May 12, 2021 Feature

Recent Shifts in Rogers v. Grimaldi: Looking for a Genuine Artistic Motive

By Lynn M. Jordan

Courts have long grappled with the delicate balance between trademark law and the First Amendment. The Lanham Act seeks to protect consumers against use of confusingly similar trademarks, but the First Amendment guarantees the right of free speech. In 1989, the U.S. Court of Appeals for the Second Circuit faced this problem head on, and developed a two-part test for balancing these competing interests.1 Referred to as the Rogers test, it has been expressly adopted in Lanham Act cases in the Third,2 Fifth,3 Sixth,4 Ninth,5 and Eleventh Circuits,6 and federal district courts within the Seventh Circuit. 7 The test has frequently been used to dispose of cases on motions to dismiss and in ruling on motions for summary judgment.

The test grants artists and creators wide latitude, and courts overwhelmingly find in favor of defendants. But while a test that so favors freedom of expression generally protects legitimate interests, courts have increasingly faced factual scenarios that would lead to decisions contrary to Rogers’ intent. Constrained by their own precedent to apply Rogers in these cases, these courts have turned to an examination of defendants’ motives, looking beyond whether they have made explicit misstatements that could cause confusion, focusing instead on defendants’ overall actions.

Rogers v. Grimaldi involved a fictional film titled “Ginger and Fredabout two Italian cabaret performers who imitated the famed dancing duo Ginger Rogers and Fred Astaire. Ms. Rogers sued the filmmaker, alleging that the title violated her rights under Section 43(a) of the Lanham Act. Realizing that applying the Lanham Act might intrude on the filmmaker’s First Amendment rights, the district court granted summary judgment to the defendant, finding that the Lanham Act did not apply to the film title because it was a work of artistic expression. The Second Circuit affirmed, but held that the district court had interpreted the First Amendment’s impact on the Lanham Act too broadly, concluding this would create a “nearly absolute privilege” for movie titles.8

Ultimately, the Second Circuit held that the Lanham Act “should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression” and “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.”9

Rogers thus requires certain threshold requirements in cases involving creative works before the Lanham Act will apply. These requirements make up the two “prongs” of the test: (1) determining whether a use has “artistic relevance” to the underlying work; and (2) if so, whether the use is “explicitly misleading.” Subsequent Second Circuit cases have expanded application of Rogers to cases involving disputes between titles, and to uses of marks within creative works.

The first part of the Rogers test considers whether the junior use is artistically relevant to the underlying work. It is meant to ensure that a defendant’s use was an artistic choice, rather than an attempt to associate with the senior user and the goodwill associated with its mark. To prevent courts from having to make artistic judgments, the standard was been set low and is met by anything “above zero.”10 Application is very straightforward, and a use may be artistically relevant “by supporting the themes and geographic setting of the work” or by referencing an earlier work that uses the mark.11 In all but the most egregious cases a defendant can usually put forward some facts to show at least this minimal level of artistic relevance.

Application of the second prong, whether the artist’s use is explicitly misleading as to source or content, is significantly more complicated and differs by circuit. In the Second Circuit, courts typically first apply the Polaroid factors.12 If there is no likelihood of confusion, then the use is not explicitly misleading. If the analysis of the factors weighs in favor of finding confusion likely, however, the use is infringing only if it is a “particularly compelling” likelihood of confusion.13 Sometimes, however, courts within the Second Circuit will not even consider the Polaroid factors if there is no evidence that defendant engaged in an overt act or express misstatement.14

