Court rules firm may have committed malicious prosecution by arguing trademark rights in Princess Diana name
Franklin Mint Company v. Manatt, Phelps & Phillips, LLP (2010) 184 Cal.App.4th 313
Court of Appeal says that the defendant lawfirm’s claims based on trademark rights in the name Princess Diana lacked probable cause under a malicious prosecution anaylsis because her name is so clearly descriptively associated with her as a person that the lawfirm should never have argued her name acted as a trademark for her charitable services.
Manatt, Phelps & Phillips (Manatt) represented the Diana Princess of Wales Memorial Fund in a suit agains the Franklin Mint. The Mint had produced Princess Diana collectibles with advertising that proceeds would be donated to Princess Diana charities. No donations were made to the Fund though donations were made to charities related to Princess Diana causes. The Fund alleged trademark rights in the name for charitable services. In this lawsuit, the Mint obtained summary judgment based on lack of trademark rights (claims based on the right of publicity were dismissed because the court applied Brittish law). The Mint was awarded attorneys fees because, in the trial court’s words, the claims were just short of frivolous.
The Mint then filed malicious prosecution claims against Manett in state court. The trial court entered judgment in favor of Manett finding that there was probable cause (the first element of a malicious prosecution case) for the first lawsuit. The Court of Appeal reversed and remanded for decision on the malice element of malicious prosecution.
The Court of Appeal did a thorough analysis of whether anyone could believe that Princess Diana’s name had acheived secondary meaning for her charitable services and found that her name is clearly descriptive of her as a person in the mind of the public and not as a trademark for charitable services. The court distinguished celebrity cases where a performer’s name had achieved secondary meaning for his/her entertainment services. Therefore, there was no probable cause to bring claims based on trademark rights in her name.
Justice Mosk dissented, arguing that even if the claims were highly unlikely to win, they were not completely untenable and that judgments such as this will hinder law firms from zealously advocating and from seeking to establish law in uncharted factual scenarios like these.
Note- this is a long opinion, analyzing in depth many parts of trademark law. Ultimately, the court said the complexity of the practice area is no defense against malicious prosecution allegations. Is this a real risk for trademark litigators going forward?