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Mutant X Articles: 8/21/01 Fox files new motions/appeals

Zap 2 It 8/21/01

20th Century Fox Continues the Fight Against 'Mutant X'
Tuesday, August 21, 2001 10:00 PM PT

Twentieth Century Fox isn't ready to give up the fight over "Mutant X." The studio filed new motions Tuesday (Aug. 21) in court seeking to prevent Tribune Entertainment (a branch of the company that owns from using "Mutant X" as the title for an upcoming syndicated action series, according to Variety.

Fox's move comes more than a week after a U.S. District Court judge ruled that Tribune's use of the title violated Fox's rights. Despite the judge's ruling, he did not force Tribune Entertainment to change the title. Fox says it had the option of seeking a permanent injunction or monetary damages if Tribune continued to use the it.

In the first suit, the studio had sued "Mutant X" producers Tribune, Marvel Enterprises and Fireworks Entertainment, arguing that the series bore more than a passing resemblance to its 2000 "X-Men" movie. Fox had also filed an injunction calling for the court to halt production on the series, which the judge turned down.

"Fox is confident that it will ultimately prevail," says the studio said in a statement.

Tribune execs were unavailable for comment. "Mutant X" launches the week of Oct. 1.

© Zap 2 It

Comics 2 Film 8/23/01

Reported By Comics2Film, 8/23/2001:
Two weeks ago, New York District Court Judge Allen Schwartz ruled on the lawsuits filed by 20th Century Fox, Tribune Entertainment and Marvel. The suits centered on the dispute over the upcoming Mutant X TV show, which Fox feels violates their rights to develop live-action X-Men properties.

Schwartz ruling's did not prohibit Tribune and Marvel from going forward with the show, but it id allow Fox to pursue monetary damages against the show's producers. At the time, Ted Russell, Fox's VP of litigation threatened, "If Tribune and Marvel decide to use the title Mutant X, they do so at their own peril."

Now Variety reports that Fox is making good on the threats and is filing a new motion to prevent Tribune from using the Mutant X title.

Fox's new action, filed on Tuesday, includes another motion for injunction and a motion of an expedited appeal in the 2nd U.S. Circuit Court of Appeals.

"Fox is confident that it will ultimately prevail," the studio said in a statement.

© Comics 2 Film

Mediaweek 10/1/01

Mutant X's Muted Launch
By Daniel Frankel Date: Monday, October 1 2001

The Oct. 6 premiere of Tribune Entertainment's new weekly action hour, Mutant X, has been disrupted by an ongoing intellectual property suit filed by Twentieth Century Fox.

Like Tribune's action/sci-fi series Andromeda, which premiered last year with an impressive 4.3 household rating, Mutant X is produced by Canada's Fireworks Entertainment and has been given choice time periods on Tribune stations. For example, Tribune's WPIX- TV in New York is airing Mutant X at 7 p.m. on Saturdays, the same slot used to successfully launch Andromeda last season.

However, Fox claims the Marvel Comics–in-spired Mutant X too closely resembles its recently released Marvel Comics–inspired feature film X-Men. In August, the studio failed to convince a federal judge in a U.S District Court in New York to stop the series' premiere, but Fox has since filed an appeal with the Second Circuit Court, seeking to at least change the name of the show. A ruling is pending.

Regardless of whether Fox succeeds, the litigation has already caused Tribune and Fireworks officials to limit promotions for the most-anticipated new action hour this fall. Citing concern over the litigation, officials for both Tribune and Fireworks refused interview requests concerning Mutant X's premiere.

Meanwhile, after staging an elaborate presentation last summer for Andromeda at the Television Critics Association tour, Tribune officials didn't attend this year's event.

"It's been really hard to get feedback from Tribune [about Mutant X]," said Laura Caraccioli, vp and director of Starcom Entertainment. "There are a lot of people out there who are really looking forward to it, but [Tribune] has not given us anything yet that would give us an indication of what the show will look like."

Immersed in the aftermath of the Sept. 11 terrorist attacks, Betty Ellen Berlamino, general manager of WPIX, said concern about Mutant X's future has been muted among Tribune station execs. She did, however, see the premiere episode of Mutant X last week. "It looked good," Berlamino said.

© Mediaweek

Comics 2 Film 9/5/01

Reported By Variety, 9/5/2001:
Variety reported an update in the ongoing struggle between 20th Century Fox, Tribune Entertainment and Marvel Entertainment over the Mutant X TV show. Judges Jon O. Newman, Guido Calabresi and Robert D. Sack of the Second Circuit Court of Appeals in New York denied Fox's request to bar the producers of the show from using the Mutant X title until the court hears an appeal on the studio's previously denied injunction.