Unlike the Second Circuit, the Ninth Circuit never considers the likelihood-of-confusion factors in determining whether a use is explicitly misleading, examining only whether the defendant engaged in overt or intentional acts to “dupe” consumers into believing an association with the plaintiff.15 In the 2016 opinion in Twentieth Century Fox Television v. Empire Distribution, Inc., the Ninth Circuit very clearly held that “[t]o fail the second prong of the Rogers test, ‘[i]t is key . . . that the creator must explicitly mislead consumers’” through an “‘explicit indication’, ‘overt claim,’ or ‘explicit misstatement’” that caused consumer confusion.16 Fox sought a declaratory judgment that its title EMPIRE for a dramatic television series about a family “empire” running a fictional company called EMPIRE RECORDS did not infringe the trademark rights in a real-life record label called EMPIRE DISTRIBUTION. Because there was no evidence that Fox had made any explicit misstatements of affiliation, let alone explicit misstatements that caused consumer confusion, the Ninth Circuit granted summary judgment to Fox on all claims.

Just two years later, however, a matter came before the Ninth Circuit with very different facts, and application of the “explicitly misleading” prong as instructed by Twentieth Century Fox would have resulted in finding for a defendant with unclean hands. Struggling with the prospect of protecting defendant’s blatant attempt to capitalize on the popularity of plaintiff’s mark, but unable to simply disregard Ninth Circuit precedent, the court held that in certain situations, the overt or explicit acts required for finding a use explicitly misleading don’t have to be in the form of “affirmative statement[s] of the plaintiff’s sponsorship or endorsement,” but may be demonstrated through actions.17

In Gordon v. Drape Creative, plaintiff posted a video on YouTube he called “The Crazy Nastyass Honey Badger.” The video featured Mr. Gordon providing comedic narration over National Geographic footage of a honey badger, repeatedly stating that “Honey Badger Don’t Care” and “Honey Badger Don’t Give a Shit.” After the video went viral, Gordon obtained a federal trademark registration for HONEY BADGER DON’T CARE covering various goods, including greeting cards. Defendants sought a licensing deal with plaintiff, but when it failed to materialize, they began selling their own line of greeting cards bearing the phrase HONEY BADGER DON’T CARE alongside images of a honey badger.

The district court granted summary judgment in favor of the defendants, finding that greeting cards were protectable artistic works and that the defendants had met both prongs of the Rogers balancing test, but the Ninth Circuit reversed. Although it found no triable issue of fact with respect to Rogers’s artistic relevance prong, the court held that it could not decide as a matter of law that the defendants’ use of the mark was not explicitly misleading.18

Rejecting the “rigid requirement that, to be explicitly misleading, the defendant must make an ‘affirmative statement of the plaintiff’s sponsorship or endorsement,’” the Ninth Circuit now held that an affirmative statement was necessary only in cases where “it was clear that consumers would not view the mark alone as identifying the source of the artistic work.”19 The court believed this would be true in most title cases, “because consumers ‘do not expect [titles] to identify’ the ‘origin’ of the work,” and in cases where the use of marks occurred as elements within creative works, like video games or films.20

In cases where use of the mark would likely be viewed by consumers as source identifying, however, the court believed that the “more relevant consideration is the degree to which the junior user uses the mark in the same way as the senior user,” and “the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself.”21 Under the facts before it, the court believed that consumers would expect that use of the HONEY BADGER DON’T CARE mark on greeting cards was source identifying, and that “defendants used the mark knowing that consumers rely on marks on the inside of cards to identify their source.”22

The Ninth Circuit then analyzed the degree to which the junior user used the mark in the same way as the senior user, and found that the parties both used HONEY BADGER DON’T CARE for directly competing greeting cards. On the second issue, “the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself,” the court explained that “the concern that consumers will not be ‘misled as to the source of [a] product’ is generally allayed when the mark is used only as one component of a junior user’s larger expressive creation, such that the use of the mark at most ‘implicitly suggest[s]’” an association with the mark’s owner.23 But when a junior user uses a mark “as the centerpiece of an expressive work itself, unadorned with any artistic contribution by the junior user,” this “may reflect nothing more than an effort to ‘induce the sale of goods and services’ by confusion.”24 In all of the previous Ninth Circuit cases, the allegedly infringing marks were used as only a small part of the junior users’ overall artistic works. But here, the court was troubled that the defendants had “not used Gordon’s mark in the creation of a song, photograph, video game, or television show, but ha[d] largely just pasted Gordon’s mark into their greeting cards” with no additional creative content.25

