MGFB Properties, Inc. v. 495 Productions Holdings LLC

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[PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 21-13458
____________________
MGFB PROPERTIES, INC.,
FLORA-BAMA MANAGEMENT LLC,
FLORA-BAMA OLD S.A.L.T.S. INC,
Plaintiffs-Appellants,
versus
VIACOM INC,
f.k.a.
MTV Networks,
Defendant,
495 PRODUCTIONS HOLDINGS LLC,
495 PRODUCTIONS SERVICES LLC,
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VIACOMCBS INC.,
Defendants-Appellees.
____________________
Appeal from the United States District Court
for the Northern District of Florida
D.C. Docket No. 5:19-cv-00257-RH-MJF
____________________
Before LUCK, BRASHER, and HULL, Circuit Judges.
HULL, Circuit Judge:
This dispute is about the right to use the word “Floribama”
and lies at the crossroads of the Lanham Act and the First
Amendment.
Plaintiffs-Appellants MGFB Properties, Inc. (“MGFB”),
Flora-Bama Management LLC (“Flora-Bama Mgmt.”), and
Flora-Bama Old S.A.L.T.S. Inc. (“Old SALTS”) (collectively,
“Plaintiffs”) own and operate the Flora-Bama Lounge, Package and
Oyster Bar (“Lounge”) on the Florida-Alabama border. The
Lounge has been in operation since 1964 and has gained regional
fame by hosting many entertainment and athletic events.
Defendants-Appellees 495 Productions Holdings LLC and
495 Productions Services LLC (jointly referred to as “495
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Productions”), and ViacomCBS Inc. (“Viacom”) (collectively,
“Defendants”) create and distribute television programs, including
the hit reality series Jersey Shore and its spin-off MTV Floribama
Shore.
Plaintiffs sued Defendants, alleging that the title of
Defendants’ series, MTV Floribama Shore, infringes on Plaintiffs’
Flora-Bama trademarks. The district court granted summary
judgment to Defendants. Plaintiffs timely appealed. After careful
review and with the benefit of oral argument, we affirm the district
court’s judgment for Defendants.
I. THE PARTIES’ BUSINESSES
A. Plaintiffs
Plaintiff MGFB is primarily an asset-holding company. It
owns the “FLORA-BAMA” trademarks and the property on which
the Lounge is located. MGFB registered its federal trademark in
January 2013. The federal trademark covers use of the trademark
in connection with “bar and restaurant services” and several
entertainment services, including arranging, organizing,
conducting, and hosting “social entertainment events,” live
musical performances, and “competitions for fish throwing.”
MGFB also obtained Florida and Alabama state trademarks
covering similar services.
Plaintiffs have the same principals: John McInnis III,
Cameron Price, Joe Gilchrist, and Pat McLellan. MGFB licenses its
trademarks to Flora-Bama Mgmt. and Old SALTS.
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Plaintiff Flora-Bama Mgmt. is responsible for the day-to-day
operations of the Lounge and its related establishments (e.g., the
Flora-Bama Ole River Grill, the Flora-Bama Liquor & Lotto, and
the Flora-Bama Yacht Club). Plaintiff Old SALTS is responsible for
managing the Flora-Bama marina and operating watersports and
transportation services.
Plaintiffs continuously have used their “FLORA-BAMA”
trademarks in connection with Plaintiffs’ entertainment, food, and
drink establishments. They aggressively defend the trademarks,
sending more than 80 cease-and-desist letters to businesses across
the region.
Plaintiffs’ Lounge and MGFB’s trademarks have been
featured in artistic works by third parties. In “Ragtop Day,” Jimmy
Buffett sings, “Get ourselves a cool one at the Flora-Bama, ya!”
Jimmy Buffett, Ragtop Day (1984). Two songs are named after the
Lounge: Kenny Chesney’s “Flora-Bama” and Neil Dover’s
“FloraBama Time.”
McInnis, a principal in all three Plaintiffs and president of
MGFB, allowed these artists to use Flora-Bama in the songs. For
the Chesney song, McInnis testified that Chesney called him to say
he had written a song about the Lounge and wanted to call it
Flora-Bama, and McInnis told him “that’s great [and h]ave at it.”
For the Dover song, McInnis could not recall whether there was a
formal license agreement between Dover and the Plaintiffs, but
McInnis said the Plaintiffs “100 percent gave him permission to use
the title.”
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Additionally, Kenny Chesney performed on the Lounge’s
beachfront stage in front of thousands of fans at a 2014 concert. His
performance was broadcast on Country Music Television
(“CMT”), a Viacom channel. The agreement granting CMT a
license to broadcast that program does not mention Plaintiffs. But
Plaintiffs contend they “verbally” licensed their trademark to
Kenny Chesney and the company that represents him, Blue Chair
Bay Records, and then Blue Chair Bay Records sublicensed the
rights to Viacom for the broadcast on CMT. The live concert was
called the “Flora-Bama Jama,” and the television program was
called “Kenny Chesney: Live at the Flora-Bama.”