The court did grant the studio an expedited appeal and ordered the parties to file briefs later this month.

Fox has taken issue with the show, which they feel is positioned as a spin-off of the X-Men movie franchise. Tribune has carefully maintained that the show is unrelated to X-Men despite a number of similarities between the two concepts.

Last month New York District Court Judge Allen Schwartz ruled on the studio's lawsuit against the show's producers. The ruling did not prevent Tribune and Marvel from going forward with the show or using the title, but it did open the door for Fox to pursue further action.

The show is set to debut in syndication next month.

© Comics 2 Film 1/15/02

Court restores Fox claim in 'Mutant X' suit: Unfair competition claim reinstated by circuit court

Fox scored a partial victory Monday in its suit against Marvel Enterprises and Tribune Entertainment Co. when a federal appeals court reinstated its unfair competition claim over the popular "Mutant-X" cable series. The court, however, declined to grant an injunction.
Fox acquired the rights to make its extremely successful "X-Men" feature film from Marvel. Last summer, Fox sued after Marvel and producer Tribune launched the "Mutant X" series.

In its federal court suit in New York, Fox claimed breach of contract, copyright infringement and unfair competition because the series was marketed as the next installment of the "X-Men" movie feature. The trial court threw out Fox's unfair competition claim -- which has the potential of larger damages than the copyright claim -- and declined to enjoin production of the series.

On Monday, the Second Circuit Court of Appeals reinstated the unfair competition claim.

Fox exec VP Gary D. Roberts said, "We're thrilled that Tribune and Marvel are going to pay a price for the their outrageous behavior in this case."

In a statement, Tribune said: "Once again, we are gratified but not at all surprised to have received a highly favorable court ruling in the 'Mutant X' litigation instituted by 20th Century Fox. Just as did the District Court below, the Court of Appeals has rejected Fox's request for injunctive relief to keep the most successful new hour in syndication off the air."


IP Counselors: 3/4/02

MUTATING X-MEN: Twentieth Century Fox Film Corp. v. Marvel Enterprises, Inc. et al. (Second Circuit, January 14, 2002)

For those who were never a fourteen year old male, Marvel publishes comic books. It's X-Men series featured a group of young super-powered mutants led by Professor X, an older, super intelligent leader who sought to train his students and to protect them from a hostile society. In an October 19, 1993 agreement, Marvel licensed Fox for all rights in the X-Men to use, distribute, exploit, advertise, promote and publicize theatrical motion pictures based on the X-Men comic book series, including the X-Men characters and the X-Universe. Marvel reserved all television rights subject to a proviso critical to Fox's contract claim, that Marvel would not "produce, distribute or exploit or authorize the production, distribution or exploitation of any live-action motion picture" without Fox's consent. In 1999 Fox began shooting a motion picture entitled X-Men, which was released theatrically nationwide in 2000. The 14 year olds loved it and much money was drained from the Nation's piggy banks.

In November 1998 Marvel began publishing a comic book series called "Mutant X" which pictured, among other things, the brother of one of the original X-Men characters. In the summer of 2000 Marvel developed a live action television series called Mutant X involving characters that were the product of genetic splicing experiments gone awry. Fox sued for breach of contract and for misleading the public to believe that the Mutant X TV series was associated with the Fox film. To IP attorneys, the claims of interest were for false designations of origin under Section 43(a) of the Lanham Act, copyright infringement and common law unfair competition.

The present appeal deals with a number of issues, including a contract action. We will confine our discussion to those of interest to the IP attorney. Thus with regard to the contract term we will only note that each side presented markedly different views of the effects of the TV series. Fox indicated that it would unfavorable impact the market for potential sequels to the X-Men movie while Marvel claimed that the TV series would widen the audience for X-Men characters and increased the values of Fox's Film.

The Second Circuit confirmed the District Court's finding that any damage could be fully compensated for by money judgement and that is the equities way against halting a TV series not being aired because of alleged injury to a film's sequel that is, at best, in the planning stage. The Second Circuit found that Fox, as Marvel's licensee, had no goodwill of its own in the X-Men property. Absent goodwill, the Lanham Act claim would not have a basis. Fox also complained about any attempt to link the Mutant X TV series to the X-Men movies, to indicate that Fox might have produced the TV series, i.e., the Mutant X series is a spinoff of the X-Men movies. However, since the advertising campaign complained of has been completed there was no need for the preliminary injunction.

