Live events sector
A court in California has upheld a complaint made by Coachella organiser Goldenvoice against the organisers of the Filmchella film festival in the same state, granting a preliminary injunction against the latter holding that name is liable to cause “consumer confusion” with the well established music festival.
The complaint, filed by Coachella Music Festival LLC in the US District Court for Central California, argued that Filmchella founder Robert Trevor Simms and twenty other defendants were using the similar-sounding name to their name and trade mark for their multiday outdoor film festival. To add to this, the complaint says that both events feature numerous forms of entertainment and camping, are held in Southern California and that Simms has pitched his planned festival as “Coachella for movies”.
Coachella Music Festival LLC owns several trademarks and servicemarks associated with the festival, including the Coachella servicemark and “Chella” for use on shirts and T-shirts; However the trademark for use of “Chella” in “musical” and “cultural and arts events”, “campground facilities”, “hotel accommodation services”, drinks, transportation and other clothing has not as yet been registered.
The suit said “Trading on the goodwill of plaintiffs’ famous ‘Coachella’ festival, defendants are attempting to operate a directly competitive festival which they have named ‘Filmchella’” ….. “Despite repeated requests from plaintiffs asking them to change the name … to one which avoids confusion, conflict and false association … defendants have failed to do so.”
The film festival described its event as the “Coachella for movies” and “the rock’n’roll festival for filmmakers and fans” and registered the web address filmcoachella.com (which redirects to the Filmchella website).
On the 10th October Judge Robert G. Klausner sided with Goldenvoice, ruling that while Simms “provided evidence that he relied in good faith on a valid trademark search, conducted by a trademark examiner, that did not return any conflict” – and that Coachella failed to “clearly demonstrate” he had deliberately set out to confuse consumers – the intention is ultimately irrelevant, with “the intent element is merely a proxy for determining likelihood of confusion”. The Judge said:
“Since both Coachella and Filmchella are both designed to be artistic, multi-day festivals in the desert; since Coachella’s marks have become widely known and strong; and since using the suffix ‘chella’ is likely to cause consumers to believe, or at least wonder, if Filmchella is affiliated with or sponsored by Coachella, the Court finds that the Sleekcraft test” – a set of eight guidelines for determining infringement – “falls in plaintiffs’ favour”
He also agreed that there was “sufficient evidence to show a likelihood of reputational harm. Coachella has a significant reputation to uphold. It has drawn massive crowds and exceptionally popular artists. Filmchella has not. The festivals are different in type, in budget and in ticket price. Coachella tickets are very expensive. Filmchella tickets are very inexpensive.”
“Plaintiffs have also raised concerns about whether the event will have adequate security and come forth with evidence suggesting that it may lack appropriate security. Given that there is an inherent likelihood of confusion regarding the extent to which Filmchella is associated with Coachella, Filmchella’s success or failure would be likely to impact Coachella’s reputation as well.
“Finally, Coachella’s loss of control – their inability to control their reputation, and the extreme difficulty of attempting to quantify the monetary value or loss of sales due to such reputational damage – justifies a finding of irreparable injury.”
Granting the injunction and prohibiting the use of the service/trademark ‘Filmchella’, the Judge made it clear that his order would not prohibit Simms from hosting a film festival with a different name in future. Indeed Simm went ahead with “Filmchilla” which was held just before the hearing (29 September to 1 October)
And Classixx (the electronic duo of Michael David and Tyler Blake) have filed a lawsuit against clothing retailer H&M for trademark infringement, after H&M reportedly sold unlicensed clothing bearing the band’s name without the band’s permission. representative for Classixx told Pitchfork last week: “Our client attempted to resolve this amicably with H&M before going to court. But, despite H&M’s blatant infringement of Classixx’s trademark and publicity rights, it denied any liability, threatened Classixx with claims for costs and attorneys’ fees, and insultingly referred to the band as a ‘relatively unknown DJ duo” and “Clearly, H&M, which has been known to broadcast Classixx music in its stores, is no friend to the artist. For H&M to profit by marketing and selling without consent ‘Classixx’-branded apparel at its stores around the world is bad, but responding in the manner it did is even worse. The band looks forward to their day in court”.