Rebecca Tushnet

MGFB Properties, Inc. v. ViacomCBS INC., 2021 WL 4843905, NO.
5:19cv257-RH-MJF (N.D. Fla. Sept. 22, 2021)

The Flora-Bama lounge and entertainment complext is
“regionally famous,” and MTV created a national TV series, MTV Floribama Shore.
The district court granted summary judgment on the resulting trademark claims,
reasoning that plaintiffs’ likelihood of confusion showing was “not strong
enough to meet the standard that applies to artistic works. This is so in part
because the plaintiffs and defendants use the competing marks in substantially
different settings.” From the fact section:

The record gives no reason to
believe that, had there been no Flora-Bama, the defendants would have come up
with the name Floribama Shore on their own.

This does not mean, however, that
the defendants intended to benefit from the plaintiffs’ goodwill. The
defendants believed the name Floribama Shore was superior on its own merit to
such alternatives as “Florida Shore” or “Gulf Shore.” The show, after all, would
feature the perceived culture on a Florida panhandle beach—a culture that was a
closer match to Alabama than to many places on the Florida coast or Gulf of
Mexico, including, for example, those in south Florida. “Floribama” fit.

The plaintiffs’ evidence of likely confusion, “while not
strong,” would have withstood summary judgment in a commercial use case. “But
the standard is more exacting when a junior user’s artistic expression is in
the mix.” The court applied Rogers v. Grimaldi with the original title-v-title
exception, not the Ninth Circuit version that first rejected the exception but
later reincorporated title-v-title into the broader Gordon v. Drape Creative
epicycle. The Eleventh
Circuit adopted Rogers, but did not specify whether it was adopting the Rogers
title-v-title footnote, so the court here turned to subsequent Second Circuit
precedent, specifically Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing
Group, Inc., 886 F.2d 490 (2d Cir. 1989). This was a title-v-title case in
which Rogers did not strictly apply, but the First Amendment concerns
for protecting the defendant’s noncommercial speech warranted applying the
likely confusion factors with special care. In Twin Peaks Productions, Inc. v.
Publications International, Ltd., 996 F.2d 1366 (2d. Cir. 1993), another
title-v-title case, the court emphasized: “the finding of likelihood of
confusion must be particularly compelling to outweigh the First Amendment
interest recognized in Rogers.” The Eleventh Circuit subsequently cited Cliffs
Notes with approval for the propositions that Rogers is generally
applicable to works of artistic expression and that, “when deciding whether an
artistically expressive work infringes a trademark,” a court must “carefully
‘weigh the public interest in free expression against the public interest in
avoiding consumer confusion.’ ”

The court rejected defendants’ argument that, under the
Ninth Circuit Empire test, an artistically relevant title can violate
the Lanham Act only if it explicitly misleads as to the source or content of
the work. “If that were indeed the law, and if ‘explicitly’ were construed as
strictly as the defendants say it should be, then the defendants would easily
prevail on the Lanham Act claims in the case at bar.” But it isn’t clear
that’s what the Ninth Circuit thinks, after Gordon, and anyway the
title-v-title exception plus First Amendment-flavored balancing to favor
artistic works is superior (apparently because it gives more weight to “the
interest in trademark protection,” though why that should ever override First
Amendment rights to engage in noncommercial speech in cases of nonexplicit
misleadingness—that is, why liability for implied endorsement would satisfy
strict scrutiny—is left as an exercise for the reader).

[FWIW, in my view Cliffs Notes is better than Gordon
because Gordon inappropriately generalized the very particular
circumstance of the title of a conventional expressive work to create a
rule that allows the plaintiff to prevail even when the putative infringement
stemmed from use in content, e.g., the punchline of a joke. Stated that
way, it is a much broader exception to Rogers and a much less justified
one. For one thing, the only reason the Rogers court even contemplated
liability for noncommercial speech was the special marketing role played by
titles in particular. For another, the followup Second Circuit case, Cliffs
Notes—unlike Gordon—says you have to remember the important First
Amendment interests at stake even when you’re back in multifactor test land.]

Why is this even relevant, anyway? As the court notes, “[t]he
plaintiffs’ use of its mark Flora-Bama relates primarily to its facility, not
to the title of an artistic work.” Unconvincingly, the court says,

But the mark has occasionally been
used in the title to artistic works, and in any event, artistic works are
performed at the Flora-Bama. So the exception applies to the plaintiffs’
claims, at least to the extent the defendants’ title MTV Floribama Shore could
be found misleading and confusingly similar to the plaintiffs’ titles.

