The legislative history of the TMA, just enacted into law, includes several paragraphs blessing Rogers v. Grimaldi and saying it’s what Congress understands the Lanham Act to mean. I’d be interested to know how that got in there, and I wonder if there are any judges left who care.

H.R. Rep. No. 116-645, pp. 19-20:  

In providing that a plaintiff is entitled to a rebuttable
presumption of irreparable harm following a court’s finding of trademark
infringement, or upon a finding of likelihood of success on the merits in the case of a motion for preliminary injunction or temporary
restraining order, the Committee acknowledges the need to take special care to
ensure that the interests protected by the Lanham Act do not encroach on the rights to free speech and expression
enshrined in the First Amendment. Courts have long been appropriately
circumspect in applying the Lanham Act so as not to interfere with the First
Amendment rights of creators and distributors of ‘‘artistic works’’ (sometimes
called ‘‘expressive works’’), including without limitation movies, television
programs, songs, books, plays, video games, and the like, which may depict or
reference third-party marks within such artistic works or in such artistic
works’ titles.59 It is the intent of the Committee that this legislation will not
in any way affect that jurisprudence.

The standard for accommodating First Amendment interests in the
Lanham Act context for infringement and unfair competition claims was first
articulated in Rogers v. Grimaldi,60 which has been widely adopted by courts
across the nation in the subsequent three decades. As a threshold matter under
the Rogers test, a plaintiff cannot state a viable trademark claim in the
context of an artistic work (1) unless the defendant’s use of the mark ‘‘has no
artistic relevance to the underlying work whatsoever,’’ or (2) ‘‘if it has some
artistic relevance, unless the [use of the mark] explicitly misleads as to the
source or the content of the work.’’ 61 The ‘‘no artistic relevance . . .
whatsoever’’ standard sets an extremely low bar, requiring only that ‘‘the
level of relevance must merely be above zero.’’ 62 ‘‘This black-and-white rule
has the benefit of limiting [the court’s] need to engage in artistic analysis
in this context.’’ 63 When that bar is met and any level of artistic relevance
to the underlying work is present, the use may be actionable only where the
creator explicitly misleads consumers. This test appropriately recognizes the
primacy of constitutional protections for free expression, while respecting a
trademark owner’s right to prevent unauthorized use of its mark and the
public’s interest in avoiding confusion.

In enacting this legislation, the Committee intends and
expects that courts will continue to apply the Rogers standard to cabin the reach
of the Lanham Act in cases involving expressive works. The Committee believes
that the adoption by a court of a test that departs from Rogers, including any
that might require a court to engage in fact-intensive inquiries and pass
judgment on a creator’s ‘‘artistic motives’’ in order to evaluate Lanham Act
claims in the expressive-works context would be contrary to the Congressional understanding
of how the Lanham Act should properly operate to protect important First
Amendment considerations, and upon which the Committee is relying in clarifying
the standard for assessing irreparable harm when considering injunctive relief.

 

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