Theme Parks Have EVERMORE Trademark Rights Too

By Maria A. Savio

Taylor Swift’s new album, entitled “evermore,” has been heavily promoted and has received widespread acclaim since its release in December 2020.  Along with that promotion came substantial media coverage of a lawsuit filed by a theme park in the State of Utah using the mark EVERMORE to identify itself (the “Park”).  The complaint in the action was filed on February 2, 2021, and Taylor Swift’s formal response is not yet due, but the media echoes the position of Taylor Swift’s “team:” that the Park asserted a “frivolous and irresponsible claim.”   Taylor Swift’s team has painted the founder and CEO of the Park, Ken Bretschneider (“CEO”), as engaging in what they perceive to be a shakedown, claiming that his true intent in bringing the lawsuit should be inferred from the fact that the Park is on shaky financial ground due to the construction debts and liens it is facing.  To tarnish the reputation of the CEO, even details of who is owed money is being reported.  Clearly, the Taylor Swift team has gone on the offense.  The Park’s CEO is defending his position in the press, apparently explaining to Utah Business: “we are honest people who pay our bills, but we were placed into a deep financial hole, which we are working diligently to climb out of.”  Obviously, Covid restrictions throughout 2020 and into 2021 did not help.   The media universally also reports that team Swift dismisses the Park’s claim of damages to it and its trademark.  Swift’s team apparently takes the position that the Park has “suffered no damages whatsoever” and that the album’s release is, as the CEO reportedly acknowledged, a “marketing opportunity” for the troubled park.

Despite the reporting, the Complaint actually alleges a cogent and compelling case of “reverse trademark infringement.”  Under that doctrine, the second (junior) user to adopt a mark is liable for trademark infringement to the prior (senior) user and a likelihood of confusion exists when the second user’s adoption effectively overwhelms the uses of the prior user.  Put another way, the essence of a reverse confusion case is that the prior user, despite its trademark rights, will have its growth cut short by the actions of the second user or will have a shadow cast over it as a result of the second user’s use.  The second user might ultimately be deemed by the public as the “senior user” or the legitimate user, and the true prior user with valid prior and superior rights may or will come to be seen as the encroacher.

Generally, standard likelihood of confusion analysis applies to these kinds of cases, although the Federal appellate courts have recognized that a reverse confusion case is different than the classic case of confusion.  Most courts recognize the need to tweak the standard analysis.  This is because the type of confusion is different.  In the classic case, the junior user seeks to associate with the senior user, whereas in the reverse case, consumers might ultimately perceive the senior user as the “infringer” or the party who trades on the junior user’s mark.   The analysis in a classic case of infringement includes a review of the strength of the mark; the proximity or relatedness of the goods or services offered under the mark; the similarity of the marks; any evidence of actual confusion; the similarity of the sales, marketing and advertising channels used; the sophistication of the purchases, the type of goods/services and the degree of care likely to be exercised by the purchaser of the goods/services; the defendant’s intent in adopting the mark; and, assuming the goods or services are distinct, the likelihood of expansion of the business of the parties such as to make confusion more likely in the future.   For instance, the intent analysis in a reverse confusion case is quite different because usually intent to infringe is meaningful in a classic case, but the party adopting the junior mark does not generally look to gain anything from the senior user’s mark, rather the junior user saturates the market with its mark leaving the senior user in the dust.  As a result, the monetary remedies awarded in a reverse confusion case differ.  In the classic confusion case, one proves a plaintiff’s lost sales from the infringement or one looks at an infringer’s profit as a proximity for the lost sales.  With reverse confusion, the true harm is the loss of the prior user’s brand identity or essentially his/her trademark rights…so the proper measure of damages is the goodwill of the brand up until the harm.  Courts have also considered a reasonable royalty award in such cases, and have also ordered a second user to pay for corrective advertising to mitigate the harm and/or dispel the confusion.  The second’s user’s own advertising budget is often looked at to ascertain the award to be given to the prior user.

