No matter how tawdry the gay porn remake of “La Dolce Vita” may be, its producer appears to have some strong defenses to a trademark infringement case filed by the owner of the rights to the original Fellini classic.

“This case presents a paradigm of willfull trademark and coyright infringement,” International Media Films (IMF) says in a motion that requests a court order enjoining distribution of “Michael Lucas' La Dolce Vita.”

Lucas, a Russian immigrant formerly known as Andrei Treivas Bregman, produced and stars in the film, which has transposed the original from Rome to New York and allegedly features “numerous, extended, graphic depictions of sexual activity.” It was released in November 2006 as a two-DVD set.

IMF claims the title “La Dolce Vita” is a protectable trademark under common law and Lucas's film will damage the mark irreparably by “tarnishing the luster of the title.”

But courts have generally avoided applying trademark law protections to titles because of free-speech concerns. And Lucas contends he has sufficiently distinguished his work from Fellini's by, among other things, adding his own name to the original title.

“[T]here simply is no likelihood that anyone will be confused between our client's gay pornography and your client's 1960's art film,” Lucas lawyer Raymond R. Castello wrote counsel for IMF in a Jan. 18, 2007 letter.

IMF filed suit in February after Lucas refused to stop distributing his film. The complaint includes a “false designation of origin” claim alleging consumers will be deceived into believing IMF originated, sponsored or approved Lucas's remake.

In arguing for injunctive relief, the company's lawyers cite Dallas Cowboys Cheerleaders v. Pussycat Cinema, 604 F.2d 200 (1979), in which the 2nd U.S. Circuit Court of Appeals upheld an injunction on the distribution of the porn classic “Debbie Does Dallas.”

“Courts have recognized that tarnishment may occur when a mark's likeness is placed in the context of sexual activity,” IMF says.

But Dallas Cowboys is distinguishable since the NFL team objected not to the film's title, but to a scene in which Debbie engages in various sex acts while clothed or partially clothed in the cheerleaders' trademarked uniform.

Lucas should also be shielded from false origin liability since he is undeniably the producer of the remake and the U.S. Supreme Court has recently held that the phrase “origin of goods”

refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. Dastar Corp. v. Twentieth Century Fox Film, 39 U.S. 23 (2003)

As for copyright infringement, IMF alleges Lucas has copied protected material including the famous Trevi Fountain scene from Fellini's original. But Lucas says he is “entitled to quote from [the original], as doing so constitutes fair use under [the Copyright Act], and to transform and/or parody that work directly.”

Ironically, the distributors of another Fellini movie -- “Ginger and Fred” -- were the defendants in a seminal trademark case. Rogers v. Grimaldi, 875 F.2d 994 (1989), held that the title did not violate the rights of Ginger Rogers.

By Matthew Heller
3/31/07