Thursday, December 01, 2022

11th Circuit affirms Viacom's Rogers-based win for MTV Floribama Shore

MGFB Properties, Inc. v. Viacom Inc, No. 21-13458 (11th Cir.  Nov. 29, 2022)

MGFB runs the Flora-Bama Lounge, Package and Oyster Bar on the Florida-Alabama border. “The Lounge has been in operation since 1964 and has gained regional fame by hosting many entertainment and athletic events.” Viacom made the Jersey Shore spin-off MTV Floribama Shore. The court of appeals affirms, on Rogers v. Grimaldi grounds, the district court’s grant of summary judgment to MTV on the resulting trademark claims.

MGFB has a federal registration for FLORA-BAMA for “bar and restaurant services” and several entertainment services, including “social entertainment events,” live musical performances, and “competitions for fish throwing.”

Flora-Bama logo

The Flora-Bama has been featured in artistic works by third parties. In “Ragtop Day,” Jimmy Buffett sings, “Get ourselves a cool one at the Flora-Bama, ya!” Two songs are named after the Lounge: Kenny Chesney’s “Flora-Bama” and Neil Dover’s “FloraBama Time,” purportedly with the permission of MGFB. It’s also featured in book titles Food n’ Fun at the Flora-Bama, Bushwhacked at the Flora-Bama, and If the Flora-Bama Walls Could Talk, by an author who “obtained a license” to use the title—the written agreement for which was entered into several years after publication and a few weeks after MFBG sued in this case, though MFBG contended that the written license reflected a prior oral agreement. “Flora-Bama” is also featured in a few films, “such as Mullet Men (a documentary about Flora-Bama’s fish-throwing competition that Plaintiffs sell at the Lounge’s giftshop) and Last American Roadhouse: The Documentary of the Flora-Bama (a DVD that Plaintiffs sell at the Lounge’s gift shop).”

Chesney also performed on the Lounge’s beachfront stage at a 2014 concert broadcast as “Kenny Chesney: Live at the Flora-Bama” on Country Music Television (CMT), a Viacom channel. “The agreement granting CMT a license to broadcast that program does not mention Plaintiffs. But Plaintiffs contend they ‘verbally’ licensed their trademark to Kenny Chesney and the company that represents him, Blue Chair Bay Records, and then Blue Chair Bay Records sublicensed the rights to Viacom for the broadcast on CMT.” The production company for the Shore series also had a few casting calls at the Flora-Bama.

Viacom’s seventh Shore series focused on Southern beach culture from the Florida panhandle into Alabama and Mississippi. MTV’s survey of 300 young people familiar with the region resulted in a slide deck noting that the “Flora-Bama [Lounge]” is a “[f]amous, open-air bar,” but it also used the term “Florabama” to describe the region. The slide deck called the city of Gulf Shores “[t]he epitome of ‘Florabama’— mix of nice, relaxing Florida beaches with the down-home Southern vibe of Alabama.” In the survey, about 34% of respondents had heard of the term “Flora-bama,” with half of the 34% identifying it as the bar and the other half identifying it as the region. Viacom also engaged a market research company to learn more about “southern beach culture,” which suggested that the term Flora-bama was “either unknown or though [sic] to refer strictly to the bar.”

MTV’s head of unscripted television testified that the name MTV Floribama Shore  was driven by finding a title that would “define the subculture” featured in the series. Another Viacom witness testified that “Floribama” offered “a very distinct sense of what part of the country and subculture that is,” and that, because Florida has “multiple subcultures,” a name like “Florida Shore” would not have sufficiently identified the Gulf Coast setting. “Florida Shore” would include Miami, a very different vibe. Viacom rejected “Gulf Shore” as insufficiently Jerseyesque; “Floribama” “scream[ed] louder” than “Gulf Shore,” and “Gulf Shore” also sounded too much like another MTV series airing at the time called Siesta Key. Viacom added “MTV” to tie the series to the network and “Shore” to tie the series to the Shore franchise.

MTV Floribama Shore logo

Original Jersey Shore logo

MGFB’s Flora-Bama featured in many of Viacom’s email exchanges. Viacom’s executive producer of the series, for exapmle, emailed her team noting that the first episode “should tell the viewer what Floribama is, although the tricky thing is I’m not sure anyone actually calls it that. All my googling kept taking me to the Florabama bar.” Another employee noted that “Google automatically assumes you mean [the F]lora[-B]ama [Lounge].”

