Sidestepping the Rogers two-step: clearing entertainment titles in a crowded social space

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A trademark practitioner seeking to clear an entertainment title for use in the United States will often find that the title has already been used, sometimes several times over – for example, an International Movie Database (IMDb) search for the title Restless displays 200 results. Beyond other entertainment titles, there are also considerations surrounding other similar marks for related goods and services. Add to that some uncertainty in recent case law and an overabundance of content on streaming services and social media – as well as more traditional television and film titles – and quite a challenge can arise. This chapter explores recent developments in US case law involving the balancing of First Amendment expression with Lanham Act trademark infringement claims in a media environment where new titles are proliferated daily through streaming platforms and social media.

For more than three decades, entertainment companies have relied on Rogers v Grimaldi to insulate themselves from Lanham Act claims when a mark or name is used in an entertainment title. In Rogers, Ginger Rogers sued the producers of a fictional film titled Ginger and Fred about aging Italian cabaret performers who imitated the famous dancing duo Ginger Rogers and Fred Astaire. The court in Rogers held that the Lanham Act did not apply to the use of celebrity names in a film title “unless [1] the title has no artistic relevance to the underlying work whatsoever, or, [2] if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work” (Rogers, paragraph 999).

Since then, courts expanded Rogers from celebrity names to all types of marks and applied the two-part balancing test to a variety of entertainment titles and content, including TV shows, books, paintings, songs and video games. In Twentieth Century Fox Television v Empire Distribution, Inc in 2017, the Ninth Circuit held that Rogers applied not only to the titles of expressive works, but also to consumer goods such as shirts and champagne glasses that bear the title of the artistic work.

In Empire, the music label Empire Distribution sued over the Fox TV series titled Empire, which portrayed a fictional hip hop music label named Empire Enterprises based in New York, and argued that Rogers did not apply to consumer goods branded with the series title. The court disagreed and said the “balance of First Amendment interests struck in Rogers . . . could be destabilised if the titles of expressive works were protected but could not be used to promote those works” (Empire, paragraph 1197). Thus, not only was the TV series held to not infringe Empire Distribution’s trademarks, but Fox’s promotional activities “auxiliary to the television show” also did not infringe.

Is the empire of Rogers coming to an end?

While the Ninth Circuit in Empire expanded the scope of Rogers beyond expressive works, US district courts in Colorado and Florida recently rejected the simplicity of the Rogers two-step balancing test. In Stouffer v National Geographic Partners, LLC, the court created and applied its own six-part test to dismiss infringement claims brought by the producers of the PBS TV series Wild America against National Geographic for its TV series titled Untamed Americas, America the Wild, Surviving Wild America and America’s Wild Frontier. The Colorado district court explained its rejection of Rogers by noting that other courts struggled “to assimilate unanticipated factual patterns into the Rogers test—factual patterns that raise legitimate concerns about whether Rogers tilts too far in favour of the junior user’s First Amendment interests” (Stouffer, paragraph 1140).

In MGFB Properties Inc v ViacomCBS Inc, the court found on summary judgment that the MTV Floribama Shore series did not infringe the FLORA-BAMA marks owned by a waterfront bar and entertainment venue located on the state line between Florida and Alabama. The court declined to apply Rogers to the title of a TV series, citing an exception for “misleading titles that are confusingly similar to other titles” because the plaintiff had licensed its FLORA-BAMA mark to Kenny Chesney for a song titled Flora-Bama and because artistic works were performed at the Flora-Bama venue (MGFB Properties Inc, footnote 6). Instead, the court applied the Eleventh Circuit’s seven-factor likelihood of confusion test after noting that “defendants would easily prevail on the Lanham Act claims” if the Rogers two-part test applied (MGFB Properties Inc, footnote 5).

More content, more titles, more risk

While these recent decisions questioned the continued applicability of the Rogers two-part test to entertainment titles, the volume of entertainment content and titles is growing exponentially as streaming platforms, including social media, allow anyone with a digital recording device and access to the internet to become a creator. The most recent figures show that, as at June 2022, IMDb contained 11 million titles, while YouTube reports that more than 500 hours of content are uploaded to its platform every minute and Twitch’s press centre says that its platform has as many as eight million unique creators streaming each month. The Second Annual Stitcher Report, published on 7 July 2021, shows the continued growth of podcasts, with more than 400,000 podcasts published in 2020. These statistics illustrate an endless stream of new titles as well as common law rights in marks used in series titles and channel names.