“Flora-Bama” is also featured in a few book titles: Food n’
Fun at the Flora-Bama, Bushwhacked at the Flora-Bama, and If the
Flora-Bama Walls Could Talk: If the Walls Could Talk.1 These
books were written by Chris Warner. Warner obtained a license
to use “Flora-Bama” in the title of his books. The agreement was
entered into on August 21, 2019—several years after the books
were published and a few weeks after Plaintiffs’ complaint in this
case was filed on August 6, 2019. McInnis contends the agreement
with Warner was verbal from the beginning, and the parties later
consummated it in writing.
1 Food n’ Fun at the Flora-Bama features recipes by the owners, musicians,
songwriters, bartenders, and others from the Lounge. Bushwhacked at the
Flora-Bama recounts tales from the Lounge. If the Flora-Bama Walls Could
Talk: If the Walls Could Talk discusses the graffiti in the Lounge.
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Lastly, “Flora-Bama” is featured in a few films, such as
Mullet Men (a documentary about Flora-Bama’s fish-throwing
competition that Plaintiffs sell at the Lounge’s giftshop) and Last
American Roadhouse: The Documentary of the Flora-Bama (a
DVD that Plaintiffs sell at the Lounge’s gift shop).
From 2012 to 2019, Plaintiffs spent about $1.9 million in
advertising “Flora-Bama” branded establishments. Plaintiffs’
Lounge and their related businesses have been featured in major
news outlets, such as The New York Times and CNN, and received
multiple “Best Of” awards, such as the “Best U.S. Beach Bar.”
B. Defendants
Defendant Viacom is a global media and entertainment
company that operates several television brands, including MTV,
VH1, Nickelodeon, and Comedy Central. Defendant 495
Productions is a television production studio that contracts with
companies like Viacom to produce reality television series.
In 2009, 495 Productions and Viacom released a hit
television series called Jersey Shore, which profiled “a group of
fun-loving 20-somethings who lived together in a beach house in
Seaside Heights, New Jersey.” Jersey Shore lasted six seasons,
thanks in part to the distinctive subculture its cast was perceived to
belong to. That sub-culture centered on a love of clubbing, taking
care of one’s physical appearance, and a dedication to family and
Italian culture.
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The success of Jersey Shore spawned several international
spin-offs also produced by 495 Productions and broadcasted by
MTV. These spin-offs included Warsaw Shore, Acapulco Shore,
and Geordie Shore. Like Jersey Shore, the spin-offs were dedicated
to profiling subcultures of 20-somethings in different parts of the
world.
C. Casting Calls at the Lounge
The parties are familiar with one another. In 2011, 2013, and
2014, 495 Productions approached Plaintiffs about using the
Lounge for a television show and casting calls. In January 2017, a
development executive at 495 Productions emailed Plaintiffs again:
“I wanted to reach out to you about the prospective of shooting a
show at Flora-Bama. . . . I came across the bar on many ‘Best Of’
lists and it looks like the perfect location!” Plaintiffs allowed 495
Productions to have a few casting calls at the Lounge, but nothing
more.
II. DEFENDANTS’ CREATION OF MTV FLORIBAMA
SHORE
A. Defendants’ Seventh Shore Series
In 2016, MTV’s president, Chris McCarthy, made it a
priority to bring the Shore franchise back to the United States.
McCarthy wrote SallyAnn Salsano, the president of 495
Productions, that he wanted to build out the Shore franchise like
the Real Housewives franchise, with multiple series in different
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locations: “Gulf Shore, Florida Shore, Jersey Shore, South Shore,
etc.”
Defendants began to develop a seventh Shore series, this one
focused on Southern beach culture. Defendants wanted to
highlight “young [S]outhern folks” who go to “shore houses” or
“spend summers” on the Gulf of Mexico, extending from the
Florida panhandle into Alabama and Mississippi.
B. Survey and Market Research
MTV commissioned a survey of 300 young people familiar
with the region to measure awareness and perceptions of the
culture and nightlife in various beach towns. Then, 495
Productions prepared a 32-page slide deck, titled “Gulf Shores,”
profiling the region. One slide identified the region as spanning
from Biloxi, Mississippi, to Panama City Beach, Florida. The slide
deck noted the “Flora-Bama [Lounge]” is a “[f]amous, open-air
bar,” but it also used the term “Florabama” to describe the region.
The slide deck calls Gulf Shores “[t]he epitome of ‘Florabama’—
mix of nice, relaxing Florida beaches with the down-home
Southern vibe of Alabama.”
Of the 300 people surveyed, about 34% had heard of the
term “Flora-bama,” with half of the 34% identifying it as the bar
and the other half identifying it as the region. Defendants also
engaged a market research company to learn more about
“southern beach culture.” The research suggested that the term
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Flora-bama was “either unknown or though [sic] to refer strictly to
the bar.”
Ultimately, Defendants chose Panama City Beach as the
filming location for the series. Panama City Beach is over 100 miles
east of the Lounge, which is in Pensacola. McCarthy, after
consulting Nina Diaz (MTV’s head of unscripted television) and
Viacom’s legal department, decided to name the show MTV
Floribama Shore.
Diaz testified that the creative process behind the decision
to go with MTV Floribama Shore was driven by finding a title, like
Jersey Shore, that would “define the subculture” featured in the
series. McCarthy testified that “Floribama” offered “a very distinct
sense of what part of the country and subculture that is.”