Because “Floribama Shore” wasn’t as geographically descriptive or widely known as “Jersey Shore,” Viacom used graphics and scripted lines read by the cast to explain the meaning. “In the premiere, the television series displayed its logo on top of a map of the South, and its cast read lines such as ‘That whole stretch of beach along the Gulf Coast from Alabama to Tallahassee—we call it Floribama’; and ‘THAT’S what it means to be from Floribama!’”  In an email instructing cast members to read the scripted lines, an executive wrote, “I know, I know  Floribama is just a bar. Ignore that part for now.”

MGFB submitted evidence of confusion, e.g., a musician who often performed at the Lounge said multiple people asked her about the series “and if [she] had met any of the people on the television show.” Several employees were repeatedly asked about the series, including when certain cast members would be around, and an elderly patron criticized one of the Lounge’s owners “for allowing MTV to air such a terrible depiction of the Flora-Bama.” An online article used photos of the Lounge in its coverage of the series, and MGFB also submitted social media posts. The spelling difference didn’t help and sometimes didn’t stick. The production company’s president, for example, tweeted “Yup one of a kind #Florabama @FloribamaShore @495Prods” right before the premiere, then tweeted “[Jersey Shore’s] southern cousin is fun #MTV florabama shore.”

Plaintiffs’ social media expert opined that the show meant that Internet searches for “Florabama” or “Flora-Bama” led to “blurred” results filled with MTV Floribama Shore content. And their survey expert found that 22% of respondents were confused as to the sponsorship, approval, or affiliation between the Lounge and MTV Floribama Shore.

The Eleventh Circuit adopted Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) in Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. 2012). Specifically, in evaluating the sports art at issue in that case, the court held that there was “no evidence that Moore ever marketed an unlicensed item as ‘endorsed’ or ‘sponsored’ by the University, or otherwise specifically stated that such items were affiliated with the University.” Though some members of the public might “draw the incorrect inference” that the University was in some way involved with Moore’s works, that risk of misunderstanding was “so outweighed by the interests in artistic expression as to preclude any violation of the Lanham Act.”

The court here agreed that artistic relevance merely requires some relationship “above zero” between the title and the underlying work. Here, that was clearly satisfied, because “Floribama” “describes the subculture profiled in the series and the geographic area exemplified by the subculture.” There was no requirement that the use be “necessary” to the art. Nor was referential use required. Given that the term had artistic relevance to the MTV show “independent of referring to Plaintiffs’ establishment, artistic relevance does not turn on whether the work is about the trademark or its holder.” It’s not courts’ job to decide what expression is necessary, including whether a particular degree of realism is called for (citing Bleistein). This was not a case like Parks because there was “no doubt” that the title was artistically relevant to the content.

Nor was the use explicitly misleading. The court asked 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. There was no evidence of either of these. To the contrary, Viacom used its own house mark MTV and the name of one of its “iconic” franchises, Shore. The survey was irrelevant because any misunderstanding represented by the survey data was “not engendered by any overt claim.” Following the Ninth Circuit, “[t]he evidence must relate to the nature of the behavior of the defendant, not the impact of the defendant’s use.”

So too with the misspelled tweets. Though the production company president used “#florabama” and “Florabama” in two tweets about the series, “she did so in conjunction with references to Defendant 495 Productions and MTV. Such uses of Plaintiffs’ spelling of the term rather than ‘Floribama’ cannot be understood as misleading about the source of Defendants’ show because of Salsano’s accompanying references to Defendants and their house mark.”

Deliberate copying was irrelevant. In a Rogers case, intentional copying alone cannot justify an inference of copying with intent to confuse, even if that can occur in cases that don’t “implicate” the First Amendment. “[I]n Rogers, filmmaker Federico Fellini intentionally copied the name to evoke the relationship between Fred and Ginger, and in University of Alabama, Moore intentionally made an almost exact copy of the University’s trademarked uniforms. Yet both artists won.”

The title-v-title exception to original-recipe Rogers didn’t apply, because the bar’s name is not the title of an artistic work. The majority declined to address whether it would adopt the title-v-title exception or join the Ninth Circuit in rejecting it. Although “third parties have used Flora-Bama in the titles of third parties’ artistic works with Plaintiffs’ oral or written permission,” that doesn’t make this a title-v-title case:

Basic trademark law demonstrates why.

Telling here, third parties are not using Flora-Bama in their titles to their artistic works—songs, books, or a concert—to indicate their works are created, sung, or authored by the Plaintiffs. The titles are being used to identify what the song or the book is about, rather than who produced it.

