Following the shooting death of Carlos Munoz Portal — a Narcos location scout killed on the job in a violent region in central Mexico — Netflix must contend with an ongoing trademark dispute with the family of Pablo Escobar.
On Monday, Roberto De Jesus Escobar Gaviria, brother of the infamous Colombian drug kingpin whose rise and fall are dramatized by the Netflix series, spoke with The Hollywood Reporter about the security for crew of the series, suggesting that the Narcos producers would benefit from providing “hit men to their people as security.”
Escobar’s 71-year-old brother also threatened to “close their little show” if Netflix failed to provide a $1-billion payment to his company, Escobar Inc., for intellectual property violations.
“Netflix are scared,” he said. “They sent us a long letter to threaten us.”
THR obtained that letter, prepared and sent on July 27 by Los Angeles firm Sheppard, Mullin, Richter & Hampton LLP.
Lawyers for Narcos Productions, LLC (NPL), the company behind the Netflix series and popular video game spinoff Narcos: Cartel Wars, contend that without NPL’s “knowledge or consent, on Aug. 20, 2016, Escobar filed use-based applications to register the marks NARCOS and CARTEL WARS with the [U.S. Patent and Trademark Office] covering a range of goods and services.”
Those services include everything from “downloadable ringtones” to “temporary tattoos, bookmarks and sheet music,” according to the trademark application documents included with the letter.
The letter calls the claims “fraudulent.”
“For example,” NPL lawyer Jill M. Pietrini writes, “Escobar claims that it has used NARCOS in connection with things like ‘operating a website’ and ‘game services provided online from a computer network’ since Jan. 31, 1986. However, the internet had not been developed for widespread consumer use in 1986, nor was the capability to provide audiovisual works nor game services available at that time.”
Pietrini goes on to say that the example used by Escobar for the trademark application “appears to be either from NPL’s advertising or, at the very least, an infringing artwork that infringes NPL’s copyrights in the Narcos Game.”
The lawyers for Netflix then threatened to retaliate by suing the Escobar family.
“The remedies available to NPL for Escobar’s use of the Narcos Marks include, but are not limited to, NPL’s actual damages, statutory damages, Escobar’s profits attributable to the unauthorized use of the NARCOS and CARTEL WARS marks, attorneys’ fees, a bar to registration of the NARCOS and CARTEL WARS trademarks, and a nationwide injunction against Escobar’s further use of the NARCOS and CARTEL WARS marks or any other mark confusingly similar to the Narcos Marks,” the letter reads.
In a subsequent email correspondence obtained by THR and dated Sept. 1, a lawyer for Escobar Inc. informs Escobar that he and Pietrini had a productive conversation about the claim.
“I floated the idea of paying you for an assignment or licence or release related to your pre-existing rights in the trademarks in certain categories,” the lawyer writes. “She seemed to see the logic of exploring those discussions. She is going to speak with her client and get back to me.”
Olof Gustafsson, the CEO of Escobar Inc., told THR that Netflix is beginning to take their threats seriously.
“At first, they refused to acknowledge us. After we registered all the trademarks and we’ve been granted some of them, they sent us a cease-and-desist letter. After that our attorneys and their attorneys have come to an agreement that basically they need to pay us something. Now it’s a matter of determining how much that something is,” Gustafsson said.
He adds, “At the end of the day, if we don’t take a deal, then we own the trademarks. They would have to rebrand their entire show. They know this. This is why they’re talking to us. Otherwise, they would never entertain any discussions with a drug cartel family.”
This Netflix dispute follows another with the organizers of a Stranger Things-themed pop-up bar named The Upside Down in Chicago.
Netflix sent The Upside Down a cease-and-desist letter, dated Aug. 23, requesting that the space be closed after its six-week run. Rather than a stale, intimidating form letter, Netflix had a little fun with this one.
—With a file from Chris Jancelewicz