McCarthy also testified that because Florida has “multiple
subcultures,” a name like “Florida Shore” would not have
sufficiently identified the Gulf Coast setting. And “Florida Shore,”
of course, would include Miami, which McCarthy noted “has its
own sort of codes.”
Defendants almost chose “Gulf Shore” as the name, but they
ultimately wanted “a Jerseyesque type of show,” and Diaz thought
“Floribama” “scream[ed] louder” than “Gulf Shore.” Diaz also
thought “Gulf Shore” sounded in “style” and “tone” too much like
another MTV series airing at the time called Siesta Key. Finally,
Defendants added “MTV” to tie the series to the network and
“Shore” to tie the series to the Shore franchise.
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As Plaintiffs point out, Flora-Bama and the Lounge featured
in many of Defendants’ email exchanges. Jackie French, Viacom’s
executive producer of the series, emailed her team noting that the
first episode “should tell the viewer what Floribama is, although
the tricky thing is I’m not sure anyone actually calls it that. All my
googling kept taking me to the Florabama bar.” Another employee
noted that “Google automatically assumes you mean [the
F]lora[-B]ama [Lounge].”
III. 2017 PREMIERE OF MTV FLORIBAMA SHORE
By October 2017, Defendants began marketing the series.
The logo for the series was modeled after the Jersey Shore logo to
convey its connection to the Shore franchise:
To compare, the following is Plaintiffs’ trademarked logo:
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Because “Floribama Shore” is not necessarily as
geographically descriptive or widely known as “Jersey Shore,”
Defendants used graphics and scripted lines read by the cast to
explain the meaning. In the premiere, the television series
displayed its logo on top of a map of the South, and its cast read
lines such as “That whole stretch of beach along the Gulf Coast
from Alabama to Tallahassee—we call it Floribama”; and
“THAT’S what it means to be from Floribama!” Notably, in an
email instructing cast members to read the scripted lines, a 495
Productions executive wrote, “I know, I know . . . Floribama is just
a bar. Ignore that part for now.”
IV. PROCEDURAL HISTORY
A. Cease-and-desist Letter
MTV Floribama Shore was set to premiere on November
27, 2017, but on October 30, 2017, Plaintiffs sent Defendants a
cease-and-desist letter claiming trademark infringement and asking
Defendants to change the series name. Viacom refused and
explained, “[T]itles of artistic works are entitled to substantial
deference against Lanham Act and unfair competition claims.”
The series title remained.
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MTV Floribama Shore premiered on schedule in November
2017. The second season aired from July 2018 to February 2019,
and the series has aired four seasons in total.
B. Plaintiffs’ Complaint
On August 6, 2019, after the second season aired, Plaintiffs
sued, asserting eight claims: (1) trademark infringement under the
Lanham Act § 32; (2) unfair competition under the Lanham Act
§ 43(a); (3) trademark infringement under Florida Statute
§ 495.131; (4) violation of the Florida Deceptive and Unfair Trade
Practices Act under Florida Statute § 501.204; (5) trademark
dilution under Florida Statute § 495.151; (6) Florida common-law
trademark infringement; (7) Florida common-law unfair
competition; and (8) Florida common-law unjust enrichment.
C. Summary Judgment and Plaintiffs’ Evidence of Alleged
Confusion
In April 2021, Defendants moved for summary judgment on
all of Plaintiffs’ claims.
In response, Plaintiffs maintained the series has caused
confusion among their patrons that has damaged their brand.
Plaintiffs submitted emails, letters, and declarations from their
bartenders and regular musical acts stating that there have been
multiple instances of confusion between the series and the Lounge.
For example, a musician who often performed at the Lounge said
multiple people asked her about the series “and if [she] had met any
of the people on the television show.” Several employees of the
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Lounge claim they were repeatedly asked about the series,
including when certain cast members would be around. An elderly
patron criticized one of the Lounge’s owners “for allowing MTV
to air such a terrible depiction of the Flora-Bama.”
Plaintiffs also submitted (1) a June 2017 RadarOnline article
that used photos of the Lounge in its coverage of the series; and
(2) social media posts that they contended showed the public’s
confusion between the two businesses. Plaintiffs now assert that
“[t]his internet and social media confusion was fueled at least in
part by Defendants’ repeated use of ‘Florabama’—Plaintiffs’ exact
trademark—by 495 Productions’s President, Ms. Salsano, to
promote the [series].” For example, a few days before the series
premiered, Salsano posted on Twitter: “Yup one of a kind
#Florabama @FloribamaShore @495Prods.” Then on the night
the series premiered, Salsano posted on Twitter: “[Jersey Shore’s]
southern cousin is fun #MTV florabama shore.”
Plaintiffs also offered two experts. Their social media
expert, Jason McDonald, opined that from November 2017
forward, Internet searches for “Florabama” or “Flora-Bama” led to
“blurred” results filled with MTV Floribama Shore content. And
Professor David Franklyn conducted a survey and found that 22%
of respondents were confused as to the sponsorship, approval, or
affiliation between the Lounge and MTV Floribama Shore.
The district court granted summary judgment for
Defendants. Plaintiffs timely appealed.