It is so satisfying to see a court understand this. “Simply put, the titles are not being used as trademarks to identify and distinguish the source of the artistic works. Plaintiffs have presented no evidence that any of these titles to the third parties’ artistic works have any source-identifying function.” Likewise, they submitted no evidence of confusion between any of those works and MTV’s show. Nor did plaintiffs show that they owned any interest in those works as trademarks for their own goods or services. “Indeed, nothing in the record would allow a reasonable jury to conclude that the public views Plaintiffs as the source of these artistic works.” As one of MGFB’s principals testified as to Kenny Chesney’s televised concert:

[H]e asked permission to do it, and we told him it was fine. Because it -- specifically it wasn’t the Flora-Bama-- I mean it wasn’t Flora-Bama putting it out. It was him. It was his product. He plays at the Flora-Bama like he plays at a lot of the places. And he wanted to use “Live at the Flora-Bama.” And we agreed to let him do that.

“In other words, Plaintiffs understood what everyone else understood: it was Kenny Chesney’s concert, not Plaintiffs’.”

Judge Brasher concurred to dump on the title-v-title exception, mostly persuasively. (I personally am not as against a title-v-title exception as others such as Mark McKenna, given (1) the employment of a different heightened confusion standard in title-v-title cases to protect free speech, as the Second Circuit has done, and (2) the equitable pull of a confusion claim when a specific title does seem to indicate source in the market; the absence of a title-v-title exception is, I think, what led to the disaster of Gordon v. Drape, which then contaminates the Rogers test as a whole. But I certainly see the point of the arguments on the other side.)

Initially, the concurrence reasoned that the First Amendment interests in using a title are equally strong regardless of the source of the trademark interests asserted against it. [Side note: I wonder here about the effects of the metaphor of balancing. I can imagine someone saying “the First Amendment interest is less strong when using another’s title,” cf. Eldred, but I think the absolutism of much present First Amendment discourse may lead to the conception “it’s just as strong, even if the consumer-protection interest on the other side could be weightier”; I wonder whether that conception changes the likelihood that the balancing will favor the person claiming free speech rights.]

Slightly less persuasively, the concurrence worries that “this exception would give the first person who uses a mark in a title to an artistic work a monopoly over the use of that mark in the titles to other artistic works.” [An unfortunate contrast to the majority—that claim skips over the requirement of trademark function. Though such function is too easy to claim, and that risk might justify some prophylactic rule, the title-v-title exception nonetheless doesn’t provide any “monopoly” in the absence of secondary meaning.]

What, the concurrence asks, might justify a title-v-title exception? Obviously, titles warrant “the same degree of First Amendment protection as the other parts of an artistic work. … The title of an artistic work is almost always itself artistic because it conveys an idea or point of view about the work.” [Citing Punchbowl.] From the defendant title-user’s perspective, “it makes little sense to establish an exception to Rogers’s First Amendment protections in cases involving titles—an area where First Amendment protection should arguably be higher, not lower. At a minimum, there is nothing about titles that reduces the weight of the First Amendment interests against Lanham Act liability identified in Rogers” (my emphasis).

Or we could have a vision of the First Amendment where government may grant exclusion rights to some speakers to improve the speech environment overall. “The implicit idea behind the Rogers footnote may be that, in a true title-versus-title dispute, both the plaintiff and the defendant have a First Amendment interest on their side.” But that isn’t good enough, since the First Amendment is a nonintervention regime where ideas fight it out in the marketplace.

But liability under the Lanham Act gives priority in the marketplace of ideas to whoever speaks first and silences the speech of the second speaker…. Even if both parties are using a trademark in the title of an artistic work, the First-Amendment question is the same: should the court invoke the Lanham Act to silence the second speaker’s speech? And the answer should be the same as well. “The First Amendment forbids the government to regulate speech in ways that favor some viewpoints or ideas at the expense of others.” Matal v. Tam, 137 S. Ct. 1744, 1757 (2017)…. Absent a neutral time, place, or manner restriction, one person’s right to speak cannot justify silencing a second person’s speech. Another way to say it: no one has a First Amendment right to stop someone else from speaking.

Trademark liability is a bad idea if the accused use is artistic and not expressly misleading, and it isn’t a better idea when the trademark right is asserted by another speaker.

This could easily become viewpoint discrimination. The court posited a work that used a company’s trademark

as the title of a documentary about its business, which casts the business in a flattering light. If someone later produces a documentary that casts the company in an unfavorable light, the company could wield its trademark and the title-versus-title exception to require that the second documentary not use the company’s mark in its title. The result is that the company’s favorable documentary would have an advantage in the marketplace of ideas over the critical documentary—only the company’s documentary would be able to identify itself by using the mark. Under the First Amendment, the government has no business promoting the first documentary over the second. It simply doesn’t matter that the favorable documentary is also an artistic work.

