Rogers v. Grimaldi lives on, at least for work content

Of note because the lawsuit was brought at all, suggesting that trademark owners are willing to try to roll back any First Amendment protections for noncommercial speech.

Pepperdine University v. Netflix, Inc., No. 2:25-cv-01429-CV (ADSx), 2025 WL 632983 (C.D. Cal. Feb. 26, 2025)

Pepperdine sued Netflix for Lanham Act trademark infringement, contributory infringement, dilution, false advertising, and coordinate state claims based on Netflix’s Running Point series, which depicts a team known as the Waves. The court denies a TRO because Rogers is still good law, at least for things that aren’t titles.

Pepperdine’s athletic teams have been known as the “Waves” since the University’s founding in 1937, and it has registrations for WAVES marks. 

examples from complaint

Running Point was scheduled for release yesterday. It’s an “original comedic television series” created by Mindy Kaling and Warner Bros. about a “very dysfunctional family” who owns and manages a “high-profile, multi-billion-dollar basketball franchise and arguably the most famous professional team in all of sports, the Los Angeles Waves.” Pepperdine alleged that the fictional Los Angeles Waves team uses the word “WAVES” with a “strikingly similar font” and similar colors. An image in the Running Point trailer allegedly includes a framed jersey with the number “37,” similar to that worn by Pepperdine’s mascot and denoting Pepperdine’s founding year. Pepperdine also alleged that the story depicted in Running Point does not align with Pepperdine’s values.

comparisons from complaint

Jack Daniels cited Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (2002) (Barbie Girl) and University of Ala. Bd. of Trustees v. New Life Art, Inc., 683 F.3d 1266 (2012) (sports art), and Louis Vuitton Malletier S. A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012) (use of “Louis Vuitton” to describe luggage in movie) with approval as non-trademark uses.  

Post-Jack Daniels cases have also applied Rogers to non-title uses. Haas Automation, Inc. v. Steiner, No. 24-CV-03682-AB-JC, 2024 WL 4440914 (C.D. Cal. Sept. 25, 2024) (use of mark on book’s front cover, back cover, and on several pages, but mark was “not used to tell the consumer who published the book or the source of the book”; mark told the consumer what the book was about and who the author worked for); JTH Tax LLC d/b/a Liberty Tax v. AMC Networks Inc., 694 F. Supp. 3d 315 (S.D.N.Y. 2023) (use of fictional tax preparation business name in Better Call Saul).

Photos, including on back cover, from Guenther Steiner's book 

Surviving to Drive: A Year Inside Formula 1, recounting his experiences as Team Principal of the Haas F1 Team 

This is distinct from cases like Punchbowl, which involved use in a business name, or Mar Vista Entertainment, LLC v. THQ Nordic AB, No. 2:23-cv-06924-MEMF (SSC), 2024 WL 3468933 (C.D. Cal. July 8, 2024) (rejecting application of Rogers in a dispute between the owner of the rights to the Alone in the Dark videogame franchise, and entities who released a horror film titled Alone in the Dark).

The court found no use of “Waves” or related indicia as source indicator. The “product” at issue was Running Point, the series, and defendants didn’t suggest Pepperdine was the source. The title cards confirmed that Netflix, Warner Bros., and Mindy Kaling are responsible for the series. They didn’t use Waves in the title (sigh), and, there was an express statement that the series is a fictional work, and “[a]ny similarity to any actual persons ... events, firms and institutions or other entities, is coincidental and unintentional.” “Ultimately, on this record, there is no evidence that any viewer would be misled regarding the source of the series.” (That is not a precondition for Rogers applying, though the court treats it as such; any such precondition makes Rogers irrelevant, at least to source confusion.)

complaint's social media "evidence"

The use of Waves was artistically relevant: it “was chosen as a nod to the real-life Lakers, whose team name also alludes to a body of water.” It also evokes the Los Angeles area and the “Southern California ‘vibe,’ associated with beaches, sun, surfing, and waves.” Nor was there any explicit misleadingness about source. “Neither Pepperdine nor the Waves Marks appear in the title cards for the series. There is therefore no implicit, let alone explicit statement that misleads the consumer as to the source of the series.”

Of note, not all is lost for Rogers for titles: Down to Earth Organics, LLC v. Efron, No. 22-CV-06218 (NSR), 2024 WL 1376532 (S.D.N.Y. Mar. 31, 2024), applied Rogers to the use Netflix and Zac Efron of the phrase “Down to Earth” for the documentary series entitled Down to Earth with Zac Efron. That court found that the defendants were “undoubtedly using ‘Down to Earth’ simply to identify the subject matter and tone of the Series.”