A Lawsuit in the Twilight

Posted by | March 09, 2011 | General | One Comment

Bath & Body Works Brand Management, Inc. (BBW) filed suit against Summit Entertainment, LLC (Summit) in United States District Court for the Southern District of New York yesterday seeking a declaratory judgment that BBW’s TWILIGHT WOODS line of products don’t infringe on the TWILIGHT vampire film series.  Apparently, Summit demanded that BBW cease use of the TWILIGHT WOODS mark and packaging, which Summit claimed infringed upon the design and color palette of its TWILIGHT movie promo materials.

For the non-lawyers out there, in a declaratory judgment (DJ) action the parties are reversed: the would-be-defendant files suit against the would-be-plaintiff asking the court to “declare” that the activities engaged in by the would-be-defendant are permissible under the law.  This usually happens when the would-be-defendant wants to get home court (pun intended) advantage and doesn’t want to wait to see if, when and where the would-be-plaintiff might file suit.  In order to have standing (legal basis) to file a DJ Action, the would-be-defendant must have a reasonable apprehension of being sued by the would-be-plaintiff.

Apparently, BBW’s TWILIGHT WOODS perfume came out this fall, right before the opening of the second TWILIGHT movie.  Summit apparently found this to be more than a mere coincidence, especially given some of the other similarities in BBW’s products to those offered by Summit.  Oddly, today’s news articles about this lawsuit failed to mention is that Summit apparently licenses the manufacture of its own line of TWILIGHT beauty products, which are sold on the website http://twilightbeauty.com/:

When one compares bath products vs. vampires . . .  who’s likely to be confused?  Is anyone?  Really?  I just can’t fathom it, no matter how hard I try.  That said, if the two are gonna do battle, I’m putting my money on the vampires (unless the bath products are garlic-based, in which case I just might change my mind).

However, when one compares competing beauty products, marketed under similar marks and imagery, well then it’s a whole lot easier to see how consumer confusion could result.  In fact, there are three separate Twilight Beauty lines: LUNA TWILIGHT, VOLTURI TWILIGHT and NOX TWILIGHT (nail polish).  A quick glance at the BBW’s TWILIGHT WOODS line and the LUNA TWILIGHT lines reveal similarities not just in the word marks, but also in the packaging designs used by each brand.  It certainly will be interesting to see where this one goes.

Watch out for vampires!  Turns out, not only do they wanna suck your blood, but they also may wanna steal your trademark.  Really though, be very careful when sending C&D letters — threatening legal action may cause you to be sued for declaratory judgment, often in a foreign (out-of-state) court.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

One Comment

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