The TMCA

Photo by Sarah Robertson The Dorsey Trademark, Copyright + Advertising team is back from the 2025 International Trademark Association Meeting. It was one for the books. We mixed and mingled with old and new colleagues and as well as our friends from around the world. In between all the meetings and social events, we did manage to attend a few of the important panels and of course, our committee meetings. Here are the highlights: AI-Driven Advertising: Copyright Issues in the New Frontier – This was a lively and engaging panel that focused on managing the chaos that the burgeoning use of AI by companies and independent contractors has caused relating to ownership and authorship of AI-created content. The panel several times reiterated the mantra: Be Fair, Be Bold, Be Reasonable. They encouraged companies to ask whether they actually need to own the content that is created. They also discussed contract clauses “from the wild” and pointed out what works and what can be unreasonable. The most important takeaway was to make sure that whoever is using AI to create content is documenting the process carefully, regardless of whether it is a vendor or an employee. This is because the Copyright Office will require an explanation as to the use of AI to determine whether, and how much of, a work is registrable. USPTO Update: Fireside Chat with Acting Under Secretary of Commerce for Intellectual Property and USPTO Acting Director Coke Morgan Stewart – Acting Director Stewart answered questions about the PTO’s direction under the current administration. She indicated that the USPTO has explained to the administration that as a fee generating agency – rather than a taxpayer funded agency – the USPTO should not be subject to current cost-cutting measures. Despite this, Acting Director Stewart believes the agency can continue to reduce pendency and maintain quality without filing open positions. She also indicated the USPTO is looking into the use of AI to help with review of design marks and to detect fraud. Our neighbors to the North, the Canadian Intellectual Property Office (CIPO), also provided updates about the examination process and efficiency, indicating that they hoped to clear their backlog in just a few months. Greenwashing, Greenhushing and Sustainably: INTA’s Brands and Sustainability Committee met at this year’s conference to discuss the hot topics of greenwashing and greenhushing. If you are not familiar, greenwashing is essentially the false marketing of green/environmental or sustainable claims. Most recently, we’ve seen a lot greenwashing in the context of aspirational claims, namely brands striving to be carbon neutral or reduce their emissions by a certain year. Greenhushing, on the other hand, is when brands do good for the environment, but don’t publicize it. Greenhushing can occur for various reasons including, fear of accusations of greenwashing, consumer perception that “green” products are more expensive or inferior, or even for political reasons. While we didn’t make any promises or claims, the committee was proud to support a digital business card initiative and encourage the use of reusable water bottles to help make the conference more sustainable for all. Crafting Successful Agreements with Branding Agencies: A roundtable discussion took place between practitioners from Canada, the UK, and US on how brands can best partner with their creative agencies and areas of best drafting practices for agreements between the two. Discussion of the scope of services and consideration of AI-generated work product dominated the conversation, including how best to allocate risk created by the use of AI particularly where this work product is specifically contemplated or where influencers are involved. Discussion of the extent of preliminary clearance work members of the group were carrying out on behalf of agencies, or that agencies were otherwise expected to conduct, also took place. An overall downward trend in full, in-depth trademark search orders more generally, as shared by the one of the leading search companies present, was also covered. The unique risks attached to working with smaller agencies, including the absence of enterprise software licenses, was also discussed. Law and Policy | Rules of the Road in Engaging with Celebrities, Influencers, and Fans: This session brought a global perspective to how companies interact with and negotiate with celebrities and influencers in relation to the promotion of their brands. The panelists focused on how they prioritize and make use of time and resources depending upon the nature and length of a promotion, as well as the potential impact of the promotional activities on their brands. Interestingly, in Argentina, many companies create specific scripts that must be used by influencers to help minimize regulatory and legal risks. Aside from potential pitfalls in agreements, the panelists also discussed deepfakes and artificial intelligence and the impact on their promotional activities and on their brands, as well as issues with poor influencer behavior and even taxation issues. Truly, an ever-evolving area as technology becomes even more intwined in the influencer landscape. Successfully Mediating IP Disputes: Key Insights and Practical Tips – INTA’s ADR Committee hosted a panel discussion on trademark mediation, highlighting the growing value of mediation in resolving IP disputes. Panelists emphasized its advantages over litigation, including lower costs, reduced risk, and the opportunity for creative, business-focused solutions. They discussed the qualities of effective mediators, such as neutrality, communication skills, and business acumen, and considered whether mediators should propose solutions or simply facilitate dialogue. The consensus favored a balanced approach that maintains neutrality while offering constructive suggestions. The discussion also addressed the importance of preparation, confidentiality, and having decision-makers present. Challenges of virtual mediation were noted, including distractions and reduced engagement, as well as the supportive but limited role of AI. Real-world examples illustrated the need for mediators to guide the process while allowing parties to retain control over outcomes. Annual Review of Trademark Cases: Always an attendee favorite, this session featured an overview of trademark decisions over the last 12 months lead by Theodore Davis of Kilpatrick Townsend and John Welch of The TTABlog fame. Notable decisions include those upholding the validity of the Lanham Act’s “names clause” (requiring written consent to register a mark containing a person’s name) under the First Amendment (Vidal v. Elster, 602 U.S. 286 (2024)), confirming that inaccurate patent claims may provide grounds actionable false advertising claims (Crocs, Inc. v. Effervescent, Inc., No. 22-2160 (Fed. Cir. 2024)), holding mere use of a party’s name in a judicial proceeding is not actionable under Lanham Act (Dieujuste v. Sin, No. 24-1522-cv (2d Cir. 2025)), confirming that the TTAB’s “something more” doctrine applies only to the relatedness of goods to services and not to goods to goods (In re Samsung Display Co., Ltd., No. 90502617 (T.T.A.B. 2024)), and clarifying that product color resulting from practicing an expired patent cannot also have trademark significance because the color is functional under the expired patent (CeramTec GmbH v. Coorstek Bioceramics LLC, No. 2023-1502 (Fed. Cir. 2025)). John Welch also recounted his top losing TTAB arguments, with the number one slot belonging to arguments that attempt to impart in real-world limitations to goods/services in an application/registration (since the TTAB typically only considers the goods/services as listed), and listed some of his pet peeves, such as using the word “trademark” as a verb (ironically used as such by the Supreme Court in its Elster decision).

