Super. Ct. No. CV155403) Trial Court: Santa Clara County Superior Court Trial Judge: Honorable Peter H. Kirwan
The opinion of the court was delivered by: Mihara, J.
CERTIFIED FOR PUBLICATION
After defendant Global Asylum, Inc. released its film "Haunting of Winchester House," plaintiff Winchester Mystery House, LLC filed an action alleging unauthorized use of its trademarks (15 U.S.C. § 1114), unfair competition (15 U.S.C. § 1125(a)), and interference with contract and economic advantage. Defendant brought a motion for summary judgment, which the trial court granted. On appeal, plaintiff contends that the trial court improperly reached a constitutional issue because it failed to engage in the threshold inquiry as to whether plaintiff's trademarks have become an integral part of the public's vocabulary. Plaintiff also contends that even if the constitutional issue was properly reached, the trial court erred in its application of the test set forth in Rogers v. Grimaldi (2d Cir. 1989) 875 F.2d 994. Plaintiff further asserts that there were triable issues of material fact in connection with its causes of action for interference with contract and economic advantage. We conclude that the trial court properly granted the motion for summary judgment and affirm.
I. Statement of Facts*fn1
Plaintiff is a privately-owned company that owns and operates the Winchester Mystery House. The Winchester Mystery House is a popular tourist attraction that consists of the Winchester mansion, surrounding gardens, a museum, a gift shop, a cafe, and a business conference center. Defendant produces and distributes films.
The Winchester Mystery House is known for the mansion built by Sarah Winchester. After Sarah and William Winchester were married, they had a daughter who died shortly after her birth. When William died in 1881, he left his wife a substantial interest in the Winchester Repeating Arms Company. It is popularly believed that a psychic medium told Sarah Winchester in 1884 that her family was cursed by the spirits of those who had been killed by the Winchester rifle. Based on the medium's advice, Sarah Winchester moved to California and bought a farmhouse in what is now San Jose. She then began renovating and adding more rooms to the house. The construction continued 24 hours a day, seven days a week, 365 days a year for the next 38 years, and only stopped when she died in 1922. This work resulted in a 160-room Victorian-style mansion, which was known as Llanada Villa.
John Brown and Mayme Brown later purchased the house, established a museum, and opened the grounds to guests for a fee. In 1998, the Browns' descendants formed plaintiff.
Plaintiff's brand includes the Winchester Mystery House word mark and the architectural mark that consists of the three-dimensional design of the Winchester mansion (collectively, the marks). The marks have been registered with the United States Patent and Trademark Office since February 2010. Plaintiff's marketing efforts include a billboard campaign, a Web site, advertisements on radio and in magazines, and the distribution of brochures. The Winchester Mystery House has been publicized in local, state, national, and international newspapers. It has also been publicized in documentaries and television shows.
In 2008, plaintiff entered into an agreement with Imagination Design Works, Inc. (IDW) for use of the Winchester Mystery House site as a location for the filming and production of a movie. Under this agreement, plaintiff granted IDW exclusive rights to the use of the Winchester Mystery House property and grounds as a filming location as well as rights for the use of certain Winchester Mystery House trademarks and copyrights relating to the Winchester Mystery House property and history.
In April 2009, Andrew Trapani, who directed The Haunting in Connecticut and is affiliated with IDW, was asked in an interview what his future plans were. He referred to some projects and then stated: "The last one, which I really wish I could tell you the title of, but we're still dotting i's and crossing t's, is on a very well known haunted house. We're coming to terms on doing the first movie ever based on this house." He did not refer to the Winchester Mystery House by name.
On June 1, 2009, plaintiff received an e-mail from Courtney Wells, defendant's production coordinator, which requested filming location rates for use of the Winchester Mystery House property for a "low budget haunted house/ghost story movie" that was to begin production on June 13. The following day, plaintiff's general manager sent an e-mail to Wells that stated: "Thank you for your interest in the beautiful, but bizarre Winchester Mystery House. The Winchester Mystery House just signed a contract with another company for the exclusive rights to the Winchester story. I am unable to give further details at this time."
On July 1, 2009, through a joint press release, plaintiff and IDW announced that a "Major Hollywood Feature-Film" on the Winchester Mystery House and produced by Trapani would begin filming by the end of the year. The press release also stated that this would be "the first film granted permission to shoot on location."
In late July 2009, plaintiff learned that defendant had posted on its Web site an announcement that it was producing a film with the title "Haunting of Winchester House." On July 31, 2009, plaintiff sent a letter to defendant regarding possible infringement of plaintiff's marks. On September 4, 2009, plaintiff sent a second letter, which stressed plaintiff's objection to defendant's use of any unauthorized footage of the Winchester Mystery House. Though plaintiff noted that it had previously granted the right to film the Winchester Mystery House to other production companies, it did not refer to its contract with IDW.
Plaintiff later obtained a DVD copy of defendant's film. The front cover of the DVD jacket features the title "HAUNTING OF WINCHESTER HOUSE," and states that it is a "A MARK ATKINS Film" and that it is "THE TERRIFYING TRUE STORY." The cover also includes a depiction of a Victorian-style structure. The back jacket cover states: "A family moves into the 160 room mansion to act as caretakers, but when a malevolent force abducts their daughter they discover why the house deserves its reputation as one of the most haunted places in America." It also states that "THE ASYLUM presents . . . a MARK ATKINS film." The cover art does not contain the phrases "Winchester Mystery House" or "Winchester Mystery House, LLC." The DVD itself includes the title and the image of the Victorian-style structure.
The movie begins with a shot of the Victorian-style structure, which is not the actual Winchester Mystery House. The plot of the movie includes the ghost characters of Sarah Winchester, her adolescent daughter, and her brother who was deaf and could not speak. These characters as well as the ghosts of those killed by Winchester weapons haunt Sarah Winchester's home. The historical figure Sarah Winchester did not have an adolescent daughter or a brother who was deaf and could not speak.
II. Statement of the Case
On April 29, 2010, plaintiff filed a first amended complaint that alleged seven causes of action. At issue in the present appeal are the causes of action for trademark infringement, unfair competition, intentional interference with contractual relations, and interference with economic advantage and prospective economic advantage. The first cause of action for trademark infringement (15 U.S.C. § 1114) alleged that defendant's use of "Winchester House" and the images of the Victorian-style mansion in its film and in the distribution and advertising of its film caused confusion in the minds of the public, leading them to believe that plaintiff approved, sponsored, or associated itself with defendant. The second cause of action for unfair competition (15 U.S.C. § 1125) alleged that defendant intentionally and unlawfully exploited plaintiff's marks and consumer goodwill for its own benefit, and that defendant's use of the marks was likely to cause confusion as to sponsorship or approval of defendant with plaintiff. The fifth cause of action for intentional interference with contract alleged: plaintiff licensed certain rights for use of the marks to IDW in 2008; defendant knew of the agreement in June 2009; and defendant intended to, and did, disrupt the ...