A recent case out of the 11th Circuit (covering AL, GA, and FL) addressed the interplay between federal trademark laws and the First Amendment of the U.S. Constitution, but in a fun setting (trust me, IP law is fun).
On the one side is the trademark owner for FLORA-BAMA trademarks and properties (MGFB). For those unaware, the Flora-Bama Lounge, Package and Oyster Bar (“Lounge”) is a property 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. For example, it is a well known bar and restaurant known for hosting musicians and its annual “Mullet Toss” (mullet being the type of fish, not a person with a hair style). The trademark covers use of the trademark in connection with “bar and restaurant services” and several entertainment services, including arranging, organizing, conducting, and hosting “social entertainment events,” live musical performances, and “competitions for fish throwing.”
On the other side is a global media and entertainment company (Viacom – owner of MTV) and production company that produces television shows (495 Productions). The defendants created a television series called “MTV Floribama Shore”, which was set in Panama City, FL, but which was intended to focus on the region of the Gulf Coast, which they referred to as the “Floribama region”. As noted in the Opinion, “Defendants wanted to highlight “young [S]outhern folks” who go to “shore houses” or “spend summers” on the Gulf of Mexico, extending from the Florida panhandle into Alabama and Mississippi.”
The television show, which aired in 2017, ran for four seasons. MGFB sued Viacom and 495 in 2019 for trademark infringement and other claims. In April 2021, Defendants moved for summary judgment of all claims, and the district court granted the same for the Defendants, which resulted in the Plaintiffs appealing.
The crux of the issue is the balance of trademark rights and the First Amendment freedom of speech for creators of artistic works to have freedom of expression and the free flow of ideas (The First Amendment’s protections extend beyond written and spoken words. Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of Boston, 515 U.S. 557, 569 (1995) (“[T]he Constitution looks beyond written or spoken words as mediums of expression.”). Creative works of artistic expression are firmly ensconced within the protections of the First Amendment. Id.).
As to trademarks, the Lanham Act “secure[s] to the owner of [a] mark the goodwill of his business” and “protect[s] the ability of consumers to distinguish among competing producers.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992) (internal quotation marks omitted).
The landmark case for balancing trademark and First Amendment rights is the Second Circuit’s decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which has been adopted by the 11th Circuit.
According to Rogers, there is a two-part test for determining the balance of trademarks and the First Amendment. The Second Circuit’s two-part test provides that the title of an artistic work does not violate the Lanham Act “[(1)] unless the title has no artistic relevance to the underlying work whatsoever, or, [(2)] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”
In the present case, the Court first looked at the first prong, and stated “To be artistically relevant, the relationship between the challenged title and the underlying work itself “merely must be above zero””. (i.e., a very low threshold) The Court held that the Defendants clearly met this prong, as the name “Floribama” describes a subculture for the area and also added “MTV” and “Shore” to the title.
For the second prong, “The relevant question is 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 held that the Defendants clearly distinguished any potential misleading by choosing a title that included its own house mark (MTV) and the name of a franchise (Shore). This would indicate that consumers would know that the TV show title was in no way affiliated with the Lounge.
Therefore, based upon this, the Court ruled that there was no trademark infringement under the Lanham Act.
It should be noted that McKee, Voorhees & Sease, PLC is located in Iowa, which is part of the 8th Circuit Federal Court of Appeals. Interestingly, the 8th Circuit has NOT adopted the Rogers test, and instead relied upon the case of Mutual of Omaha Insurance Co. v. Novak, which provides, in essence, greater rights to the trademark owner, even in view of the First Amendment. Therefore, while the Flora-Bama case is interesting, it is always best to check the law of the land where the suit is located to determine the appropriate scrutiny that will be applied.