District court dismisses in part trademark claims of Australian motorcycle and lifestyle brand Deus ex Machina Motorcycles against MGM for use of DEUS EX MACHINA mark in The Sun Is Also a Star and related promotional content, finding that plaintiff failed to sufficiently allege that MGM explicitly misled consumers as to source of film or that plaintiff’s mark is “famous” for purposes of its trademark dilution claim.

Plaintiff Deus ex Machina Motorcycles, an Australian maker of custom motorcycles and lifestyle brand selling motorcycle- and surf-inspired clothing, filed a lawsuit in May 2020 against film studio Metro-Goldwyn-Mayer alleging that MGM had infringed on plaintiff’s registered trademark DEUS EX MACHINA through the use of the mark in MGM’s film The Sun Is Also a Star and related promotional materials. According to plaintiff, both the film and its trailer featured an actress wearing a jacket with the words “DEUS EX MACHINA” inscribed on the back, and MGM later authorized the jacket to be sold by two different websites. Plaintiff also alleged that another actor from the film posted pictures of himself on social media promoting the movie while wearing clothing sold by plaintiff. Plaintiff asserted Lanham Act claims for trademark infringement, trademark dilution, and federal unfair competition and false advertising, alleging that MGM’s use of the DEUS EX MACHINA mark on the jacket has caused consumer confusion as to the brand plaintiff has built for its clothing products and that plaintiff’s association with the mark in the film—a “schmaltzy, teen-style love story”—is inconsistent with its brand. MGM’s moved to dismiss plaintiff’s complaint, which the district court granted in part and denied in part.

Turning to plaintiff’s first and third causes of action—for trademark infringement and unfair competition/false advertising under the Lanham Act—the district court applied the Rogers test, the test used by the Ninth Circuit to “balance the competing interests at stake when a trademark owner claims that an expressive work infringes on its trademark rights.” Under Rogers, the defendant must first make a showing that its allegedly infringing use is part of an expressive work protected by the First Amendment. Then the burden falls on the plaintiff to show that it owns a valid trademark and that the defendant’s alleged use of the mark is either not artistically relevant to the underlying work or is explicitly misleading as to the source or content of the work. If the plaintiff can make that showing, it must then show that the allegedly infringing use of its mark by the defendant is likely to cause confusion.

Though plaintiff here conceded that MGM’s film is an expressive work, it argued that the Rogers test doesn’t apply to the film’s trailer and the actor’s social media posts promoting the film (in which the actor was wearing plaintiff’s branded clothing). The district court rejected that argument, citing Ninth Circuit precedent that “efforts to advertise, promote, and market an expressive work are merely extensions of the use of a mark in the original expressive work.”

The court then analyzed whether plaintiff had alleged sufficient facts showing that MGM’s use of the DEUS EX MACHINA mark was either not artistically relevant to the film or was explicitly misleading as to the source or content of the film. Under the Rogers test, the amount of artistic relevance of the trademark to an expressive work “merely must be above zero,” and the district court determined that plaintiff had not alleged any facts showing that MGM’s use of the mark was not artistically relevant to the film. MGM argued that the court should go so far as to find that the use of the mark was artistically relevant to the film, which the court declined to do, given that plaintiff had not pled any allegations relating to the artistic relevance of the use. Further, the court permitted plaintiff the opportunity to allege such facts to attempt to cure that deficiency.

Even if the use of the mark is artistically relevant, however, a trademark infringement claim can still stand if the use of the mark is explicitly misleading as to the source of the content. It is not enough for plaintiff to simply show that defendant’s use of the mark would cause consumer confusion as to the source of the work, however. Plaintiff must show that defendant explicitly misled consumers. The Ninth Circuit has identified two factors to aid in determining whether a defendant has explicitly misled consumers: (1) the degree to which the junior user has used the mark in the same way as the senior user and (2) whether the junior user has added its own expressive content to the work beyond the mark itself.

The court concluded that plaintiff had not sufficiently alleged that MGM’s use was explicitly misleading. As to the first factor, the district court determined that MGM’s use of the DEUS EX MACHINA mark—in a theatrical film—is different from plaintiff’s primary use of the mark in marketing its clothing and accessories (80% of plaintiff’s business). The court rejected plaintiff’s argument that it also produced movies to promote its brand, finding that MGM’s movie did not touch on the themes of any of plaintiff’s movies, such as the intersection of motorcycle and vintage surf culture.

Turning to the second factor, the district court found that MGM had added its own expressive content to the film beyond the use of the DEUS EX MACHINA mark, noting that the mark was not the centerpiece of the film. Finding that plaintiff had not alleged sufficient facts to show that MGM’s use of the mark would induce consumers into thinking that plaintiff was associated with the film, the district court granted MGM’s motion to dismiss plaintiff’s claims for trademark infringement and unfair competition/false advertising.

The court limited the dismissal of those claims to the extent that they were based on the use of the mark in the film, the trailer and the promotional social media posts allegedly containing plaintiff’s clothing. The court denied the motion to dismiss as to the trademark infringement and unfair competition/false advertising claims to the extent they relate to the alleged sales of the DEUS EX MACHINA jacket worn in the film, declining to make a finding as to whether the Rogers test applies to those sales. The court’s dismissal was without prejudice, allowing plaintiff to amend its complaint. Even so, the court noted that it “has doubts as to plaintiff’s ability to cure some of the deficiencies,” such as regarding the artistic relevance of MGM’s use of plaintiff’s mark.

Finally, the district court turned to plaintiff’s trademark dilution claim. To state a claim for trademark dilution, plaintiff must allege facts showing that its mark is famous and distinctive—that is, “it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” The district court determined that plaintiff had failed to allege sufficient facts to show that the DEUS EX MACHINA mark is famous for purposes of stating a trademark dilution claim. While noting that plaintiff alleged that its mark is “widely recognized” by males aged 18 to 30 who are drawn to motorcycle and surf culture, the district court found that the recognition in such a niche market does not meet the requirement that the mark have widespread fame. The district court also found lacking plaintiff’s allegations regarding the extent of its sales of products featuring the DEUS EX MACHINA mark and put weight on the fact that plaintiff’s sales and physical presence in the United States had been limited, with plaintiff first conducting business here in 2011. As with the first and third claims, the court dismissed this claim without prejudice, allowing plaintiff to cure the complaint’s deficiencies, though again noting that it had doubts as to plaintiff’s ability to allege sufficient facts showing that its mark is famous.