92 USPQ2d 1760 (C.D. Cal. Nov. 9, 2009)


In a case considering the interplay between the First Amendment and the Lanham Act, the Central District of California ruled that the First Amendment is a complete defense to Lanham Act claims involving artistic works where the mark has at least some artistic relevance to defendant’s underlying work and defendant’s use does not explicitly mislead as to the source or content of the work.


FACTS Plaintiff Roxbury Entertainment (“Roxbury”) owned the mark ROUTE 66 for television programs and related entertainment properties, including the original 1960’s “Route 66” television program about two young men travelling across America. When defendant Penthouse Media Group, Inc. (“Penthouse”) began selling a pornographic DVD entitled “Route 66,” Roxbury alleged that the title infringed and diluted its trademark rights. Penthouse moved for summary judgment, arguing that its use of “Route 66” as the title of its film was fully protected free speech under the First Amendment.


Citing the Second Circuit’s 1989 decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), a case involving actress Ginger Rogers’s unsuccessful efforts to enjoin use of “Ginger and Fred” as the title of a fictional film, and the Ninth Circuit’s adoption of Rogers in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the Central District of California noted that the First Amendment can provide a complete defense to Lanham Act claims involving artistic works where both parts of the balancing test set forth in Rogers are met.  

The first prong of the test requires that the trademark at issue have relevance to the underlying (defendant’s) work, and as stated in E.S.S. Entertainment, the level of relevance must merely be “above zero.” The court found that the title “Route 66” was artistically relevant to Penthouse’s film because of the film’s setting in part in a roadside motel and the association of “Route 66” with cross-country travel. The court found the fact that the association was “tenuous” did not controvert Penthouse’s showing of artistic relevance.

The second prong of the test requires a court to evaluate whether an artistically relevant use would nevertheless explicitly mislead consumers as to the source or content of the defendant’s work. Finding nothing to indicate any risk that Penthouse’s use of “Route 66” for its pornographic DVD would “dupe” consumers into believing the DVD was in any way affiliated with the 1960’s television series, the court found both prongs of the Rogers test satisfied, and ruled that defendant’s use of the “Route 66” title was fully protected by the First Amendment. Penthouse’s motion for summary judgment was granted.


This decision continues the line of entertainment cases that have developed in the last twenty years making clear that creators of artistic works should be relatively unrestricted in choosing titles for their works. So long as the creator can show some artistic relevance of the mark to his/her work, and so long as nothing about the use is explicitly misleading, the First Amendment will provide a defense to what might otherwise be an infringing trademark use. For a more detailed analysis of the Rogers line of cases involving the interplay between the First Amendment and the Lanham Act, see Lynn M. Jordan and David M. Kelly, “Twenty Years of Rogers v. Grimaldi: Balancing the Lanham Act with the First Amendment Rights of Creators of Artistic Works,” in The Trademark Reporter, Nov./Dec. 2009.