;
Image: Deus Ex Machina

A teen drama film starring Yara Shahidi and Charles Melton is at the center of a new lawsuit filed by an Australian motorcycle brand, which is accusing Metro-Goldwyn-Mayer (“MGM”) and Warner Bros. Entertainment of running afoul of federal trademark law. In a newly-initiated lawsuit, Deus Ex Machina (“DEM”) claims that the Hollywood film studios included a jacket bearing the words “Deus Ex Machina” on the back in the 2019 film “The Sun Is Also a Star” – and trailer – without licensing the federally-registered mark. 

According to its complaint, which was filed in a federal court in California on May 29, DEM alleges that in “The Sun Is Also a Star” film and trailer, which were “jointly produced, marketed, distributed and released” by MGM and Warner Bros., Shahidi wears “a blue and rustic gold bomber jacket with the words ‘DEUS EX MACHINA’ inscribed in the back in large letters.” 

DEM claims that MGM and Warner Bros.’s use of its trademark, which translates to “god from the machine,” amounts to infringement, as the use of an “inferior infringing product” is likely to confuse consumers into believing that it is in some way affiliated with or has endorsed the jacket (and potentially, its use in the film) when it has not done so. 

More than that, DEM asserts that it “has spent almost 14 years creating a very specific brand image and reputation” as the “maker of custom motorcycle parts and hand-built motorcycles” and as a purveyor of “quality in stylish streetwear in a broad range of global markets,” from Australia to California, where it maintains a retail outpost, and that reputation is at odds with “The Sun Is Also a Star.”

By using a jacket that bears its trademark – for which it has maintained a registration in the U.S. since 2011, specifically for use on clothing, including jackets – but that it did not make and did not approve, DEM claims that MGM and Warner Bros. are associating it “with a schmaltzy teen-style love story, [which is] totally inconsistent with the brand image that it has built.” Additionally, DEM notes that in addition to being off-brand, the “The Sun Is Also a Star” was a “flop” and a “box-office failure,” thereby, making such an unauthorized affiliation even worse. 

DEM jacket (left) & the jacket used in the film (right) – images via @design_law

Interestingly, while DEM claims that MGM and Warner Bros. “have authorized copies of the jacket” – which it describes as coming in a “style and coloring of the jacket is not consistent with and/or is inferior to what most consumer and motorcycle enthusiasts would associate with a motorcycle lifestyle consistent with [its] trademark” – to be sold by way of other companies’ e-commerce websites, the company points to the use of the trademark on the jacket in the film and trailer as the core infringing activity.  

Finally, DEM takes issue with the fact that “the lead actor in the movie, Charles Melton … posed for pictures posted to social media to help promote the movie in which he wore clothing actually sold by Deus Ex Machina,” which served to further “create the impression that Deus Ex Machina was involved in promoting the movie and that the use of inferior infringing products and references in the movie to DEUS EX MACHINA were authorized by [DEM].” 

As a result of such “wrongfully and repeated use” of its mark by MGM and Warner Bros. “without fair compensation,” and after allegedly seeking to resolve the matter behind the scene  (“In a July 12, 2019 letter, intellectual property counsel for MGM advised [DEM] that MGM disagreed with [its contention that the movie and the trailer infringed [its] trademark rights.”), DEM sets forth claims of trademark infringement and dilution, and unfair competition, and is seeking injunctive relief and monetary damages. 

The case is certainly an interesting one given that it centers on the use of a trademark within an expressive work (i.e., a movie), which means that in order to determine whether the use of DEM’s mark on a jacket in the film is infringing or not, the court will balance “the public interest in avoiding consumer confusion” with “the public interest in free expression.” Chances are, the court would find that the use of the mark on a jacket in the film is not meant to associate the film with DEM’s goods and/or its brand as a whole, and this would likely not be a violation of federal trademark law.

As for the trademark dilution claim, that is likely a non-starter as well, as the Trademark Dilution Revision Act only provides protection for famous marks, or marks that are “widely recognized by the general consuming public of the United States as designation[s] of source.” And as Sarah Burstein, a professor at the University of Oklahoma College of Law, aptly noted in connection with the complaint, DEM “definitely not famous enough for [such] protection.”

*The case is Deus Ex Machina Motorcycles Pty., Ltd. v. Metro-Goldwyn-Mayer Inc. and Warner Bros. Entertainment Inc., 2:20-cv-04822 (C.D.Cal.).