Ironically, the very first case to recognize the doctrine of reverse trademark confusion arose in the Tenth Circuit, the circuit that hears cases arising out of the Utah district courts, where this very case was lodged given the Park’s location in Utah.  In that case, Big-O Tire Dealers, Inc. vs. Goodyear Tire & Rubber Co., litigated in 1977, the jury initially awarded $2.8 million dollars to Big-O Tires, the prior user of the trademark BIG FOOT on tires, and while the award was later reduced to $680,000, it was significantly in excess of even the valuation of the Big-O business, which was $200,000 at the time.  Nowadays courts more carefully tailor the award to the value of the mark before it was diminished by the reverse confusion, but it could still be big money.

So is there anything to the Swift team’s defense that the case is frivolous and irresponsible? You be the judge.  The Park has plead, in relevant part, that:

  • They operate an immersive experience theme park featuring performers portraying fantasy characters who interact with guests.
  • The experience includes a wide variety of actors and musicians who facilitate the interactions
  • The Park’s creation and promotion has cost about 37 million dollars, of which 300,000 was used to purchase the domain name
  • The Park has attracted the interest of major entertainment studios, and they are in discussions to create other entertainment content including a TV show, video games, cards and board games, AR and VR experiences and music.
  • The Park owns 4 federal registrations of the mark EVERMORE, all registered prior to Tailor Swift’s adoption of “evermore” for her album, and clearly before any search could have been done, for “Entertainment services in the nature of live visual and audio performances by an actor; Entertainment services in the nature of augmented reality attractions; Providing theme park services,” for “amusement parks”, as well as for a variety of goods in the clothing class that are branded with the EVERMORE mark.
  • The Park claims ever broader common law rights including rights in the commissioned creation of two original music scores which are sold under the EVERMORE (PARK) trademark though a variety of outlets including Apple Music — a soundtrack of magical lore and a soundtrack of cursed lore — and rights in the use of the EVERMORE mark in connections with postcards, commemorative coins, pins, keychains and other such things often purchased by visitors of theme parks.
  • As might be helpful in a straight confusion case but not particularly important in a reverse confusion case, the Park noted that Taylor Swift described the released album in a manner that actually associated it with the Park, using terms like “escapism,” “imaginary tales,” “dreamscapes,” “epic tales….” These very terms had been associated with the Park in various magazines and news-letter type publications describing the Park.
  • Shortly after the release of the album, Taylor Swift also began offering “Evermore Merch” which consisted of clothing items much like the items offered by the Park.
  • The Park pointed out that Taylor Swift’s evermore album is available through the same outlet as the Park’s own recorded music, namely Apple Music, among others.
  • The Park also pointed out the Taylor Swift, with the release of the album, filed 8 federal applications, all for the trademark TAYLOR SWIFT EVERMORE ALBUM, for a variety of goods and services.
  • The Park corroborated their allegations that Taylor Swift knew of the Park and its trademark rights prior to the adoption of “evermore.” They even asserted that the imagery in a Swift music video copied the “tree logo” used by the Park.
  • The Park alleged instances of actual confusion, claiming that Evermore Park visitors asked the staff if the evermore album was the result of a collaboration between the Park and Taylor Swift or some other type of relationship.
  • The Park asserted that their website experienced a 330% increase in traffic on the day the album was released, but that the deluge of online information about the album has crowded out material about the Park. In fact, the Park’s Google ranking, which was high before the release of the album, is now relegated to the bottom of the second page.

Oddly, while well-plead, the Complaint only contains a trademark infringement claim under 15 U.S.C. §1114, a common law trademark infringement claim and a common law unfair competition claims which provides relief for federally registered marks.  Missing is a claim for relief under 15 U.S.C. §1125(a), which proscribes false and fraudulent associations, for both registered and unregistered “indicia,” which would be a very valuable claim given the facts alleged.

While Taylor’s Swift’s counsel’s considered letter which responded to the cease and desist letter is an exhibit to the Complaint and provides a legal window to the defense – and indeed to the offense strategy — that will be mounted by the litigant in the position of a Goliath, it should be clear to anyone that the Complaint is hardly frivolous and irresponsible.  A classic “reverse confusion” case will be litigated unless the parties reach settlement.

One big takeaway from litigations of this type is never to discount earlier rights, especially when parties have gone through the effort of federally registering those rights.  If your use is junior and will be such that it could eclipse the use of the prior user, it is best to reach an agreement with the senior rights holder before the use starts.  The entertainment area, especially in the Internet age and given wide use of social media, requires extra attention.