Dueling ANNE OF GREEN GABLES Musicals Head to Court

Theater fans are used to seeing multiple shows with the same name. Kate Hamill's adaptation of PRIDE & PREJUDICE is widely produced, but new adaptations of the novel pop up consistently with the same name. And we all know about the dueling WILD PARTYs. This seems normal--the underlying properties are in the public domain, meaning there is no need to license the source material. So, from that perspective, it would seem like multiple musicals could utilize the ANNE OF GREEN GABLES moniker. Yet the producer of ANNE OF GREEN GABLES: A NEW MUSICAL has felt the need to go to court to ask the court to declare the show legally entitled to keep its name.

The situation is a bit bizarre. Concord Theatricals licenses a musical ANNE OF GREEN GABLES - THE MUSICAL (which I'll call ANNE 1) featuring a book by Donald Harron and music by Norman Campbell. Prior to the pandemic, ANNE 1 was produced at the Charlottetown Festival on Prince Edward Island every summer since 1965. In 1971, it had a run at New York's City Center, and has had scattered productions elsewhere in the US, Canada and overseas.

ANNE OF GREEN GABLES: A NEW MUSICAL (ANNE 2, for short) premiered at the Finger Lakes Music Theatre Festival in 2018 and ran at Goodspeed Musicals last year. It has book and lyrics by Matte O'Brien and music by Matt Vinson.

ANNE 1 has the approval of the Anne of Green Gables Licensing Authority Inc., which is partially owned by the heirs of original author L.M. Montgomery. While the underlying ANNE OF GREEN GABLES is now in the public domain and therefore the source material no longer has copyright protection, Anne of Green Gables Licensing Authority trademarked the name ANNE OF GREEN GABLES to be used with a variety of goods, including tote bags, scarves and live performance. What does this mean? While a copyright protects an original work, trademark protects a mark that identifies goods or services. Basically, you generally cannot trademark simply a name, but you can trademark a name that becomes linked with a good or service.

Anne of Green Gables Licensing Authority has registered trademarks for both ANNE OF GREEN GABLES for live performance and ANNE OF GREEN GABLES - THE MUSICAL (which bears a "TM" on the Concord website). This means they have a legal presumption--which is rebuttable--of ownership and the exclusive right to use the marks in connection with live performance. According to the complaint filed by Anne With An E, Limited Liability Company, producer of ANNE 2 (which has so far only sought $1 million in a capital raise), Anne of Green Gables Licensing Authority started threatening Anne With An E with trademark infringement litigation if they didn't cease using the name ANNE OF GREEN GABLES: A NEW MUSICAL. ANNE 2 beat them to it, filing suit to preemptively ask the court to find that its title does not infringe on anyone's trademark rights.

"The licensing organization is saying: 'Hey, no, we actually own a trademark in Anne of Green Gables and your use of Anne of Green Gables in the title of your play is too similar to our trademark and people are likely to think you're associated or sponsored by us," explained Katy Basile, a partner at Reed Smith who specializes in trademark law, when asked to put the issues in simple terms. "The new play company is basically saying: 'No, we are simply putting on a play based upon this book and we're using the name in the title. It's the title of our play. It's not trademark use. We have a First Amendment right to say this and no one is likely to think we are associated with this other company who is selling all this other stuff.'"

This will be an interesting one and will likely impact the trajectory of ANNE 2. The musical is being prepped for Broadway and the team likely brought this action rather than have the threat of a lawsuit hanging over its head.

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