## Facts

- Plaintiffs held rights in the famous motion picture *The Bridge on the River Kwai* and asserted trademark rights in the film title and the term “River Kwai” as used in motion picture titles.
- Defendant Kurt Unger acquired rights to a nonfiction book about Allied POWs forced to build a wartime railroad in Southeast Asia.
- Unger developed an unreleased film titled *Return from the River Kwai* and registered that title with the Motion Picture Association of America.
- In developing the screenplay, Unger added story elements intended to connect the new film to *The Bridge on the River Kwai*, despite the source book having no plot connection to that film.
- Plaintiffs objected to the title as implying an authorized sequel or affiliation and sent cease-and-desist communications before any U.S. release.
- Plaintiffs sued under § 43(a) of the Lanham Act, New York’s dilution statute, and related common-law theories, seeking a permanent injunction barring use of “River Kwai” (and confusingly similar titles) in connection with defendants’ film in the United States.
- After a bench trial, the court resolved liability and permanent injunctive relief.

## Issues

1. Whether the title *The Bridge on the River Kwai* and the term “River Kwai” (in the context of motion picture titles) were protectable marks.
2. Whether the title *Return from the River Kwai* created a likelihood of confusion as to source, sponsorship, approval, or affiliation under Lanham Act § 43(a).
3. Whether defendants’ proposed use would dilute the distinctive quality of plaintiffs’ mark or injure business reputation under N.Y. Gen. Bus. Law § 360-l.
4. Whether a permanent injunction barring use of “River Kwai” (and confusingly similar titles) was warranted.

## Decision

- The court found plaintiffs possessed protectable trademark rights in the film title and in “River Kwai” as a motion picture title element due to acquired distinctiveness/secondary meaning.
- The court held defendants’ use of *Return from the River Kwai* was likely to cause confusion as to sponsorship or affiliation.
- The court held defendants’ proposed use also violated New York’s dilution statute by blurring the strong association between “River Kwai” and plaintiffs’ film and by risking reputational harm.
- The court permanently enjoined defendants from releasing, distributing, or advertising the film in the United States under *Return from the River Kwai* or under any title containing “River Kwai” or other confusingly similar terms.

## Legal Principles

- A motion picture title can function as a protectable mark when it has acquired secondary meaning identifying a single source in the public mind.
- A component phrase within a famous title (including a geographic term) may be protectable in the motion picture context when consumers associate that phrase with a particular film/source.
- Likelihood of confusion under Lanham Act § 43(a) may be shown where titles share dominant elements, the works are competing entertainment products, and the junior user’s choices suggest an intent to signal association (including sequel-type positioning).
- Evidence that a defendant sought to trade on the goodwill of a well-known work supports findings of likely confusion and unfair competition.
- Under N.Y. Gen. Bus. Law § 360-l, a highly distinctive and well-known mark may be protected against dilution by blurring and against injury to business reputation, even without proof of consumer confusion.
- Permanent injunctive relief is appropriate where confusion/dilution threatens goodwill and reputation and damages are difficult to measure; an injunction may bar the infringing title while leaving defendants free to release the work under a nonconfusing title.

## Conclusion

After a bench trial, the court held that plaintiffs’ rights in *The Bridge on the River Kwai* extended to “River Kwai” as a source-identifying title element for motion pictures, that defendants’ proposed title *Return from the River Kwai* would likely confuse consumers and dilute plaintiffs’ mark under New York law, and it permanently enjoined use of “River Kwai” (or confusingly similar titles) for defendants’ film in the United States.


Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339 (S.D.N.Y. 1998)