Monday, October 25, 2021

Puzzlingly calling a venue name a "title," court nonetheless rejects claim against MTV show

MGFB Properties, Inc. v. ViacomCBS INC., 2021 WL 4843905, NO. 5:19cv257-RH-MJF (N.D. Fla. Sept. 22, 2021)

The Flora-Bama lounge and entertainment complext is “regionally famous,” and MTV created a national TV series, MTV Floribama Shore. The district court granted summary judgment on the resulting trademark claims, reasoning that plaintiffs’ likelihood of confusion showing was “not strong enough to meet the standard that applies to artistic works. This is so in part because the plaintiffs and defendants use the competing marks in substantially different settings.” From the fact section:

The record gives no reason to believe that, had there been no Flora-Bama, the defendants would have come up with the name Floribama Shore on their own.

This does not mean, however, that the defendants intended to benefit from the plaintiffs’ goodwill. The defendants believed the name Floribama Shore was superior on its own merit to such alternatives as “Florida Shore” or “Gulf Shore.” The show, after all, would feature the perceived culture on a Florida panhandle beach—a culture that was a closer match to Alabama than to many places on the Florida coast or Gulf of Mexico, including, for example, those in south Florida. “Floribama” fit.

The plaintiffs’ evidence of likely confusion, “while not strong,” would have withstood summary judgment in a commercial use case. “But the standard is more exacting when a junior user’s artistic expression is in the mix.” The court applied Rogers v. Grimaldi with the original title-v-title exception, not the Ninth Circuit version that first rejected the exception but later reincorporated title-v-title into the broader Gordon v. Drape Creative epicycle. The Eleventh Circuit adopted Rogers, but did not specify whether it was adopting the Rogers title-v-title footnote, so the court here turned to subsequent Second Circuit precedent, specifically Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989). This was a title-v-title case in which Rogers did not strictly apply, but the First Amendment concerns for protecting the defendant’s noncommercial speech warranted applying the likely confusion factors with special care. In Twin Peaks Productions, Inc. v. Publications International, Ltd., 996 F.2d 1366 (2d. Cir. 1993), another title-v-title case, the court emphasized: “the finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interest recognized in Rogers.” The Eleventh Circuit subsequently cited Cliffs Notes with approval for the propositions that Rogers is generally applicable to works of artistic expression and that, “when deciding whether an artistically expressive work infringes a trademark,” a court must “carefully ‘weigh the public interest in free expression against the public interest in avoiding consumer confusion.’ ”

The court rejected defendants’ argument that, under the Ninth Circuit Empire test, an artistically relevant title can violate the Lanham Act only if it explicitly misleads as to the source or content of the work. “If that were indeed the law, and if ‘explicitly’ were construed as strictly as the defendants say it should be, then the defendants would easily prevail on the Lanham Act claims in the case at bar.” But it isn’t clear that’s what the Ninth Circuit thinks, after Gordon, and anyway the title-v-title exception plus First Amendment-flavored balancing to favor artistic works is superior (apparently because it gives more weight to “the interest in trademark protection,” though why that should ever override First Amendment rights to engage in noncommercial speech in cases of nonexplicit misleadingness—that is, why liability for implied endorsement would satisfy strict scrutiny—is left as an exercise for the reader).

[FWIW, in my view Cliffs Notes is better than Gordon because Gordon inappropriately generalized the very particular circumstance of the title of a conventional expressive work to create a rule that allows the plaintiff to prevail even when the putative infringement stemmed from use in content, e.g., the punchline of a joke. Stated that way, it is a much broader exception to Rogers and a much less justified one. For one thing, the only reason the Rogers court even contemplated liability for noncommercial speech was the special marketing role played by titles in particular. For another, the followup Second Circuit case, Cliffs Notes—unlike Gordon—says you have to remember the important First Amendment interests at stake even when you’re back in multifactor test land.]

Why is this even relevant, anyway? As the court notes, “[t]he plaintiffs’ use of its mark Flora-Bama relates primarily to its facility, not to the title of an artistic work.” Unconvincingly, the court says,

But the mark has occasionally been used in the title to artistic works, and in any event, artistic works are performed at the Flora-Bama. So the exception applies to the plaintiffs’ claims, at least to the extent the defendants’ title MTV Floribama Shore could be found misleading and confusingly similar to the plaintiffs’ titles.