Although clearly backtracking from its emphatic statements in Twentieth Century Fox that explicit statements and overt actions were required for a use to be explicitly misleading, the rationale in Gordon is consistent with the Ninth Circuit’s focus in prior rulings on whether a defendant’s actions had caused confusion, rather than simply whether there was a likelihood of confusion not caused by anything other than mere use of the mark. The court quoted with approval language from its decision in Brown that the key factor is “that the creator must explicitly mislead consumers,” which means the focus must be on ‘the nature of the [junior user’s] behavior’ rather than on ‘the impact of the use.’”26

Gordon is not a decision on the merits, and the court was careful to note that the plaintiff’s evidence was not bulletproof. But because the court believed that there was “at least a triable issue of fact as to whether the defendants simply used Gordon’s mark with minimal artistic expression of their own, and used it in the same way that Gordon was using it—to identify the source of humorous greeting cards in which the bottom line is ‘Honey Badger don’t care,’” it remanded the case back to the district court for further findings.27 The case settled shortly thereafter.

As noted by the Ninth Circuit in the case, Gordon “demonstrates Rogers’s outer limits” and should not impact cases involving marks used as titles or as elements of creative works where consumers do not expect them to designate source.28 In those cases, affirmative statements or actions meant to explicitly mislead consumers will likely be required to satisfy Rogers’s second prong. But in the limited situations where consumers expect a mark in a creative work to connote source, the determination of whether the use is explicitly misleading will turn on something else—not whether consumers would be confused (because some element of confusion is acceptable in the interests of protecting First Amendment rights), but whether the mark is used for a directly competing product and the extent to which the junior user added his or her own expressive content or simply adopted the senior user’s mark as the centerpiece of its work.

Gordon was not the first time a court within the Ninth Circuit recognized that the standard for determining whether a use is “explicitly misleading” may be slightly different when directly competing products are involved. In CI Games S.A. v. Destination Films, a case involving a dispute between the titles for a movie and a video game with similar themes, the court held that cases involving competing titles pose an increased risk of consumer confusion because consumers may, by virtue of the fact that the producers of each are in the same type of business, believe the works arise from the same source.29 Therefore, the same conclusions that make sense when the plaintiff and the defendant are not in the same business are not relevant and instead of having to meet the “relatively high bar in demonstrating affirmative statements that would mislead the public as to the producer or endorser of the expressive work,” a plaintiff need only prove that a defendant selected a title with the intent to confuse consumers into thinking the products were related.30

Although Gordon did not involve a dispute between titles, and the court believed that titles were not typically viewed by consumers as source identifying, the court suggested in dicta that a case involving two competing titles could be the kind where consumers expect use of a mark to identify the source of the work if the junior user’s use of the title is “identical.”31 Soon after that decision, this “title v. title” scenario presented itself in a district court case within the Ninth Circuit. In Fierce, Inc. v. Franklin Covey Co., plaintiff alleged that defendant’s book titled FIERCE LOYALTY: CRACKING THE CODE TO CUSTMOER DEVOTION infringed its rights in numerous federal registrations for FIERCE and FIERCE-formative marks for corporate training materials, as well as its books titled FIERCE CONVERSATIONS: ACHIEVING SUCCESS AT WORK & IN LIFE and FIERCE LEADERSHIP, A BOLD ALTERNATIVE TO THE WORST “BEST” PRACTICES OF BUSINESS TODAY.32 Citing Gordon for the proposition that use of a mark alone may explicitly mislead consumers about a product’s source if consumers would ordinarily identify the source by the mark itself, the court found that plaintiff and defendant each used the mark “in the same context and market,” namely as the titles of books identifying strategies to help businesses increase the engagement and loyalty from both employees and customers. Moreover, defendant presented its mark using a color, typeface, and visual format similar to plaintiff.33 While the court did not go so far as to find that defendant’s use was explicitly misleading, it denied the motion to dismiss and allowed the case to proceed because there was evidence that the defendant’s motives and actions in adopting and using the mark may have been impure.