40 years ago, I was the new kid in 6th grade – truly a terrible age in a young girl’s life to try and “fit in” at a new elementary school in a small town. But, one of my best memories from that year was procuring my first pair of blue and white checkered Vans shoes. Not many people had them where I lived, though the shoes had been around for nearly 20 years at that point. Even then I knew and appreciated the beauty of unique shoes, so imagine my delight in seeing a resurgence in the popularity of the shoes again in the marketplace the last handful of years, and the ability to add to my personal collection of awesome shoes. Vans are undoubtedly iconic. The shoes have been available since 1966, with a broad customer base, including skateboarders, BMX bike riders, celebrities, and people that just appreciate unique and functional shoes. Of its shoes, the “Old Skool” style is arguably instantly recognizable: The staple in the closet of any owner of Vans shoes comes with a price tag of about $60 for a pair of shoes, and Vans has worked with multiple artists and celebrities to create and sell special edition versions of its shoes. Special patterns, platforms, hi-tops, mid-tops . . . a marketable commitment to innovation that reaches the broadest base of consumers. MSCHF Product Studio, Inc. is a Brooklyn-based art collective with a mission to “use artwork to start a conversation about consumer culture . . . by participating in consumer culture.” MSCHF created the “Wavy Baby” sneaker purportedly as a parody of the Old Skool shoes, to serve as social commentary about the inherent consumerism in “sneakerhead culture.” MSCHF co-Chief Creative Officer explained that “The Wavy Baby concept started with a Vans Old Skool sneaker” “because no other shoe embodies the dichotomies between ‘niche and mass taste, functional and trendy, utilitarian and frivolous’ as perfectly as the Old Skool.” As a starting point, MSCHF took an image of a Vans Old Skool skate shoe, and then used a digital filter tool to transform the shoe “into the modern, wobbly, and unbalanced realities.” MSCHF then collaborated with musical artist Tyga as part of a marketing campaign in connection with releasing a limited run of the sneakers for purchase by consumers, with a hefty price tag of $220 per pair. Of course, Vans quickly caught wind of the campaign and, pending release of the Wavy Baby sneakers for purchase, sent cease and desist letters to both Tyga and to MSCHF. MSCHF nonetheless continued to promote its shoe campaign and launched a one-hour window sales promotion for consumers to purchase 4,306 pairs of Wavy Baby shoes, which sold out. (Here’s the math: $220 multiplied by 4,306 is $947,320) Not surprisingly, Vans filed suit in the U.S. District Court for the Eastern District of New York, including a federal claim of trademark infringement under the Lanham Act. It also filed a Motion for a Temporary Restraining Order and Preliminary Injunction, which was granted by the district court because “Vans had shown a significant danger of consumer confusion” and also that it would suffer irreparable harm without injunctive relief. Notably, the district court rejected MSCHF’s argument that its parodic work of artistic expression was subject to special First Amendment protections rather than the traditional likelihood of confusion test. As the court put it, while courts have “considerable leeway to parodists whose expressive works aim their parodic commentary at a trademark or a trademark product . . . they also have not hesitated to prevent a manufacturer from using an alleged parody of a competitor’s mark to sell a competing product.” In other words, a successful parody should simultaneously convey that it is not the original and is a parody. Given Vans’ significant collaborative efforts with artists and its visibility in the marketplace, as well as the manner in which MSCHF ran its advertising campaign and its sale of actual Wavy Baby shoes to consumers, the court concluded that “the Wavy Baby shoes on their face did not clearly indicate to the ordinary observer that MSCHF is not connected in any way with the owner of the target trademark.” MSCHF then appealed the decision to the U.S. Court of Appeals for the Second Circuit, which affirmed that MSCHF is not entitled to special First Amendment protections. In doing so, the court took into account the recent Supreme Court decision in the Jack Daniel’s Properties, Inc. v. VIP Products LLC case and the Rogers v. Grimaldi case, both of which provide guidance as to whether an expressive work is entitled to heightened First Amendment scrutiny. Where an artistic expression is in play, a trademark infringement claim may be more narrowly applied. The Second Circuit held in Rogers that the Lanham Act should not apply to “artistic works” as long as the defendant’s use of the mark is (1) artistically relevant to the work, and (2) not “explicitly misleading” as to the source or content of the work. The Supreme Court’s decision in Jack Daniel’s also clarifies when the Rogers test and its heightened First Amendment protections DO NOT apply – i.e., when the allegedly infringing mark is used as a source identifier for its own goods. The Second Circuit held that the Supreme Court’s Jack Daniel’s decision “forecloses MSCHF’s argument that Wavy Baby’s parodic message merits higher First Amendment scrutiny under Rogers” because the Wavy Baby shoes at issue were used “at least in part” for source identification. MSCHF made use of the Old Skool trademarks and trade dress, it included its own branding on the Wavy Baby sneakers, and it failed to include a disclaimer disassociating it from Vans or Old Skool shoes. Ultimately, MSCHF sold nearly $1,000,000 in shoes through the benefit of the good will that Vans owns in the Old Skool shoes and its distinctive branding. This use of Vans’ trademarks as a source-identifier to sell its Wavy Baby shoes to the general public works directly against parody protection under Rogers. “ . . . if a parodic use of protected marks and trade dress leaves confusion as to the source of the product, the parody has not “succeeded” for purposes of the Lanham Act, and the infringement is unlawful.” MSCHF’s ostensible mission is to “use artwork to start a conversation about consumer culture . . . by participating in consumer culture.” It certainly didn’t work out very well for them here.

Supreme Court Building in Washington, DC, United States The Supreme Court heard oral arguments in Vidal v. Elster this week, which asks whether refusing to register a trademark that criticizes President Trump violates the Free Speech Clause of the First Amendment. It seems the Supreme Court is poised to say it does not. This dispute dates back 2018, when Elster applied to register the TRUMP TOO SMALL mark for use on T-shirts and other apparel. The Trademark Office refused to register TRUMP TOO SMALL under Section 2(c) of the Lanham Act, which prohibits registration of any mark that “consists of or comprises a name, portrait or signature identifying a particular living individual except by his written consent” under certain circumstances. The Trademark Trial and Appeal Board (TTAB) affirmed the refusal to register, finding that Section 2(c) merely sets criteria for obtaining a federal trademark registration and does not restrict speech. However, as we previously reported, the Federal Circuit Court of Appeals reversed the TTAB, finding that Section 2(c) does impermissibly “chill speech” in this circumstance and may be impermissibly overbroad. In short, the Federal Circuit found that Elster’s intended use of the mark—to sell TRUMP TOO SMALL clothing that suggests President Trump’s policies and features are diminutive—was speech protected by the First Amendment and the government does not have a valid interest restricting speech critical of government officials or public figures. Questions from the Supreme Court Justices during the oral argument on Wednesday may suggest the Federal Circuit got this one wrong. The Justice Department, arguing on behalf of the United States Patent and Trademark Office, argued that Section 2(c) does not run afoul of the First Amendment because denying registration of the TRUMP TOO SMALL mark does not prohibit Elster from selling T-shirts with the slogan. Elster could still use the mark, he just would not have exclusive rights to the mark or any other benefits afforded by federal trademark registrations. It seems the majority of the Justices agree. At one point, Justice Alito even joked to the Justice Department “You don’t need my vote to win your case.” Justice Sotomayor indicated that this comes down to “first principles” the question being “is this an infringement of speech? And the answer is no.” She later told Elster’s counsel that “[y]ou’re not talking about stopping speech” rather: “You’re talking about not receiving government protection for activity that you would like to heighten protection for. It doesn’t stop you from selling.” Justice Kagan then pointed out that there is a long line of analogous cases indicating that the government can give or withhold benefits without restricting speech, suggesting this is such a case. Justice Gorsuch went on to note the “long and robust history about restricting names” from trademark protection and the several other limitations on registration such as marks that incorporate geographic names and descriptive terms. Chief Justice Roberts suggested that allowing Elster to register TRUMP TOO SMALL could actually suppress speech—Elster could prevent others from using the phrase to criticize President Trump by enforcing his trademark against them. The Chief Justice expressed concern that this suppression could be heightened if it causes a “race for people to trademark…Trump Too This, Trump Too That, whatever, and then particularly in an area of political expression, that really cuts off a lot of expression.” It appears that the Supreme Court is likely to find that Section 2(c), at least in this context, is not unconstitutional. Stay tuned to the TMCA for an update when the Supreme Court issues their opinion.

