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.”
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| 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.
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| MTV Floribama Shore logo |
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| 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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