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D. Plaintiffs’ Appeal
On appeal, Plaintiffs’ brief addresses their trademark
infringement claims under the Lanham Act. Thus, we focus our
discussion on those claims. 2
A group of sixteen intellectual property law professors and
the Motion Picture Association, Inc. filed amicus briefs in support
of Defendants and affirmance of the district court’s grant of
summary judgment to Defendants.
We review de novo a district court’s decision to grant
summary judgment, considering all the facts in the light most
favorable to the nonmoving party. McClendon v. Long, 22 F.4th
1330, 1336 (11th Cir. 2022).
V. GENERAL PRINCIPLES
A. Balancing Trademark and First Amendment Rights
This case highlights the interplay between the interests of
the trademark owner and the consumer in avoiding confusion
about the source or sponsorship of products and the First
Amendment interests of the creator of the artistic work and the
public in allowing freedom of expression and the free flow of ideas.
2 The parties assume, as did the district court, that the Florida courts would
adopt the same trademark principles as the federal courts in applying the
Lanham Act. So will we. Thus, like the Plaintiffs, we will not discuss their
state law claims separate from their Lanham Act trademark infringement
claims.
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As to trademarks, the Lanham Act “secure[s] to the owner
of [a] mark the goodwill of his business” and “protect[s] the ability
of consumers to distinguish among competing producers.” Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992) (internal
quotation marks omitted). The Lanham Act provides for civil
liability when “[a]ny person who shall, without the consent of the
registrant—use in commerce any reproduction . . . of a registered
mark in connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with which
such use is likely to cause confusion.” Lanham Act § 32(1)(a), 15
U.S.C. § 1114(1)(a).
On the other hand, the First Amendment ensures freedom
of speech. U.S. Const. amend. I. The First Amendment’s
protections extend beyond written and spoken words. Hurley v.
Irish-Am. Gay, Lesbian & Bisexual Grp. of Boston, 515 U.S. 557,
569 (1995) (“[T]he Constitution looks beyond written or spoken
words as mediums of expression.”). Creative works of artistic
expression are firmly ensconced within the protections of the First
Amendment. Id. (stating that paintings, music, and poetry are
“unquestionably shielded” by the First Amendment); Kaplan v.
California, 413 U.S. 115, 119–20 (1973) (“[P]ictures, films, paintings,
drawings, and engravings . . . have First Amendment
protection . . . .”); Buehrle v. City of Key West, 813 F.3d 973, 975
(11th Cir. 2015) (holding that tattooing is artistic expression
protected by the First Amendment).
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The landmark case for balancing trademark and First
Amendment rights is the Second Circuit’s decision in Rogers v.
Grimaldi, 875 F.2d 994 (2d Cir. 1989). More recently, our Court
followed and adopted the Second Circuit’s two-part test in Rogers.
See Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266,
1278 (11th Cir. 2012). We start by reviewing those decisions.
B. Rogers v. Grimaldi
Ginger Rogers, an international celebrity, famously
performed alongside Fred Astaire. Rogers, 875 F.2d at 996. They
became known as the duo “Ginger and Fred.” Id. Rogers asserted
a Lanham Act claim against the producers and distributors of a film
entitled Ginger and Fred. Id. at 996–97. The film told the story of
two fictional Italian cabaret performers, Pippo and Amelia, who
imitated Rogers and Astaire and thus became known in Italy as
“Ginger and Fred.” Id. The film was created and directed by the
famed Italian filmmaker Federico Fellini. Id. at 996.
The Second Circuit recognized that the “First Amendment
concerns do not insulate titles of artistic works from all Lanham
Act claims,” but they must inform the scope of the Act, as applied
to claims involving titles. Id. at 998. The Second Circuit noted that
while artistic works “deserve protection,” they are “sold in the
commercial marketplace,” making consumer deception a
legitimate concern. Id. at 997. While consumers have an interest
in not being misled, they also have an interest in enjoying the
results of the creator’s or author’s freedom of expression. Id. at
997–98.
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The Second Circuit further noted that “[t]itles, like the
artistic works they identify, are of a hybrid nature, combining
artistic expression and commercial promotion.” Id. at 998. The
“artistic and commercial elements of titles are inextricably
intertwined.” Id. Thus, the Second Circuit reasoned, “titles
require[] more [First Amendment] protection than the labeling of
ordinary commercial products.” Id. The Second Circuit held that
“[b]ecause overextension of Lanham Act restrictions in the area of
titles might intrude on First Amendment values, we must construe
the [Lanham] Act narrowly to avoid such a conflict.” Id. The
Second Circuit emphasized that “in general the Act should be
construed to apply to artistic works only where the public interest
in avoiding consumer confusion outweighs the public interest in
free expression.” Id. at 999.
After this background, the Second Circuit developed a
two-part test that narrowly applies the Lanham Act in order to
protect First Amendment interests in the titles of artistic works.
The Second Circuit’s two-part test provides that the title of an
artistic work does not violate the Lanham Act “[(1)] unless the title
has no artistic relevance to the underlying work whatsoever, or,
[(2)] if it has some artistic relevance, unless the title explicitly
misleads as to the source or the content of the work.” Id.Applying the two-part test to Rogers’s claim, the Second
Circuit affirmed the grant of summary judgment for the
defendant’s film’s producers. Id. at 1001–02. On the first prong,
the Second Circuit explained that the standard for artistic relevance
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is an “appropriately low threshold of minimal artistic relevance.”
