By James Juo.

It is well-established that trademark law must be applied narrowly to artistic works to avoid conflict with First Amendment interests.

This recently came to a head in MGFB Properties, Inc. v. ViacomCBS, Inc., No. 5:19-cv-00257 (N.D. Fla. Sept. 22, 2021), a dispute between the “regionally famous” Flora-Bama beach bar and lounge, and a later-created, nationally broadcast television series called MTV Floribama Shore.

In addition to the beach bar and lounge, the Flora-Bama also includes a concert venue and other facilities. The name “Flora-Bama” was a portmanteau created from the names of the two states on whose border the bar sat between the Florida panhandle and Alabama's Gulf coast. While the area has been called the Emerald Coast and other names, the term Flora-Bama had not been used to refer to this geographic area.

The MTV Floribama Shore show, on the other hand, was an off-shoot of MTV's “Jersey Shore” show set in Panama City Beach, Florida, roughly 100 miles east of the Flora-Bama. When MTV named its new show, this area had never been known as the Floribama shore, but the producers did know of the Flora-Bama, and believed the name “Floribama Shore” was a better fit for the show than such alternatives as “Florida Shore” or “Gulf Shore.”

The owners of the “Flora-Bama” bar sued the “Floribama Shore” television producers for trademark infringement under Lanham Act in the Northern District of Florida, and the producers later moved for summary judgment of no infringement based on the First Amendment after the end of discovery.

The leading case at the intersection of trademark law and the First Amendment is Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), where Ginger Rogers, who famously performed with Fred Astaire, asserted a Lanham Act infringement claim against the producers of a film entitled “Ginger and Fred.” The film told the story of fictional Italian cabaret performers who imitated Ms. Rogers and Mr. Astaire and came to be known in Italy as Ginger and Fred. Ms. Rogers lost because the public interest in avoiding consumer confusion was outweighed by the public interest in free expression. The Rogers Court set forth a two-part test:

In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

Id. at 999.

A subsequent case, Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490, 494-95 (2d Cir. 1989), involved a well-known series of study guides entitled “Cliffs Notes” and a parody called “Spy Notes” which used the distinctive yellow color cover with black diagonal stripes of Cliffs Notes. Because the Cliffs Notes case involved two potentially confusingly similar titles, the Second Circuit did not apply the two-part Rogers test but still applied the Rogers animating principle that for works of artistic expression, the public interest in avoiding confusion must still be balanced against the public interest in free expression. Cliffs Notes, 886 F.2d at 494 (citing Rogers, 875 F.2d at 998-99); cf. Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017) (suggesting the Rogers two-part test always applies for artistic works even where confusingly similar titles are at issue). The Court noted “the overall balancing approach of Rogers and its emphasis on construing the Lanham Act ‘narrowly' when First Amendment values are involved are both relevant in this case,” and found only “a slight risk of consumer confusion that is outweighed by the public interest in free expression.” Cliffs Notes, 886 F.2d at 494 & 497.

In reviewing the case law including Rogers and Cliffs Notes, as well as University Board of Trustees v. New Life Art, Inc.,  683 F.3d 1266 (11th Cir. 2012) (citing Rogers and Cliffs Notes with approval), the Florida district court held (emphasis added):

In sum, the Rogers two-part test applies generally to cases in which the junior use is an artistic work. But there is an exception: the test does not apply to “misleading titles that are confusingly similar to other titles.” Rogers, 875 F.2d at 999 n.5. For cases within the exception, the two-part test does not apply, but the First Amendment remains relevant: a court still must balance the interest in trademark protection against the interest in free expression. The nature of the senior and junior uses matters. A plaintiff must make a stronger showing of likely confusion than would be required in a case not involving artistic expression.

Here, the Court analyzed the likelihood of confusion factors for trademark infringement, and found that while the Flora-Bama mark was strong, the respective goods and services of the parties were different. The Court concluded that while the likelihood of confusion showing was relatively weak, it ordinarily would have been sufficient to withstand summary judgment, “were it not for the necessity to balance the showing against First Amendment interests.”

The First Amendment interest is stronger when “expression, and not commercial exploitation of another's trademark, is the primary intent,” Cliffs Notes, 886 F.2d at 495; and “[h]ere the defendants' primary intent was expression—conveying to the audience the subject of the television series—not exploiting the plaintiffs' mark.” The Court also noted that “[a]side from their show's title, the defendants have done nothing that comes close to trademark infringement.”

At bottom, most potential viewers in the national audience surely understand the title MTV Floribama Shore to denote another show in the Jersey Shore line, this one set in the geographic area suggested by the title. This is so even though the term FloriBama has not been used historically to describe that area.

Although noting “[t]he issue is close and not squarely controlled by prior decisions,” the Court nonetheless granted summary judgment “because the plaintiffs' showing of likelihood of confusion—an element of the plaintiffs' infringement claims—is not strong enough to meet the standard that applies to artistic works.”