This article was also published in The Daily Journal.
The United States Court of Appeals for the Eleventh Circuit recently affirmed dismissal of a trademark infringement lawsuit against the producers of MTV Floribama Shore in MGFB Properties, Inc. v. Viacom Inc., 54 F.4th 670 (11th Cir. 2022) (the “Order”). The Court’s Order sought to strike a balance between the trademark protections of the Lanham Act and the artistic freedoms guaranteed by the First Amendment.
At the heart of the MGFB dispute were two words, “Flora-Bama” and “Floribama.” They refer to a popular beach area that borders the states of Florida and Alabama. “Flora-Bama” is a federal trademark registered by MGFB Properties, Inc. (MGFB). Order at 673. Together with Flora-Bama Management LLC and Flora-Bama Old S.A.L.T.S. Inc. (collectively, “Trademark Owners”), MGFB owns and operates a relatively well-known lounge on the Florida-Alabama border, the Flora-Bama Lounge, Package and Oyster Bar (“Lounge”). Id. at 672. “Floribama” is included in the title of a reality series, MTV Floribama Shore, developed and produced by 495 Productions Holdings LLC, 495 Productions Services LLC, and ViacomCBS Inc. (“Viacom”) (collectively, “Producers”) as a spin-off of their reality series, Jersey Shore. Id. In the spin-off, the Producers wanted to feature a subculture of “young [S]outhern folks” who spend time on the Gulf of Mexico, “extending from the Florida panhandle into Alabama and Mississippi.” Id. at 674.”Flora-Bama” Trademark Owners sued Floribama Shore Producers for trademark infringement and unfair competition under the Lanham Act and Florida statutory and common law. Id. at 676. The trial court granted summary judgment for the Producers on all claims, and Trademark Owners appealed. Id. at 677. The Eleventh Circuit affirmed the finding that MTV Floribama Shore passes the Rogers test. Id. at 683–84.
The Lanham Act protects consumers’ ability to distinguish among competing producers as well as trademark owners’ right to the goodwill of their business. Order at 677–78 (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992)). The Act creates civil liability for those who, without the trademark owners’ consent, commercially use reproductions of registered trademarks in a manner that is likely to confuse consumers. Id. The First Amendment ensures freedom of speech, which includes protecting “[c]reative works of artistic expression,” such as music, poetry, films, and countless other types of art. See 678. But tensions arise when the titles of creative works protected by the First Amendment reproduce or resemble trademarks protected by the Lanham Act.
Because the Supreme Court has yet to rule on the issue, many courts balance Lanham Act protections with First Amendment freedoms by following the Second Circuit’s two-prong test as set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under the Rogers test, courts first inquire whether the title has any “artistic relevance to the underlying work whatsoever.” Id. at 999. If the answer is no, the title violates the Lanham Act. If the answer is yes, the courts further inquire whether “the title explicitly misleads as to the source or the content of the work.” Id. Unless the answer is yes, the title does not violate the Lanham Act. Id. The Eleventh Circuit adopted this test in 2012. See Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012). Circuit courts have expanded the Rogers test to trademarks used in the body of the artistic work, not merely in the title. See, e.g., Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., 886 F.2d 490 (2d Cir. 1989) (applying the Rogers test to a parody book cover that replicated a trademarked cover); E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (applying the Rogers test to the video game’s depiction of a strip club’s registered logo and trade dress); Univ. of Ala., 683 F.3d at 1278 (applying the Rogers test to paintings depicting football players in uniforms featuring the university’s trademark).
The Court in MGFB Properties, Inc. v. Viacom Inc. started with the first prong of the Rogers test: “[a]n 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.” Id. at 680. “Artistic relevance” means that the relationship between the challenged title and the content of the underlying work “merely [is] above zero.” Id. The Court found the relationship between the title MTV Floribama Shore and the content of the series “well above the artistic relevance threshold.” Id. at 680–81. First, the Producers used “Floribama” to describe the subculture featured in the series and the geographic area exemplified by the subculture. Id. Specifically, “Flori” referred to Florida and the beach culture, and “bama” referred to Alabama and the Southern culture, and the series sought to capture both of those cultures. Id. at 681. Second, the title of the series also included Viacom’s house mark (MTV) and the name of the franchise (Shore). Id. The Court rejected the Trademark Owners’ argument that a title is only artistically relevant when its use is necessary to complete the artistic work. Id. The Court explained that this is one way to satisfy the artistic relevance prong, but not the only way. Id. After all, it would be improper for courts to decide what is “necessary” for an artistic expression. Id.
The Court then proceeded to the second prong: “whether, although artistically relevant, the series title ‘explicitly misleads as to the source or the content of the work.'” Id. at 681–82 (quoting Rogers, 875 F.2d at 999). This prong turns on (1) whether the protected work was marketed “as endorsed or sponsored” by the trademark owner, or (2) whether the secondary user “otherwise explicitly stated” that the protected work was “affiliated” with the trademark owner. Id. at 682 (quotations omitted). Applying the prong to the dispute, the Court found no evidence that Floribama Shore Producers “held the series out as endorsed or sponsored by [Trademark Owners], nor did they explicitly state that the series was affiliated with” the Trademark Owners. Id.
The Trademark Owners presented survey data to show that some of the consumers were confused about the connection between the Lounge and the series. Id. The Court, however, found the data “unavailing,” because “[t]he evidence must relate to the nature of the behavior of the defendant, not the impact of the defendant’s use.” Id. (citing Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1245–46 (9th Cir. 2013)). The Trademark Owners further relied on J-B Weld Co. v. Gorilla Glue Co., 978 F.3d 778 (11th Cir. 2020) and argued that intentional copying of a trademark requires “an inference of copying with intent to confuse.” Id. The Court rejected this argument, emphasizing that J-B Weld, a trade dress case involving product packaging of direct competitors, did not implicate the First Amendment in the way that MGFB did. Id. The Court reiterated that copying alone is not enough to fail the second prong of the Rogers test. Id. at 683. Thus, the Court concluded that the title, MTV Floribama Shore,passed the Rogers test, and the Producers did not violate the Lanham Act as a matter of law. Id. at 684.