Humor matters, but it’s not the most important thing when considering a trademark infringement or dilution claim. In a decision with references to The Hangover Part II, Aqua’s song “Barbie Girl” (good luck not getting that stuck in your head if you grew up in the 90’s…), Tommy Hilfiger, and Harley-Davidson, the Supreme Court clarified the interaction of First Amendment protections, on the one hand, and trademark infringement and dilution claims involving “expressive works,” on the other hand. The bottom line is this: where an accused infringer uses a trademark like a trademark (i.e., to designate the source of its goods or services), the traditional likelihood of confusion analysis applies, even if the mark is also used in an expressive manner. First Amendment considerations like parody and commentary might impact that analysis, but there’s no threshold First Amendment consideration (like the Rogers test discussed below) that would prevent or bar this traditional analysis. Further, marks used in connection with commentary, criticism, and parody are not exempt from dilution claims when the mark is being used to designate the source of goods or services. As discussed in a prior TMCA blog post, this case arises out of Jack Daniel’s trademark infringement and dilution claims against VIP Products based on its “Bad Spaniels” dog toy. The Jack Daniel’s bottle and VIP dog toy are shown here: Beyond the similarities in the bottle and label, VIP’s product contained other clear nods to Jack Daniel’s, including using “Bad Spaniels” instead of “Jack Daniel’s” and the wording “The Old No. 2, on Your Tennessee Carpet” instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey.” The packaging also included a disclaimer, stating, “This product is not affiliated with Jack Daniel Distillery.” VIP claimed the dog toy was an obvious parody of Jack Daniel’s products and, thus, entitled to First Amendment protection under the Rogers test for the infringement claim and also entitled to a statutory exception to the dilution claim as a parody of a famous mark. When an “expressive work” is involved, the Rogers test requires dismissal of a trademark infringement claim unless the plaintiff can show that either (1) the challenged use of a mark has no artistic relevance to the underlying work or (2) the work explicitly misleads as to the source or the content of the work. See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The District Court ruled in Jack Daniel’s favor, rejecting application of the Rogers test because VIP used the mark to identify its own goods. It further concluded that the dilution exception did not apply for essentially the same reason. VIP appealed to the Ninth Circuit, which reversed and remanded, holding that: (1) the infringement claim could not stand because the “Bad Spaniels” dog toy is an expressive work entitled to First Amendment protection under the Rogers test since it “communicate[d] a humorous message,” and (2) VIP’s parody shielded it from liability for dilution under the non-commercial use exception. VIP Prods. LLC. V. Jack Daniel’s Props., 953 F.3d 1170 (9th Cir. 2020). On remand and given the Ninth Circuit’s directive, the District Court concluded that Jack Daniel’s could not satisfy the Rogers test and granted summary judgment to VIP. The Ninth Circuit summarily affirmed, and the Supreme Court granted Jack Daniel’s writ of certiorari to determine: Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark infringement claims. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act. In the Supreme Court’s majority opinion authored by Justice Kagan (the decision was unanimous, but with two concurrences), the Court first addresses the question, “Should [Jack Daniel’s] have had to satisfy the Rogers threshold test before the case could proceed to the Lanham Act’s [the U.S. trademark law] likelihood-of-confusion inquiry?” The Court found it should not have, stating: Without deciding whether Rogers has merit in other contexts, we hold that it does not when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods… When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression. The Court parts ways with the Ninth Circuit’s previous holding, making it clear that a mark’s expressive content does not result in automatic application of the Rogers test. Despite fulsome briefing on the topic, the Court does not actually rule on the validity of Rogers. However, it certainly spends quite a bit of time considering the case’s history and application over the last 30+ years since its inception, citing to cases such as Mattel, Inc. v. MCA Records, Inc., 296 F. 3d 894 (9th Cir. 2002) (finding the song “Barbie Girl” did not use Barbie’s name in a source-identifying capacity and, thus, First Amendment protection was warranted) and Louis Vuitton Mallatier S. A. v. Warner Bros. Entm’t Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012) (finding that mention of “Louis Vuitton”—pronounced “Lewis” in the film The Hangover Part II—satisfied the Rogers test because the film did not use the trademark as its “own identifying trademark.”). These courts (including the home of the Rogers test in the Second Circuit) have routinely declined to apply the Rogers test when the marks in question are being used as true trademarks (i.e., to designate source rather than for commentary or pure expression). This aligns with the primary purpose of the Lanham Act, which makes explicitly clear that, when another party uses a mark in a way which confuses consumers as to the source of the goods, infringement has occurred. 15 U.S.C. § 1114(1). The Court emphasizes that applying the Rogers test in all instances where a mark conveys other expressive content (such as a humorous message) could result in “Rogers [taking] over much of the world. For trademarks are often expressive in any number of ways.” The Court also cites to every trademark attorney’s best friend, McCarthy on Trademarks and Unfair Competition, which agrees that the Ninth Circuit’s expansion of Rogers “potentially encompasses just about everything” because names, phrases, symbols, designs, and their varied combinations often “contain some ‘expressive’ message” unrelated to source. 6 McCarthy on Trademarks and Unfair Competition § 31:144.50 (5th ed. 2022). Because VIP conceded it was using the BAD SPANIELS trademark and trade dress to “identify and distinguish [VIP’s] goods” and to “indicate [their] source,” the Court concluded that Rogers does not apply. Though VIP attempted to backtrack on those comments during oral arguments, the Court was not persuaded, pointing to the below hangtag that clearly shows the BAD SPANIELS mark situated similarly to the company’s registered SILLY SQUEAKERS Logo. Despite the inapplicability of Rogers, the Court explained that, on remand, the lower courts should still consider the thrust of VIP’s argument because “[a] trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion.” In other words, where a trademark is truly used as a trademark, expression must be considered in the context of the normal likelihood of confusion analysis rather than as a threshold question. It will be interesting to see whether this directive results in amendment of the infringement factors used by the various circuits, such as the Sleekcraft factors in the Ninth Circuit. In the second portion of the opinion, the Court swiftly dispatches the Ninth Circuit’s holding that the use of humor and parody constitute noncommercial use, which is excluded from dilution liability under the Lanham Act. See 15 U.S.C. §1125(c)(3)(C). The Lanham act provides an exclusion for a claim of dilution when use of a mark constitutes “fair use”, which specifically covers uses “parodying, criticizing, or commenting upon” a famous marks owner. Id. at §1125(c)(3)(A)(ii). Critically, however, this exclusion does not apply when the use is “as a designation of source for the person’s own goods or services.” Id. In line with its analysis of the first question presented, the Court concludes that, given “the fair-use provision’s carve-out, parody (and criticism and commentary, humorous or otherwise) is exempt from liability only if not used to designate source.” The Ninth Circuit’s expansive view of the non-commercial use exclusion does not align with Congress’s express limit placed on the fair-use exclusion, the Court found. The concurrences also contain some interesting tidbits. Although the majority opinion declined to rule on the validity of Rogers, the concurrence by Justice Gorsuch (joined by Justices Thomas and Barrett) directly calls into question Rogers, stating that it is “not entirely clear where the Rogers test comes from” and that “it is not obvious that Rogers is correct in all its particulars.” It warns lower courts that they “should be attuned to that fact.” The concurrence by Justice Sotomayor (joined by Justice Alito) warns that courts should “treat the results of surveys with particular caution” where “trademark infringement involves a parody” since “there is a particular risk in giving uncritical or undue weight” to these surveys. It points to one survey answer in this case that will give most IP attorneys instant heartburn: “The bottle is mimicked after the Jack Daniel BBQ sauce. So they would hold the patent therefore you would have to ask permission to use the image.” In the coming months, the lower courts will likely hear from Jack Daniel’s and VIP as they hash out the likelihood of confusion and dilution aspects of this case, and other courts will continue to refine the Rogers test (so long as it stands) and likelihood of confusion analysis articulated in this case. Keep an eye out on the TMCA blog for further coverage.  

