The Lawsuit Over Sarah Winchester’s Mystery House
Once upon a time in Connecticut, there lived a girl named Sarah, known as the “Belle of New Haven.” Little did she know that her future home in San Jose, California would one day be the subject of a trademark and unfair competition lawsuit 88 years after her death. It all started when she married William Wirt Winchester in 1862. William was the son of Oliver Fisher Winchester who was Lieutenant Governor of Connecticut and manufacturer of the famous Winchester rifle. Sadly, Sarah and William’s infant daughter, Annie, died from a mysterious childhood disease in 1866. Then, tragically, William died from tuberculosis 15 years later. Due to the untimely deaths of her daughter and husband, Sarah Winchester fell into a deep depression.
Sarah sought guidance from a Boston medium, who explained that Sarah’s family was being targeted by spirits of American Indians, Civil War soldiers and others killed by the Winchester family’s rifles. The only way that Sarah could avoid her own death, according to the medium, was to move west and build a home for all of the spirits. The catch was that Sarah could never stop construction or else her life would be in danger. Thus, in 1884, Sarah purchased an unfinished farm house outside of San Jose and renovated the house 24 hours per day, seven days per week for 38 years until she died in 1922. By the time of her death, her home had seven stories, 160 rooms, 40 bedrooms, two basements, two ballrooms, 10,000 window panes, 2,000 doors, 47 staircases, 47 fireplaces, 17 chimneys, and six kitchens. There were staircases that rose to nowhere, doors that opened into walls, secret passages, hidden rooms, and the most elaborate furnishings. For 33 years, Sarah Winchester had one craftsman build, install and tear up the floors. The home’s construction sprawled across six acres of her 161-acre estate.
Sarah Winchester used the number 13 to ward off the evil spirits that threatened her life. The home had 13 bathrooms, 13 windows in the 13th bathroom, 13 hooks in the Séance Room, 13 steps on many of the staircases, 13 holes in the sink drain covers, 13 gas jets on the Ballroom chandelier, and she even had 13 parts in her Last Will and Testament, which she signed 13 times.
Sarah was able to afford all of these construction expenses, which totaled $5.5 million (equivalent to $71 million in 2010), because she inherited $20 million and owned nearly 50% of her husband’s company, Winchester Repeating Arms Company, earning about $1,000 per day during a time when there were no income taxes.
Sarah Winchester died on September 5, 1922 from heart failure while sleeping. While she left all of her personal property to her niece, she made no mention of her mansion or farm in her will. The estate was sold for a measly $135,000 due to the damage caused by a 1906 earthquake and is now owned by Winchester Mystery House LLC. Removing the furnishings from the home required six moving trucks over the course of six weeks.
In 2008, Winchester Mystery House granted Imagination Design Works Incorporated the exclusive rights to use the estate, as well as certain trademarks and copyrights relating to its history for filming and producing a movie.
In 2009, Winchester Mystery House received an email from Global Asylum Incorporated’s production coordinator requesting filming location rates for use of the estate. Winchester Mystery House responded that it recently made an agreement giving another company exclusive rights, but Global Asylum created its low budget film, “Haunting of Winchester House,” anyway. The film was based on Sarah Winchester’s life and mansion, but the DVD jacket displayed a photo of a different house and the phrase “Winchester Mystery House” was never mentioned.
Winchester Mystery House timely sued Global Asylum for trademark infringement, unfair competition, intentional interference with contractual relations, and interference with economic advantage and prospective economic advantage. The trademark infringement claim alleged that Global Asylum’s use of “Winchester House” and the depiction of a Victorian-style mansion confused the public in leading them to believe that Winchester Mystery House associated itself with Global Asylum. The unfair competition claim alleged that Global Asylum intentionally and unlawfully exploited Winchester Mystery House’s trademarks and consumer goodwill for its own benefit, which would also create public confusion. The trial court granted Global Asylum summary judgment on all claims.
Winchester Mystery House appealed, claiming that Global Asylum had no First Amendment defense. In balancing the public interest in avoiding consumer confusion and the public interest in free expression, the Court of Appeal of California Sixth Appellate District applied the Rogers test put forward by the Second Circuit in 1989. The first prong of the Rogers test requires that the title is artistically relevant to the content of the film, a low threshold to meet. The court found that the title, “Haunting of Winchester House,” and the Victorian-style mansion on the DVD jacket to have some artistic relevance to the underlying work, even though the story includes fictional aspects into the historical legend. Thus, the court found that Global Asylum prevailed on the first prong of the Rogers test.
The court also held that Global Asylum satisfied the second prong of the test, as the title and cover art do not explicitly mislead the public as to the source or content of the work. Winchester Mystery House argued that the court failed to incorporate the likelihood of confusion test into the second prong of the Rogers test, which would require the court to consider eight factors when determining whether the marks are sufficiently similar that confusion can be expected: the strength of the mark; the relatedness of the goods; the similarity of the mark; the evidence of actual confusion; the marketing channels used; the type of goods and the likely degree of care by the purchaser; the defendant’s intent in selecting the mark; and the likelihood of expansion of the product lines. However, since Winchester Mystery House did not plead related facts and failed to raise the issue before the trial court, the issue was forfeited. The court affirmed the trial court’s decision, concluding that there was no infringement of Winchester Mystery House’s trademarks by Global Asylum nor unfair competition.
Even though the Winchester Mystery House lost its trademark infringement suit, at least “Haunting Winchester House” went straight to DVD in 2009, and Imagination Design Works Inc.’s movie is expected to be a great success as it is working alongside Hammer, an Exclusive Media company, and Nine/8 Entertainment.