Then in Pomegranate Communications, Inc. v. Sourcebooks, Inc., a district court in Oregon faced with a similar claim that the registered trademark WOMEN WHO DARE for a book series was infringed by a single book titled “Women Who Dared: 52 Stories of Fearless Daredevils, Adventures & Rebels” reached a different conclusion.34 Citing Gordon, the court believed that when a title is used for a book series, rather than a single book, consumers were likely to believe the mark identified source, and thus it was appropriate to consider the degree to which the junior user used the mark in the same way as the senior user, as well as the extent to which the junior user added his or her own expressive content to the work beyond the mark itself. The court ultimately granted the motion to dismiss, finding plaintiff’s “bare accusations” of infringement “the kind of ‘unadorned, the-defendant-unlawfully-harmed-me accusation’ that does not meet the Rule 12(b)(6) standard” and does not establish that the use explicitly misleads as to source.35

In a case not involving competing titles, another district court within the Ninth Circuit found that defendant’s use of the mark MASTERMIND as an album title and performance title was not explicitly misleading, despite another musician’s prior use and registration of the mark for his own performance title and recordings.36 Recognizing that under Gordon use of the mark alone could be sufficient to explicitly mislead consumers where consumers would ordinarily identify the source by the mark itself, and apparently conceding that both plaintiff and defendant were using the mark in the same way, the court focused on whether defendant had added his own expressive content to the work, or used the mark as the “centerpiece” of its own work.37 Finding that defendant used the mark as one album title out of six in his career; that he used the word in lyrics nine times in the album through his own artistic expression; and that when he used it as his nickname it was always accompanied by a clear indication of his primary moniker—Rick Ross—the court granted summary judgment to defendant, holding that there was no evidence that defendant’s use even implicitly suggested a connection, let alone any evidence of an overt association.

In a case involving use of a mark registered for clothing in a film, trailer, and advertisements for the film, a court in the Central District of California had no trouble dismissing claims that use of plaintiff’s mark DEUS EX MACHINA on a jacket (not made by plaintiff) prominently worn by a character in a teen-romance film and promotions for the film infringed its trademark rights in the mark.38 Although this type of use for an element within a creative work was the type of use Gordon believed would not be viewed as source identifying, and thus would require an affirmative misstatement to be explicitly misleading, the court nevertheless analyzed both factors set forth in Gordon. It easily concluded that defendant’s use of the mark was different from plaintiff’s primary use of the mark for clothing (it also made films promoting its “lifestyle” brand, accounting for about 20% of its use) and that the film used the mark “to establish a connection between the couple – as the young man writes the words ‘deus ex machina’ in a notebook and then later sees the young female wearing the Jacket bearing those same words,” thereby adding its own expressive content.39 The court commented that “although not dispositive, in and of itself,” the film included “no affirmative or implicit statement indicating plaintiff’s sponsorship of, or association with, the Film,” apparently believing it was required to apply the additional considerations from Gordon in the case.40

Shortly thereafter, the Central District of California had yet another occasion to determine whether a use was explicitly misleading, this time in the context of competing titles. Apparently believing consumers would not expect defendant’s documentary title to identify the origin of the work, the court reached its conclusion without mention of Gordon or its requirement that explicit misstatements alone are not always sufficient.41 The case involved a documentary about Joe Maldonado-Passage, well-known as the Tiger King. Plaintiff coined the epithet “Tiger King” to identify Joe in 2013 and obtained a federal registration for its magazines about him. Plaintiff argued that Netflix infringed its rights by titling its documentary about Joe “Tiger King: Murder, Mayhem, and Madness” which included scenes featuring plaintiff’s magazines. The court dismissed the complaint, finding it void of “allegations rising to the level of explicit deception on Netflix’s behalf.”42