Id. at 999. It then found that the title of the film—Ginger and
Fred—met the artistic relevance bar because the Italian characters
were nicknamed Ginger and Fred, which was relevant to their
story as Italian performers imitating the famous duo. Id. at 1001.
On the second prong, the Second Circuit concluded that
while “some members of the public would draw the incorrect
inference that Rogers had some involvement with the film,” that
confusion is “so outweighed by the interests in artistic expression
as to preclude application of the Lanham Act.” Id. And finally,
even though “there [was] no doubt a risk that some people looking
at the title Ginger and Fred might think the film was about Rogers
and Astaire,” the title is still “entirely truthful as to its content in
referring to the film’s fictional protagonists.” Id. (cleaned up). The
Second Circuit noted, “Rogers and Astaire are to [the film-maker]
a glamorous and care-free symbol of what American cinema
represented,” and in that sense, the title was not misleading but “an
integral element of the film and the film-maker’s artistic
expressions.” Id. (internal quotation marks omitted).
Although not applicable to the facts of Rogers, the Second
Circuit added a footnote containing an exception to the Rogers
test. See id. at 999 n.5. That footnote stated: “[The Rogers test]
would not apply to misleading titles that are confusingly similar to
other titles [because t]he public interest in sparing consumers this
type of confusion outweighs the slight public interest in permitting
authors to use such titles.” Id. This footnote has become known
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as the “confusingly similar titles” exception or the “title-versus-
title” exception.
C. Courts’ Adoption of the Rogers Test
Several circuits have adopted the Second Circuit’s reasoning
and two-part test in Rogers. See, e.g., Parks v. LaFace Recs., 329
F.3d 437, 450 (6th Cir. 2003); Mattel, Inc. v. MCA Recs., Inc., 296
F.3d 894, 902 (9th Cir. 2002); Westchester Media v. PRL USA
Holdings, Inc., 214 F.3d 658, 665 (5th Cir. 2000); Seale v. Gramercy
Pictures, 949 F. Supp. 331 (E.D. Pa. 1996), aff’d without opinion,
156 F.3d 1225 (3d Cir. 1998). Additionally, the legislative history of
the Lanham Act’s latest amendment states that the Rogers test
“appropriately recognizes the primacy of constitutional
protections for free expression.” H.R. Rep. No. 116-645, at 20
(2020).
To date, no circuit has explicitly adopted the exception in
the Rogers footnote. One circuit has explicitly rejected it. See
Twentieth Century Fox Television v. Empire Dist. Inc., 875 F.3d
1192, 1197 (9th Cir. 2017) (explaining that the exception is
“ill-advised or unnecessary”).
D. Eleventh Circuit Precedent
Recently, this Court not only adopted the Rogers two-part
test but also applied it to a trademark challenge to the content—as
opposed to only the title—of an artistic work protected by the First
Amendment. See Univ. of Ala., 683 F.3d at 1278. In that case, the
University of Alabama Board of Trustees brought a Lanham Act
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suit against Daniel Moore, an artist who had painted famous
football scenes involving the University’s football team. Id. at 1269.
Moore had reproduced his paintings as, among other things, prints
and calendars. Id. The University argued that Moore’s unlicensed
paintings infringed on the University’s trademarks because the
depiction of the football uniforms “create[d] a likelihood of
confusion on the part of buyers that the University sponsored or
endorsed the product.” Id. at 1275.
After recounting the facts in Rogers, this Court noted that
other circuit courts have applied Rogers in “cases where trademark
law is being used to attack the content—as opposed to the title—of
works protected by the First Amendment.” Id. at 1277; see Cliff
Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., 886 F.2d 490(2d Cir. 1989); E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., 547
F.3d 1095 (9th Cir. 2008); ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d
915 (6th Cir. 2003).
This Court then adopted the two-part Rogers test: “An
artistically expressive use of a trademark will not violate the
Lanham Act [(1)] unless the use of the mark has no artistic
relevance to the underlying work whatsoever, or, [(2)] if it has
some artistic relevance, unless it explicitly misleads as to the source
or the content of the work.” Univ. of Ala., 683 F.3d at 1278
(internal quotation marks omitted).
This Court “readily conclude[d] that Moore’s paintings,
prints, and calendars [were] protected under the Rogers test.” Id.
As to artistic relevance, we held that “[t]he depiction of the
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University’s uniforms in the context of these items” was
“artistically relevant to the expressive underlying works because
the uniforms’ colors and designs are needed for a realistic portrayal
of famous scenes from Alabama football history.” Id. at 1278–79.
As to the explicitly misleading prong, we held there was “no
evidence that Moore ever marketed an unlicensed item as
‘endorsed’ or ‘sponsored’ by the University, or otherwise
specifically stated that such items were affiliated with the
University.” Id. at 1279. Though some members of the public may
“draw the incorrect inference” that the University was in some way
involved with Moore’s works, that risk of misunderstanding was
“so outweighed by the interests in artistic expression as to preclude
any violation of the Lanham Act.” Id. (cleaned up). We did not
mention, much less apply, the confusingly similar titles exception
from Rogers.
With this background, we turn to this case.
