discontinued making the jacket prior to its use in the "Twilight" film. B.B. Dakota produced no evidence or support for its argument that the "Twilight" film created secondary meaning in the jacket which somehow accrued to B.B. Dakota to the exclusion of Summit.

Summit Entertainment, LLC., CD Cal., ¶61,911.