Case Briefs

Wham-O, Inc. v. Paramount Pictures Corp.

Case(s): Wham-O, Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254 (N.D. Cal. 2003)

On September 8, 2003, WHAM-O, Inc. filed a complaint against Paramount Production Corporation and Happy Madison Productions (collectively “defendants”) with the U.S. District Court for the Northern District of California, focusing on defendants’ use of a particular WHAM-O product in the film “Dickie Roberts: Former Child Star” (“the film”). 

WHAM-O, Inc. asserted three cases of action in its complaint: (1) infringement of a registered trademark in violation of section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); (2) unfair competition in violation of section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a); and (3) dilution of a registered trademark in violation of section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).

District Court Determination

With respect to tarnishment, the court used the Ninth Circuit’s four-part test, asking whether (1) the mark is famous; (2) defendant puts the mark to commercial use in commerce; (3) defendant puts the mark to use after the plaintiff’s mark became famous; and (4) there exists a likelihood of dilution of the distinctive value of the mark. The fourth prong may involve either blurring of the mark as a unique identifier, or tarnishment through a mark’s association with an inferior or offensive product or service. 

The court assumed satisfaction of the first three prongs, but found Paramount’s use of Wham-O’s marks did not plainly constitute dilution by either blurring or tarnishment.

With respect to the claim of trademark infringement, the court applied the three-part test for nominative fair use established by the Ninth Circuit in New Kids on the Block v. News America Publishing, Inc. In that case, the Ninth Circuit found that the defendant publishers, which had used the name of the pop group to identify the pop group itself within published polls measuring the popularity of the individual group members, were liable for infringement based on nominative fair use grounds. The test in the case consists of three prong: “First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” 

The court determined that the defendant’s use satisfied each prong of the New Kids test. It held that: (1) The defendant intended to refer to the specific product, and thus, it had to use the name of the product; (2) By naming the SLIP ‘N SLIDE water slide just two times in the movie, the defendant used no more of the mark than was reasonably necessary to identify the product; and (3) The defendant’s use did not suggest sponsorship or endorsement reasoning that the plaintiff’s mark was used by the defendant as a mere part of the jumble of imagery in the film, not highlighted to exploit the value of the mark itself, but to evoke associations to an iconic child’s toy.

Given that it found that Paramount’s use of the SLIP ‘N SLIDE mark was nominative fair use, the court determined that the plaintiff was not likely to succeed on the merits of its trademark infringement claims and denied its motion for preliminary injunction.