When shall we three meet again? (now with edits!)

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.

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15 Responses to When shall we three meet again? (now with edits!)

  1. Lenny The Bruce says:

    Never before has Macbeth’s words been used for such mince.

  2. Mara says:

    Ha. My (legal) name is “Mary Riley”, but I didn’t think of suing when the movie of that name came out. After all, there are tons of Mary Rileys out there.

    There’s an old adage that “any publicity is good publicity”* — why waste all that money & time suing Warner Bros? Why not view it as an unexpected opportunity to capitalize on the free publicity? “No, we’re not the band in the movie, but here’s our music, you might like it.”

    *Yeah, I know that negative publicity isn’t good. But this wasn’t negative publicity.

  3. Marnie says:

    I’m not sure my mind has been changed. I guess I still don’t see the harm in the possible confusion. I do lament that Kim feels victimized and I have no doubt that if someone came in and said “Hey, we have a character named Marnie MacLean coming out in a major motion picture, be prepared to deal with it” that I might bristle at the presumption that I’d need to bow down to the all mighty big business, but I still don’t feel see where the real damage would be done and I stand by my argument that Wyrd Sisters is more likely to benefit from the extra exposure than be damaged by a small amount of confusion.

    It is nice of Kim to come by and clarify things though, it’s good to get feel more educated on the topic.

  4. kim says:

    A`sad reality is that those who own ‘the press’ -own the information that gets distributed… Warner Bros is a giant, multi $$$$ media industry.
    We’ve become somewhat used to being re-victimized over and over again by otherwise well meaning people who think they know what the truth is. It’s still startling and dismaying to be trashed in this manner though.
    Our victimization started when we ‘told’ by a Warner lawyer that there was.. (then)… a band of superstars called ‘the wyrd sisters’ and that we had better be prepared to sign a piece of paper agreeing to allow their existence. This is when we asked to just have a credit put at the end of the movie. Ther was never, ever, any offer of $50,000.00, as was oft reported. The thing is- we don’t care about cartoon or imaginary book characters. They don’t get confused with us. A real live band with our name, however, would cause some problems…
    We read and heard many advertisements, articles and interviews about their wyrd sisters after being contacted by the Warner lawyers. We saw the blogs, fan sites, newspaper and tv articles about them. We asked to not be bowled over by this creation because we had put almost 20 years into our own band. We won’t bore you with more details except to say…
    -the reason they pulled some of the band from the movie, and introduced it as the ‘band which requires no introduction’ ( obviously) is because we brought the injunction…
    And there are no new lawsuits. This is all still part of the same,ongoing action.
    The biggest lesson in all of this is how helpless all of us are as ordinary citizens. We don’t have the same rights and laws and priviledges and those with wealth do. Try starting a film company called Warner brothers, and see how far you get….
    You all might also like to look into a magazine called ‘Adbusters’ to get a clearer picture of how reality is defined by the people who own the media, or check out the Canadian Action Party for another disturbing reality check.
    Thanks
    Kim
    the wyrd sisters… so far

  5. Penny says:

    I thought of the discworld book as well.

    I didn’t notice any band related t-shirts of any type in the fifth film, although they have plenty of knitted and crocheted tops to look at.

  6. ginchy says:

    I’m glad I’m not the only one who immediately thought of Discworld!

  7. Marnie says:

    I so wanted to side with the “little guy.” Personally, I think their arguments are baseless. If anything, they’d probably find a substantial increase in interest to their band. Yes, a couple confused people may have ended up at their concert, but, seriously, if there were any case at all, shouldn’t it have been taken up with J K Rawlings for using that name in her books? I definitely proclaim, shenanigans.

  8. j. says:

    Have any of you, ahem, geeks seen the movie, and is Tonks wearing that shirt?

    The main reason for the Canadian band’s problem with the Weird Sisters in the movie was because it was a musical group. One might think that a Pratchett-based movie or otherwise wouldn’t attract the same ire, unless the witches formed a band under the Wyrd Sisters name or something like that.

  9. Louiz says:

    There is a Wyrd Sisters animated series, which was shown on UK television, and I think there was a radio play of it too (the Pratchett version that is), and I think that came out in somewhere between 1997 and 2000.

  10. Shannon says:

    Sounds like someone who thought they could make a quick buck, but it backfired. Thanks for yet another interesting read!

  11. Jackie L. says:

    The Weird Sisters are referenced in the last chapter of the 5th book. Page 867 of the American paperback (yes, I’m a geek and just looked it up). Tonks (the new character with the colorful hair if you’ve seen the newest movie) is wearing a tshirt bearing the name of the band in the book. She is one of the witches/wizards that meets Harry as he gets off the train to return home to his aunt and uncle’s house. Other than that, I don’t believe that the 5th book has any references to the band.

  12. minnie says:

    oy. whiny babies

  13. JulieT says:

    There is a character (Tonks) in the fifth book who has a fondness for Wyrd Sisters tee shirts. I’m sure it’s be easily enough avoided in the movie, but it’s too bad. The character is a hoot and the tee shirts just add to the image.

    I’m not that big a Harry Potter fan. Really. It’s that I like mythology.

    Really.

  14. j. says:

    Well, the band claims a date of first use of its name at least as early as 1990. Wossname published his Wyrd Sisters in 1988…

  15. JulieB says:

    Am I the only one inclined to believe that they stole their name from Terry Pratchett? I shudder to think what would happen if they ever made a movie based on his Wyrd Sisters!