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9/23/2014
Source: Law360
 

Bath & Body, Summit Put A Stake In $300M 'Twilight' IP Row

A New York federal judge on Tuesday closed the $300 million case brought by Bath & Body Works Brand Management Inc. against Summit Entertainment LLC for noninfringement of Summit's "Twilight" trademark, saying he had been informed of a settlement between the parties.

U.S. District Judge George B. Daniels ordered the clerk of the court to close the case without prejudice in a one-page order. The terms of the settlement were not available in court documents, and attorneys for the parties did not immediately return a request for comment by Law360 on Tuesday.

Court documents show that Bath & Body Works filed objections to Summit’s proposed voir dire questions as recent as Sept. 15, indicating that the parties settled in the last week.

Bath & Body Works, which sells lotions, soaps and cosmetics, initially brought a declaratory judgment action against Summit in 2011, court records show. Bath & Body Works was looking to give itself the right to sell products with “Twilight” in the name.

Summit, which produced the blockbuster vampire movie series, fired back with a counterclaim, which the retailer then sought to have tossed, according to the docket.

In March, Judge Daniels refused to toss the suit, finding that Summit presented enough evidence to show that its trademarks and the recognizability of its name are very strong, enough to outweigh the retailer’s motion for summary judgment, according to the ruling.

He found that the personal-care products scented and labeled as “Twilight Woods” and “Twilight Crush” may infringe on Summit’s trademarked movie name, and determined that a jury should decide whether the products were labeled with that name to capture some of the movies’ success, according to the decision.

The film company claimed that Bath & Body Works moved to capitalize on the runaway success of its “Twilight” series of vampire movies, and that the beauty products have confused consumers. It wanted the retailer to turn over its profits associated with the Twilight products, a claim valued at $300 million.

Bath & Body Works maintained that the product names mirror others in its line, like Moonlight Path and Midnight Pomegranate, and that it has a registered trademark for the use of words in connection with cosmetics.

The company was seeking the right to brand some of its products under the name “Twilight Woods,” saying that the name was reached after market testing for “Tuscan Woods” resulted in too many customers mispronouncing the scent’s name, according to the suit.

Summit, meanwhile, contended that the Twilight-named scents were released in the wake of the first of the five Twilight movies. The film franchise went on to be one of the most successful of all time, the complaint says.

Bath & Body Works is represented by Dale M. Cendali, Sarah K. Tsou, Joshua L. Simmons, Mary C. Mazzello and Diana Torres of Kirkland & Ellis LLP.

Summit is represented by Jill M. Pietrini, Paul Bost and Theodore Max of Sheppard Mullin Richter & Hampton LLP.

The case is Bath & Body Works Brand Management Inc. v. Summit Entertainment LLC, case number 1:11-cv-01594, in the U.S. District Court for the Southern District of New York.

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