The decision can be viewed at:;case;017983

Ladas & Parry 5/02

United States - Standing of Licensee to Sue Licensor for False Advertising and Disparagement

In Twentieth Century Fox Film Corp. v. Marvel Enterprises, Inc. et al., the Second Circuit Court of Appeals held that a licensee has standing to assert a claim against its licensor for false advertising, but not a claim for false designation of origin.

Twentieth Century Fox (Fox) had licensed from Marvel the right to produce a motion picture based on Marvel’s X-Men comic strip series. The resulting film X-Men was released in 2000 and grossed more than $290 million in theaters. When Marvel subsequently entered into an agreement with other parties to produce a related television series called Mutant X, Fox brought suit. The district court denied Fox’s motion for a preliminary injunction on its breach of contract claim and dismissed Fox’s claims for false advertising and false designation of origin under Lanham Act §43(a).

The Second Circuit affirmed the denial of a preliminary injunction, noting that any damage to Fox could be remedied with a monetary award and that Fox’s possible future production of an X-Men film sequel did not justify enjoining a television series already in production. The appellate court then turned its attention to the dismissal of the Lanham Act claims.

The court upheld the dismissal of Fox’s claim for alleged false designation of origin, reasoning that the “origin” of both the television series and the film is the licensor, Marvel. Thus, Fox, as a mere licensee, could not claim impairment of any goodwill in the X-Men property. The Second Circuit, however, found that Fox had standing to pursue its claim against Marvel for falsely advertising the Mutant X television series as a “spin-off” of the“X-Men movie”. Noting that Lanham Act §43(a) does not preclude all actions by a licensee against its licensor (such as where the licensor makes false claims to promote a competing product or falsely disparages the licensee’s product), the court concluded that there is “no reason why a false advertising claim may not be brought by a licensee just because the alleged violator is the licensor”.

In reaching this conclusion, the Second Circuit cited the important distinction between Fox’s claims for false designation of origin and false advertising. Marvel’s suggestion of a link between the television series and the movie, the court noted, constitutes false advertising. Such linkage does not, however, falsely suggest that the television series originated with Fox, as would be the case, for example, if Marvel affirmatively represented that the series was produced by Fox.

© Ladas & Parry LLP

Excerpt from Edgar Online 11/6/02

Item 1. Legal Proceedings

The Company is a party to certain legal actions described below. In addition, the Company is involved in various other legal proceedings and claims incident to the normal conduct of its business. Although it is impossible to predict the outcome of any outstanding legal proceeding and there can be no assurances, the Company believes that its legal proceedings and claims (including those described below), individually and in the aggregate, are not likely to have a material adverse effect on its financial condition, results of operations or cash flows.

X-Men Litigation.

In April 2001, Twentieth Century Fox Film Corporation sued Marvel, Tribune Entertainment Co., Fireworks Communications, Inc. and Fireworks Television (US), Inc. in the United States District Court, Southern District of New York, seeking an injunction and damages for alleged breach of the 1993 X-Men movie license, unfair competition, copyright infringement and tortuous interference with the contract arising from the Mutant X television show being produced by Tribune and Fireworks under license from Marvel which was released in the fall of 2001. On the same day Fox filed the foregoing suit, Marvel commenced an action against Fox in the same court seeking a declaratory judgment that the license of the Mutant X title and certain Marvel characters did not breach the 1993 X-Men movie license with Fox. Both suits were consolidated. On August 9, 2001, in response to Fox's motion for a preliminary injunction and defendants' motion to dismiss Fox's claims, the Court (i) granted the motion to dismiss all of Fox's claims except for its breach of contract and copyright claims and (ii) granted Fox's motion for a preliminary injunction but only as to the defendants' use of (a) video clips from the X-Men film and/or trailer in order to promote the new Mutant X series and (b) a logo that is substantially similar to the logo used by Fox in connection with the X-Men film. The preliminary injunction will not have a significant effect on the Company's operations. In January 2002, the United States Appeals Court for the Second Circuit, in response to Fox's appeal, affirmed the District Court's denial of Fox's motion for a preliminary injunction to prevent the airing of the Mutant X series and remanded the case to the District Court for further proceedings consistent with its opinion. At the present time, the parties are engaged in pre-trial discovery with a trial on the merits anticipated in Spring 2003.

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