VI. APPLYING THE ROGERS TEST
A. Artistic Relevance
As already stated, under the first prong of the Rogers test,
“[a]n artistically expressive use of a trademark will not violate the
Lanham Act unless the use of the mark has no artistic relevance to
the underlying work whatsoever.” Id. at 1278 (internal quotation
marks omitted).
To be artistically relevant, the relationship between the
challenged title and the underlying work itself “merely must be
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22 Opinion of the Court 21-13458
above zero.” E.S.S., 547 F.3d at 1100; Rogers, 875 F.2d at 999(noting the standard for artistic relevance is an “appropriately low
threshold of minimal artistic relevance”).
MTV Floribama Shore clearly meets this first prong. The
relationship between the series title and the series content itself is
well above the artistic relevance threshold. “Floribama” describes
the subculture profiled in the series and the geographic area
exemplified by the subculture. To break it down even further, the
former part of “Floribama,” i.e., “Flori,” refers to Florida and the
beach culture the series sought to capture, while the latter part, i.e.,
“bama,” refers to Alabama and the Southern culture the series
sought to capture. As MTV’s McCarthy explained, “Floribama”
gave viewers “a very distinct sense of what part of the country and
subculture” the series was about. Viacom also added its house
mark (MTV) and the name of one of its iconic franchises (Shore) to
the title. And voilà, MTV Floribama Shore.
Before moving on to the second prong, we address two of
Plaintiffs’ arguments on artistic relevance.
First, Plaintiffs contend that our precedent added a
“necessary” component to the artistic relevance standard. They
rely on part of University of Alabama, where we said Moore’s
depiction of the University’s uniforms was “artistically relevant to
the expressive underlying works because the uniforms’ colors and
designs [were] needed for a realistic portrayal of famous scenes
from Alabama football history.” Univ. of Ala., 683 F.3d at 1278–79
(emphasis added).
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21-13458 Opinion of the Court 23
Plaintiffs misunderstand our opinion. It is, of course, true
that a title will be artistically relevant when it is necessary to use
the title. But that does not mean a title must be strictly necessary
to be artistically relevant. Nor does it mean that the use of a mark
has artistic relevance only if its use carries the same meaning as the
one the trademark holder gives it. As in this case, where the use of
“Floribama” has artistic relevance to Defendants’ show
independent of referring to Plaintiffs’ establishment, artistic
relevance does not turn on whether the work is about the
trademark or its holder.
As Defendants rightly explain, it would be improper for
courts to decide what forms of expression are “necessary.” In
University of Alabama, for example, a court applying a necessity
test would have had to decide, in effect, whether the artist needed
to paint realistic uniforms or whether some lesser degree of realism
would have sufficed. It is not our place to decide whether
Defendants needed to use “Floribama” in their title. See Bleistein
v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It
would be a dangerous undertaking for persons trained only to the
law to constitute themselves final judges of the worth of pictorial
illustrations, outside of the narrowest and most obvious limits.”);
see also Parks, 329 F.3d at 450 (rejecting an approach that “would
needlessly entangle courts in the process of” deciding “whether a
title is ‘necessary’ to communicate [an] idea”). It is enough that the
title was relevant to the series Defendants sought to produce.
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24 Opinion of the Court 21-13458
Second, Plaintiffs argue this case is similar to Parks. We
disagree. In Parks, the Sixth Circuit held there was a genuine issue
of material fact as to whether a song titled “Rosa Parks” had any
artistic relevance to the content of the song. 329 F.3d at 454. The
court reasoned that, despite the song’s name, “[t]he composers did
not intend [the song] to be about Rosa Parks, and the lyrics [were]
not about Rosa Parks.” Id. at 452. The court held that the case
needed to go to a jury because it was “highly questionable” that the
title had anything to do with the lyrics of the song at all. Id. at 459.
Unlike in Parks, there is no doubt that the title MTV Floribama
Shore is artistically relevant to the content of the series.
B. Explicitly Misleading
We proceed to the second prong—whether, although
artistically relevant, the series title “explicitly misleads as to the
source or the content of the work.” Rogers, 875 F.2d at 999.
Consumer confusion fuels trademark law, and this prong targets
that touchstone. The relevant question is whether (1) the
secondary user overtly “marketed” the protected work “as
‘endorsed’ or ‘sponsored’” by the primary user or (2) “otherwise
explicitly stated” that the protected work was “affiliated” with the
primary user. See Univ. of Ala., 683 F.3d at 1279 (“[T]here is no
evidence that Moore ever marketed an unlicensed item as
‘endorsed’ or ‘sponsored’ by the University, or otherwise explicitly
stated that such items were affiliated with the University.”).
Here, there is no evidence Defendants held the series out as
endorsed or sponsored by Plaintiffs, nor did they explicitly state
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21-13458 Opinion of the Court 25
that the series was affiliated with Plaintiffs. To the contrary,
Viacom chose a title that includes its own house mark (MTV) and
the name of one of its iconic franchises (Shore).
Plaintiffs’ reliance on the survey data is unavailing. As
explained above, of the 300 people surveyed, 34% had heard of the
term “Flora-bama,” with half of that 34% identifying it as the
Lounge. We reject this evidence because any misunderstanding
represented by the survey data was “not engendered by any overt
claim.” Rogers, 875 F.2d at 1001; see also Univ. of Ala., 683 F.3d at
1279 (“Even if some members of the public would draw the
incorrect inference that the University had some involvement with
Moore’s paintings, prints, and calendars, that risk of
misunderstanding, not engendered by 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.”