Content providers may find it nearly impossible to select a title that is not at least somewhat like either an existing entertainment title (as in the case of the National Geographic series) or an existing mark (as in the case of the MTV series). Even the most generic terms incorporated into a title can run the risk of a trademark infringement suit. For example, UFO Magazine Inc recently sued the Showtime Network Inc over the use of “UFO” in the title of a docuseries about unidentified flying objects – UFOs. Therefore, trademark practitioners must help clients successfully navigate when a title may be used without trademark infringement or without using the title in a manner that is misleading as to the source of the content.

While courts’ approaches to balancing First Amendment rights with trademark rights may be somewhat inconsistent, the outcome of these cases still heavily favours First Amendment artistic expressions. That said, practitioners may want to consider additional factors beyond Rogers when advising entertainment companies on the risks associated with adopting a particular title. For example, the multi-factored analysis applied in the Colorado decision requires an examination of the artistic motives of the party accused of infringement, while the Florida court’s approach requires a full likelihood of confusion analysis.

Rosa Parks and honey badgers care about gratuitous uses of names and marks

The Rogers test was designed to avoid the multi-factored likelihood of confusion analysis and, when Rogers applies, Lanham Act claims are frequently (but not always) dismissed at summary judgment. When Rogers does not apply, either because a title has no artistic relevance to the underlying work or the title is explicitly misleading as to the source of the content, then courts still apply the likelihood of confusion factors to determine if the entertainment title or content infringes an existing mark or otherwise violates the Lanham Act. When Rogers applies, courts are more likely to grant summary judgment.

Two examples where Rogers did not apply are the Parks v LaFace Records and Gordon v Drape Creative Inc cases. In Parks, the court reversed summary judgment for the defendant, record producer LaFace Records, for its use of “Rosa Parks” as the title of a rap song. The court held that civil rights icon Rosa Parks raised a genuine issue of material fact as to whether the use of her name as a song title and on an album cover was artistically relevant to the content of the song (ie, the first prong of the Rogers test) or “nothing more than a misleading advertisement for the sale of the song” (Parks, paragraph 458).

In Gordon, the court reversed summary judgment for the greeting card company Drape Creative for its use of comedian Christopher Gordon’s trademarks for his catchphrases “honey badger don’t care” and “honey badger don’t give a shit” used in popular YouTube videos. Gordon had registered HONEY BADGER DON’T CARE for a variety of merchandise, including greeting cards, and Drape Creative used slight variations of Gordon’s marks on its greeting cards. Gordon raised a genuine issue of material fact as to whether the use of a mark on a greeting card is explicitly misleading (ie, the second prong of the Rogers test).

Plaintiffs can’t fly away from or hide from Rogers at the pleading stage

The Colorado court in Stouffer referenced the Parks and Gordon decisions as examples for why Rogers should “not be adopted as is” because, even when Rogers applies, cases may still require discovery and summary judgment (Stouffer, paragraphs 1140–1141). However, other courts have applied Rogers to dismiss infringement claims brought against entertainment titles at the pleading stage (eg, under a Federal Rule 12(b)(6) motion to dismiss for failure to plead a viable claim).

For example, in Reflex Media Inc v Pilgrim Studios Inc, the plaintiff used Love at First Flight as the title of a web series that followed individuals travelling to a romantic getaway for a first date. The defendant adopted an identical title for its TV series featuring stories about travelling to go on dates. The court found that the complaint failed to allege that the defendant’s title was not artistically relevant to the work or that the title explicitly misled as to the source of the work. Thus, even in a situation where identical titles were used for conceptually similar content, a court found that Rogers required dismissal of the complaint.

Similarly, in Hidden City v ABC Inc, the plaintiff operated a journalism website titled ‘Hidden City Philadelphia’ that published news stories about Philadelphia, while the defendant produced a series of videos titled Hidden Philadelphia about visiting little-known places in Philadelphia. In dismissing the pleading, the court found that defendant’s title “easily meets the first element of the Rogers test” as a series about places in Philadelphia not commonly known to the public (Hidden City, footnote 4). On the second prong, the court listed several factors that warranted dismissal at the pleading state:

  • the titles were not identical;
  • the complaint did not allege that the plaintiff was affiliated with its videos; and
  • the videos appeared on an ABC website with the ABC logo.

