Antitrust Law Daily Wrap Up, STATE UNFAIR TRADE PRACTICES—S.D. Cal.: Television series producers’ fraudulent practices claims against series host and distributor proceed, (Apr 28, 2014)

By Linda O’Brien, J.D., LL.M.

Producers of a live nationwide celebrity chef tour and television series plausibly stated fraudulent business practices and trademark infringement claims against the television series host and the series distributor for alleged promoting and advertising the producers’ tour and television series as their own production in a manner that would likely deceive the public, the federal district court in San Diego has decided. However, the producers’ trademark dilution and misappropriation of ideas claims were dismissed (Celebrity Chefs Tour, LLC v. Macy’s Inc., April 25, 2014, Sammartino, J.).

Celebrity Chefs Tour, LLC (CCL) and Promark Productions, LLC developed and produced a live tour and television series filmed on the tour called The Great American Chef’s Tour (GACT) and owned all copyrights, trademarks, and service marks for GACT. In 2011, the producers entered into a contract with public television station Window to the World Communications (WTTW) to distribute episodes of GACT. The pilot generated generally positive feedback and the producers began soliciting potential sponsors for the tour and show. The producers signed a contract with chef Devin Alexander to serve as host for GACT and with retailer Macy’s, Inc. to be the title sponsor of GACT. At the time the tour commenced, Macy’s created a logo and issued a press release advertising the tour as "Macy’s Great American Chef’s Tour." The producers informed Macy’s that Federal Communications Commission (FCC) regulations prohibited the retailer’s name from appearing in the television show or to have an editorial control over the show’s content. After Macy’s ceased making its sponsorship payments, the producers suspended the tour. However, Macy’s continued on with certain tour events under the name "Macy’s Great American Chef’s Tour" and Alexander promoted a new television show using photographs and videos from the tour. Further, episodes of GACT appeared on several public broadcasting stations.

CCL and Promark filed suit against Macy’s, Alexander, filming company LEC Media, and distributor Executive Program Services (EPS), alleging unfair business practices in violation of California’s Unfair Competition Law (UCL), trademark infringement in violation of the Lanham Act, false designation of origin, trademark dilution, and misappropriation of ideas, among other claims. The defendants Alexander and EPS moved for dismissal.

Unfair competition. The court found that, although the plaintiffs failed to adequately allege unfair business practices, they plausibly alleged possible consumer confusion in violation of the fraudulent prong of the UCL. A violation of the fraudulent prong of the UCL can be shown if members of the public are likely to be deceived by the fraudulent practice. The plaintiffs adequately alleged that Alexander and EPS engaged in fraudulent business practices by promoting and distributing the plaintiffs’ television show as their own television show under a confusingly similar name that would likely deceive the public. Accepting the plaintiffs’ allegations as true, the defendants were actively trying to deceive the public into believing the plaintiffs’ television show was their own television show. The allegations were sufficient to survive a motion to dismiss, the court noted.

Trademark infringement. The plaintiffs have adequately alleged federal trademark infringement and false designation of origin claims against Alexander and EPS. To state a claim for federal trademark infringement under the Lanham Act, a plaintiff must show that it has a protected ownership interest in the mark and that the defendant’s use of the mark is likely to cause consumer confusion. The plaintiffs alleged that the defendants were using the mark in connection with the distribution and advertising of a television show. Alexander had promoted her "new show" called the "Great American Chefs Tour" on her website and social media and those promotions included the infringing name. The plaintiffs also alleged that Alexander and EPS used GACT names and marks without the plaintiffs’ consent and in a manner that was likely to cause confusion. The allegations appeared particularly true given that the shows were so similar and the plaintiffs’ claims that the defendants were in fact marketing the plaintiffs’ television show as their own, the court noted.

Trademark dilution. However, the plaintiffs failed to state a plausible claim for trademark dilution, according to the court. A mark is famous if it is widely recognized by the general public as a designation of source of the goods or services of the mark’s owner. Although the plaintiffs’ mark was federally registered, the plaintiffs made no sales of GACT content and made no allegations of any advertising or publicity efforts. Its allegations that the mark was well-received by television stations, the allegations fell short of "wide recognition" and suggested that the mark might be famous in an insufficient niche market of the entertainment industry.

Misappropriation of ideas. The plaintiffs’ claim for misappropriation of ideas was preempted by the Copyright Act of 1976. The plaintiffs’ ideas for the concept of the tour and television show had been affixed in a tangible, copyrighted work- the GACT tour footage. Moreover, the plaintiffs’ breach of implied contract allegations not to use their ideas and concepts without compensation was equivalent to the rights afforded by the Act’s exclusive prohibitions of "unauthorized reproduction, performance, distribution, or display" of copyrighted works, the court concluded.

The case is No. 3:13-cv-02714-JLS.

Attorneys: Richard Michael Wirtz (Wirtz Law APC) for Celebrity Chefs Tours LLC and Promark Productions LLC. Christine M. La Pinta (Seltzer Caplan McMahon Vitek) for Macy's Inc., LEC Media LLC, Executive Program Services Inc., and Devin Alexander Inc.

Companies: Celebrity Chefs Tours LLC; Promark Productions LLC; Macy's Inc.; LEC Media LLC; Executive Program Services Inc.; Devin Alexander Inc.

Cases: StateUnfairTradePractices CaliforniaNews