Desilu Studios Files Trademark Infringement Complaint Against CBS in California Federal Court

By Steve Brachmann
April 14, 2018

Lucille Ball’s wax figure in Madame Tussaud’s museum in New York.

On Monday, April 9th, Manhattan Beach, CA-based entity Desilu Studios, Inc., filed a complaint alleging trademark infringement and other claims against New York City-based television and film production firm CBS Studios. The complaint, filed in the Central District of California, asks the court to declare Desilu Studios the correct owner of trademarks covering the use of the Desilu trademark, first coined by famed TV stars Lucille Ball and Desi Arnaz.

As Desilu Studios’ complaint notes, the term “Desilu” was first coined by Ball and Arnaz back in 1950 and they used that name for the couple’s production company Desilu Productions. Around 1967, Desilu Productions and its television library was acquired by Gulf & Western Industries, the parent company of Paramount Pictures. Although Paramount ceased operation of Desilu Productions at the end of 1967, Paramount continued to file trademark applications for the “Desilu” mark through 2001. Between 1997 and 2001, Paramount filed 16 trademark applications to cover the “Desilu” mark but each application was abandoned before being used in interstate commerce.

Near the end of 2005, Desilu Studios alleges that Paramount entered into a transaction with CBS Studios to transfer the rights of some television shows in the Desilu library. While CBS believed that the Paramount transaction transferred the rights to every trademark related to acquired shows such as I Love Lucy, Desilu Studios alleged that the agreement specifically excluded some television rights, did not involve the transfer of the rights to any feature films in the Desilu library, and did not result in CBS acquiring any federally registered trademark covering the “Desilu” mark.

Desilu Studios was found around 2013 by Charles Hensley, identified as an individual who “has successfully created and operated several large corporations” and who wanted to re-launch Desilu as a “technology-focused film and television studio.” In October 2016, filed a trademark application to cover the use of the standard character mark “DESILU” in conjunction with motion picture and television production and distribution. The application was published for opposition in March 2017 and no one opposed the mark.

Desilu alleges that the entity entered into discussions with Lucy Arnaz, the daughter of Ball and Arnaz, and her family. They allegedly were “excited about Desilu’s resurrection and potential to regain prominence, and gave Mr. Hensley the family’s blessing to continue with his efforts,” the complaint reads. After this initial positive reception, Desilu alleges that CBS contacted Lucy Arnaz and prohibited her from having further discussions with Desilu.

Desilu’s complaint includes five causes for action including declaratory relief that CBS possesses no common law trademark to the “Desilu” mark, federal trademark infringement, tortious interference with business contracts, unfair business practices in violation of California state law as well as an accounting of profits and other monies CBS owes to Desilu for infringement. Desilu seeks injunctive relief as well as treble and punitive damages at an amount to be proven at trial.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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