Finally, the Ninth Circuit had an opportunity to clarify its reasoning in Gordon. In Dr. Seuss Enterprises, L.P. v. ComicMix LLC, defendant created a “mash-up” book combining elements from Dr. Seuss’ “Oh The Places You’ll Go!” and the “Star Trek” television series, which it illustrated in “Seussian style” and titled “Oh, the Places You’ll Boldly Go!”43 Although reversing the district court’s grant of summary judgment to defendant on the copyright infringement claim, the court affirmed the grant of summary judgment in favor of ComicMix on the trademark claim. The court held that use of the title was not explicitly misleading because doing so “is a high bar that requires the use to be ‘an explicit indication, overt claim, or explicit misstatement’ about the source of the work,” quoting its prior language in Brown.44 This was a case of competing titles, and the court went on to explain that “a contrary result is not compelled by our recent decision in Gordon v. Drape Creative, Inc.” because “Boldly does not test the ‘outer limits’ of Rogers.”45 Although apparently not believing additional analysis was necessary, the court acknowledged that defendant had used the mark in the same way as plaintiff (a book title), added its own expressive content.46

Two days later, in Dickinson v. Ryan Seacrest Enterprises, Inc., the Ninth Circuit ruled that the First Amendment barred a plaintiff’s Lanham Act claims arising from use of a mark within a creative work, never mentioning Gordon, but affirmatively stating that to find that the use was explicitly misleading, “there must be ‘an explicit indication, overt claim, or explicit misstatement’ that causes consumer confusion.”47 Plaintiff alleged that defendant “exploited her mark” by featuring her in promotions for its reality series “Shahs of Sunset,” in which she appeared, by taking advantage of the “accumulated goodwill from her career as a supermodel.”48 Because plaintiff did not allege that the series or promotions for the series “contained an explicit representation that Dickinson was an endorser or sponsor of the series” the court held that she failed to allege that defendant’s use of the mark was explicitly misleading.49

Even courts in the Second Circuit—which has long held that a defendant’s clean hands are irrelevant in finding a use explicitly misleading so long as there is a compelling likelihood of confusion—have recently hinted that a defendant’s motives could factor into a Rogers analysis. In Chooseco LLC v. Netflix, Inc.,50 the owner of the trademark CHOOSE YOUR OWN ADVENTURE for a book series involving a “branching” technique that allows readers to make choices affecting the outcome of the stories, alleged that dialogue in a film with a similar “branching” technique that referenced a fictional book within the film by stating “it’s a ‘Choose Your Own Adventure’ book. You decide what your character does,” infringed its rights.51 Although finding the dialog had artistic relevance to the film, the district court denied Netflix’s motion to dismiss, finding that Chooseco had sufficiently alleged that consumers associate its mark as a source identifier and that Netflix used the mark in the same way that Chooseco used the mark, which was sufficient to present factual issues that precluded dismissal of the case.

In AM General LLC v. Activision Blizzard, Inc.,52 the Southern District of New York also recently considered whether use of a mark as an element in a creative work was infringing. Plaintiff alleged that Activision’s use of its HUMVEE mark and vehicles in the Call of Duty video game franchise infringed its trademark and trade dress rights. Granting summary judgment to defendant, the court found only two of the Polaroid factors—the strength of plaintiff’s mark and some evidence of confusion in the form of a survey—favored plaintiff, and concluded that this level of likelihood of confusion was not sufficiently compelling.