Justices of the Supreme Court will soon put on their whiskey glasses to decide the proper tests for infringement and dilution claims involving humorous use of another’s trademark. The Court granted certiorari in November to consider a dispute between VIP Products, LLC (“VIP”) and Jack Daniel’s Properties, Inc. (“Jack Daniel’s”) over VIP’s “Bad Spaniels” dog toy, which Jack Daniels contends infringes and dilutes its famous trademarks and which VIP asserts is permissible under the First Amendment. As discussed in a prior TMCA post, the dispute arose in 2014, after Jack Daniel’s sent a letter demanding that VIP cease all sales of its “Bad Spaniels” dog toy, which VIP had been selling since July 2013. A week later, VIP sought declaratory judgment in the U.S. District Court for the District of Arizona, arguing that it had designed the “Bad Spaniels” label to incorporate a few elements of the Jack Daniel’s label design, but had added a number of additional elements to make it clear that the product was a parody and entitled to First Amendment protection (for example, changing the Jack Daniel’s “Old No. 7 Brand Tennessee Sour Mash Whiskey” to “The Old No. 2, on Your Tennessee Carpet”). Jack Daniel’s counterclaimed, alleging trademark infringement, dilution, and unfair competition. The District Court ultimately granted Jack Daniel’s motion for partial summary judgement, finding VIP was not entitled to the defenses of nominative and First Amendment fair use, because it did not use Jack Daniel’s’ identical marks or trade dress. After a four-day bench trial, the District Court ruled in favor of Jack Daniel’s and permanently enjoined VIP from selling the “Bad Spaniels” dog toy. VIP appealed to the Ninth Circuit, which reversed the District Court on the grounds that: (1) the “Bad Spaniels” dog toy is an expressive work entitled to First Amendment protection, and (2) the District Court failed to require that Jack Daniel’s satisfy at least one of the two prongs of the Rogers test. VIP Prods. LLC. V. Jack Daniel’s Props., 953 F.3d 1170 (9th Cir. 2020); see also Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (holding that the Lanham Act only applies to expressive works if the plaintiff establishes that the defendant’s use of the mark either: (1) is not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work). On the dilution claim, the Ninth Circuit also reversed the District Court, because, although VIP used the Jack Daniel’s trade dress and bottle design to sell the dog toy, these elements were also used to convey a humorous message which was protected by the First Amendment, and thus “noncommercial.” Although Jack Daniel’s petitioned for a writ of certiorari in 2020 seeking review of the Ninth Circuit’s decision, the Court denied the petition. On remand, the District Court found that, based on the Ninth Circuit’s decision, the “Bad Spaniels” toy was entitled to First Amendment protection because Jack Daniel’s could not satisfy either prong of the Rogers test. The Ninth Circuit summarily affirmed. In August 2022, Jack Daniel’s again petitioned for a writ of certiorari asking the Court to consider the following questions: Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark infringement claims. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act. Apparently persuaded the second time around, the Court granted Jack Daniel’s’ petition and agreed to hear the case. In its writ, Jack Daniel’s contends that that the Ninth Circuit’s ruling “departs from the decisions of every other circuit to decide this question” and claims it “paves the way for companies like respondent to unleash mass confusion in the marketplace.” It appears that the International Trademark Association agrees and filed an amicus brief arguing: Since the Second Circuit’s decision in Rogers, all other circuits but the Ninth have faithfully limited Rogers to traditionally expressive or artistic works like movies, art, books, and the like. The Ninth Circuit’s decision below continues that circuit’s inappropriate (and concerning) steady expansion of Rogers to any product or service that merely contains discernible expression. This unwarranted expansion beyond the roots of Rogers creates a sharp circuit split on how to balance competing claims of trademark protection and free speech in the context of ordinary commercial products. The Ninth Circuit’s decision threatens a trademark infringement framework that has been intact and applied for nearly a century. Ultimately, if the Court sides with VIP, it would seem to represent a fairly significant expansion of how the Rogers test has typically been applied since it was first articulated in 1989. Notably, an expansion of the types of works covered under the Rogers test would likely leave brands with a narrower scope of protection when dealing with potential infringers claiming “parody” and “artistic expression.” Further, given that the Court is currently considering the Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith case (which involves fair use in the copyright context and which the TMCA has covered here), the Court appears eager to define the role of the First Amendment in intellectual property cases. And the opinion in the Warhol case will almost certainly provide insight into the Court’s likely treatment of the issues in this case. We will be following this case closely, so keep an eye out for our eventual breakdown of the Court’s opinion.

In MGFB Properties, Inc. v. Viacom Inc., the U.S. Court of Appeals for the Eleventh Circuit recently sided with Viacom and its subsidiary MTV in a trademark action brought by the owners of the Flora-Bama Lounge, who alleged infringement by the television series MTV Floribama Shore. The court held that the title of MTV’s show was protected by the First Amendment, applying the familiar Rogers v. Grimaldi test, which assists courts in balancing Lanham Act protection against free speech. The Flora-Bama Lounge bills itself as “the most famous beach bar in the country.” The lounge faces Orange Beach on the Florida-Alabama state line. Established in 1964, the Flora-Bama Lounge’s owners operate a restaurant and liquor store that also use the Flora-Bama name and host entertainment and athletic events. In 2013, the owners obtained a federal trademark registration for FLORA-BAMA for bar and restaurant services, among other things.   The lounge and the trademarks have made a splash in popular culture (or in the more legalistic telling of the Eleventh Circuit: “have been featured in artistic works by third parties”). Jimmy Buffett’s 1984 song Ragtop Day mentions a plan to “Get ourselves a cool one at the Florabama,” Kenny Chesney named a tune after the establishment, crooning: Sitting here at the Flora-Bama ’Bout to open up a big old can of Good times, unwind Fall in and out of love in the same night Can’t say I got a whole lot of cares I’m in the red neck Riviera It’s getting crazy, getting hammered Sitting right here at the Flora-Bama At the Flora-Bama Chesney packed 25,000 attendees on condo balconies, the beach, and boats near Flora-Bama Lounge for a 2014 concert he called “Flora-Bama Jama,” which was broadcast on Country Music Television, another Viacom channel. Fellow country music performer Neil Dover similarly penned a tribute to FloraBamaTime, where “you leave the world behind.” The lounge has also been described in books, films, and major news outlets. The conflict between the parties had its roots in Jersey Shore, MTV’s television series featuring 20-somethings who live in a beach house in New Jersey. Wanting to ensure that readers who have not watched Jersey Shore understand the show, the Eleventh Circuit explained how the Jersey Shore cast was perceived as belonging to a “sub-culture centered on a love of clubbing, taking care of one’s physical appearance, and a dedication to family and Italian culture.” That’s one way of putting it. Regardless of description, Jersey Shore was a hit that lasted six seasons and spawned several spinoffs. In 2016, MTV sought to revive the Jersey Shore franchise by developing a new series focused on Southern beach culture. That effort would become MTV Floribama Shore. The show’s name began with MTV’s goal of a Shore series that would highlight Southern beach culture. MTV also considered “Florida Shore,” but didn’t feel like that would capture the Gulf Coast setting and might be associated with Miami, which MTV thought had its own culture. MTV also considered “Gulf Shore,” but passed on that name because it sounded too much like another MTV show, Siesta Key. MTV settled on “Floribama” because that name would offer a sense of the subculture and part of the country MTV desired to feature. MTV was aware of the Flora-Bama Lounge during its development, mentioning it in an internal slide deck profiling the region. MTV also commissioned third-party marketing research, which found that 34% of 300 young people familiar with the region had heard the term “Flora-bama” and about half of them identified it as the lounge. Other research suggested that the term “Flora-bama” was either unknown or thought to refer strictly to the lounge. Just before MTV Floribama Shore was set to premiere in 2017, the lounge owners sent a cease-and-desist letter insisting that MTV change the name. MTV declined, the show premiered as scheduled, and it aired for four seasons. In 2019, after the second season aired, the lounge owners sued in Florida federal court, claiming trademark infringement and related torts. They alleged actual confusion, such as lounge patrons asking musicians if they had ever met cast members of the show or inquiring of staff as to when the cast would be in the lounge. According to the lounge owners, an elderly patron even criticized the lounge “for allowing MTV to air such a terrible depiction of the Flora-Bama.” The lounge owners also pointed to expert testimony claiming the show blurred internet search results for the lounge and the show, and that 22% of respondents to a survey were confused as to the sponsorship, approval, or affiliation between the lounge and the show. In response, MTV moved for summary judgment—and won. The Eleventh Circuit upheld the district court’s conclusion that the title MTV Floribama Shore was protected by the First Amendment and thus was a permitted use of the “Flora-bama” name. The court relied on the test for balancing trademark and free speech rights established by the Second Circuit Court of Appeals in Rogers v. Grimaldi—a test we’ve described before. Rogers holds that the title of an artistic work is not trademark infringement “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Applying the first part of the test, the Eleventh Circuit concluded that the name MTV Floribama Shore was “well above the artistic reference threshold.” “Floribama” describes the subculture profiled in the series, as well as the geographic area where that subculture exists—“Flori” for Florida and “bama” for Alabama. Also relevant was the addition of MTV’s house mark, and “Shore” to tie the series to the Jersey Shore franchise. The court rejected the lounge owners’ contention that a trademark must be necessary to the name of an artistic work for the work to receive First Amendment protection. The court held that “a title will be artistically relevant when it is necessary to use the title” but that does not mean that “a title must be strictly necessary to be artistically relevant.” (And in the Eleventh Circuit’s view, it would be improper for courts to decide what forms of expression are “necessary” to an artistic work.) Next, the court analyzed the second part of the Rogers test—whether the MTV Floribama Shore title explicitly misleads as to the source of the work. In a previous decision, the Eleventh Circuit had refined this question as “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.” The court concluded neither had occurred here. The court rejected the lounge owners’ survey evidence because there was no suggestion that any misunderstanding was engendered by an overt claim of affiliation by MTV. The court observed that the “MTV” house mark and “Shore” were added to the “Floribama” name, which undercut the lounge owners’ argument that the show’s name was intended to mislead. And although the owners charged that MTV’s use of the name was intentional, the court pointed out that even intentional copying of a mark does not supplant the Rogers test, a case in which a title received First Amendment protection even though it intentionally copied a mark. Finally, the court addressed a much-discussed footnote in Rogers, which provides that the test in Rogers would not apply when an artistic title is confusingly similar to other titles—the so-called “title-versus-title” exception. In the thirty-plus years since Rogers, no other circuit court has explicitly adopted the footnote’s rule. The Eleventh Circuit decided it need not resolve that legal question because the footnote exception didn’t apply. Here, the lounge owners’ Flora-Bama mark is not the title of an artistic work—it is a trademark used to identify the lounge and other businesses. The lounge owners sought to portray third-party use of the mark, such as by Kenny Chesney, as meaning that their mark was used as a title. The court rejected this theory, relying on basic trademark law. The third parties who used “Flora-Bama” in the titles of their artistic works did not do so to suggest that the works originated from the lounge. The titles identify what the artistic works are about, not who produced them. After all, Chesney might have been “sitting right here at the Flora-Bama,” but there was no evidence that the lounge was the source of his song.

