In thunder, lightning, or in court?
When the motion for costs done,
When the new lawsuit’s lost and won.
ETA: since Kim has taken the time to post a comment, I’ve edited this post to reflect some of what she wrote. Read it over, and see if you’ve changed your mind.
What do you do when you lose one trademark battle in court against an adversary with deep pockets, and wind up owing a lot of money?
You sue the same adversary again, apparently. If you know the story, skip the next five paragraphs.
Those Harry Potter (or Canadian trademark law) aficionados among you might recall that in 2005, a Canadian band called Wyrd Sisters (if you’re reading at work, if you click on that link all the naughty bits are obscured by the guitar — but if that still concerns you, try the Wikipedia entry instead) sued Warner Bros. Entertainment, among others, over the release of the fourth Harry Potter movie, Harry Potter and the Goblet of Fire.
The fourth book of the HP series introduced a band called the “Weird Sisters” — a name evidently drawn from a phrase used repeatedly in Shakespeare’s Macbeth, and referencing the fates — and Warner Bros. had apparently planned to include references to the band name in the Goblet movie and in soundtracks and had engaged in some publicity regarding their plans. The company did, first, engage in some due diligence, and contacted bands already using similar names to obtain consent for the use of the name. One was a U.S.-based band, Three Weird Sisters. Another was the Canadian Wyrd Sisters. Warner Bros. entered into negotiations with the bands (the starting point of Warner Bros.’s offer might have been zero). Three Weird sisters,
the bands some payment in exchange for permission to use the Weird Sisters name, and the U.S. band, at least, was going to accept some deal.
The Canadian band, on the other hand — which had already met with some significant measure of success in Canada after nearly twenty years — didn’t like the idea so much. Whatever compensation
While Warner Bros. might have offered would have paid offered some compensation for their use of the name, the band leader didn’t think it was enough – what she wanted was acknowledgement in the film credits, but that was apparently not acceptable to Warner Bros. Whatever popularity the band had in Canada, it certainly would be overwhelmed by the notoriety of the Harry Potter franchise, and in her view, the public would think that the band had copied their name from Harry Potter.
In the end, negotiations between the Canadian band and Warner Bros. broke down, and the band leader sued Warner Bros. in Ontario Superior Court and sought an interlocutory injunction against the release of the film. Before the hearing, Warner Bros. decided to pull all reference to the Weird Sisters band. While there is still a band performing in the movie for a short period of time, there’s no reference to the band’s name at all; only those who were acquainted with the book would know what the band’s name might have been. This apparently didn’t find favour with HP fans (if you scroll down on that Three Weird Sisters page, you’ll see a reference to angry e-mails received by that U.S. band as a result of Warner Bros.’s decision), but it was, after all, the safest thing for Warner Bros. to do. They screened the movie for the Wyrd Sisters band leader and her lawyer to show that the movie would not contain and Weird Sisters reference.
But that wasn’t enough. The band leader proceeded with the injunction hearing anyway.
sued Warner Bros. in Ontario Superior Court anyway, and sought an injunction against the release of the film. (Although it was reported that the band leader would have been happy with a one-line acknowledgement in the movie, who knows if that was on the table during negotiations, or only after the lawsuit was started.) According to the reasons for judgment issued by the court, the argument was that despite the removal of verbal references to “Weird Sisters”, the damage would be done anyway, because the public would be confused, and would think that in buying the Wyrd Sisters CDs and attending their concerts, they were buying the music or attending the concerts of the band referenced in the Harry Potter franchise. However, the court found that the evidence on this subject was too speculative, and that Warner Bros. had taken every reasonable step to avoid confusion; the motion was dismissed, and months later the band leader was ordered to pay C$140,000 in costs.
After she lost the interlocutory injunction motion, the band leader also filed a Canadian trademark applicaton for THE WYRD SISTERS. When it was advertised for opposition in 2006, Warner Bros. (who by then was owed the $140K) opposed her mark; it seems that opposition is still pending. The band leader also filed a U.S. trademark application in October 2006, which is still pending; it hasn’t reached the stage at which Warner Bros. can oppose it yet.
Presumably, there would have been some attempt to settle the costs order, if not a further attempt to settle the entire dispute. We can at least guess that the latter, if it happened, didn’t succeed, because the band leader has sued Warner Bros. yet again — this time, in Federal Court.
While the timing of the lawsuit anticipated the release of the fifth movie, Harry Potter and the Order of the Phoenix, she did not seek an interlocutory injunction restraining the distribution of the movie pending trial (
and for that matter, unless someone can tell me differently, there is no reference to the Weird Sisters band in the fifth book, nor in the movie… what about those Famous Witches and Wizards cards? and there’s only one reference to the Weird Sisters in the book, easily avoided in a movie rendition). I haven’t seen any of the court documents, so I can only guess that this lawsuit is intended as leverage in negotiations, but Warner Bros. isn’t planning to let that happen: they’re bringing a motion to stay the action.