Porn Studio Sues HTC

By: Maria Cheung

Vivid Entertainment, a porn studio, claims that HTC, the company that manufactures Android phones, has infringed its trademark in the name Vivid by using the mark for one of its newest smartphones, the HTC Vivid. Vivid Entertainment has threatened to sue the electronic company for trademark infringement and trademark dilution. It has most recently issued HTC a cease and desist letter on this matter.

Vivid Entertainment is a huge adult video producer and is a well known film studio in the porn industry. Reuters named Vivid Entertainment one of the leaders of the U.S. porn industry in 2006. The studio is known in the mainstream public for mainly disclosing the sex tapes of Paris Hilton and Kim Kardashian.  According to TMZ reports, Vivid Entertainment wants HTC to change the name of its smartphone this week or the tech manufacturer will face a trademark infringement lawsuit.

Attorney Mark Hoffman, for Vivid Entertainment states that the use of HTC’s Vivid trademark “creates the false impression that [HTC] and [HTC’s products] are affiliated, connected, or associated with and or sanctioned by Vivid Entertainment.”

The cease and desist letter states that HTC is using the Vivid marks in association with the sale of its wireless device, which is “built to entertain, with movies and shows” (this quoted language comes from HTC’s description of the HTC Vivid on its website). The letter then goes on to state that HTC’s use of the Vivid Marks is likely to cause confusion among consumers.

The HTC Vivid is the first 4G LTE smartphone on the AT&T Mobility network. The phone launched November 6 for $199.99 with a two-year contract. Representatives for HTC have declined to comment on this matter except to state “[w]e are reviewing the complaint and do not expect to have any further comment until it is resolved.”

Vivid Entertainment is not the first entity to have a problem with HTC for its phone names. After announcing the HTC ChaCha in February of this year, HTC discovered that “chacha” was a term of disparagement in the Spanish language. HTC then changed the phone’s name to the HTC ChaChaCha in Spain. Mobile search engine ChaCha was also unhappy with HTC’s choice of a phone name, and sued HTC for trademark infringement earlier this year

Although Vivid Entertainment does have at least sixteen registered trademarks on the word “Vivid,” for goods ranging from its adult entertainment website to guitars, skateboards and vodka, I do not believe Vivid Entertainment has a strong case. The most applicable trademark that Vivid Entertainment holds to this situation is Registration No. 3069383, which covers “Vivid” on “adult entertainment delivered via wireless devices.”  Although this helps the porn studio to establish some basis for a claim, there is simply no way a court would rule in Vivid Entertainment’s favor if this case ever goes to court. HTC is using a similar mark but I do not think it is very likely that consumers might mistake or confuse the Vivid Smartphone for the porn studio, nor do I think that consumers would assume the phone is somehow linked to the adult entertainment studio. It would also be difficult for Vivid Entertainment to prove trademark dilution by blurring because the porn studio would have to establish that there was an association arising from the similarity of the marks that impairs the distinctiveness of Vivid Entertainment’s mark. There are already at least 150 registered trademarks either using or incorporating the mark “Vivid.” This fact alone defeats Vivid Entertainment’s dilution claim and proves that “Vivid” is not a very distinct mark or used exclusively enough by the adult film studio to be diluted by a mark that is substantially similar. Furthermore, it might also be against public policy for a court to rule for a porn studio over a tech company.

It will be interesting to watch how HTC reacts to this issue. Would the tech company actually change the name of a phone that is already in the markets or simply settle with Vivid Entertainment? If the phone was yet to be launched, the company could have made last minute name changes before the phone hit retail shelves, but now that it has been on sale for almost a month, re-calling all the phones could turn into a logistical nightmare.

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