Terry Rozier, a professional basketball player for the Boston Celtics, is being sued for trademark and copyright infringement based on his alleged unauthorized use of the “scream mask” made famous by the iconic slasher movie Scream.
The mask is protected by both a copyright and trademark owned by Easter Unlimited, Inc. d/b/a Fun World, a company that designs, manufactures and markets products for holidays and events. Fun World is the original designer of the ghost face mask. The company licensed (authorized for a fee) it for use in the popular film series “Scream”, a box office success which has enjoyed three sequels. As a result, the face covering became famous and continues to enjoy popularity.
Rozier became known as Scary Terry, in significant part because of his athletic prowess on the basketball court. For fun, Rozier created a cartoon of himself wearing the Scream mask. He then produced it on five hundred t-shirts and sweatshirts. The clothing items were sold through various vendors, having been promoted by the athlete on social media, news blogs, and magazines. They sold out in two days.
Rozier apparently did not have permission from Fun World to use or adapt the scream mask. In the lawsuit, Fun World accuses Rozier of unauthorized copying of the company’s intellectual property, and unauthorized modification of the image.
Concerning the trademark infringement claim, Fun World asserts that Rozier’s use is likely to cause confusion among consumers, and mislead and defraud them because they will believe the items are “authentic garments manufactured and approved by plaintiff,” or that Rozier is associated with Fun World in some way, which is not true.
Additionally, plaintiff claims defendant intended to trade on plaintiff’s reputation and to dilute by blurring plaintiff’s trademark, likely injuring the business reputation of plaintiff and its mark. Dilution by blurring refers to the situation where a mark is infringed in such a way that the infringement impairs the distinctiveness of the mark. In determining whether dilution by blurring exists, the following factors are considered: the degree of similarity between the infringing mark and the copyrighted mark; the degree of distinctiveness of the registered mark; the degree of recognition of the registered mark; whether the infringer intended to create in the minds of consumers an association with the registered mark; and any actual association between the registered mark and the infringement.
Fun world seeks the following remedies: 1) statutory damages (a monetary award set by statute) of up to $150,000 per infringement, the maximum amount set by statute when an infringement is willful; 2) disgorgement (return, giving back) of profits Rozier made from the merchandise sales; 3) a permanent injunction (a court order requiring a party to cease specified activity) to stop further sales; and 4) reimbursement for its attorney’s fees.
Note: Statutory damages were included in the Copyright Act because actual damages in infringement cases are often hard to prove. The number of customers diverted from the plaintiff are typically hard to trace. For infringements that may be unintentional, the amount of statutory damages ranges between $750 and $30,000 per work, at the discretion of the court. The amount of statutory damages increases substantially when, as alleged against Rozier, the unauthorized use is willful. In that circumstance, the statutory damages can be as high as $150,000 for a single infringement of one work.
Generally, when parties are in litigation, each side pays for its own attorney regardless of who wins or loses. In a few circumstances the law permits the judge, in his or her discretion, to award reasonable attorney’s fees to the prevailing party. Copyright and trademark infringement are two of the few circumstances where a judge can award to a successful plaintiff the cost for attorney’s fees, no small expense.
What steps might Rozier have taken to avoid this lawsuit?
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