The Anne of Green Gables Licensing Authority is accusing a New York theater production company of trademark infringement for producing a show titled ‘Anne of Green Gables – The Musical.’ Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog.

Watch this episode on the Weintraub YouTube channel here.

Cases Discussed:

• Anne With An E, Limited Liability Company v. Anne of Green Gables Licensing Authority Inc.
  
• Hermes v. Rothschild
  

Show Notes:

Scott:
Copyrights have a finite lifespan and after the copyright term expires the works fall into the public domain. That’s not the case with trademarks which can last indefinitely. Anne of Green Gables was a children’s book originally published in 1908. This means that the work is now in the public domain. However, Anne of Green Gables Licensing Authority owns various trademarks for Anne of Green Gables. What happens when the right to create a musical interpretation of the public domain work and use Anne of Green Gables in the title runs headlong into the trademarks owned by the Licensing Authority. Are the producers who created a new musical interpretation of Anne of Green Gables, actually prohibited from using the name of the work in the title of the musical. We are going to talk about this on the next installment of the briefing by the IP law blog

Scott:
Anne With An E, LLC is a New York theatrical production company that is developing the musical, ‘Anne of Green Gables: A New Musical,’ based on the Public Domain Novel, ‘Anne of Green Gables’ by L.M. Montgomery. The musical features new original dialogue or book and music.

Anne of Green Gables Licensing Authority is a Canadian corporation, jointly owned by the Province of Prince Edward Island (the location where the original novel took place) and the Heirs of the books author. Apparently, this entity claims to be the sole licensing agent for the trademark ANNE OF GREEN GABLES in the United States and abroad and claim to have licensed the use of the ANNE OF GREEN GABLES trademark in connection with a musical production, titled, ‘Anne of Green Gables: The Musical’ which has been continuously produced since 1965.

Apparently, Anne of Green Gables Licensing Authority has been threatening Anne with an E with a potential trademark infringement claim ever since Anne with an E mounted its first production in 2018 and apparently in December 2022, escalated the situation by also sending a draft copy of a complaint. Anne with an E filed a complaint for declaratory relief with the Southern District of NY in February of this year,

Josh:

I can understand Anne of Green Gables Licensing Authority obtaining a trademark registration for ancillary merch but how did they get a trademark registration for the musical. That would be the title of a single artistic work which is not protectable as a trademark.

Scott:

That’s correct. The trademark examiner assigned to the trademark application refused to register the mark on that basis many, many times. The applicant tried to argue that the mark is used in association with a number of different productions, all of which are based upon the

same general of the public domain work, but, all of which are different. The examiner cited to the TTAB decision in In re Posthuma, provides that where the mark identifies the title of a live theater production, such a theatrical production is a single creative work even if individual performances may have some variations. Eventually the applicant pointed to various different productions, produced by different production companies, each with a book and different lyrics and arguing that this makes them more like a series then a single work.

Josh:
And apparently the trademark examiner accepted this argument because the mark because registered.

Scott:

That’s right. I see a problem with this. The Licensing Authority didn’t claim that the other productions using the title ‘Anne of Green Gables: The Musical’ made use of the title was under their authority, thus failing to meet the use in commerce requirement that it be the applicant who uses the mark

Josh:
And if the registration is revoked, then the basis of its trademark suit goes away.

Scott:

That’s right. But still. I think this goes back to one of the reasons why trademark rights are not recognized in a single work of authorship. When a work falls into the public domain, others would have the right to reproduce the literary work. However, if the title to the work enjoyed trademark protection, this would compromise the policy of public domain under copyright law because a book with a trademarked title could only be published only under a different title.

Josh:
And I can see that applying the Rogers test might not provide immediate relief. While the first prong, artistic relevance, is satisfied, but the second prong… whether the use explicitly misleads as to the source or the content of the work might not be so easy to overcome, especially in the 2nd Circuit where they apply the Polaroid factors to determine this factor.

Scott:

Right, the question for that factor would be whether the likelihood of confusion here was.  “particularly compelling to outweigh the First Amendment interest recognized in Rogers. And, as we saw in the Metaberkin case, this probably isn’t a question that can be resolved on a motion to dismiss.

Josh:
Courts will protect the title of works that have acquired secondary meaning through the common law unfair competition claims of passion off and misappropriation. And while the original book may have acquired secondary meaning, despite the long running nature of the original musical, it’s hard to say whether it, the original musical, acquired secondary meaning in its title.