Court fixes mistake: Rogers applies to nonfiction titles

IOW, LLC v. Breus, 2019 WL 6603948, No. CV18-1649-PHX-DGC (D. Ariz. Dec. 2, 2019)

The court quite properly grants a motion for reconsideration of part of its earlier opinion, correctly applying Rogers v. Grimaldi/Empire to protect the title of a nonfiction work.  Breus is a clinical psychologist, board certified in clinical psychology and sleep disorders, who studies how his patients’ chronobiologies effect their treatment, and has written extensively about chronobiology and circadian rhythms. IOW claims rights in various “WHEN”-related marks; the issue here is Dr. Breus’s third book, The Power of When; IOW claimed rights in that phrase.

Under Rogers, courts “apply the [Lanham] Act to an expressive work only if 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.”  IOW argued that The Power of When “is a non-fiction, self-help book that is not an artistically expressive fictional work.” But nonfiction can be expressive. Under Gordon v. Drape, an expressive work “evinces an intent to convey a particularized message, and in the surrounding circumstances the likelihood was great that the message would be understood by those who viewed it.” The Power of When qualified.  It discussed “chronotypes” that supposedly explain when during the day it would be best to tackle specific tasks, based on a person’s particular chronotype.  “Given Dr. Breus’s creativity in developing and expressing his theories, categorizing and naming the chronotypes, and organizing the book, The Power of When is an expressive work worthy of First Amendment protection.” The court explicitly recognized that Empire rejected any requirement that an alleged mark have cultural significance before Rogers could come into play.

So, was there “artistic relevance”? The level must merely be nonzero. “The Power of When” [not the mark, but the phrase, despite some confusion in the court’s discussion] was “certainly relevant” to the book.  And was the use explicitly misleading? “The Ninth Circuit has been clear that the use of a mark in the title of a work, divorced from other explicitly misleading actions, is not enough to bar First Amendment protection.”  Plaintiffs alleged that customers had been confused, and that one of IOM’s team members “immediately contacted [an IOM principal] when she saw the book and asked if this was the same ‘sleep doctor’ who [they] had been working with[.]” That showed only confusion, not explicit misleadingness. “To be relevant, evidence must relate to the nature of the behavior of the identifying material’s user, not the impact of the use.” Without “an ‘explicit indication,’ ‘overt claim,’ or ‘explicit misstatement’ ” that The Power of When was affiliated with IOM, there was no triable issue.

The court noted that defendants’ promotional activities for the book were thus also protected by the First Amendment as an extension of their protected use of the Power of When mark. The Ninth Circuit has held that while “promotional efforts technically fall outside the title or body of an expressive work, it requires only a minor logical extension of the reasoning of Rogers to hold that works protected under its test may be advertised and marketed by name.”

Rogers/Empire also applied to the Arizona common law unfair competition claims.