Warner Bros. Wins Against Not-for-Profit that Used Harry Potter and Gilmore Girls Trademarks without Permission

By: Danielle Manahan

Using the characters, names, and other branding from the latest popular film or television show may sound like a fun and easy way to boost popularity for your own products, but it could get you into hot water. This mistake is how a non-profit based in Connecticut found itself facing off against Warner Bros. when it used names, logos, and other trademarks from the internationally renowned Harry Potter and Gilmore Girls to advertise its own events and merchandise.^[1]  

In this case, Random Tuesday, Inc., a non-profit organization hosting “fandom-themed virtual running events,”^[2] created and advertised Harry Potter-themed and Gilmore Girl-themed virtual running clubs, and sold branded merchandise such as t-shirts, water bottles, stickers, and socks.  Random Tuesday branded its “Hogwarts Running Club,” later called the “Potterhead Running Club,” with several images and designs taken directly from the Harry Potter films, often using the same colors, fonts, styles, and phrases as copyrighted imagery used by Warner Bros. The same was done for Random Tuesday’s “Chilton Running Club” using copyrighted clips and stills from Gilmore Girls.^[3] These infringing copies were used across the organization’s website and social media accounts, as well as on clothing and other products.^[4]

Warner Bros. argued that the organization was free-riding on the immense popularity of the film and book series and the television series and that, even though many of the names and phrases used were not exactly the same, they were still confusingly similar to Warner Bros.’ trademarks, creating a false impression that Random Tuesday’s business and products were endorsed or sponsored by Warner Bros.^[5]

Warner Bros. sought the fullest extent of damages, including actual damages for trademark infringement, statutory damages of up to $2 million per counterfeit mark, actual damages for copyright infringement or statutory damages up to $150,000 per infringed copyrighted work, and an order to pay Warner Bros. all profits.^[6] And based on a tentative ruling issued by the judge in the case, which stated that Random Tuesday’s works did not meet the level of transformative use needed for a ruling of fair use, a victory for Warner Bros. looked likely.

Ultimately, the parties settled the matter, and a permanent injunction was entered by the judge. The order bans Random Tuesday from registering or using in commerce any Harry Potter or Gilmore Girls trademarks, including variations and confusingly similar marks.^[7] Additionally, the order prohibits the reproduction, distribution, or display or any copyrighted Harry Potter or Gilmore Girls material in any manner.[8]

While associating your business with a popular film or show may sound like a good way to draw their fans to your customer base, the strategy may do more harm than good when you do so without the authorization of the rights holder. The risk of liability for use of others’ intellectual property may fall to the often tricky and complex question of whether the use is fair.

SLG has extensive experience advising clients on trademark, copyright, and fair use matters in advertising, marketing, social media, and branding contexts.  We would be happy to assist your company navigate these and other issues. For more information, please contact SLG at info@shelgroup.com.

[1]              Warner Bros. Entertainment v. Random Tuesday, Inc., First Amended Complaint at 5, 2:20-cv-02416-SB-PLA (C.D. Cal. 2020).

[2]              About Random Tuesday, Inc., Random Tuesday, Inc., https://fanthropy.org/about/ (last accessed June 21, 2022).

[3]              See First Am. Compl. at 47-48.

[4]              Id.

[5]              at 29-31.

[6]              Id. at 60-61.

[7]              Warner Bros. v. Random Tuesday, Judgement for Permanent Injunction at 4, 2:20-cv-02416-SB-PLA (C.D. Cal. 2020).

[8]              Id. at 5.