(cleaned up)). The evidence must relate to the nature of the
behavior of the defendant, not the impact of the defendant’s use.
Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1246 (9th Cir. 2013); see
also id. at 1245 (“Adding survey evidence changes nothing.”).
Twitter posts by Defendant 495 Productions’s president,
Salsano, are also insufficient to create a genuine issue of fact as to
the explicitly misleading prong. Although Salsano used
“#florabama” and “Florabama” in two tweets about the series, she
did so in conjunction with references to Defendant 495
Productions and MTV. Such uses of Plaintiffs’ spelling of the term
rather than “Floribama” cannot be understood as misleading about
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26 Opinion of the Court 21-13458
the source of Defendants’ show because of Salsano’s
accompanying references to Defendants and their house mark.
Plaintiffs argue that because Defendants “deliberately
copied” Plaintiffs’ mark, the intent to misappropriate goodwill
must be inferred. Plaintiffs appear to be arguing that intentional
copying alone permits an inference of copying with intent to
confuse. To support this argument, Plaintiffs rely on J-B Weld Co.
v. Gorilla Glue Co., 978 F.3d 778 (11th Cir. 2020), a trade dress case
involving product packaging for competing brands of adhesive.
But J-B Weld is a likelihood of confusion case that does not
implicate the First Amendment. J-B Weld is thus inapplicable to
First Amendment-Lanham Act cases such as this one.
Moreover, copying alone is not enough under Rogers. For
example, in Rogers, filmmaker Federico Fellini intentionally
copied the name to evoke the relationship between Fred and
Ginger, and in University of Alabama, Moore intentionally made
an almost exact copy of the University’s trademarked uniforms.
Yet both artists won. See Rogers, 875 F.2d at 1001–02; Univ. of
Ala., 683 F.3d at 1279.
To reiterate, the question as to the explicitly misleading
prong of Rogers is whether (1) the secondary user overtly
“marketed” the protected work “as ‘endorsed’ or ‘sponsored’” by
the primary user or (2) “otherwise explicitly stated” that the
protected work was “affiliated” with the primary user. Univ. of
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21-13458 Opinion of the Court 27
Ala., 683 F.3d at 1279. The question is not whether the artist
intends to copy.
In sum, applying the Rogers two-part test, we conclude that
Defendants’ use of Floribama in its television series title—MTV
Floribama Shore—did not violate the Lanham Act as a matter of
law.
VII. EXCEPTION IN ROGERS’ FOOTNOTE
Before concluding, we address Plaintiffs’ argument that we
should apply the exception to the Rogers two-part test found in the
Rogers footnote. The Second Circuit stated that the exception
applies only when a defendant’s title is “confusingly similar to other
titles.” Rogers, 875 F.2d at 999 n.5.
To date, our Court has not adopted that exception in the
Rogers footnote. And we need not decide whether to do so here
because this is not a title-versus-title case, and thus the exception
has no application.
Here, MTV Floribama Shore is the title of an artistic work.
However, Plaintiffs use Flora-Bama as a mark to identify their bar
and other commercial enterprises—not to identify any artistic
works created or owned by Plaintiffs. Thus, this is not a
title-versus-title case.
Nonetheless, Plaintiffs stress that third parties have used
Flora-Bama in the titles of third parties’ artistic works with
Plaintiffs’ oral or written permission. That still does not make this
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28 Opinion of the Court 21-13458
a title-versus-title case between the Plaintiffs and the Defendants.
Basic trademark law demonstrates why.
“Trademarks are ‘any word, name, symbol, or device, or
any combination thereof used to identify and distinguish one’s
goods from those manufactured or sold by others and to indicate
the source of the goods.’” Leigh v. Warner Bros., 212 F.3d 1210,
1216 (11th Cir. 2000) (alterations adopted) (quoting 15 U.S.C.
§ 1127). In other words, “[t]he role that a designation must play to
become a ‘trademark’ is to identify the source of one seller’s goods
and distinguish that source from other sources.” 1 McCarthy on
Trademarks and Unfair Competition § 3:1 (5th ed. updated Sept.
2022).
Telling here, third parties are not using Flora-Bama in their
titles to their artistic works—songs, books, or a concert—to
indicate their works are created, sung, or authored by the Plaintiffs.
The titles are being used to identify what the song or the book is
about, rather than who produced it. For example, the television
program “Kenny Chesney Live at the Flora-Bama” describes the
content of the broadcast (i.e., Kenny Chesney performing live at
the Flora-Bama Lounge). Similarly, the title of the book Food n’
Fun at the Flora-Bama describes the book’s content (i.e., recipes by
the owners, musicians, songwriters, bartenders, and others from
the Lounge).
Simply put, the titles are not being used as trademarks to
identify and distinguish the source of the artistic works. Plaintiffs
have presented no evidence that any of these titles to the third
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21-13458 Opinion of the Court 29
parties’ artistic works have any source-identifying function.
Because these titles are not being used as trademarks, this is not a
title-versus-title case for purposes of the Rogers footnote.
