Whose House Is It? Universal City Studios LLC v Philip Gorecki [2017] ATMO 18

For readers of a certain, mature age, love them or hate them, the National Lampoon movies formed a significant part of the 1980’s movie heritage (dare I say ‘culture’?). The movies included performances by John Belushi, John Candy, Beverly D’Angelo and, of course, Chevy Chase.

The 1978 movie, National Lampoon’s Animal House (Animal House), which the late, great Harold Ramis had a hand in writing, has recently taken a bit of a beating to its Australian reputation in a decision of the delegate of the Trade Marks Registrar.

In Universal City Studios LLC v Philip Gorecki [2017] ATMO 18 (27 February 2017), Universal Studios LLC (Universal) opposed the registration of Australian trade mark application numbers 1617720 for the mark   (Logo) and 1663461 for the mark ‘ANIMAL HOUSE’ (Word Mark). Both marks were filed in class 41 for “Musical entertainment services; Night club services (Entertainment); Organisation and conducting of dance, music and other entertainment festivals; Organising events for entertainment purposes”.

The grounds of opposition included sections 42, 60 and 62A of the Trade Marks Act 1995.

In order to establish a ground of opposition under section 60, Universal had to show that, at the relevant dates, the reputation in the brand “Animal House” was such that use of the Logo and Word Mark by Gorecki would be likely to deceive or cause confusion.

Unfortunately for Universal, Hearing Officer Adrian Richards considered the evidence as to the reputation of Animal House “as to the extent of the claimed reputation is lacking in a number of respects”.

Hearing Officer Richards stated:

Turning to the Opponent’s evidence of reputation in Australia, Mr Kortian declares that the Film ‘had its cinematic release in Australia soon after its premier in 1978’ and that it has ‘extensively and repeatedly been broadcast’ on Australian television. Both of these statements are unsupported. Gross takings for the Film from theatre box offices and from home movie sales have been offered, but only on a worldwide basis, leaving it unclear as to how much of this relates to sales in Australia. There is no corroborating information about television broadcasts in Australia in the evidence. Given the premier of the Film in Australia was almost 40 years before the priority dates of the Trade Marks, these bare statements are insufficient to establish the reputation necessary to invoke s 60(a).

The evidence in support also refers to plans to adapt the Film to a theatrical musical, ‘which is expected to have its premier in Broadway, New York soon.’ It is not possible for me to infer reputation from of this when no evidence of, for example, any media coverage in relation to these plans has been filed.

For these reasons, Universal failed to established grounds of opposition under both sections 60 and 42(b).

Further, Universal could not establish that Gorecki had adopted the Logo and Word Mark in bad faith, stating:

The Opponent’s evidence and submissions refer to the content of the Film concerning, among other things, people having parties in university fraternity houses. Due to this theme the Opponent contends that the Applicant must have adopted the Trade Marks in order to suggest a connection with the Film. Mr Kortian also calls into question whether the original Noah’s Ark event took place, given no images of the event taking place are in the Applicant’s evidence. …

To establish this ground of opposition, cogent evidence must be put forward as to why the filing these applications should be considered to be in bad faith. I am not satisfied that the Opponent’s evidence discharges its onus in this regard. At any rate, the Applicant’s account of why he chose to adopt the Trade Marks also appears reasonable on its face and has not been refuted by the Opponent. The s 62A ground of opposition has not been established.

Hearing Officer Richards’ comments with respect to the premier of Animal House being “almost 40 years before the priority dates of the Trade Marks” may make many readers who immediately thought of the movie upon seeing the trade marks feel positively ancient. But the decision is a stark reminder that maintaining a reputation for a brand is equally as important as establishing that reputation.