Although this holding is consistent with longstanding Second Circuit precedent and is the type of use where consumers would not assume the use was source identifying, the court curiously offered that “the Rogers balancing inquiry examines whether the contested user has offered a ‘persuasive explanation’ regarding the use’s status as an ‘integral element’ of the artistic expression,” citing Simon & Shuster, which in turn was quoting Rogers.53 But this misconstrues both of those cases. The Rogers court found that the defendant filmmaker had made “no explicit indication that Rogers endorsed or had a role in producing” the film at issue, but also pointed out that even if the title implicitly mislead some consumers into believing it was about Ms. Rogers, that was not enough. The court’s statement that the title was an “integral element of the film and the film-maker’s artistic expressions” was not a requirement for the finding.54

The Simon & Shuster case, which involved a dispute between two audiobooks titled THE BOOK OF VIRTUES and THE CHILDREN’S BOOK OF VIRTUES, likewise did not hold that the court had to look for a “persuasive explanation” regarding use as an “integral element,” but merely noted the absence of such an explanation. Moreover, unlike in AM General, the Simon & Shuster case involved nearly identical titles used for directly competing works (books on the same subject), and clear evidence that the defendant adopted its title specifically to capitalize on the success of its competitor’s bestselling book. The court simply commented that defendant had “reflexively invoked the First Amendment without offering a persuasive explanation of why free speech interests are seriously threatened by Lanham Act liability” and found the evidence showed that “Dove deliberately gave its children’s story books confusingly similar titles in a blatant and ill-conceived effort to piggy-back on the goodwill associated with Bennett’s best-selling title.”55

Although wholly unnecessary and only adding confusion to an already muddied area of the law, the district court in AM General appeared to be paying lip service to the recent cases in other circuits scrutinizing the motives behind the use of a mark in an artistic work. But ultimately the court accepted “realism” as the “persuasive explanation” and did not require Activision to show that inclusion of the HUMVEE mark was “integral” to the video game. Moreover, the court rejected plaintiff’s mere insinuations, innuendo, and unsubstantiated speculation of wrongdoing or a commercial motive, holding that “plaintiff must present admissible evidence that Defendants’ invocation of the First Amendment was pretextual” in order to “overcome the presumption of Rogers.”56

The biggest deviation from longstanding Rogers precedent came recently from the District of Colorado in Stouffer v. National Geographic Partners, LLC,57 a case alleging that NatGeo Channel’s AMERICA THE WILD title for its documentary nature series infringed plaintiff’s rights in its title WILD AMERICA for a prior nature series. In considering defendant’s motion to dismiss, the court acknowledged it had “the luxury of thirty years of court decisions applying Rogers, demonstrating its strength and weaknesses,” and ultimately concluded that “Rogers should not be adopted as-is.”58 Because the Tenth Circuit had never had the occasion to consider Rogers, the court was free to formulate its own criteria for balancing trademark law and the First Amendment. Recognizing that courts have struggled “to assimilate unanticipated factual patterns into the Rogers test—factual patterns that raise legitimate concerns about whether Rogers tilts too far in favor of the junior user’s First Amendment interests,” the court held that a “genuine artistic motive” of the junior user was the more relevant consideration, and that it encompassed both prongs of the Rogers test.59 To determine this, several questions should be considered, including whether the junior user used the mark to identify the same or similar kinds of goods or services; to what extent the junior user added his or her own expressive content; whether the timing of the junior use suggested a motive to capitalize on the popularity of the senior user’s mark; the way in which the mark is artistically related to the underlying work; whether the junior user made any statements to the public or engaged in conduct known to the public that suggests a non-artistic motive (including but not limited to “explicitly misleading” statements); and whether the junior user made any statements in private, or engaged in any conduct in private, that suggested a non-artistic motive.60

Recognizing that the “genuine artistic motive” test is framed in terms of the junior user’s state of mind, the court also held that to adequately protect First Amendment interests, “the objective facts may sometimes excuse further inquiry into the junior user’s subjective motives.”61 It should be a rare case, the court admonished, “in which a junior user with a ‘pure heart’ receives First Amendment protection but a junior user with a ‘black heart’ does not.”62 This is because the “First Amendment places a thumb on the scale of expressive use, even if at the expense of sometimes allowing junior users with subjectively ‘unartistic’ motives to avoid Lanham Act liability.”63 If the “genuine artistic motive” test favors the junior user, the court believed that the inquiry should end there with no Lanham Act liability.

