District court grants dismissal of state trademark infringement and dilution claims, finding plaintiff had not registered “Hidden City Philadelphia” mark as required by Pennsylvania statute, and even if registration were not required, defendant’s use of “Hidden Philadelphia” in title of video series is protected by First Amendment.
Plaintiff Hidden City Philadelphia, a nonprofit that operates a Philadelphia-based website called “Hidden City Philadelphia” that publishes news stories about Philadelphia history and architecture, sued defendant ABC Inc. for trademark infringement and dilution under the Pennsylvania Trademark Act, alleging the production and broadcast of a series of video clips titled “Hidden Philadelphia” by a local ABC affiliate station infringed on its purported mark “Hidden City Philadelphia.”
In its motion to dismiss for failure to state a claim, ABC argued both that plaintiff had not registered the trademark as required by the Pennsylvania statute, and that plaintiff’s claim was barred by the First Amendment. The district court agreed.
First, the court held that plaintiff’s trademark infringement claim failed because “the statute only provides a cause of action for trademarks that have been registered and [plaintiff] concedes its mark is not registered.” Second, the court concluded that even if registration was not required, plaintiff’s claim is barred by the First Amendment under the Rogers v. Grimaldi test established by the Second Circuit. (The district followed Rogers because the federal and Pennsylvania statutes governing trademark infringement are “identical except that the Pennsylvania law narrows the focus to acts within the Commonwealth”).
Noting that the Third Circuit had yet to adopt the Rogers test, the court explained that at least one case suggested Rogers’ application should be limited to “titles” of works of artistic expression. While neither party addressed the issue of whether “Hidden Philadelphia” constituted a work of artistic expression, the court held that plaintiff and ABC took the “implicit position” that ABC’s “journalistic videos . . . qualify as works of artistic expression.” Applying the Rogers test, the court then held that “Hidden Philadelphia” warranted First Amendment protection because the title (1) had “artistic relevance to the underlying work” and (2) was not “explicitly mislead[ing] as to the source or content of the work.”
Applying the first prong, the court found that “Hidden Philadelphia” is artistically relevant to the underlying work: The videos showcased “surprising” and “hidden” or “otherwise difficult-to-locate places” — all of which are directly relevant to, and accurately describe, the title “Hidden Philadelphia.” With respect to the second prong, the court noted that the title was not explicitly misleading as to its source because it did not adopt plaintiff’s name (“Hidden City Philadelphia”), the complaint was devoid of any allegations suggesting plaintiff was affiliated with the videos, and the videos appeared on the 6ABC website, prominently featuring the ABC logo. Finally, because Rogers also precludes trademark dilution claims, the standard for which is identical under Pennsylvania law and federal law, the court also dismissed plaintiff’s dilution claim.