It’s a little early for Halloween, but the Sixth Circuit Court of Appeals decided a trademark lawsuit last year about the Winchester Mystery House in San Jose, California.

The house belonged to Sarah Winchester, the widow of famous gun maker William Winchester. According to the story, Sarah was told by a medium that the family was being haunted by those killed by Winchester rifles. The medium instructed Sarah that the only way to keep her family safe was to move West and build a house for the ghosts.

So long as construction on the house continued, Sarah and her family would be safe, according to the medium. Construction continued 24 hours a day, 7 days a week, 365 days a year for the next 38 years, only ending when Sarah died in 1922. At her death, the mansion contained 160 rooms, 2,000 doors, 10,000 windows, 47 stairways, 47 fireplaces, 13 bathrooms, and 6 kitchens.

Given the backstory, it is not surprising that the mansion is now owned by Winchester Mystery House, LLC and serves as a tourist attraction. The company filed a trademark infringement lawsuit after Global Asylum, Inc. released a direct to DVD film called Haunting of Winchester House without a license to use the mark and the story.

The Sixth Circuit Court of Appeals recently confirmed that the film company was protected under the First Amendment, relying heavily on the precedent established in Rogers v. Grimaldi. The first prong of the Rogers test requires only that the title pass “the appropriately low threshold of minimal artistic relevance” to the content of the film. In this case, the court found that both the title “Haunting of Winchester House” and the Victorian-style mansion on the DVD cover have some artistic relevance to the underlying work. In its opinion, the court noted that “caretakers move into the house built by Sarah Winchester, and her ghost and the ghosts of those killed by Winchester weapons are characters in the film.”

With regard to the second prong of the Rogers test, the Sixth Circuit concluded that the title and the cover of the DVD do not “explicitly mislead as to the source or content of the work.” As the court highlighted, “There is no suggestion that the film was authorized, endorsed, or produced by plaintiff. The cover art to the film does not contain the phrase ‘Winchester Mystery House’ or ‘Winchester Mystery House, LLC.’”

How Can I Help?

If you need help to protect a brand, file a trademark application, or know someone that can use my help, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

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