Recognizing that the parties could not have anticipated that the court would formulate its own application of the Rogers test, the court denied the motion to dismiss without prejudice to allow plaintiff the opportunity to amend its complaint and the defendant to refile for dismissal.64

On the renewed motion to dismiss, the court applied its “genuine artistic motive” test to Stouffer’s amended complaint and ultimately dismissed his claims.65 After weighing the allegations in light of the six factors, the court found that National Geographic’s titles “deserve First Amendment protection, even if Stouffer could prove likelihood of confusion.”66 Although the court pointed to National Geographic’s use of WILD AMERICA outside the United States as evidence of a subjectively un-artistic motive, it held that this was the type of case where National Geographic’s subjective motives were excused. Most importantly, the fact that National Geographic’s titles correspond closely to nature documentary programming created a strong objective inference “that its motive was genuinely artistic” and plaintiff had put forth no evidence “suggesting that National Geographic was attempting to ride Stouffer’s wave.”67 This case is currently on appeal to the U.S. Court of Appeals for the Tenth Circuit.68

At first glance, this “reformulation” of the Rogers test appears to be significant. But a closer examination reveals that it simply combines the artistic relevance and explicitly misleading prongs into one, and takes into account the “motive” issues courts seemed troubled by in CI Games, Fierce, and Gordon. Artists who use a mark for genuine artistic purposes and without any intent or actions meant to capitalize on the senior user’s goodwill or confuse consumers into believing the work is related to that earlier work, should still find their interests fully protected by the First Amendment in the Tenth Circuit regardless of whether it upholds this decision or adopts the traditional application of Rogers.

In the three decades since Rogers has become the standard for balancing the Lanham Act and the First Amendment, courts have continued to refine its application, striving to protect artistic interests while guarding against attempts to use the First Amendment simply as a means to capitalize on the success of another. Recent decisions in cases where junior uses would be viewed as source identifying and have required that defendants have a genuine artistic motive in using their mark should not be viewed as an erosion of First Amendment rights, but rather safeguards to ensure that the original intent of Rogers is upheld.

Endnotes

1. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

2. Seale v. Gramercy Pictures, 949 F. Supp. 331 (E.D. Pa. 1996), aff’d without opinion, 156 F.3d 1225 (3d Cir. 1998).

3. Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999); Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000).

4. Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003); ETW Corp. v. Jireh Publ’g, 332 F.3d 915 (6th Cir. 2003).

5. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002); E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008); Brown v. Elec. Arts, Inc., 724 F.3d 1235 (9th Cir. 2013); Twentieth Century Fox Television v. Empire Distrib., Inc., 875 F.3d 1192 (9th Cir. 2017); Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018).

6. Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. 2012).

7. Eastland Music Grp., LLC v. Lionsgate Entm’t, No. 11 C 8224, 2012 WL 2953188 (N.D. Ill. July 19, 2012), aff’d without reaching constitutional question, 707 F.3d 869 (7th Cir. 2013), cert. denied, 571 U.S. 829 (2013); Fortres Grand Corp. v. Warner Bros. Entm’t, Inc., 947 F. Supp. 2d 922 (N.D. Ind. 2013), aff’d without reaching constitutional question, 763 F.3d 696 (7th Cir. 2014), cert. denied, 574 U.S. 1108 (2015).

8. Rogers, 875 F.2d. at 996-97.

9. Id. at 999.

10. Brown, 724 F.3d at 1243; E.S.S. Entm’t, 547 F.3d at 1100.

11. Twentieth Century Fox, 875 F.3d at 1199.

12. Polaroid v. Polarad, 287 F.2d 492 (2d Cir. 1961). See Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., 996 F.2d 1366 (2d Cir. 1993); Simon & Schuster, Inc. v. Dove Audio, Inc., 970 F. Supp. 279 (S.D.N.Y. 1997); Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., 886 F.2d 490 (2d Cir. 1989).