photo by Arthur Shevtsov / Shutterstock.com Sometimes, the best place to determine whether a work qualifies as art is in a courtroom. In a recent decision, Judge John H. Chun of the District Court for the Western District of Washington found that a driving simulator video game, Spintires, is an expressive work entitled to First Amendment protection. See Saber Interactive Inc. v. Oovee, Ltd., No. 2:21-cv-01201-JHC, Dkt. 51 (W.D. Wash. Oct. 6, 2022). Spintires simulates driving through various wilderness tracks in a variety of real-world vehicles. While Oovee has licensed some of the vehicles depicted in Spintires, it has not licensed all of them. For the unlicensed vehicles, Oovee provides the following disclaimer: All other trademarks are the property of their respective owners. All characters and vehicles appearing in Spintires® are fictitious (except where licensed). Any representations to real-life persons (living or dead), or real-world vehicle designs (except where licensed), is purely coincidental. It is, of course, one of the unlicensed vehicles appearing in Spintires, the K-700, that is at the heart of the dispute in Saber Interactive v. Oovee. photo by Filmbildfabrik / Shutterstock.com In November 2015, Oovee released an update to Spintires that included, and seemed to emphasize, the K-700, which is a distinctive tractor with articulated steering. Peterburgsky traktorny zavod JSC, which is known under the brand name “Kirovets,” manufactures and sells the K-700. Kirovets exclusively licensed certain of its intellectual property rights in its vehicle designs to a video game developer call Saber, which sells its own driving simulation video game, Mudrunner. The license with Kirovets gives Saber the right to take legal enforcement action against infringers of Kirovets’s licensed IP rights. Oovee’s unlicensed use of the K-700 in Spintires led Saber to sue Oovee on September 2, 2021. On April 26, 2022, Saber filed a Second Amended Complaint (“SAC”) which included three claims: (1) unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125; (2) unfair competition under Washington’s Consumer Protection Act (“WCPA”), Washington Revised Code (“RCW”) 19.86.010; and (3) unjust enrichment. Oovee moved to dismiss the SAC under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim, arguing that the First Amendment bars Saber’s claims, and, even if it does not, Saber failed to plead facts sufficient to survive a motion to dismiss. The SAC alleged that Oovee engaged in unfair competition under the Lanham Act by using Saber’s trademark and trade dress without authorization. Saber argued that the First Amendment does not bar its unfair competition claim because Spintires is not an expressive work, and Spintires’ disclaimer is misleading. In the Ninth Circuit, courts use the “likelihood-of-confusion” test when evaluating an infringement claim under the Lanham Act unless artistic expression is at issue. When the alleged infringement involves artistic expression, courts apply a test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which balances the First Amendment interest in protecting artistic expression against the interest in securing trademark rights under the Lanham Act. Rogers requires a defendant to make a threshold showing that its allegedly infringing use is part of an expressive work. If successful, the plaintiff then has the heightened burden of showing the likelihood-of-confusion test and one of Rogers’s two prongs: (1) the unauthorized use of the trademark has no artistic relevance to the underlying work whatsoever, or (2) the use of the trademark explicitly misleads as to the work’s source or content. Saber argued that Spintires is not an expressive work because it does not express ideas or social messages, it has no characters, dialogue, or plot, its music is simplistic and only in the background, and the simulated world is generic and computer-generated. Judge Chun cited a U.S. Supreme Court case and a Ninth Circuit case holding that video games may qualify for First Amendment protection, and then discussed another case in which the Ninth Circuit affirmed a district court’s conclusion that a race car driving simulation video game contained express elements such as the race car drivers being characters and the plot being the drama of the races. VIRAG, S.R.L. v Sony Computer Entertainment America LLC, No. 3:15-cv-01729-LB (N.D. Cal. Aug. 21, 2015), aff’d, 699 F. App’x 667, 668 (9th Cir. 2017). In view of the case law, Judge Chun determined that many of the features of Spintires alleged in the SAC establish that Spintires is an expressive work, explaining that “[u]sers interact with the virtual world by selecting a vehicle (which is like a character) and by navigating the virtual environment (which is like a plot).” As to the first Rogers prong, Saber failed to explain how Oovee’s use of the K-700 is artistically irrelevant, so the court did not consider the first prong. The court also determined that Saber could not meet the second prong, that Oovee’s use of the K-700 explicitly misleads consumers about its source or endorsement. The court concluded that Saber did not satisfy the second prong because it failed to point to an expressly misleading statement. The court noted that, while “the disclaimer is far from a model of clarity,” it does not explicitly mislead customers into thinking that Saber or Kirovets is associated with Spintires. Moreover, use of the K-700 mark alone is insufficient to satisfy the second Rogers prong. The court dismissed Saber’s claim for unfair competition under the Lanham Act, because the First Amendment protects Oovee’s use of the K-700. Under the same rational, the court also dismissed Saber’s claim for unfair competition under the WCPA. In addition, the court dismissed the trade dress claim because Saber failed to plead any facts to create a reasonable inference that the identified features of the K-700 are non-functional. Finally, the court dismissed the unjust enrichment claim because, under Rogers, Oovee did not impermissibly infringe Saber’s trademark rights and, therefore, did not receive a benefit at Saber’s expense. Accordingly, the court dismissed all claims against Oovee in the SAC but granted Saber leave to file a Third Amended Complaint. Saber Interactive is a win for anyone seeking validation for the idea that video games can be works of art, just like books, movies, etc. This decision also shows that courts take a broad view about what constitutes an expressive work in the context of video games. Video games do not require a traditional narrative structure, a memorable soundtrack, or stunning visuals to qualify for First Amendment protection. If a video game lets the player select their own vehicle, hop in, and take a drive through an interactive environment, that’s probably enough.