This part is not persuasive. “Occasionally been used in the
title to artistic works” is a red herring. It does not appear that any trademark
rights stem from such uses—they seem to have been referential—or that
plaintiffs own any valid trademark rights for artistic works (the ones mentioned in the
opinion are CMT’s broadcast of a show, Kenny Chesney: Live from the Flora-Bama
and Chesney’s song Flora-Bama). [I’m sure they have contracts saying
that they permitted these uses, but so what? That doesn’t give them affirmative
trademark rights for songs or TV shows.] Likewise, the idea that because songs are
performed at a venue, then the venue is an “artistic work” with a “title”
doesn’t make sense. That’s like saying that, because Ford Motor Co. has
published corporate histories in its name, sponsors Masterpiece Theater, and
creates extensive social media content, “Ford Motor Company” is now a title for
Rogers purposes, or that the existence of The
Texas Rangers: The Authorized History or The
Code: An Authorized History of the ASME Boiler and Pressure Vessel Code
makes those entities into titles for Rogers purposes.

Nonetheless, defendants still win.

Strength: Incontestability “counts for more in the Eleventh
Circuit than in most others.” But the “nature of the mark” was more important.
It was “geographically descriptive—a portmanteau of the names of the two states
on whose border the plaintiffs’ establishment sits,” but also commercially
strong in pointing specifically to plaintiffs, at least before the MTV show.
Similarity: Pronunciation was identical, spelling slightly different, MTV
always used “Shore” after “Floribama,” and they usually insert “MTV” before “Floribama.”
Also, “[t]he graphics are wholly distinct.” Overall cuts both ways.

And here is where the weirdness of calling the name of a
venue a “title” kicks in. On the similarity of goods and services, the court
appropriately focused on the things in which plaintiffs had rights—bar/lounge/concert
services. Thus, the parties’ goods and services were highly dissimilar, as were
the trade channels/customers.

Intent was neutral: Defendants copied the name, but there
was

a convincing explanation for
choosing the name on the merits, unrelated to the plaintiffs’ goodwill. While
not previously used for the purpose, the term “Floribama” well describes the
geographic area hosting the culture depicted on the defendants’ show. And
Floribama Shore follows the pattern set by Jersey Shore, the first show in the
series. The defendants’ target market—a national television audience—far
exceeds the reach of the plaintiffs’ goodwill. There is no reason to believe
the defendants adopted Floribama Shore for their national television series
based not on the title’s own merit but to trade on the Flora-Bama’s regional
popularity.

Actual confusion: also neutral, despite “the plaintiffs’
poorly constructed surveys and some evidence of confusion, primarily in social
media.” This evidence was “scant” and mostly “ambiguous,” e.g., “a social-media
user’s misspelling of ‘Floribama’ in a post about the defendants’ show hardly
indicates confusion with the Flora-Bama. Social media abound with misspellings
and grammatical errors, and it is unlikely many English majors post comments
about the defendants’ show.”  So too with
casual inquiries by Flora-Bama customers—such customers “may suspect there is a
connection, or may suspect there is none, or may simply be making small talk.”
There was no evidence of material confusion:

The record includes no evidence
that any individual ever decided to watch—or not to watch—Floribama Shore
because the individual believed the show was related to or endorsed by the
Flora-Bama. And the record includes no evidence that any individual ever
decided to go—or not to go—to the Flora-Bama because the individual believed it
was related to or endorsed by Floribama Shore. The same is true of the parties’
collateral products, including the plaintiffs’ shows and licensed song.

Given the First Amendment interests at stake, this wasn’t
enough. “Here the defendants’ primary intent was expression—conveying to the
audience the subject of the television series—not exploiting the plaintiffs’
mark,” and the court emphasized “the substantial disparity in how the
plaintiffs and defendants use their marks.” This result also protected “the
small amount of consumer products Viacom CBS has sold using the Floribama Shore
name,” which generated $99 in revenue. [Citing Empire:] “When Rogers
and its progeny protect use of a mark in the title of an artistic work, the
same ordinarily is true for the sale of consumer products that display the
title and are otherwise noninfringing.”

The court would also construe state law to avoid a conflict
with the First Amendment (and apply the rule that state and federal trademark
principles are generally the same), including state dilution law.

Then some more sigh-worthy dicta: Although the Florida
dilution statute has an explicit exclusion for “[n]oncommercial use of the mark,”
the court wasn’t convinced that “use of a mark in an artistic work is always
noncommercial,” because previous cases finding that noncommercial speech was
noncommercial involved lampoons, documentaries, or “speech intended primarily
to express a viewpoint,” Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302
(N.D. Ga. 2008), so the court declined to settle the issue. [Mattel, Inc. v.
MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cited as the “lampoon,” was
super super clear that its result did not depend on the nature of the
commentary but on the characterization of the song as noncommercial speech, but
I suppose the court here thought the facts overrode the stated reasoning.]

Separately, plaintiffs failed to show the requisite Florida
fame, rather than fame in the Flora-Bama’s geographic area.

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