By Erin Geiger Smith
Feb 21 (Reuters) - The 7th Circuit U.S. Court of Appeals
said Thursday that the title of the movie "50/50" did not cause
confusion with rap duo Phifty-50's trademark.
Eastland Music Group, LLC, the proprietor of Phifty-50, sued
Lionsgate Entertainment Inc, the producer of a film about a
young man's battle with cancer, in November 2011, saying the
movie company had infringed its rights by using 50/50 in the
Eastland, the opinion said, also claims a trademark for the
In a five-page opinion, Chief Judge Frank Easterbrook and
Judges Joel Flaum and Iliana Rovner sided with Pryor Cashman
client Lionsgate and upheld the Chicago federal district court's
July 2012 decision to throw out the lawsuit.
U.S. District Judge George Lindberg's decision had followed
the logic of the 2nd U.S. Circuit Court of Appeals in the 1989
case Rogers v. Grimaldi, which said that the title of an
artistic work infringes a trademark only if it is devoid of
artistic significance or is explicitly misleading about the
Lindberg ruled that the title "50/50" had artistic relevance
to the plot of the film in that it referenced the main
character's chance of survival.
The appeals court agreed, though it said it didn't need to
go so far as to decide whether to follow Rogers, which has not
yet been adopted by the 7th Circuit.
Instead, Easterbrook wrote for the panel, the "complaint
fails at the threshold: it does not allege that the use of
'50/50' as a title caused any confusion about the film's
Just like no moviegoer would have thought the jeweler
Tiffany & Co was the source for the film 'Breakfast at
Tiffany's,' no consumer would think the rap group was the source
of the film '50/50,' the judge wrote.
ROGERS V. GRIMALDI RECAP
The court also pointed to at least eight other films with
50/50 or a variant in the title, noting that if there is "any
prospect of intellectual property in the phrase 50/50," Eastland
is a "very junior user and in no position to complain."
Ronald diCerbo of McAndrews, Held & Malloy who represented
Eastland was not immediately available to comment.
Lionsgate's team was led by Pryor Cashman partner Tom
Ferber. He said that he knew the appeals court might want to
avoid the constitutional discussion required to follow Rogers.
He also argued to the court that the term "50/50" was one in
parlance before the rap duo ever existed and that Eastland
Music's trademark allegations were therefore not supportable.
The bottom line, Ferber said, is that Lionsgate wasn't
"using a trademark, we were using a term that pre-existed the
Ferber, as it happens, was also on the winning team that
represented defendant MGM/UA Entertainment Co against the claims
brought by Ginger Rogers over the Federico Fellini film "Ginger
& Fred" that served as the basis of the Grimaldi case. At the
time, he said, he was an associate and handled the majority of
That lawsuit, Ferber said, "was arguably one of the biggest
cases I've ever been involved in."
The film "50/50" featured the somewhat more modern stars
Joseph Gordon-Levitt and Seth Rogen.
The case is Eastland Music Group v. Lionsgate Entertainment,
U.S. Court of Appeals for the 7th Circuit, No. 12-2928.
For Eastland: Ronald diCerbo of McAndrews, Held & Malloy
For Lionsgate: Tom Ferber of Pryor Cashman.
(This article has been corrected. The previous version
misspelled Pryor Cashman in paragraph 12 and incorrectly
referred to Easterbrook's instead of Eastland Music's trademark
allegations in paragraph 13.)
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