Written by Lindsay R. Edelstein and Marissa B. Lewis
The Eleventh Circuit recently affirmed the Northern District of Florida’s summary judgment decision in MGFB Props., Inc., et al. v. Viacom, Inc., holding that use of the name MTV Floribama Shore for a reality show spin-off of Jersey Shore is protected by the First Amendment and does not infringe the trademark of a well-known bar called Flora-Bama Lounge. The Court’s majority and concurring opinions offer guidance on the defense articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and, in particular, on the future of the so-called “title-versus-title exception” in the Eleventh Circuit.
Plaintiffs-Appellants MGFB Properties, Inc., Flora-Bama Management, LLC, and Flora-Bama Old S.A.L.T.S., Inc. own a bar called Flora-Bama Lounge, which straddles the Alabama-Florida state line and has become well-known since its establishment in 1964. Plaintiffs’ Flora-Bama Lounge has been featured in major news outlets, and has been referred to by name with Plaintiffs’ permission in various songs, books, and films. Plaintiffs own a federal trademark registration for FLORA-BAMA in connection with “bar and restaurant services” as well as several entertainment services, including arranging, organizing, conducting, and hosting “social entertainment events,” live musical performances, and “competitions for fish throwing.”
Defendants-Appellees ViacomCBS, Inc. (which operates MTV), 495 Productions Holdings LLC, and 495 Productions Services LLC produced the reality television series MTV Floribama Shore, the seventh installment of the Shore franchise, which is set in the Florida panhandle along the beach that stretches into Alabama. The franchise began with Jersey Shore, which takes place in Seaside Heights, New Jersey, and includes multiple spin-offs dedicated to profiling subcultures of 20-somethings in different parts of the world. Examples of these shows include Warsaw Shore, Acapulco Shore, and Geordie Shore. Like the other franchise series titles, the name Floribama Shore was chosen as a reference to the location and cultural influences of the area where it was filmed—in particular, to highlight the “young [S]outhern folks” who go to “shore houses” or “spend summers” on the Gulf of Mexico, extending from the Florida panhandle into Alabama and Mississippi. Notably, Defendants were familiar with the Flora-Bama Lounge and, in a survey conducted by Defendants during the development of the show, about half of the participants who had heard of the term “Flora-bama” associated it with Plaintiffs’ bar.
Floribama Shore premiered in November 2017 and aired for a total of four seasons. In October 2017, after Defendants began marketing Floribama Shore, Plaintiffs sent Defendants a cease-and-desist letter claiming trademark infringement and asking that Defendants change the series name. Defendants refused, pointing to the “substantial deference” given to titles of artistic works. On August 6, 2019, after the second season had aired, Plaintiffs filed suit for trademark infringement and unfair competition under the Lanham Act and related state-law claims. The district court granted summary judgment in Defendants’ favor, holding that Plaintiffs’ claims are barred by the First Amendment. Plaintiffs appealed.
The Eleventh Circuit affirmed, agreeing that Defendants’ use of the name Floribama Shore is protected by the First Amendment and does not infringe Plaintiffs’ FLORA-BAMA trademark. As in the district court, the Eleventh Circuit’s decision was guided by Rogers, the seminal decision on balancing trademark owners’ Lanham Act claims with the First Amendment protections afforded to creators of expressive works. Under the Rogers test, the use of a trademark in the title of an expressive work (such as a television show) does not violate the Lanham Act unless such use (1) has “no artistic relevance” to the underlying work, or (2) if it has artistic relevance, “explicitly misleads” consumers as to the source or sponsorship of the work.
