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Hooray for…Wellywood?

Posted in Trademarks

–Sharon Armstrong, Attorney

The Hollywood Chamber of Commerce, owner of the iconic HOLLYWOOD sign and numerous federal trademark registrations incorporating the stylized font used in the sign, is not amused with Wellington International Airport, which announced last week its plans to erect a WELLYWOOD sign “on an unused hillside that it hopes will become an iconic symbol of its prowess in the global film world.”

 

At the movies, New Zealand is probably best known as the location for Middle Earth, the world inhabited by hobbits, elves, orcs and other creatures both magical and nasty in the Lord of the Rings film series. Both the natural beauty of New Zealand and the talents of a mostly-Kiwi artistic team and crew were showcased in those films.

The Hollywood Chamber, which promotes Hollywood and licenses the HOLLYWOOD sign image for use on a variety of goods, including key chains and mugs, issued a statement explaining that they “are not without a sense of humor, nor without legal rights.  We hope that if the Wellington airport wants to mimic our Sign in this fashion, it will proceed in cooperation with us and will recognize that the holder of the rights to the Sign and the party responsible for its continued existence is a nonprofit entity that works hard to raise funds so that the Sign even exists to be mimicked.”

Fair enough, but one of the cardinal rules of trademark law is that rights are territorial. A quick search of the New Zealand trademark office shows that while numerous third parties own registrations incorporating the term HOLLYWOOD for a variety of goods and services, the Hollywood Chamber of Commerce does not own a registration in New Zealand for any goods or services. And there’s the issue of use – the HOLLYWOOD sign is used in only one (relatively) small and specific place, Mt. Lee. Mt. Lee is not in New Zealand. Mt. Lee is located far, far away from New Zealand, across the vast Pacific Ocean, in Los Angeles proper. Still, it is possible that licensed merchandise bearing the HOLLYWOOD sign is available for purchase in New Zealand.

It is also possible that New Zealand recognizes some form of the “famous marks” doctrine, sometimes known as the “well-known marks doctrine,” under which a foreign trademark holder may enjoy rights in a country in which the mark is not used but is rather well-known. As one of the iconic symbols of the glamour of California’s film industry, the HOLLYWOOD sign is undoubtedly well-known. Of course, just like trademark rights, my bar license and much of my knowledge of trademark law extends only to the borders of the United States (and its protectorates). Are there any Kiwi trademark attorneys out there who can weigh in on this?