This part is not persuasive. “Occasionally been used in the title to artistic works” is a red herring. It does not appear that any trademark rights stem from such uses—they seem to have been referential—or that plaintiffs own any valid trademark rights for artistic works (the ones mentioned in the opinion are CMT’s broadcast of a show, Kenny Chesney: Live from the Flora-Bama and Chesney’s song Flora-Bama). [I’m sure they have contracts saying that they permitted these uses, but so what? That doesn’t give them affirmative trademark rights for songs or TV shows.] Likewise, the idea that because songs are performed at a venue, then the venue is an “artistic work” with a “title” doesn’t make sense. That’s like saying that, because Ford Motor Co. has published corporate histories in its name, sponsors Masterpiece Theater, and creates extensive social media content, “Ford Motor Company” is now a title for Rogers purposes, or that the existence of The Texas Rangers: The Authorized History or The Code: An Authorized History of the ASME Boiler and Pressure Vessel Code makes those entities into titles for Rogers purposes.

Nonetheless, defendants still win.

Strength: Incontestability “counts for more in the Eleventh Circuit than in most others.” But the “nature of the mark” was more important. It was “geographically descriptive—a portmanteau of the names of the two states on whose border the plaintiffs’ establishment sits,” but also commercially strong in pointing specifically to plaintiffs, at least before the MTV show. Similarity: Pronunciation was identical, spelling slightly different, MTV always used “Shore” after “Floribama,” and they usually insert “MTV” before “Floribama.” Also, “[t]he graphics are wholly distinct.” Overall cuts both ways.

And here is where the weirdness of calling the name of a venue a “title” kicks in. On the similarity of goods and services, the court appropriately focused on the things in which plaintiffs had rights—bar/lounge/concert services. Thus, the parties’ goods and services were highly dissimilar, as were the trade channels/customers.

Intent was neutral: Defendants copied the name, but there was

a convincing explanation for choosing the name on the merits, unrelated to the plaintiffs’ goodwill. While not previously used for the purpose, the term “Floribama” well describes the geographic area hosting the culture depicted on the defendants’ show. And Floribama Shore follows the pattern set by Jersey Shore, the first show in the series. The defendants’ target market—a national television audience—far exceeds the reach of the plaintiffs’ goodwill. There is no reason to believe the defendants adopted Floribama Shore for their national television series based not on the title’s own merit but to trade on the Flora-Bama’s regional popularity.

Actual confusion: also neutral, despite “the plaintiffs’ poorly constructed surveys and some evidence of confusion, primarily in social media.” This evidence was “scant” and mostly “ambiguous,” e.g., “a social-media user’s misspelling of ‘Floribama’ in a post about the defendants’ show hardly indicates confusion with the Flora-Bama. Social media abound with misspellings and grammatical errors, and it is unlikely many English majors post comments about the defendants’ show.”  So too with casual inquiries by Flora-Bama customers—such customers “may suspect there is a connection, or may suspect there is none, or may simply be making small talk.” There was no evidence of material confusion:

The record includes no evidence that any individual ever decided to watch—or not to watch—Floribama Shore because the individual believed the show was related to or endorsed by the Flora-Bama. And the record includes no evidence that any individual ever decided to go—or not to go—to the Flora-Bama because the individual believed it was related to or endorsed by Floribama Shore. The same is true of the parties’ collateral products, including the plaintiffs’ shows and licensed song.

Given the First Amendment interests at stake, this wasn’t enough. “Here the defendants’ primary intent was expression—conveying to the audience the subject of the television series—not exploiting the plaintiffs’ mark,” and the court emphasized “the substantial disparity in how the plaintiffs and defendants use their marks.” This result also protected “the small amount of consumer products Viacom CBS has sold using the Floribama Shore name,” which generated $99 in revenue. [Citing Empire:] “When Rogers and its progeny protect use of a mark in the title of an artistic work, the same ordinarily is true for the sale of consumer products that display the title and are otherwise noninfringing.”

The court would also construe state law to avoid a conflict with the First Amendment (and apply the rule that state and federal trademark principles are generally the same), including state dilution law.

Then some more sigh-worthy dicta: Although the Florida dilution statute has an explicit exclusion for “[n]oncommercial use of the mark,” the court wasn’t convinced that “use of a mark in an artistic work is always noncommercial,” because previous cases finding that noncommercial speech was noncommercial involved lampoons, documentaries, or “speech intended primarily to express a viewpoint,” Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008), so the court declined to settle the issue. [Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cited as the “lampoon,” was super super clear that its result did not depend on the nature of the commentary but on the characterization of the song as noncommercial speech, but I suppose the court here thought the facts overrode the stated reasoning.]

Separately, plaintiffs failed to show the requisite Florida fame, rather than fame in the Flora-Bama’s geographic area.

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