One of the other objections to applying trademark law to disputes concerning creative works is the even-more-nebulous-than-usual calculation of damages. The Copyright Act provides a clear statutory-damages framework that relieves a court of the most difficult actual-damages calculations (presuming, of course, that the plaintiff was eligible for statutory damages through timely registration). The Lanham Act, however, does not, or at least does not to the same extent. A recent decision concerning the Apollo Theater exemplifies this problem.
There are at least five, non-mutually exclusive methods for measuring monetary recovery in a trademark infringement action.…
Multiple measures of monetary recovery exist in part because a defendant need not turn a profit from infringing a trademark in order for the plaintiff to suffer damages from the infringement. For example, "a defendant may have failed to earn profits because of the poor quality of its product or its own inefficiency." Likewise, a plaintiff need not demonstrate that it would have earned a profit on its trademarked goods or services but for the infringing activity of the defendant; even if a money-losing enterprise cannot demonstrate "lost profits," it still may be damaged by trademark infringement. "While damages directly measure the plaintiff's loss, defendant's profits measure the defendant's gain.… [T]his is not to be confused with plaintiff's lost profits, which have been traditionally compensable as an element of plaintiff's damages." Indeed, it is possible that trademark infringement could damage a plaintiff where neither the defendant nor the plaintiff earns a profit, particularly where "confusion may cause purchasers to refrain from buying either product."
Apollo Theater v Western Int'l Synd., No. 05–02866 (05 May 2005), slip op. at 24–26 (citations and footnotes omitted, emphasis in original). Fold in the speculative nature of damages in an industry not well known for the accuracy of its accounting, nor for the predictability and sale of licensing fees, and Judge Cote had a real headache.
Then, too, there's the question of artistic expression as somehow trumping trademark interests. Judge Cote has little patience for this theory in these circumstances, and rightfully so.
The Rogers test does not apply, however, "to misleading titles that are confusingly similar to other titles. The public interest in sparing consumers this type of confusion outweighs the slight public interest in permitting authors to use such titles." Determining whether a title is misleading may require an inquiry that extends beyond the title itself. "It is a fair question whether a title that might otherwise be permissible under Rogers violates the Lanham Act when displayed in a manner that conjures up a visual image prominently associated with the work bearing the mark that was copied."
Western has not shown that it is entitled to summary judgment on a First Amendment defense. Even if Western were able to show that its use of the titles Showtime and Showtime in Harlem carried artistic relevance, there are questions of fact as to whether those titles constituted "misleading titles that are confusingly similar to" the Trademark, It's Showtime at the Apollo. Moreover, the use of the titles Showtime and Showtime in Harlem as part of a television program employing numerous visual images and other slogans strongly associated with the Trademark also creates a triable issue of fact as to whether the words were displayed "in a manner that conjures up a visual image prominently associated with" the Trademark. Id.
Id., slip op. at 37–38 (citations omitted, typography corrected). Although neither Rogers nor its progeny extend the reasoning from "titles" to "characters" or "fictional settings" in anything approaching a coherent fashion, that reasoning should nonetheless hold.
Judge Cote's opinion is an unusually clear explanation of one way to resolve these kinds of disputes. That means, of course, that it will be appealed, obfuscated, misrepresented, and buried under the corpses of dead trees for generations to come. I don't have a lot of sympathy for either part in the matter; functionally, a title drawn from a preexisting business entity is, or at least should be, considered substantially weaker than actual artistic expression integral to the nature of the work. The problem is that this kind of reasoning does not lend itself to bright-line tests, but only to instance-by-instance judgments of propriety—and that's not something that our court system (or our media industry) likes.