Image from Evan El-Amin / Shutterstock.com During the 2016 presidential primaries, then presidential candidates Donald Trump and Senator Marco Rubio exchanged insults, with Trump calling Rubio “Little Marco” and Rubio commenting on the size of Trumps hands. Recently, this exchange was the basis for a Federal Circuit decision reversing a refusal to register the trademark TRUMP TOO SMALL as an unconstitutional restriction of speech under the First Amendment. In 2018, Steve Elster applied to register the mark for use on T-shirts and related apparel. As the Federal Circuit recounts, “According to Elster’s registration request, the phrase he sought to trademark invokes a memorable exchange between President Trump and Senator Marco Rubio . . . and ‘aims to ‘convey[] that some features of President Trump and his policies are diminutive.’” The Examining Attorney at the United States Patent and Trademark Office denied Mr. Elster’s application under Sections 2(a) and 2(c) of the Lanham Act. On appeal to the Trademark Trial and Appeal Board (“TTAB”), the TTAB affirmed the refusal of the application, relying solely on Section 2(c) of the Lanham Act. Section 2(c) of the Lanham Act prohibits registration of a trademark that: “Consists of or comprises a name, portrait or signature identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c). Section 2(c) does not prohibit all uses of an individual’s name in a trademark. Rather, it applies only when: (1) the public would reasonably assume that the goods associated with the mark are connected with the particular individual due to the individual’s fame or recognition; or (2) the individual is publicly connected with the business in which the mark is, or will be, used. There was no dispute that President Trump is sufficiently famous to fall within the protection of Section 2(c) “not only because of his political office but also because of his prior celebrity.” Elster argued that refusing to register the TRUMP TOO SMALL trademark violated his right to free speech under the First Amendment. The TTAB noted that as an administrative tribunal, it does not have the authority to strike down any statute as unconstitutional, but noted that a constitutional challenge may involve “many threshold questions . . . to which the [agency] can apply its expertise”, and went on to find that the refusal to register TRUMP TOO SMALL was not unconstitutional. The TTAB first opined that Section 2(c), like all of Section 2 of the Lanham Act, merely sets forth criteria for obtaining a federal trademark registration. It does not control the use of the trademark. Indeed, one can use a trademark in commerce without obtaining a registration and Elster could do so here even if the registration is denied. Second, the TTAB found that Section 2(c) does not restrict any particular type of speech, but applies in “an objective, straightforward way to any proposed mark that consists of or comprises the name of a particular living individual, regardless of the viewpoint conveyed by the proposed mark.” Accordingly, the TTAB affirmed the Examiner’s refusal to register TRUMP TOO SMALL. On appeal, the Federal Circuit reversed the TTAB, finding that Section 2(c) is unconstitutional as applied to the TRUMP TOO SMALL trademark, while deferring any decision on whether it is unconstitutional in all cases. The Court noted that trademarks can be protected speech and that denying registration, while not prohibiting use of the trademark, “chills speech” by stripping the mark of the many advantages associated with federal registration. Accordingly, there must be a substantial government interest to justify restricting speech by denying a registration. The purpose of the Section 2(c) is to protect state law rights of privacy and publicity that individuals have in their names, appearance, and likeness. The Court quickly found that a right of privacy cannot shield a public official from comment or criticism. The Court also questioned whether a political figure maintains a right of publicity at all. At the very least, the political figure’s right of publicity would not permit a prohibition on the distribution of posters, buttons, apparel, or other materials that express support for or disagreement with the political figure. In short, “[a]s a result of the President’s status as a public official and because Elster’s mark communicates his disagreement with and criticism of the then-President’s approach to governance, the government has no interest in disadvantaging Elster’s speech.” As we reported previously, the Supreme Court has found that portions of Section 2(a) of the Lanham Act, which prohibit the registration of “immoral, deceptive, or scandalous” trademarks and trademarks “which may disparage . . . any persons, living or dead” are unconstitutional. While this opinion expands the Supreme Court’s reasoning to Section 2(c), whether its reasoning applies to trademarks that do not involve political figures or that do not criticize famous individuals remains to be seen. The Federal Circuit noted that it was only asked to analyze Section 2(c) as applied to Elster’s mark. But it did go on to note that Section 2(c) may be “impermissibly overbroad” because it does not leave the USPTO discretion to permit registration for marks that advance First Amendment interests.

“FUCT.” You can pronounce it as four letters, one after the other. Or you can pronounce it like Justice Kagan as the “past participle form of a well-known word of profanity.” Either way, the word can be registered as a trademark under yet another civil rights victory at the Supreme Court: Iancu v. Brunetti. Erik Brunetti, an artist and entrepreneur, owns the clothing brand “FUCT.” FUCT is an acronym for Friends U Can’t Trust. In 2011, the PTO denied the mark’s registration, relying on Section 2(a) of the Lanham Act and found the mark to be “an extremely offensive and vulgar word that means completely broken or destroyed.” Section 2(a) states that a trademark for goods that may be distinguished from the goods of others shall not be refused unless it “consists of or comprises immoral, deceptive, or scandalous matter.” The Trademark Trial and Appeal Board affirmed the denial. It also found the mark to be “highly offensive,” “vulgar,” and has “negative sexual connotations.” The Court of Appeals for the Federal Circuit reversed the Board’s judgment. The court found that the prohibition of immoral or scandalous marks is an unconstitutional restriction of free speech and violates the First Amendment. On June 24, 2019, the United States Supreme Court affirmed the judgment in a 6-3 decision. Justice Kagan delivered the opinion of the Court; she was joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. Following the same line of reasoning the Court took in Matal v. Tam (in which the Court affirmed the registrability of the mark “The Slants”), it held that Section 2(a) of the Lanham Act violated the First Amendment because it discriminated on the basis of viewpoint. Viewpoint discrimination occurs when the government denies access to a speaker solely to suppress a viewpoint of an otherwise includable subject. In Tam, the Court declared unconstitutional the Lanham Act’s ban on registering marks that disparage any person, living or dead. The Court reasoned that the disparagement bar allowed mark registrations that are positive, but not derogatory. Therefore, the ban constitutes viewpoint discrimination because the statute reflects the Government’s disapproval of a subset of messages that it finds offensive. Similarly, in Brunetti, Section 2(a) distinguishes between two opposing sets of ideas – ideas that are aligned with conventional moral standards and induce societal approval against those that are hostile to conventional moral standards and provoke offense and condemnation. And by favoring the former but not the latter, the statute again commits viewpoint discrimination. The Court dismissed the Government’s argument that this ruling would restrict the PTO’s ability to refuse marks that are “vulgar” (lewd, sexually explicit, or profane). The Court reasoned that the statute, as written, is not narrowly tailored to “vulgar” marks, and the “immoral or scandalous” bar sweeps too broadly. Moreover, the judicial branch is not in the business of “fashioning” new statutes. The ACLU commented: “[t]his ruling is a victory for the First Amendment . . . . Government bureaucrats should not be deciding what speech is or is not deserving of trademark protection.” In his concurring opinion, Justice Alito noted that Congress has the power to adopt a more narrowly tailored statute that bans vulgar trademarks. Until then, the race to first register profanity and equivalents is on. The PTO should brace for potentially uncomfortable incoming trademark applications. In fact, in just the last couple of weeks since the Court’s decision, there have been a number of USPTO trademark applications submitted such “Shitbox Nation,” “Champ Shit Only,” and “Florida as Fuck,” and many others. It remains to be seen if these applications mature into registrations. With Section 2(a) out of the picture, though, we may witness an onslaught of applications and registrations with colorful language and imagery. We will keep you apprised of any significant developments here at TheTMCA.com.

