Court fixes mistake: Rogers applies to nonfiction titles

IOW, LLC v. Breus, 2019 WL 6603948, No. CV18-1649-PHX-DGC
(D. Ariz. Dec. 2, 2019)
The court quite properly grants a motion for reconsideration
of part of its earlier
opinion
, correctly applying Rogers v. Grimaldi/Empire to
protect the title of a nonfiction work. 
Breus is a clinical psychologist, board certified in clinical psychology
and sleep disorders, who studies how his patients’ chronobiologies effect their
treatment, and has written extensively about chronobiology and circadian
rhythms. IOW claims rights in various “WHEN”-related marks; the issue here is Dr.
Breus’s third book, The Power of When; IOW claimed rights in that phrase.
Under Rogers, courts “apply the [Lanham] Act to an
expressive work only if the defendant’s use of the mark (1) is not artistically
relevant to the work or (2) explicitly misleads consumers as to the source or
the content of the work.”  IOW argued
that The Power of When “is a non-fiction, self-help book that is not an
artistically expressive fictional work.” But nonfiction can be expressive.
Under Gordon v. Drape, an expressive work “evinces an intent to convey a
particularized message, and in the surrounding circumstances the likelihood was
great that the message would be understood by those who viewed it.” The Power
of When
qualified.  It discussed
“chronotypes” that supposedly explain when during the day it would be best to
tackle specific tasks, based on a person’s particular chronotype.  “Given Dr. Breus’s creativity in developing
and expressing his theories, categorizing and naming the chronotypes, and
organizing the book, The Power of When is an expressive work worthy of First
Amendment protection.” The court explicitly recognized that Empire
rejected any requirement that an alleged mark have cultural significance before
Rogers could come into play.
So, was there “artistic relevance”? The level must merely be
nonzero. “The Power of When” [not the mark, but the phrase, despite some
confusion in the court’s discussion] was “certainly relevant” to the book.  And was the use explicitly misleading? “The
Ninth Circuit has been clear that the use of a mark in the title of a work,
divorced from other explicitly misleading actions, is not enough to bar First
Amendment protection.”  Plaintiffs
alleged that customers had been confused, and that one of IOM’s team members “immediately
contacted [an IOM principal] when she saw the book and asked if this was the
same ‘sleep doctor’ who [they] had been working with[.]” That showed only
confusion, not explicit misleadingness. “To be relevant, evidence must relate
to the nature of the behavior of the identifying material’s user, not the
impact of the use.” Without “an ‘explicit indication,’ ‘overt claim,’ or
‘explicit misstatement’ ” that The Power of When was affiliated with IOM, there
was no triable issue.
The court noted that defendants’ promotional activities for
the book were thus also protected by the First Amendment as an extension of
their protected use of the Power of When mark. The Ninth Circuit has held that
while “promotional efforts technically fall outside the title or body of an
expressive work, it requires only a minor logical extension of the reasoning of
Rogers to hold that works protected under its test may be advertised and
marketed by name.”
Rogers/Empire also applied to the Arizona
common law unfair competition claims.

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