“Creative works of artistic expression are firmly ensconced within the protections of the First Amendment.” – Eleventh Circuit
The U.S. Court of Appeals for the Eleventh Circuit earlier this week ruled in favor of Viacom in a trademark fight over the media conglomerate’s Floribama Shore reality television show.
MGFB, the company that filed the appeal, owns the “FLORA-BAMA” trademark and owns and operates the Flora-Bama Lounge on the border of Florida and Alabama. The company filed a cease-and-desist letter in 2017 when Viacom first aired Floribama Shore in 2017.
The appeals court judges cited the First Amendment as protecting Viacom’s right to artistic use of “Floribama”.
“Creative works of artistic expression are firmly ensconced within the protections of the First Amendment,” wrote the judges.
The judges also found no evidence that Viacom misled consumers to associate the established businesses of the plaintiffs with the television show.
The judges ruled, “there is no evidence Defendants held the series out as endorsed or sponsored by Plaintiffs.”
Central to the court’s ruling was the so-called Rogers defense based on Rogers v. Grimaldi, a landmark case for balancing trademark and First Amendment rights.
In Rogers, the Second Circuit created a two-part test “that narrowly applies the Lanham Act in order to protect First Amendment interests in the titles of artistic works.”
This two-part test determines that an artistic title does not violate trademark law if it has no artistic relevance to the artistic work itself or if it does have relevance that the title does not “explicitly mislead” to the original source.
The Eleventh Circuit ruled that the title “Floribama Shore” is artistically relevant to the content of the show. The show is set In Panama City, Florida, and it is about the specific “Floribama” subculture present on the Florida coast.
However, the court ruled that Viacom did not explicitly mislead the audience to connect the television show with the established business of the plaintiff. The court found no evidence that Viacom attempted to affiliate the show with Flora-Bama Lounge or make viewers think the establishment endorsed the show.
While the owners of the Flora-Bama Lounge sent a cease-and-desist letter to Viacom in 2017, they did not file a lawsuit until 2019. Floribama Shore is a spin-off of the popular Jersey Shore reality television show, and it aired 75 episodes from 2017-2021.
A U.S. district court judge in Florida ruled in favor of Viacom in 2021, citing the First Amendment as protecting the media conglomerate against the claims.
Similar to Judge Brasher, District Judge Robert L. Hinkle addressed the gap within the Rogers test. District Judge Hinkle wrote the law in this realm was “partially settled and partially unsettled.”
The Eleventh Circuit judges backed the ruling of the district court, agreeing that the Floribama Shore television show existed in a distinct industry from the Flora-Bama Lounge and that “Floribama” referred to the geographical area instead of the business.
MGFB attempted to cite survey data to bolster its claim of trademark infringement. The survey data showed that, of 300 people surveyed, 34% of people had heard of “Flora-bama” and half of those who recognized it associated it with the Flora-Bama Lounge.
However, the circuit judges found this argument to be “unavailing.” Again, they cited Rogers, which found that “any overt or in this case even implicit claim, is so outweighed by the interest in artistic expression as to preclude any violation of the Lanham Act.”
The plaintiff also cited two tweets from a Viacom executive which used the “Florabama” spelling used by the plaintiff’s business.
However, the judges found that these tweets “cannot be understood as misleading about the source of Defendants’ show because of [the executive’s] accompanying references to Defendants and their house mark.”
While MGFB accused Viacom of copying their trademark, the judges clarified that copying alone is not enough to be considered a trademark infringement when artistic expression is involved. The Eleventh Circuit thus ultimately affirmed the district court’s grant of summary judgment for Viacom.
In a concurring opinion, Judge Andrew L. Brasher argued the Eleventh Circuit should explicitly reject the “title-versus-title exception to the Rogers defense.” In Rogers, a footnote left open the possibility that this defense might not extend to “misleading titles that are confusingly similar to other titles.”
Judge Brasher argued this could lead to situations where the first artist to use a trademark in a title would have a “monopoly over the use of that mark” in artistic works. Thus, he argued that the Eleventh Circuit should join the Ninth Circuit in rejecting this exception to the Rogers defense.