Tuesday, November 20, 2007

The Red Hot Chili Peppers Sue Showtime over “Californication”

I had a feeling that this one was coming. I have been an avid watcher of Showtime’s new series “Californication” since it first aired back in August. For those not familiar with the show, it stars David Duchovny as a middle-aged writer living in Los Angeles and coping with a mid-life crisis in his own mature-audiences-only way. The title “Californication” is most apropos -- combining fornication, which Duchovny’s character does a lot of in the series, with California, the geographical backdrop of the show. Of course, for anyone between the ages of 20 to 45, the show’s title also brings to mind the famous Red Hot Chili Peppers’ (“RHCP”) song “Californication” from their 1999 multi-platinum album of the same title.

New stories were abound today (e.g., here and here) reporting that on Monday, November 19, 2007, the four members of the RHCP filed a lawsuit in Los Angeles Superior Court against Showtime Networks, Inc., Twilight Time Films, Inc.; Aggressive Mediocrity, Inc., and Tom Kapinos (collectively “Showtime”) alleging false designation or orgin under Section 43(a) of the Lanham Act (15 USC §1125(a), unfair competition under California law, trademark dilution under federal and California law, and unjust enrichment arising from Showtime’s use of the name “Californication.” See Anthony Kiedis et al v. Showtime Networks, Inc. et al, Case No. BC 380894 (L.A. Super. Ct.). A copy of the complaint can be downloaded here (courtesy of Past Deadline Blog).

RHCP wants Showtime to stop using the name and is seeking treble damages and an accounting and disgorgement of profits made by Showtime while using the name. In a press statement (link here), the band’s lead singer, Anthony Kiedis, was quoted as saying “'Californication' is the signature CD, video and song of the band's career. For some TV show to come along and steal our identity is not right.”

Much of the complaint details the “extraordinary critical and commercial recognition” of both the “Californication” album and song. The album has sold over 14 million copies, received two Grammy nominations, was voted by “Rolling Stone” magazine as one of the Top 500 Albums of All Time, and has gone multi-platinum in over 35 countries worldwide. The song has been “legally” downloaded nearly half a million times in the last two years, has been played on domestic radio alone nearly 200,000 times, and received a Grammy nomination. The video for the song has been played over 1500 times in the U.S. alone and was voted by VH-1 as one of the 35th Greatest Videos of All Time.

One interesting part of the complaint is that not only does RHCP have a problem with the name of the show, but the group also has a problem with a “compilation CD” of music used on the show put out by Showtime. As such, when a search is done for the name “Californication” (in iTunes for example), this music compilation appears alongside the album and songs of RHCP.

RHCP is also fighting with Showtime in the USPTO over the title of the series. On April 10, 2007, Showtime filed a Section 1(b) application to register the mark CALIFORNICATION (for entertainment in the nature of an on-going comedy series). The mark was published for opposition on October 2nd. RHCP have filed an extension of time to file an opposition (link here) – currently due January 30, 2008.

There are a few obvious flaws with the complaint (nothing that a First Amended Complaint can’t fix – if this dispute goes that far). The second claim for relief is supposed to be for unfair competition under California law – but instead, the complaint copied and pasted the Lanham Act section – without changing the relevant cites. In addition, the complaint cites to Section 43(a) as the basis for federal dilution – rather than Section 43(c) of the Lanham Act. Furthermore, the language of the dilution seems to pattern the false designation of origin section rather than addressing the specific factors that must be proven under 15 U.S.C. §1125(c)(1).

Prediction #1: Confidential out-of-court settlement. In the RHCP’s favor – strong mark and likelihood of confusion. In Showtime’s favor – First Amendment and Fair Use.

The parties should just reach an amicable settlement and let the show’s creators (the lawsuit identifies Kapinos as the creator, writer and executive producer of the show) get back to creating what is arguably one of the best new shows on TV. “Californication” is to Showtime what “The Sopranos” was to HBO – a quality series with some themes, scenes, and dialogue that could not be aired on mainstream television, but which make you want to subscribe to the pay-channel just to watch.

And while it may be awkward to rename the show after such a stellar first season (the name encapsulates so much about the theme of the show), the writing is so good that you could call this show anything and it would be just as good (how about “The Showtime Adult Comedy Formerly Known as Californication”?).

Prediction #2: And the Golden Globe for Best Television Comedy goes to . . .


Anonymous said...

I wonder why did they waited until now,instead when the show aired or when the mark was filed back in April. Granted they could not oppose until October but perhaps they could have done something else. I was waiting for this time happen the first time I saw the show (and the character) Dani

Anonymous said...

Sadly, I have to do my Appellate Brief on this dog... such fun.