When you play the video game Grand Theft Auto 5 (“GTA 5”), the last thing you want to see is a reflection of yourself.  GTA 5 is an action-adventure game that rewards the player for stealing cars and speeding away from cops. Part of the fun is that law abiding citizens can revel in digital mayhem and interact with gang members, drug dealers, and other poor decision makers without real world consequences. But when actress Lindsay Lohan saw certain GTA 5 images, she concluded that some of those poor decision makers looked a little too much like her. Ms. Lohan is a talented and accomplished performer who has been featured in TV, films, and music, as well as such litigations as Lindsay Lohan v. Armando Christian Perez (also known as Pitbull), et al. and a frivolous case filed by a Montana prison inmate serial complainant against Ms. Lohan, the Kardashian sisters, and Lamar Odom. Seeing a character resembling herself, strutting around the virtual, gritty streets of GTA 5 did not inspire Ms. Lohan to embark on a journey of soul searching and redemption, but instead sparked her inner Mean Girl to file a complaint in New York state court. That litigation came to an end on March 29, 2018, when the highest court of New York, the Court of Appeals, affirmed the dismissal of Ms. Lohan’s amended complaint in the case of Lohan v. Take-Two Interactive Software, Inc. The defendant, Take Two Interactive Software, Inc., develops, sells, markets, and distributes video games, including GTA 5. Ms. Lohan maintained that Take Two used her likeness without permission in three instances. In one scene, the player meets a female character named Lacey Jonas, who is trying to escape from paparazzi by hiding in an alley. The character describes herself as “an actress slash singer” and “really famous.” The second and third instances are static images used as transition screens between scenes in the game and also on the packaging, game discs, and promotional materials. One image features a young blonde woman wearing a red bikini at the beach, and the other features a young blonde woman wearing jean shorts, a white t-shirt, sunglasses and a fedora, who appears to be getting arrested by a female police officer. Ms. Lohan claims that Take Two misappropriated both her appearance and her voice to create the Jonas character, and that the two static images contain her “[i]mages, portrait[,] and persona.” To prevail on her right of privacy claim under New York law and survive dismissal of her amended complaint, Ms. Lohan needed to prove that her name, portrait, picture or voice was used for advertising or trade purposes without consent within the State of New York. The Court first concluded that an “avatar” such as a character or image in a video game, may constitute a “portrait.” Next, the Court considered whether Ms. Lohan was capable of being identified from the avatars alone based on the “quantity and quality of the identifiable characteristics” in the avatars. The Court concluded that both the Jonas character and the two images were not recognizable as Ms. Lohan. The Court explained that the Jonas character was simply “a generic artistic depiction of a ‘twenty-something’ woman without any particular identifying physical characteristics,” and the static images were “indistinct, satirical representations of the style, look, and persona of a modern, beach-going young woman.” In light of the Court’s ruling as to the portrait element, it did not address the other elements. This comes as a disappointment to some in the film and gaming industries who hoped that the Court would hold that New York’s right of publicity statute does not prohibit the use of real people in video games, as it does for other fictional works. Given how little the accused images resemble Ms. Lohan, this might not have been the right case to address that issue. We may have to wait until Take Two releases GTA 6 for a resolution.

It is hard to imagine that any one person could initiate separate lawsuits resulting in decisions of substantial importance to the entire U.S. entertainment industry.  And when that person is iconic actress Olivia de Havilland – best known for her roles in “Gone With the Wind,” “The Heiress” and dozens of other films from Hollywood’s golden age – and the time between those two decisions spans more than seventy years, the scenario seems even more farfetched.  But Ms. de Havilland is indeed the plaintiff whose 1944 lawsuit against Warner Brothers resulted in the decision that effectively broke the control movie studios then exercised over their talent, and she is also the plaintiff whose 2017 lawsuit against the FX Networks cable channel has now resulted in a decision that confirms the wide-ranging ability of filmmakers to depict real people like de Havilland in entertainment properties like the miniseries “Feud.” Television producer Ryan Murphy created “Feud:  Bette and Joan” as the first installment in a series of television docudramas dedicated to chronicling famous real-life feuds.  Airing in 2017, this first installment, starring Susan Sarandon and Jessica Lange, portrayed the bitter rivalry between film stars Bette Davis and Joan Crawford, and how that rivalry was the product of the way Hollywood studios, dominated by men, treated women – especially older actresses. De Havilland was a longtime friend of Davis and a fellow actress with her at Warner Brothers in the 1930s and 1940s.  In “Feud,” de Havilland, portrayed by the actress Catherine Zeta Jones, appears in a fictitious interview conducted at the 1978 Academy Awards ceremony, in which she comments on the rivalry between Davis and Crawford, and the problems women in Hollywood encountered during their era.  (Kathy Bates, portraying the late actress Joan Blondell, also appears in a similar, fictitious interview.)  In addition, “Feud” shows Davis and de Havilland together in the past, including at the 1964 Academy Awards ceremony and during the making of the film “Hush … Hush, Sweet Charlotte,” in which de Havilland replaced Crawford as Davis’ co-star.  Over eight episodes of “Feud,” the de Havilland character appears in only seventeen minutes of screen time – 4.2% of the series as a whole. Notwithstanding the brevity of her portrayal, de Havilland, now age 101 and a longtime resident of Paris, France, sued FX and related defendants for violations of her rights of publicity and privacy, as well as false light, arguing that no one has the right to portray her in a film or otherwise without her permission, such that the mere inclusion of her in a fictionalized docudrama like “Feud” violated her rights.  She also argued that she was presented in “Feud” as a person who spread malicious gossip, and who used the word “bitch” to describe her sister, the equally iconic actress Joan Fontaine.  (While the relationship between de Havilland and Fontaine could itself be the subject of a whole other installment of “Feud,” Murphy has announced that the next airing will be entitled “Feud:  Charles and Diana”). FX and the other defendants immediately moved to strike de Havilland’s complaint under California’s anti-SLAPP statute, relying heavily on the First Amendment and the argument that filmmakers and the authors of creative works have the right to depict actual persons in docudramas like “Feud,” but their motion was denied.  The trial court held that the realistic portrayal of de Havilland was insufficiently transformative, such that no First Amendment defense to de Havilland’s right of publicity claim was available under California law.  The trial court also held that a reasonable jury could conclude that de Havilland’s portrayal in “Feud” cast her in a false light with respect to her use of vulgar terms like “bitch” to describe Fontaine, and the repeating of gossip (specifically, about the drinking habits of Frank Sinatra). Working under an expedited appeal schedule due to de Havilland’s advanced age, three California court of appeal judges rejected the trial court’s findings, holding that the First Amendment protects FX’s portrayal of de Havilland in a docudrama without her permission.  The court held that the right of publicity cannot be used to control a celebrity’s image by censoring disagreeable portrayals consistent with First Amendment and free speech considerations.  The court also held that de Havilland’s portrayal in “Feud” was transformative, particularly her appearance in the interview “framing device” that articulates the series’ broader concerns about the treatment of aging women, especially in Hollywood.  Finally, the court rejected de Havilland’s false light claim, finding that, with one possible exception, she was portrayed more favorably than any other person appearing in “Feud.” The court also held that de Havilland’s claims of damage resulting from her alleged portrayal as a gossip who used inappropriate language were not cognizable, in light of prior interviews de Havilland had given over many decades recounting lighthearted stories about the peccadillos of others, including her co-stars, and her documented use of the words “dragon lady” to describe her sister. So what’s next?  Under California’s anti-SLAPP law, the defendants can recover attorneys’ fees and costs from de Havilland, but she has vowed to appeal further.  In addition, her lawyers have characterized the appellate court’s ruling as an “industry decision” written by a judge who used to work for NBC and the firm representing FX.  So it seems that there will be yet another episode of “Feud: de Havilland v. FX” coming soon to this blog.  Stay tuned!

