'Back to the Future' DeLorean haunts film studio with trademark gain
Rights owner of Back to the Future car wins claim that film studio NBCUniversal infringed its trademarks | California judge finds no grounds for breach of contract between the pair but suggests further opportunity for DeLorean Estate to prove infringement at trial.
The DeLorean Motor Company has won its claim that NBCUniversal Media infringed its trademark and trade dress rights to the famous car used in the Back to the Future trilogy.
In an order filed in a California court yesterday, February 22, US District Judge David Carter ruled that NBCU had infringed DeLorean’s trademarks rights, in merchandise, at Universal Studios’ theme parks and in film tie-ins such as Ready Player One.
The media and entertainment giant did gain a small win, though, as Carter part-granted its motion for summary judgment that DeLorean lacked standing to claim that NBCU broke a pivotal 1989 contract between the pair, because the deceased carmaker’s estate did not transfer the contract to the film studio.
The DeLorean Estate sued the media and entertainment giant in 2022 in a Lanham Act claim for breach of contract and accounting, and trademark and trade dress infringement of the iconic DeLorean DMC-12 car.
But the dispute goes even further back in time.
Propelling success
In 1985, NBCU released the Steven Spielberg-directed film Back to the Future, followed by sequels Back to the Future II in 1989, and Back to the Future III in 1990.
The DeLorean DMC-12, famous for its gull-wing doors, was transformed into a time machine used in the trilogy in which the main characters—Marty McFly (Michael J Fox) and Dr Brown (Christopher Lloyd)—travel back to 1955.
But McFly meets his parents and must go ‘back to the future’ to halt rewriting his fate.
The films’ popularity propelled NBCU’s continuous distribution of the films and use of the modified DeLorean DMC-12 since 1985 in various media, advertising, and the sale of merchandise including apparel, art, books, games, media, novelties, collectibles, prop replicas, and toys.
Pivotal 1989 and 2015 agreements
An agreement was reached in 1989 between John DeLorean (late founder of the eponymous motor company) and film studios Amblin Entertainment (co-founded by Spielberg) and a subsidiary of NBCU.
This granted the subsidiary (Universal Pictures, a division of Universal City Studios, and predecessor-in-interest to Universal City Studios) the rights to the name, logo, and appearance of the DeLorean vehicle for use in “merchandising and commercial tie-up[s]” in connection with the Back to the Future film series.
But in 2014, following John DeLorean’s death, his estate sued NBCU, alleging that its trademarks infringed upon the DeLorean Estate’s rights.
The two parties settled in 2015, in which the DeLorean Estate acknowledged NBCU’s trademark rights. The Estate claims that these rights were limited to being based upon its registration of the estate’s marks.
NBCU, meanwhile, claims that the agreement also referred to common law trademark rights such that the DeLorean Estate acknowledged NBCU’s trademarks and right to use the DeLorean brand, along with associated products and services.
The settlement agreement, however, does not refer to the 1989 Agreement or state that any rights under the 1989 Agreement were assigned or transferred, according to the court order.
A series of to and fro ensued, featuring a complaint filed by DeLorean against NBCU in 2018, and the involvement of the Third Circuit, before the current case heard at the US District Court for the Central District of California, Southern Division.
In his February 22 order, Judge Carter suggested that the DeLorean Motor Company could prove at trial that NBCU created consumer confusion and infringed its trademarks.
The case is DeLorean Motor Co v NBCUniversal Media, No. 8:22-cv-02189.
Counsel for the DeLorean Estate is Roger Behle, Jr, a partner at Foley Bezek Behle & Curtis.
Counsel for NBCU has not yet appeared.
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