13. Twin Peaks, 996 F.2d at 1379.

14. See Communico, Ltd. v. DecisionWise, Inc., No. 3:14-CV-1887 (RNC), 2018 WL 1525711 (D. Conn. Mar. 28, 2018); Syler v. Woodruff, 610 F. Supp. 2d 256 (S.D.N.Y. 2009); Lemme v. Nat’l Broad. Co., 472 F. Supp. 2d 433 (E.D.N.Y. 2007).

15. 875 F.3d at 1199.

16. Twentieth Century Fox, 875 F.3d at 1199.

17. Gordon, 909 F.3d at 269–70.

18. Id.

19. Id.

20. Id. at 270.

21. Id.

22. Id. at 271.

23. Id. (quoting Rogers, 875 F.2d at 998–99) (alteration in original).

24. Id.

25. Id. at 261.

26. Id. at 269 (quoting Brown, 724 F.3d at 1245–46) (alteration in original).

27. Id. at 271.

28. Id. at 268.

29. No. 2:16-cv-05719-SVW-JC, 2016 WL 9185391, at *8–9 (C.D. Cal. Oct. 25, 2016).

30. Id. at *8.

31. Gordon, 909 F.3d at 270.

32. No. C18-1449-MJP, 2019 WL 1453573, at *1–2 (W.D. Wash. Apr. 2, 2019).

33. Id. at *7.

34. No. 3:19-cv-00119-AC, 2019 WL 7476688 (D. Or. Dec. 16, 2019).

35. Id. at *6.

36. Caiz v. Roberts, 382 F. Supp. 3d 942, 952 (C.D. Cal. 2019).

37. Id. at 950–51.

38. Deus ex Machina Motorcycles Pty., Ltd. v. MGM Inc., 2020 WL 6875178 (C.D. Cal. October 23, 2020).

39. Id. at *6.

40. Id. at *7.

41. Jackson v. Netflix, 2020 WL 8028615 (C.D. Cal. December 9, 2020).

42. Id. at *4.

43. 983 F.3d 443 (9th Cir. 2020).

44. Id. at 462, quoting Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1245 (9th Cir. 2013).

45. Id.

46. Id. at 463.

47. 2020 WL 7496424 at *1 (9th Cir. December 21, 2020), quoting Brown, 724 F.3d at 1245-46.

48. Id.

49. Id.

50. No. 2:19-cv-08, 2020 WL 685689 (D. Vt. Feb. 11, 2020).

51. Id. at *2.

52. No. 17 Civ. 8644 (GBD), 2020 WL 1547838 (S.D.N.Y. Mar. 31, 2020).

53. Id. at *10.

54. Rogers, 875 F.2d at 1001.

55. Simon & Schuster, 970 F. Supp. at 300–01.

56. AM General, 2020 WL 1547838, at *11.

57. 400 F. Supp. 3d 1161 (D. Colo. 2019), deciding renewed motion to dismiss after reformulating the Rogers test, No. 18-cv-3127-WJM-SKC, 2020 WL 2306854 (D. Col. May 8, 2020).

58. 400 F. Supp. 3d at 1178.

59. 2020 WL 2306854, at *4–5.

60. 400 F. Supp. 3d at 1179.

61. Id. at 1180.

62. Id.

63. Id.

64. Id. at 1180–81.

65. 2020 WL 2306854, at *7–9.

66. Id. at *9.

67. Id.

68. Stouffer, et al v. National Geographic Partners, et al, Docket No. 20-1208 (10th Cir.)

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By Lynn M. Jordan

Lynn M. Jordan is a partner at Kelly IP, LLP in Washington, DC, where she regularly advises entertainment and media companies on the intersection of trademark law and the First Amendment.