Friday, January 15, 2021

Rogers v. Grimaldi and the TMA

The legislative history of the TMA, just enacted into law, includes several paragraphs blessing Rogers v. Grimaldi and saying it's what Congress understands the Lanham Act to mean. I'd be interested to know how that got in there, and I wonder if there are any judges left who care.

H.R. Rep. No. 116-645, pp. 19-20:  

In providing that a plaintiff is entitled to a rebuttable presumption of irreparable harm following a court’s finding of trademark infringement, or upon a finding of likelihood of success on the merits in the case of a motion for preliminary injunction or temporary restraining order, the Committee acknowledges the need to take special care to ensure that the interests protected by the Lanham Act do not encroach on the rights to free speech and expression enshrined in the First Amendment. Courts have long been appropriately circumspect in applying the Lanham Act so as not to interfere with the First Amendment rights of creators and distributors of ‘‘artistic works’’ (sometimes called ‘‘expressive works’’), including without limitation movies, television programs, songs, books, plays, video games, and the like, which may depict or reference third-party marks within such artistic works or in such artistic works’ titles.59 It is the intent of the Committee that this legislation will not in any way affect that jurisprudence.

The standard for accommodating First Amendment interests in the Lanham Act context for infringement and unfair competition claims was first articulated in Rogers v. Grimaldi,60 which has been widely adopted by courts across the nation in the subsequent three decades. As a threshold matter under the Rogers test, a plaintiff cannot state a viable trademark claim in the context of an artistic work (1) unless the defendant’s use of the mark ‘‘has no artistic relevance to the underlying work whatsoever,’’ or (2) ‘‘if it has some artistic relevance, unless the [use of the mark] explicitly misleads as to the source or the content of the work.’’ 61 The ‘‘no artistic relevance . . . whatsoever’’ standard sets an extremely low bar, requiring only that ‘‘the level of relevance must merely be above zero.’’ 62 ‘‘This black-and-white rule has the benefit of limiting [the court’s] need to engage in artistic analysis in this context.’’ 63 When that bar is met and any level of artistic relevance to the underlying work is present, the use may be actionable only where the creator explicitly misleads consumers. This test appropriately recognizes the primacy of constitutional protections for free expression, while respecting a trademark owner’s right to prevent unauthorized use of its mark and the public’s interest in avoiding confusion.

In enacting this legislation, the Committee intends and expects that courts will continue to apply the Rogers standard to cabin the reach of the Lanham Act in cases involving expressive works. The Committee believes that the adoption by a court of a test that departs from Rogers, including any that might require a court to engage in fact-intensive inquiries and pass judgment on a creator’s ‘‘artistic motives’’ in order to evaluate Lanham Act claims in the expressive-works context would be contrary to the Congressional understanding of how the Lanham Act should properly operate to protect important First Amendment considerations, and upon which the Committee is relying in clarifying the standard for assessing irreparable harm when considering injunctive relief.



Anonymous said...

Do you believe the presumption of irreparable harm was properly restored, and if so, why?

Rebecca Tushnet said...

I do not; I've written more extensively about this in What's the Harm of Trademark Infringement, but in brief, lost control is not itself likely harm to reputation, at least not without evidence of poor quality of the defendant's product/service. The rule conflates possibility with likelihood. We can do that if we want, but pretending that possibility is itself harm contributes to the unwarranted expansion of TM rights. It will be interesting to see how this plays out for false advertising.