19 October 2016Trademarks

Simpsons voice actor brings ‘Spinal Tap’ TM action

Harry Shearer, known for voicing 23 characters on animated TV series “The Simpsons”, has filed a lawsuit against media conglomerate Vivendi over cult-classic film “This Is Spinal Tap”.

The complaint was  filed at the US District Court for the Central District of California on Monday, October 17.

Shearer co-created the 1984 film, co-wrote the soundtrack and starred as the Spinal Tap band’s bassist, Derek Smalls, according to the suit.

He is seeking a declaratory judgment of non-infringement of trademarks, along with $125 million in damages for anti-competitive and unfair business practices, as well as fraudulent accounting.

Embassy Pictures, Vivendi’s predecessor, filed a trademark application for ‘Spinal Tap’ with the US Patent and Trademark Office (USPTO) in 1984, but the mark was cancelled in 1991.

In early 2000, a Vivendi predecessor filed more applications for trademarks relating to ‘Spinal Tap’ and the rights to the marks were transferred to StudioCanal Imaging, another subsidiary.

According to the suit, the marks were abandoned and cancelled by the USPTO in 2011 and 2013.

Shearer claimed that as additional evidence of abandonment, the defendants didn’t oppose an application to register ‘Spinal Tap’ in connection with beer products that was filed by Heretic Brewing Company in 2013.

The filing said that despite the abandonment, “defendants have sought selectively to claim rights to the marks against plaintiff and other co-creators of the Spinal Tap band”.

It also alleged that the defendants have sought to prevent Shearer from performing, or selling merchandise, in association with the ‘Spinal Tap’ or ‘Derek  Smalls’ marks, unless they grant a licence and receive payment for such use.

Shearer has recently filed applications with the USPTO to register ‘Spinal Tap’ and ‘Derek Smalls’ for entertainment services and certain merchandise.

The suit claimed that there was a “substantial controversy” between the parties that has “sufficient immediacy and reality to warrant the issuance of a declaratory judgment”.

“This is a simple issue of artists’ rights,” said Shearer. “It is stunning that after all this time, two cinema releases, all the various home video format releases, all the records and CDs, and all the band-themed merchandise still widely available worldwide, the only people who haven’t shared Spinal Tap’s success are those who formed the band and created the film in the first place.”

He is seeking compensatory and punitive damages, costs, production of the original records of accounts, a declaration that his registration and use of the trademarks do not infringe, and a jury trial.

A spokesperson for Shearer said: “Shearer's representatives have informed Vivendi subsidiary Canal on numerous occasions of the existence of unlicensed items using the trademark and third party products branded in association with the film/band.

"Thousands of 'This Is Spinal Tap' branded items are offered for sale online, suggesting widespread infringement. Canal’s response has been to do next to nothing."

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