Colorado court tames plaintiff’s trademark claims

A deeper analysis of the Stouffer case suggests that, although it rejected Rogers, the application of its own test is relatively similar. In Stouffer, the plaintiffs were the producers of the Wild America nature documentary series that ran on PBS from 1982 through 1996, with continued distribution through streaming platforms. They also own a registration for the WILD AMERICA mark for a TV series. After the plaintiffs denied National Geographic’s request to use Wild America as title for a nature series 2010, it went forward with four successive series titled Untamed Americas (2012), America the Wild (2013), Surviving Wild America (2014) and America’s Wild Frontier (2018) (Stouffer, paragraph 1139).

The Stouffer court criticised Rogers and Empire as tilting too far in favour of the junior user’s First Amendment rights. Instead, the court used the following six-factor balancing test that examines the junior user’s “artistic motives” in adopting the titles (Stouffer, paragraph 1140).

  1. Do the senior and junior users use the mark to identify the same kind, or a similar kind, of goods or services?
  2. To what extent has the junior user “added their own expressive content to the work beyond the mark itself”?
  3. Does the timing of the junior user’s use in any way suggest a motive to capitalise on the popularity of the senior user’s mark?
  4. In what way is the mark artistically related to the underlying work, service or product?
  5. Has the junior user made any statement to the public or engaged in any conduct known to the public that suggests a non-artistic motive? This would include “explicitly misleading” statements but is not confined to that definition.
  6. Has the junior user made any statement in private or engaged in any conduct in private that suggests a non-artistic motive?

Analysis of this test reveals that factors (4), (5) and (6) appear to apply Rogers by looking at artistic relevance and then exploring if the junior user has made any “explicitly misleading” statements publicly or privately that suggest a non-artistic motive. Therefore, despite announcing this new six-factor test, the court appeared to rely most heavily on artistic relevance when dismissing the complaint (Stouffer, paragraph 1145, internal citations omitted).

[T]he fact that National Geographic is using its titles to describe the content of the Accused Series weighs heavily in National Geographic’s favour. The choice of a title for one’s expressive creation is an expressive choice unto itself, including the choice of a descriptive title. Each of the Accused Series substantially focuses on America’s wildlands. While the English language is notably quite expansive, the range of words to describe such programming is limited. Yet Stouffer would not allow even a synonym for “wild” (i.e., “Untamed Americas”). If trademarked words themselves and their synonyms are off-limits, then the artistic choice regarding a title becomes significantly constricted.

In sum, although the Colorado court believes that the focus should be on the junior user’s motives, the application of the test appears to reach the same result as if the court had simply applied Rogers.

First Amendment dominates the Florida court’s likelihood of confusion analysis

Similar to Stouffer, while the MGFB Properties Inc court stated that Rogers did not apply to those facts, had the court applied Rogers, it would likely have come to the same conclusion. The MGFB Properties Inc decision adopted a rule that the Rogers test does not apply at all when “misleading titles are confusingly similar to other titles”, which is language that appears in a Rogers footnote (MGFB Properties Inc, footnote 3, quoting Rogers, paragraph 999, footnote 5). Moreover, the Florida district court seemed to struggle to even classify the MGFB’s use of its FLORA-BAMA mark as a title. Instead, the court appeared to rely upon the licensing of the mark for a song and that the entertainment events occur at the Flora-Bama bar. Nonetheless, the court held that Rogers did not apply but then analysed the trademark infringement claim with a shout-out to the First Amendment that tipped the balance in favour of the MTV series (MGFB Properties Inc, footnote 8).

The defendants have never depicted or even referred to the plaintiffs’ facility on the show. The graphic displays of the two marks are entirely dissimilar. Aside from their show’s title, the defendants have done nothing that comes close to trademark infringement.

This analysis looks suspiciously similar to the “explicitly misleading” language found in the second factor of the Rogers test.

Additional considerations when Rogers may not apply

Stouffer and MGFB Properties Inc suggest that a rote application of Rogers may be inadequate, at least in Colorado and Florida courts. Thus, a clearance opinion for an entertainment title should also consider the following.

  • Motive of the junior user: it is important to explore why a client selected a particular title and identify an “artistic motive” for the selection to explain why a use is not gratuitous.
  • Context of the use: the context of the use explores how consumers will encounter the title. For example, will the title ever be encountered apart from marks that identify the source, such as ABC in the Hidden City case or MTV in the MGFB Properties Inc case?
  • Distribution channels: is there any overlap in the distribution channels for the junior and senior user’s content?
  • Similarity of the content: distinguishing the junior user’s content from a senior user’s content is also important. Even if themes and concepts may be similar – as is often the case when titles are similar – there are often important differences.
  • Consumer perception: will consumers perceive the use of a mark or a name in a title as describing the content or will they perceive the use as creating a connection to the senior user?

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