Many people consult with psychics. Not an unusual thing to do (certainly not in California). But not a lot of people spend the next 38 years adding rooms to their houses because the soothsayer said spirits would kill them if construction ever stopped. At least one person is reported to have done so: Sarah Winchester, the widow of the son of the famed gunmaker. By the time the heiress died in 1922 at age 82, her seven-room farmhouse had become a seven-story, 160-room Victorian-style mansion, replete with winding dead-end passageways, interior windows, and doors to nowhere.
These types of legends make good movies, which is why a production company approached the owner of the Winchester Mystery House in San Jose, California, to request permission to film there. The owner turned it down, stating that another company had already acquired the rights to the Winchester story. The filmmakers went ahead and made their movie anyway, calling it Haunting of Winchester House and putting a Victorian-style mansion on the DVD cover. You can guess what happened next.
The case that followed, Winchester Mystery House, LLC v. Global Asylum, Inc., represents a classic battle seen frequently in the world of entertainment litigation: the trademark owner who wishes to preserve his exclusive rights to a particular name vs. the artist who wishes to use that name as part of a creative work. And the battleground? The First Amendment, of course. So what happens when the owners of one of America’s most famous haunted houses take on the filmmakers who have gone renegade to tell its (highly fictionalized) story?
How Is a House Like a Celebrity?
Before we answer that question, let’s consider why this case was able to exist in the first place. Like other celebrities, a famed house has a name — think Mount Vernon, And of course, there is that special class of houses, like the Chers and Madonnas of the residential world, that can be known by one name alone — Monticello, Tara, Manderley. If the owner of the house uses the name commercially and acquires trademark rights therein, the owner can stop others from using the name in connection with the sales of goods or services. Were this not the case, people might assume that the owner sponsored the enterprise.
For example, imagine “San Simeon Marmalade.” One could reasonably draw the conclusion that the bread spread derived from oranges grown on the grounds of William Randolph Heart’s legendary home. Anyone purchasing the fruit preserves might be thinking, “Ah, marmalade made from Hearst’s own recipe. If I eat enough of it, I too will become a publishing magnate and get Hollywood starlets to live with me.” Or perhaps the buyer might think the breakfast treat is subject to the same quality controls as those exercised over the estate. (Hearst paid a lot of attention to details.) On learning that the real source turns out to be a surfer in Santa Monica using oranges from Ralph’s grocery store, the marmalade-eaters might feel that they had been misled. (I mean, couldn’t the guy have at least gone to the Farmers Market or Whole Foods?) Trademark law steps in to prevent such confusion.
In the context of an artistic work such a motion picture, however, the rights of the trademark owner need to be balanced against those of the filmmaker, on whose side is the First Amendment. The issue becomes whether the public interest in avoiding consumer confusion outweighs the public interest in free expression.
Even Evil Spirits Can’t Scare Off the First Amendment
In the case of the Winchester Mystery House, the California Court of Appeal held that the right to free speech prevailed over the right to be free from confusion. In so doing, the court applied a test set down by the Second Circuit Court of Appeals in 1989 after Ginger Rogers sued the producers and distributors of a movie entitled Ginger and Fred for trademark infringement on the grounds people would think that she had sponsored or endorsed the film. The Second Circuit concluded that trademark law would not prevent the use of a trademark in a title, “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” The celebrated hoofer-actress lost.
Similarly, in Winchester Mystery House, the California court applied the Rogers test and found that the balance of equities favored the filmmakers. The court first concluded that the title and DVD cover image had artistic relevance to the film, which followed a group of caretakers who move into the Winchester mansion (referenced in the title) and are haunted by the ghosts of Sarah Winchester and countless others who had been killed by Winchester weapons. This comes as little surprise — the threshold required for “minimum artistic relevance” is admittedly low. By incorporating elements of the actual Winchester haunting legend, the filmmakers could easily demonstrate artistic relevance.
More curious, however, is the court’s literalist approach in determining that the film’s title and DVD cover art did not “explicitly mislead  as to the source or content of the work” because they expressly referenced the film’s producer and director in capital letters and did not include “Winchester Mystery House” or “Winchester Mystery House, LLC” on the DVD cover (thereby satisfying the second prong of the Rogers test). Essentially, the court found that the name “Winchester House” was sufficiently different from the trademark “Winchester Mystery House” so as to not confuse people into thinking endorsement, absent any explicit indicia of endorsement. It seems unlikely that any court applying the traditional multi-factor likelihood of confusion test used in virtually all standard trademark infringement cases would reach the same conclusion — and indeed, other courts in the post-Rogers era have included the traditional likelihood-of-confusion test used to determine trademark infringement in their application of the second prong. The Winchester court could have done this, but elected not to (ostensibly on procedural grounds).
What Does It All Mean?
Winchester Mystery House stands to impact entertainment litigation in two important ways. First, it sets a low bar for when an artist needs to acquire rights to use a particular name beforehand — no matter if you ask and get rejected, just be sure not to use the exact same trademark in the title and put your own name in all caps. Second, the analysis applied by the California state court differs in many respects from those used by federal courts that follow the Rogers test, including that of the Court of Appeals for the Ninth Circuit. The Winchester court expressly noted that it need not follow any decision of the Ninth Circuit. Given this approach, plaintiffs with similar claims will be more likely to file them in federal court — usually a defendant’s preferred forum.
Why the California Court of Appeal took this approach is, like the house itself, a mystery. Maybe the court wanted to send a message to plaintiffs to bring these types of cases in federal court, where the majority of trademark actions are adjudicated. Or perhaps the state appellate court likes movies about ghosts. Curious folk could, of course, always ask a psychic. But some things are better left unknown.