There is a widespread myth in this country that the First Amendment protects free speech in the workplace. Employees who loudly state controversial opinions often think the First Amendment protects them from being fired as a result. When Google fired James Damore last summer for posting what many described as an anti-diversity manifesto, social media exploded with comments like “what happened to free speech?” and “they can’t do that! It’s against the First Amendment!” This idea is back in the news after 50-year-old marketing executive Juli Briskman was fired for posting a picture of herself on social media giving the middle finger to President Trump’s motorcade. Unfortunately for Mr. Damore and Ms. Briskman, the First Amendment only limits the government’s ability to restrain speech, not private employers. But (and this being a legal issue, there is always a but), there are numerous other laws that can come into play when employers fire employees for expressing strong opinions on political or social issues. The First Amendment may not protect Mr. Damore’s statements regarding diversity in the workplace, but the National Labor Relations Act (NLRA) might. The NLRA protects unionizing activity and prohibits employers from retaliating against employees for engaging in so-called “protected concerted activity” regarding the terms and conditions of employment. Mr. Damore’s statements could arguably constitute a complaint about working conditions, which he shared with co-workers in an attempt to change those working conditions. Described this way, Mr. Damore’s statements could be protected by the NLRA. Likewise, the First Amendment may not protect Ms. Briskman’s one finger salute to the President, but anti-discrimination laws might. Prior to Ms. Briskman’s social media post, a male senior director at her company had responded to a discussion regarding Black Lives matter by posting “You’re a f------ Libtard a------[.]” Ms. Briskman herself flagged the director’s comment for review by senior management. Rather than fire this senior director, Briskman’s employer allowed him to remove the comment and keep his job. Why would Ms. Briskman be fired after this male executive was allowed to keep his job? If a jury concluded that it had to do with Ms. Briskman’s gender, her employer could face serious liability. Controversial statements in the workplace about social and political issues may not be protected by the First Amendment, but there are many other legal traps for unwary employers. If statements are shared among co-workers and relate to the terms and conditions of employment, they could be protected by the NLRA. And if employers selectively enforce rules regarding “inappropriate” speech, they could find themselves liable for discrimination claims.

We have discussed here before new federal legislative protections that are in place to give consumers wide latitude to post online reviews of businesses, whether they be good or bad. A recent decision of the Appellate Division of the Supreme Court of New York in Crescendo Designs, Ltd. v. Reses, provides additional protection for online consumer reviews, confirming that a negative online consumer review can be a protected opinion, rather than unlawful libel. Crescendo Designs, a custom home theater system installation business, installed an expensive system in Reses’ beach home. Dissatisfied with the results when she claimed the system failed and Crescendo didn’t come back quickly enough to resolve the problem, Reses posted a negative review of the system and the services she received on Yelp.com. In her review, she described what went wrong and commented “Terrible service if something goes wrong!”. Crescendo Designs filed a lawsuit claiming, among other things, that the online review constituted libel, i.e., a published statement of fact that was false and damaging to its reputation. The Supreme Court, Suffolk County granted Reses’ motion to dismiss and Crescendo Designs appealed. On appeal, the Appellate Division confirmed the lower court’s finding that the Yelp website review was not actionable as libel, because the review was an expression of opinion by a dissatisfied customer, rather than a published assertion of fact, which is required to maintain a libel claim. It held that “[r]ather than sifting through a communication for the purpose of isolating and identifying assertions of fact,” the courts should “consider the content of the communication as a whole,” and “look to the over-all context in which the assertions were made” to determine “whether the reasonable reader would have believed that the challenged statements were conveying facts about the libel plaintiff.” Taking into account the con­text in which the review was made and viewing the content of the review as a whole, the court found that “a reasonable reader would have believed that the writer of the review was a dissatisfied customer who utilized the Yelp website to express an opinion.” Yelp reviews have not always been held to be protected expressions of opinion. For example, a Staten Island court in Technovate v Fanelli awarded $1,000 in damages to a floor refinishing business against a consumer based on her Yelp review, which contained words such as “scam,” “con artist” and “robs,” finding that the review crossed the line from opinion to libel. As with libel claims asserted against traditional publications, an online review will not be shielded from liability if it contains statements of fact or a combination of fact and opinion deemed to be false and injurious.

In a recent blog post, we introduced you to the new Consumer Review Fairness Act (CRFA), which prohibits businesses from including non-disparagement or “gag” clauses in their form contracts. The CRFA goes into effect later this month and will be enforced by the Federal Trade Commission.  Last week, the FTC issued a guide for businesses with recommendations on what they can and can’t do under the CRFA. Here are a few key points from the guide: The CRFA covers consumer reviews, whether made as an online review, social media post, or an uploaded video or photo. The FTC’s guide also makes clear that the CRFA covers consumer posts about a business’ customer service. The CRFA makes it illegal for businesses to include provisions in their form contracts that: bar or restrict the ability of a consumer to review a company’s products, services, or conduct; impose a penalty or fee against someone who gives a review; or require people to give up their intellectual property rights in the content of their reviews. The FTC’s guide makes clear that the CRFA does not cover provisions in employment contracts or agreements with independent contractors. Businesses may still remove content that: contains confidential or private information; is libelous, harassing, abusive, obscene, or otherwise inappropriate; is unrelated to the company’s products or services; or is clearly false or misleading. The guide also makes clear that the FTC will treat a violation of the CRFA the same was as it treats a violation of any FTC rule that defines an unfair or deceptive act or practice. This means that a business could be subject to financial penalties for violating the CRFA, as well as a federal court order. The FTC recommends that businesses be proactive and review their form contracts, including website terms and conditions, and remove any non-disparagement provisions, even if they have no intention of trying to enforce these provisions. Of course, we do not yet know how businesses will respond to the CRFA, or how aggressive the FTC will be in enforcing it, although the new guide makes clear that the CRFA is front and center on the FTC’s radar.

In the digital age, online reviews of a business are often the first place consumers turn to in order to gather information about a business, such as a restaurant, retail store or even a professional service provider.  It is well known that a negative online review may not only impact the reputation of a business, but also its bottom line.  For that reason, businesses have sought to control what customers are saying about them by including non-disparagement clauses in their form contracts, such as standard customer agreements and online terms of service.  A non-disparagement clause essentially works to stop consumers from posting negative reviews or comments about products or services they may have purchased by imposing a penalty or fee for such actions. Attempts by businesses to enforce these types of “gag” or non-disparagement clauses in a form contract have made their way into the news and into the courts in recent years. For example, an inn located in upstate New York threatened a wedding party with $500 fines for every bad review they left on Yelp.  In a second example, a pet-sitting company in Texas unsuccessfully sued a couple who was unhappy with the services they had received and who posted a negative review to that effect on Yelp for $1 million in damages, based on their alleged violation of a non-disparagement clause the company had included in its customer agreement. To create more clarity at the federal level about the legal viability of non-disparagement clauses, which have been examined so far under differing state laws, such as anti-SLAPP statutes and under voluntary guidelines such as those set by the Better Business Bureau, President Obama signed into law on December 14, 2016 the Consumer Review Fairness Act of 2016.  The new federal law voids any form contract clause that seeks to prohibit a purchaser of goods or services from submitting a negative review of a business, or that seeks to impose a penalty or fee against the purchaser for doing so.  It also precludes a business from securing rights in review or feedback content, other than a non-exclusive license. The new federal law does not stop a business from suing for defamation, libel or similar causes of action, or from removing obscene, discriminatory or other inappropriate content.  A business will also still have leeway to pull down content that “is clearly false and misleading.”  It is unclear how that standard will be interpreted. The new federal law will take effect in March 2017 and will be enforced by the Federal Trade Commission under its authority to police unfair or deceptive business practices. Businesses need to be aware of this new federal legal protection for consumers, which affords consumers greater protection to speak their mind about their customer experiences, when dealing with negative online reviews and when crafting their customer contracts and terms.