50/50 Odds Increase in Your Favor If You Can Show Confusion as to the Source of an Alleged Infringing Trademark

Eastland Music Group, LLC (“Eastland”) learned the hard way that proving the element of confusion could make or break a trademark infringement claim.  Eastland is the proprietor of Phifty-50, which is a musical rap duo.  Phifty-50 has one music album from 2003 and a T-shirt.  Eastland registered “PHIFTY-50” as a trademark and claims a trademark in “50/50.”  Eastland sued Lionsgate Entertainment, Inc. (“Lionsgate”) alleging trademark infringement from Lionsgate’s 2011 movie entitled “50/50.”  Eastland Music Group, LLC v. Lionsgate Entertainment, Inc., Case No. 12-2928 (7th Cir. February 21, 2013) (“Lionsgate”) (available here).  The district court dismissed Eastland’s complaint, finding that the movie’s title described how the main character only had a 50% chance of surviving cancer.  Eastland appealed, arguing that the descriptive nature of the movie title was a defense, not an element of trademark infringement, and that the movie was not part of Eastland’s complaint, so Lionsgate’s motion to dismiss should have been treated as a motion for summary judgment.  Lionsgate, Slip Op. P. 2.

The 7th Circuit Court did not bother to assess Eastland’s claims because Eastland’s complaint was faulty from the beginning: “it does not allege that the use of ‘50/50′ as a title has caused any
confusion about the film’s source—and any such allegation would be too implausible to support costly litigation.”  Lionsgate, Slip Op. P. 3.  Eastland conceded that it was never contacted by a person regarding Lionsgate’s film “50/50” and did not allege that Lionsgate ever was contacted by a person regarding Phifty-50.

The 7th Circuit Court agreed that Eastland had an incontestible trademark in “Phifty-50” but explained that the “principal reason it was registrable is that it is a made-up homophone of a familiar phrase, which in ordinary usage is suggestive or descriptive.”  Lionsgate, Slip Op. P. 4.  In addition, the phrase 50/50 and its sound-alike variants (“50-50,” fifty-fifty, etc.) has been used across the intellectual property fields for decades.  The 7th Circuit Court noted that there were at least six movies with some version of the title “50/50″ that predated Eastland’s use.  The 7th Circuit Court cited to the Wikipedia page for 50/50, and stated that the page listed three television shows, a title of a fourth television show, and three songs, in addition to the six movies, all which contain some version of 50/50 in the title.  “And Wikipedia’s list is not comprehensive, for it omits anything by the rap duo Phifty-50; doubtless other examples also are missing. If there is any prospect of intellectual property in the phrase 50/50, Eastland Music is a very junior user and in no position to complain about the 2011 film. Phifty-50 entered a crowded field, and its rights are correspondingly weak and narrow.”  Lionsgate, Slip Op. P. 4.

Essentially, the court believed the only way Lionsgate’s title “50/50 ” can infringe Eastgate’s “Phifty-50” trademark is if Lionsgate’s movie falsely implies that “50/50” originated from Eastland.  “The titles of Truman Capote’s novella Breakfast at Tiffany’s, and the movie of the same name, do not infringe the rights of Tiffany & Co. because no reasonable reader or moviegoer thinks that the jeweler is the source of the book or the movie.”  Lionsgate, Slip Op. P. 5.  The 7th Circuit Court affirmed the dismissal of Eastgate’s complaint because Eastgate’s complaint “does not (and could not plausibly) allege that consumers treat it as the producer or source of the film 50/50, or treat Lionsgate as the producer of the 2003 rap album.”  Lionsgate, Slip Op. P. 5.