MJ Estate and HTWF settles on the day of trial.
Estate send this statement
Press reports on TMZ and other media sites regarding the settlement terms between the Michael Jackson Estate and the Heal the World defendants are wrong. The Estate is taking back the Heal the World Foundation and all of the Michael Jackson trademarks it allegedly owned. The Michael Jackson Estate owns the Heal the World name, and neither Melissa Johnson nor her companies will ever be able to use Michael Jackson's name or the Heal the World name.
This is my post about the settlement.
Actually let's do a brain storming, starting by remembering the claims in the actual case and see what happened.
Count 1 : Trademark infringement (for unauthorized use of "Michael Jackson" mark)
win for estate , they got all the trademarks back
Count 2: Unfair competition and false designation of origin (using these trademarks create confusion or deceive people to believe these items HTWF sell are connected or associated with Michael Jackson and MJ Estate)
win for estate, they got the trademarks and Melissa Johnson, her companies and Mann cannot use them anymore
Count 3: Trademark infringement and unfair competition under CA Law (for using the trademarks in commerce)
win for estate , see above explanation
Count 4: Violation of right of publicity (the unauthorized use of Michael's name , image and likeliness).
win for estate, as they took over HTWF and any use of Michael's name image and likeliness will be under their control
Count 5: Cancellation of registered trademarks (Heal the World, Heal the World Foundation, HTWF)
win for estate as they got all the trademarks
Count 6: Cancellation of registered trademarks (MJ)
win for estate, as they got all the trademarks
Count 7: Cyber squatting (Domain names)
domain names aren't reported so we don't know this one
1 - Stop using any word, image, symbol associated or referencing Michael Jackson
win for estate, as they control the trademarks and Michael's image, name, likeliness
2- Correction of the records of California Secretary of State, California Franchise Board, California Attorney General's Office, Internal Revenue Service
win for estate, as they take over HTWF they can correct any wrong information themselves
Why settle ?
Go again and read the counts did MJ Estate tried to close down the charity? No they didn't. They just tried to get the "Heal the World" name back.
Here we have to remember the preliminary injunction decision of the judge, let's do direct quotes first
"With respect to healtheworld.us, and healtheworldfoundation.net, Plaintiff Triumph is notlikely to prove the bad faith element. As Plaintiff concedes, at the time Defendant HTWF registered these sites, Plaintiff’s registration in the “Heal the World” marks had expired due to the popularity of the song. Thus, Defendant HTWF may reasonably have believed that its use of the phrase was fair use. Moreover, Defendant HTWF actually succeeded in registering this mark, which, as Plaintiff elsewhere argues, establishes prima facie evidence of Defendant’s intellectual property rights in that mark. Plaintiff argues that “it is the nature of Defendants’ use of the marks that is problematic"
"Notwithstanding the foregoing, Defendants are not enjoined from using the mark HEAL THE WORLD"
In a simplified fashion during the preliminary injunction the judge agreed with everything the Estate asked for except "Heal the World" as it became fair use due to trademark expiring due to popularity of the song.
If at the end of the trial the judge decided same way and let Melissa Johnson to keep the Heal the World name we would have her continuing the charity (without mentioning Michael and selling Michael branded products) in the future (probably with Katherine and MJ's kids). Wouldn't you say the confusion would remain among the general public?
So as you can see the advantage of a settlement for the Estate is making sure that they get "Heal The World" name for sure and control of charity (something they didn't ask for at all). So it's a extra plus for them.
Why would Melissa Johnson settle?
It's just assumptions here (as we don't know the confidential details) but most probably as the Estate is getting the trademarks (and perhaps even the domain names as well) they will most probably reimburse her for the costs of such registrations.
Estate agreeing to keep Heal the World alive could be a motivation as well.
and if she's allowed to be a part of the new charity that's also a plus for her.
So as you can see Estate probably got more than they wanted as they were able to get not only the Trademarks but the future control of HTWF and Johnson is probably better off by possibly getting reimbursed for her expenses and still being a part of the charity.