Applying the Rogers test, the Court held that the “relationship between the series title and the series content itself is well above the artistic relevance threshold” for purposes of the first prong. It rejected Plaintiffs’ attempt to impose a stricter standard, explaining that the use of a trademark may be “artistically relevant” even if it is not “necessary” and does not “carr[y] the same meaning” as given by the trademark owner. Turning to the second prong of the Rogers test, the Court explained that the “relevant question is whether (1) the secondary user overtly ‘marketed’ the protected work ‘as endorsed or sponsored’ by the primary user or (2) ‘otherwise explicitly stated’ that the protected work was ‘affiliated’ with the primary user.” It found no evidence to support an answer in the affirmative to either question, but rather, that Viacom merely “chose a title that includes its own house mark (MTV) and the name of one of its iconic franchises (Shore).” The Court rejected Plaintiff’s reliance on survey evidence of an association between the term “Flora-bama” and Plaintiffs’ lounge because it was “not engendered by any overt claim” on Defendants’ part. It also rejected Plaintiffs’ claim that Defendants use of plaintiffs’ mark alone could impute intention to mislead consumers.
Before concluding the majority opinion, the Court addressed Plaintiffs’ argument for application of an exception to the Rogers defense known as the “confusingly similar titles” or “title-versus-title” exception. This argument draws on a footnote in the Rogers decision, which states, in pertinent part, that “[the Rogers test] would not apply to misleading titles that are confusingly similar to other titles [because t]he public interest in sparing consumers this type of confusion outweighs the slight public interest in permitting authors to use such titles.” No circuit has adopted this exception to the Rogers defense, and one circuit—the Ninth Circuit—rejected it on the ground that it is “ill-advised or unnecessary.” Twentieth Century Fox Television v. Empire Dist. Inc., 875 F.3d 1192, 1197 (9th Cir. 2017).
The majority declined to address whether the Eleventh Circuit should adopt the exception, but stated that it would not apply in this case in any event since Plaintiffs use the mark FLORA-BAMA to identify their bar, rather than as a title of any artistic work. Notably, the use of Plaintiffs’ mark in titles of third-parties’ artistic works was deemed irrelevant, as Plaintiffs provided no evidence that these titles have “any source-identifying function” and “nothing in the record would allow a reasonable jury to conclude that the public views Plaintiffs as the sources of these artistic works.”
In his concurring opinion, Judge Andrew L. Brasher addressed head-on the title-versus-title exception to the Rogers defense. In particular, he recommended that the Eleventh Circuit join the Ninth Circuit in rejecting the exception for two reasons: First, Judge Brasher opined that the exception is “incompatible with the First Amendment principles that justify the Rogers defense,” insofar as it would effectively “give the first person who uses a mark in a title to an artistic work a monopoly of the use of that mark in titles to other artistic works” without justification. Second, “even if the exception were appropriate under the First Amendment,” Judge Brasher opined that the title-versus-title exception is “impractical as a matter of doctrine and hard to apply in a consistent and logical way.” Finally, Judge Brasher noted that the title-versus-title exception mirrors the likelihood of confusion analysis, and stated that “[i]f proving the defense requires disproving liability, it is no defense at all.”
The Eleventh Circuit’s decision adds to the growing Rogers jurisprudence wherein courts around the country have grappled with the balance between trademark protections and the First Amendment. In particular, Judge Brasher’s strong concurring opinion sets the stage for the Eleventh Circuit to likely join the Ninth Circuit in rejecting the title-versus-title exception.
In 2023, the United States Supreme Court will address the contours of the Rogers test when it hears Jack Daniel’s appeal of a controversial Ninth Circuit ruling in VIP Products, LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170 (9th Cir. 2020), which as discussed in a previous post, involves the question of whether a dog toy featuring the Jack Daniel’s trademarks is an “expressive work” under the Rogers test.
From “Barbie Girl” and “Pig Pen” to the recent “Humvee” case, MSK is the longtime leader in cases involving trademarks and expressive works. We will be closely watching the Jack Daniel’s case and will report on developments through MSK’s lens on the issues.
MGFB Properties, Inc. v. Viacom Inc., No. 21-13458, __ F.4th __, 2022 WL 17261122 (11th Cir. Nov. 29, 2022).