Rogers test Archives

On the Border of Art and Trademark: First Amendment Trumps the Lanham Act

The US Court of Appeals for the Eleventh Circuit weighed trademark rights against free speech considerations and found that the First Amendment protected use of an artistic work that was not deliberately misleading. MGFB Properties Inc. et al. v. 495 Productions Holdings LLC et al., Case No. 21-13458 (11th Cir. Nov. 29, 2022) (Luck, Brasher, Hull, JJ.) (Brasher, J., concurring).

The suit was brought by MGFB Properties, Flora-Bama Management and Flora-Bama Old S.A.L.T.S. (collectively, the plaintiffs). The plaintiffs own and operate the Flora-Bama Lounge, Package and Oyster Bar on the Florida-Alabama border. The lounge has been in business since 1964 and is well known in the region. The plaintiffs registered their trademark FLORA-BAMA in 2013.

Viacom and 495 Productions (collectively, the defendants) produce reality television series, such as the hit 2009 series Jersey Shore. In light of Jersey Shore’s success, the defendants produced several spinoffs. In 2016 the defendants decided to develop a new spinoff based on “southern beach culture” and chose the term “Floribama” to describe “relaxing Florida beaches with the down-home Southern vibe of Alabama.” The defendants were aware of the name’s connection to the Florabama Lounge but used the term regardless to identify a specific stretch of the Gulf Coast (the Florida and Alabama coasts) and inserted dialogue into the show to explain the term. The show’s logo emphasized its connection to the Jersey Shore franchise:

The plaintiffs argued that the defendants’ use of “Floribama” was a violation of the Lanham Act and caused unfair confusion and damage to their brand. The district court granted summary judgment for the defendants. Plaintiffs appealed.

The Eleventh Circuit upheld the district court’s judgment that the defendants’ First Amendment rights as the creators of an artistic work outweighed the plaintiffs’ interest in their trademark and in avoiding confusion around their brand: “[c]reative works of artistic expression are firmly ensconced within the protections of the First Amendment.” In reaching its outcome, the Court applied the 1989 Rogers v. Grimaldi test.

Under the first prong of the Rogers test, “an artistically expressive use of a trademark will not violate the Lanham Act unless the use of the mark has no artistic relevance to the underlying work whatsoever.” Here, the Eleventh Circuit found that the defendants’ use of the term “Floribama” to describe the geographic area featured in Floribama Shore and the subculture of that region satisfied the first element of the Rogers test. The Court held that it was sufficient for the defendants’ use of “Floribama” to be relevant to their show, even if the term was not “necessary” to production of the show.

Under the second prong of the Rogers test, the Eleventh Circuit found that the defendants’ use of “Floribama” was not explicitly misleading “as to the source or content of the work” [...]

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First Amendment Punches Out Alleged Lanham Act Violation

Addressing the balance between trademark rights under the Lanham Act and the First Amendment right to protected expression, the US Court of Appeals for the Ninth Circuit affirmed a district court judgment finding that the defendant’s use of the term “Punchbowl” was not a Lanham Act violation because it was expressive and not misleading as to its source. Punchbowl, Inc. v. AJ Press, LLC, Case No. 21-55881 (9th Cir. Nov. 14, 2022) (Ownes, Bress, Fitzwater, JJ.)

Punchbowl is an online communications company that provides “online events and celebration invitations and greeting cards” as part of its subscription-based service. Punchbowl has used the mark Punchbowl® since 2006 and the mark was registered with the US Patent & Trademark Office in 2013. Punchbowl describes itself as “The Gold Standard in Online Invitations & Greeting Cards,” and uses the logo of a punch bowl ladle:

Punchbowl filed suit claiming that AJ Press infringed on Punchbowl’s mark through its subscription-based online news publication Punchbowl News. Punchbowl News covers “insider” political topics and reports on events in Washington, DC, and derives its name from the use of the term “punchbowl” by the Secret Service to refer to the US Capitol building. As such, the Punchbowl News logo comprises of an overturned image of the US Capitol filled with purple punch and the slogan “Power. People. Politics.”

AJ Press argued that its use of the term “Punchbowl” was protected under the First Amendment and did not violate the Lanham Act. The district court granted summary judgment to AJ Press, concluding that its use of the name “Punchbowl” did not give rise to liability because it constituted protected expression and was not explicitly misleading as to its source. Punchbowl appealed.

Traditionally, the likelihood of confusion test is used for claims brought under the Lanham Act. When artistic expression is at issue, however, that test fails to account for the full weight of the public’s interest in free expression. If the product involved is an expressive work, courts generally apply a gateway test, grounded in background First Amendment concerns, to determine whether the Lanham Act applies. One approach was set forth in the Second Circuit’s 1989 decision in Rogers v. Grimaldi to determine whether First Amendment concerns were strong enough to outweigh the need to protect a mark. The Rogers test requires the defendant to first “make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment.” Once this threshold is satisfied, the Lanham Act will not apply unless the plaintiff can establish that “the defendant’s use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work.”

The [...]

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