by Goeun Son
Movies and book titles are typically not copyrightable since a short phrase is not eligible to be copyrighted. Instead, you can rely on trademark protection for short titles. That’s where this big trademark lawsuit started.
On Wednesday, Epic Stone Group, a Florida company, sued 20th Century Fox for trademark infringement and unfair competition in a Florida federal court, claiming it owns the rights to “Battle Angel” and has been selling merchandise bearing the mark for more than a decade.
Epic has based its Battle Angel character on 1990s Japanese comic books Battle Angel Alita by Yukito Kishiro. The trademark that Epic Stone Group owns includes computer games, action figures and other toys. Epic also filed a new application in April 2018 to cover things like DVDs, e-books, downloadable film and television programs featuring space combat, ring tones and graphics.
Fox’s film, Alita: Battle Angel, which is also an adaptation of the Japanese manga, is set to open on Valentine’s Day, and the studio has already released merchandise connected to the film. Epic claims this is confusing consumers and hurting its brand for using the same name, and that Fox was aware of its mark and intended to deceive consumers into believing Epic was involved with Alita.
According to a lawyer who represents Epic, Epic Stone offered to license the trademark to Fox, which would have to pay royalties. After about two years of negotiations, Fox allegedly declined.
Fox claims it acquired rights from Japan. But it seems that Fox didn’t register the mark in the U.S. Here, “territorial principle” kicks in, meaning priority of TM rights in the U.S. depends solely upon priority use in the US, not on priority of use anywhere in the world. In other words, even if you use the mark in Japan, you have to take actions to come to the U. S. and actually use goods or services in commerce here to get rights.
Note, to acquire ownership of a trademark, it is not enough to have invented the mark first or even to have registered it first. The party claiming ownership must have been the first to actually use the mark in the sale of goods or services.
One thing we know is that Fox may not want to lose out to Epic Stone at this point after months of marketing this big budget sci-fi movie.