British Broadcasting Corporation Protects High-Profile Trademark Against Infringement

Glaser Weil’s IP team secured a significant victory for the British Broadcasting Corporation (BBC) and related entities in a pair of trademark infringement lawsuits concerning the Primetime Emmy-winning television show Dancing With the Stars

Eight years after the 2005 premier of Dancing With the Stars, The Stander Group—a California-based talent agency—hired for their Ballroom with a Twist live touring show former Dancing With the Stars dancers, advertised their participation with the Dancing With the Stars logo, and used distinctive elements of the Dancing With the Stars trademarks within logos and promotional materials. The BBC entities claimed that this pattern of conduct was designed to create a false association between Dancing With the Stars and the Defendants’ live touring show.

The Stander Group failed to respond to cease and desist demands, so the Glaser Weil’s IP team filed a lawsuit on behalf of the BBC entities in the U.S. District Court for the Central District of California asserting trademark infringement, trademark dilution, unfair competition, and tortious interference. In response, The Stander Group asserted several contract and tort counterclaims.

Targeted Approach Paves the Way for a Favorable Resolution

After identifying key issues early on, Glaser Weil’s IP Team successfully brought a targeted summary judgment motion which resulted in an order affirming the validity of the Dancing With the Stars trademarks, resolving all counterclaims in Plaintiffs’ favor, and knocking out The Stander Group’s main affirmative defenses of genericness and abandonment. The summary judgment win paved the way for a swift and favorable resolution of both actions, including a permanent injunction and consent judgment against the Defendants.

During the pendency of the first litigation, The Stander Group began promoting their new show—Dancing With the Movies—using a logo that mirrored the design of the Dancing With the Stars logo. After The Stander Group refused to discontinue the use of Dancing With the Movies or similar variations to promote its new show, Glaser Weil’s IP Team filed a second lawsuit for trademark infringement and unfair competition on behalf of the BBC entities.

Courts Grants Summary Judgment in Favor of the BBC

In both suits The Stander Group defended its infringement by alleging the Dancing With the Stars trademarks had become generic and that the BBC entities had abandoned the marks. Following discovery in the first litigation, both sides filed cross motions for summary judgment. The Stander Group sought cancellation of the Dancing With the Stars trademarks, while the BBC entities moved for summary judgment in their favor as to all of The Stander Group’s counterclaims, and for dismissal of The Stander Group’s abandonment and genericness affirmative defenses. The Court granted summary judgment in favor of the BBC entities, finding the Dancing With the Stars trademarks valid and not generic, and dismissing The Stander Group’s counterclaims and key affirmative defenses, with prejudice.

Skillful Representation Results in Swift Victories

Building on their success at summary judgment, Glaser Weil’s IP Team successfully negotiated a complete resolution to both actions, which involved a favorable confidential settlement and a consent judgment and permanent injunction against The Stander Group. The consent judgment and permanent injunction enjoined The Stander Group from using the Dancing With the Stars trademarks or similar variations in any non-descriptive fashion, and from marketing its live shows in a manner that suggests any affiliation with Dancing With the Stars.

In both matters, Erica Van Loon, Head of Glaser Weil’s Copyright, Trademark and Media practice, along with Rex Hwang and Nicholas Huskins, skillfully represented Plaintiffs British Broadcasting Corporation, BBC Worldwide, and DWTS Productions. Glaser Weil’s IP Team is devoted to vigorously protecting and defending the intellectual property rights of all of our clients. We bring the same dedicated, thoughtful advocacy and innovative strategy to every intellectual property case.