You may think you have done everything to legally protect your company’s trademarks, but what if someone used your trademark as the title of a movie, a book or a song? What if Morgan Spurlock called his documentary “Big Mac®” instead of “Super Size Me”? What if the movie “The Social Network” was called “The Facebook® Movie”? Could the owners of those trademarks have sought legal protection under the Lanham Act and/or obtained an injunction against those producers and promoters from using those trademarks?
You may be surprised to find that there is established precedent on this Lanham Act issue, and your company cannot prevent the use of its trademarks by others for titles of works of art. In Rogers v. Grimaldi, movie star Ginger Rogers lost her Section 43(a) Lanham Act claim against Alberto Grimaldi and MGM/UA Entertainment Co. for use of the name “Ginger and Fred” for a film title. The movie was about two cabaret performers who, according to the fictional story, imitated Ginger Rogers and Fred Astaire in Italy, and they became known in Italy as “Ginger and Fred.”
In the Ginger Rogers’ lawsuit, she argued that the film’s title, “Ginger and Fred,” would make potential consumers believe that she was involved with or endorsed the film, when she did not, which seemed to be a classic violation of Section 43(a) of the Lanham Act. Rogers’ claim also seemed reasonable in light of her fame. However, the defendants argued that Rogers’ claim was precluded by the protections afforded to defendants under the First Amendment. The district court determined that the use of Rogers’ name for the film was primarily for artistic expression and, as such, the prohibitions of the Lanham Act did not apply.
The U.S. Court of Appeals for the Second Circuit stated that there needed to be a balancing test between the protections afforded by the Lanham Act and the First Amendment rights of free expression. The court devised a two-prong test: (1) if the title of the work has some relevance to the subject matter of the work, the Lanham Act will normally not apply—unless (2) the title of the work is explicitly misleading. Applying its new test, the Second Circuit concluded that the title “Ginger and Fred” was relevant to the content of the film and that the title was not explicitly misleading. Therefore, the defendants were entitled to summary judgment based upon the defendants’ First Amendment rights of freedom of expression.
The Rogers case was directed toward the use of a famous person’s name, as opposed to using another party’s registered trademark, but other federal courts have applied the decision to registered trademarks. In Mattel v. MCA Records, the U.S. Court of Appeals for the Ninth Circuit was faced with the question of whether a rock band’s use of the trademark “Barbie” in the title of a song was trademark infringement under Section 43(a) of the Lanham Act. Mattel argued that the song title created the likelihood of confusion, alleging that consumers would believe that Mattel was affiliated with or sponsored the song in some way.
However, the Ninth Circuit, applying the two-prong Rogers test, found that the song’s title, “Barbie Girl,” did have some relationship to the content of the song, which was a critique of what the authors believed the iconic Barbie Doll symbolized. Arguably, the Mattel case fell squarely in the category of satire, which falls within the rights afforded by the First Amendment, but the Ninth Circuit chose to adopt the Rogers test instead.
The Ninth Circuit also may have moved the bar further in favor of “artists” in E.S.S. Entertainment v. Rock Star Videos. In that case, the court refined the Rogers test slightly, holding that in order for someone to use your trademark, there only needs to be “more than zero” relevance between the content of the work of art and the title of the work to be protected by the First Amendment. The single caveat is that the title not be explicitly misleading.
There is a glimmer of hope for trademark owners in the U.S. Court of Appeals for the Sixth Circuit. In Parks v. LaFace Records, the court did something different than other circuits that had applied the Rogers test as “a matter of law.” In Parks, the defendants named one of their songs “Rosa Parks.” The song’s chorus was “move to the back of the bus.” The district court, applying the Rogers test, found that there was at least minimum relevance between the title of the song and the subject matter of the song and, therefore, granted summary judgment in favor of the defendants.
The Sixth Circuit, however, seemed offended by the decision. It discussed the fact that Rosa Parks was a revered and respected person, as well as a national symbol of freedom and integrity. The court seemed to object to the overall content of the song as disparaging to those things that made Rosa Parks famous. It held that the relevance of the subject matter of the song and the title of the song were, contrary to the district court’s decision, subject to “reasonable debate.” Hence, the Sixth Circuit held that the issue of relevance between the subject matter of the work and its title was a “question of fact,” to be determined by a finder of fact, only after an evidentiary hearing. The court held that this prong of the Rogers test was not to be determined by a judge as a matter of law.
So, why are these trademark issues relevant now? Earlier this year, in Eastland v. Lionsgate Entertainment, the U.S. Court of Appeals for the Seventh Circuit was faced with this very issue. In Eastland, the plaintiff had (and has) a registered trademark: PHIFTY-50. Eastland also claimed common law rights in the mark 50/50, which it has been using for more than a decade relating to music and music-related products—and has since been registered. The defendants produced a film called “50/50” and produced and sold DVDs, along with a soundtrack CD, with the “50/50” title. Eastland accused the defendants of infringing its trademark rights, alleging that consumers would likely believe that Eastland was affiliated with, sponsored or otherwise had something to do with the film. Again, this seemed to be a classic claim under Section 43(a) of the Lanham Act.
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