Originally published in the December 2010 issue.
In November, Imax Corporation’s Therese Andrade called more than 30 IMAX theaters to warn them that participating in the Giant Screen Cinema Association’s new “Bigger. Bolder. Better.” marketing program might violate the terms of their IMAX system leases. According to several theater representatives who spoke with LF Examiner, Andrade, who is vice president of sales, and not a lawyer, suggested in the calls that the GSCA’s trademarked tagline and “Certified Giant Screen” logos were “unapproved third-party trademarks.” Andrade did not specify what actions the company proposed to take in response to the program, leaving most recipients of the calls puzzled and uncertain how to proceed.
The BBB program was launched by the GSCA at its conference in Chattanooga in September (see LF Examiner, October 2010) and has been adopted by 30 theaters to date. Developed over the past 18 months, the program is intended to “differentiate the giant-screen experience and support members in their efforts to communicate and market that differentiation.” It features the market-tested tagline “Bigger. Bolder. Better.” and “Certified Giant Screen” logos to advise consumers that the theater meets the association’s criteria for giant screens. The logos and tagline can be used on internal signage, print ads, rack cards, Web sites, and other locations.
After theaters began receiving the warnings from Imax, the GSCA issued a statement saying that it had gone to “tremendous lengths to be certain that the program preserved the integrity of one of our members’ most valuable features — the IMAX brand — and consulted many interested parties, including Imax.” It added that legal counsel had been sought on the program’s trademarks.
The statement concluded, “GSCA believes that all giant screen theaters offer a premium, immersive movie experience, and we created our certification and marketing programs to help our members succeed by clearly communicating one of their theater’s unique differences. Because the GSCA Board of Directors believes the program will bring welcome added value to all of its member theaters, manufacturers, producers, and service providers, we will continue to promote the Certified Giant Screen and ‘Bigger. Bolder. Better.’ trademarks and provide the supporting program materials.”
Imax’s Andrade is a member of the GSCA board and was involved with the BBB program at every step of its development. Members of the GSCA board met directly with Imax executives about the program on more than one occasion.
Several theater operators who spoke with LFX expressed the opinion that Imax was using the implicit threat of a lawsuit to prevent them from highlighting — accurately and truthfully — the differences between their giant-screen film theaters and the smaller IMAX digital theaters that have sprung up in multiplexes near them in the past few years.
If so, the tactic seems to have worked in at least a few cases. The GSCA has posted a map showing BBB members on its Web site, and at least six theaters that were listed there before the calls have since asked to be removed from the site.
Many of the other participating theaters told LFX that they would wait for advice from counsel before implementing or going further with the BBB program. Several who had asked Imax to put its concerns in writing said they had not yet received a letter, more than a month after the first calls.
As this issue went to press, a check of the Web sites of the 30 current participants found five that were displaying the Certified Giant Screen logo, although several others told LF Examiner they were using it internally.
In an interview with LFX, Rob Lister, Imax’s senior executive vice president and general counsel, explained that trademark holders have a duty and right to prevent the weakening of their marks, and that the company had three specific concerns about the BBB tagline and Certified Giant Screen logos, based on trademark case law:
Confusion. Since the marks may appear on IMAX and non-IMAX theaters, consumers could see non-IMAX presentations of lesser quality and assume they were representative of IMAX presentations.
Consistency. The function of a trademark is to consistently identify the source of a product or service. The use of the BBB marks by some IMAX theaters and not by others could weaken the consistency of the IMAX brand.
Distinctiveness. The purpose of a trademark is to help consumers distinguish one company’s goods or services from another’s. Lister said Imax was concerned about possible “damage to the distinctiveness and goodwill of the IMAX brand if consumers are no longer able to distinguish between IMAX theaters and non-IMAX theaters from a quality standpoint if both of them are tagged with the same [BBB] brand.”
Lister said that the company’s obligation and authority to protect the brand arises from U.S. trademark law, and that its contracts with theaters allow it to “impose reasonable quality control measures” on their use of its brand.
Asked why these concerns hadn’t been raised in the nearly two years that the program had been under development, Lister claimed that Imax had “consistently express[ed] its concern” about it, and said didn’t believe the GSCA board could have gotten the impression that Imax had “endorsed” it or considered it as “anything other than problematic.” (Lister did not attend any of the meetings in question. Mary Ruby, Imax’s senior vice president for legal affairs, took part in at least one.)
He told LFX, “As a general matter we’re extremely reluctant to get involved in legal disputes with the trade association or especially with our individual licensees. I don’t think we ever wanted to ratchet it up to the point where we suggested we would take legal action. But we were consistent all along with expressing concern with regard to the [BBB] mark, even if that concern didn’t rise to the level of citing specific legal or contractual language.”
Lister said the decision to have Andrade call the theaters had been his, to make the approach more personal. “To send legal letters around to people leaves a bad taste in people’s mouths.” He said that those who had asked for details in writing should have received them.
On the question of screen size that is at the heart of the dispute, Lister repeated the official Imax line that there is no single characteristic that defines “The IMAX Experience,” but suggested that a new marketing campaign the company is developing would address the concerns that led to the development of the BBB program. He didn’t provide details or say when the campaign would be announced, but said “this situation has been an impetus to working a little bit harder on it and trying to roll it out a little bit quicker.”
Lister declined to speculate on what actions the company might take with theaters that continue to use the BBB marks, but stated flatly that, from Imax’s standpoint, “the unauthorized use of third-party trademarks cannot happen.”