[My biggest quibble with this is that there’s a strong likelihood courts would figure out other ways to dismiss such claims early, whether by hiking the secondary meaning pleading standard or as nominative or descriptive use as a matter of law or otherwise—but given the costs of litigating claims and the importance of strong guardrails to prevent the large from silencing the small, a prophylactic rule is certainly justified, given the vanishingly tiny percentage of valid claims of this type.]

Finally, the strongest justification for the title-v-title exception is the public interest against confusion between the sources of two artistic works. Moviegoers should be able to identify the movie they want to see. This justification is at least consistent with the core idea of trademark law. But Rogers itself already solves this problem, because it doesn’t protect “parts of artistic works— whether titles or not—that ‘explicitly mislead’ as to their source or content.”

[First, there’s a deadly ambiguity in “parts”—could you argue that a title is explicitly misleading if you can’t figure out who made the work from the title alone? Second, of course, confusing and explicitly misleading are two very different things—even “fraudulent” and explicitly misleading are two very different things, which is one reason that Lanham Act false advertising cases have developed workarounds to treat deliberately misleading ads the same way as explicitly false ads. A key question for any First Amendment scrutiny of trademark law is what kind of government interest there is in prohibiting non-fraudulent behavior that nonetheless results in consumer confusion of, say, 12%.]

Anyway, the exclusion for explicit misleadingness “is already consistent with the historical and traditional goals of trademark law. There is no need for a separate exception that applies to “confusingly similar” titles alone.” One could argue that confusion can occur even without explicit misleadingness, but that “strays from the core historical justification of trademark law, which is identifying the source of a good.” [There actually has to be a very thick theory of source identification underlying this—but it is certainly true that almost all the surveys in Rogers cases (and many non-Rogers cases) get most of their oomph from confusion over sponsorship, affiliation, or approval, and to say that avoiding source confusion is a compelling or substantial government interest is not to say that avoiding those other kinds of confusion is as well.]

Anyway, it’s just as possible for a use of a mark that’s not a title to be “confusingly similar” to a title. [I think the Rogers reasoning is more about false positives: it’s equally possible, but much more likely, that someone who’s developed secondary meaning of a title as a title is correct when they allege material confusion than it is that there was material confusion when, e.g., Campbell’s Soup contemplated suing Warhol for his Campbell’s Soup series.]

Additionally, the concurrence reasoned, title-v-title is impractical in application even if ok in principle. “The facts and procedural history of this case convince me that it is not a workable test to apply.” The concurrence agreed that here, there wasn’t evidence of trademark function. But: “Famous trademark holders use their marks to brand and market all sorts of goods—some of which are artistic in nature…. If Starbucks uses its mark as the title to a music album that it sells in its coffee shops, does a dispute about a book or documentary with “Starbucks” in the title fall under a title-versus-title exception? A broad understanding of title-versus-title would give trademark holders a powerful a tool to stifle expression by merely placing their mark in the title of an artistic work that they endorse. That doesn’t seem right.”

We could try to limit title-v-title to “only when the primary purpose of a trademark is to identify the source of an artistic work.” But how will courts decide that? “Does it matter which use of the mark is more famous? If a commercial establishment airs a TV show about itself, and the TV show’s fame rivals that of the establishment, would the title-versus-title exception then apply to an unauthorized book or documentary that used the establishment’s name in its title? Who knows.” [Paging Netflix’s Blockbuster.]

A little uncertainty is fine. “But we should not expect a judicially created defense to be so complicated that a court needs extensive fact-finding just to determine if an exception to that defense is implicated. And certainty is especially important in an area like this one where even the prospect of liability has the effect of chilling constitutionally protected speech. See Glynn Lunney, Trademark’s Judicial De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly, 106 Calif. L. Rev. 1195, 1201 (2018).”

Also, applying title-v-title just means doing regular confusion analysis, instead of limiting the inquiry to explicit misleadingness.  But “[i]t cannot be that a defense against Lanham Act liability fails simply because a defendant would otherwise be liable under the Lanham Act. If proving a defense requires disproving liability, it is no defense at all.” [This part’s … invited error. Rogers doesn’t work like a true defense, no matter how much people shorthand it as such. It’s a replacement jurisdictional test: if defendant’s accused product is an artistic work, then the Lanham Act won’t apply unless, etc. So it doesn’t need to differ from the underlying confusion test. Also, the Second Circuit has dealt with this problem by requiring a “particularly compelling” showing of confusion in artistic work-v-artistic work cases, which it said was consistent with Rogers.  But district courts in the Second Circuit then confused the matter somewhat by taking that holding—in which the court of appeals applied a sort of quick-look analysis of the Polaroid factors—as standard for all Rogers cases, even non-title-v-title ones.]


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