Further, Plaintiffs have not provided any evidence that they
own interests in those artistic works as trademarks for Plaintiffs’
own goods or services—the foundation of trademark rights. 3
Indeed, nothing in the record would allow a reasonable jury
to conclude that the public views Plaintiffs as the source of these
artistic works. Even one of Plaintiffs’ principals, McInnis,
understood that Plaintiffs did not stand behind Kenny Chesney’s
televised concert:
[H]e asked permission to do it, and we told him it was
fine. Because it -- specifically it wasn’t the Flora-Bama
-- I mean it wasn’t Flora-Bama putting it out. It was
him. It was his product. He plays at the Flora-Bama
like he plays at a lot of the places. And he wanted to
use “Live at the Flora-Bama.” And we agreed to let
him do that.
In other words, Plaintiffs understood what everyone else
understood: it was Kenny Chesney’s concert, not Plaintiffs’.
3 Plaintiffs themselves appear to admit this: “The Flora-Bama Lounge and the
‘Flora-Bama’ trademark ha[ve] been celebrated and featured in the titles of
various artistic works, including works in film, television, videos, radio, books,
and song.” At oral argument, Plaintiffs’ counsel acknowledged that Plaintiffs
do not own any interest in songs with Flora-Bama in the title.
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30 Opinion of the Court 21-13458
Moreover, Plaintiffs’ claims are premised on alleged
confusion with Plaintiffs’ commercial establishments, not with any
artistic works purportedly owned by Plaintiffs. As Defendants
note, Plaintiffs’ complaint did not claim rights in or allege any
confusion relating to any artistic work, and Plaintiffs’ cease-and-
desist letter did not mention any artistic works.
For all of these reasons, this is not a title-versus-title case
between Plaintiffs and Defendants.4
VIII. CONCLUSION
We affirm the district court’s grant of summary judgment to
Defendants.
AFFIRMED.
4 For completeness, we note that the district court applied the exception
because Plaintiffs occasionally allowed third parties, like Kenny Chesney, to
use “Flora-Bama” in the title to songs, books, and concerts. Still, the district
court granted summary judgment to Defendants, finding that the First
Amendment interests outweighed any likelihood of confusion.
Here though, we affirm the district court’s grant of summary
judgment based on the Rogers two-part test. Waldman v. Conway, 871 F.3d
1283, 1289 (11th Cir. 2017) (“We may affirm on any ground supported by the
record, regardless of whether that ground was relied upon or even considered
below.”). Further, nothing herein shall be construed as expressing any opinion
as to whether we adopt or reject the confusingly similar titles exception.
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21-13458 BRASHER, J., Concurring 31
BRASHER, Circuit Judge, concurring:
I agree with the Court’s analysis and join its opinion. I write
separately to answer a question of first impression that the Court
declines to address: whether this Court should adopt an exception
to the Rogers defense for confusingly similar titles of artistic works.
See Op. § VII. I believe we should not. So, in an appropriate case
that squarely presented the question, I would vote to reject this so-
called exception.
As the Court’s opinion explains, the Second Circuit in Rog-
ers recognized a First-Amendment-based defense to Lanham Act
liability for artistic works. Rogers v. Grimaldi, 875 F.2d 994, 999 (2d
Cir. 1989). The court reasoned that, under the First Amendment,
the Lanham Act could constitutionally “apply to artistic works only
where the public interest in avoiding consumer confusion out-
weighs the public interest in free expression.” Id. Balancing those
interests, the court held that there can be no Lanham Act liability
when an artistic work uses a trademark unless the use of the mark
(1) has no artistic relevance to the work or (2) explicitly misleads as
to the work’s source or content. Id. We endorsed the Rogers test
in University of Alabama Board of Trustees v. New Life Art, Inc.,
683 F.3d 1266, 1278 (11th Cir. 2012). And I agree with the Court
that Rogers provides a defense on the facts of this case. See Op. §
VI.
But, in dicta in a footnote in Rogers, the Second Circuit sug-
gested that the defense might not extend to “misleading titles that
are confusingly similar to other titles” of artistic works. 875 F.2d at
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32 BRASHER, J., Concurring 21-13458
999 n.5. This footnote has spawned something called the title-ver-
sus-title exception to the Rogers defense. Although most circuits
have adopted Rogers, no circuit has adopted or applied this excep-
tion to Rogers. See Op. § V.C. The Ninth Circuit is the only circuit
to have squarely addressed whether this exception exists, and it has
held that it does not. See Twentieth Century Fox Television v. Em-
pire Dist. Inc., 875 F.3d 1192, 1196-97 (9th Cir. 2017) (reasoning that
the exception is “ill-advised or unnecessary” because it “has the po-
tential to duplicate” the test for Lanham Act liability and the second
prong of the Rogers test).
In an appropriate case, I believe this Court should join the
Ninth Circuit in rejecting the title-versus-title exception to the Rog-
ers defense. This is so for two overarching reasons. First, I think the
title-versus-title exception is inconsistent with the First Amend-
ment values that led us to adopt the Rogers defense. Second, even
if the exception were appropriate under the First Amendment, I
think the title-versus-title exception is impractical as a matter of
doctrine because it is hard to apply in a consistent and logical way.
I’ll briefly address each reason in turn.
I.
As an initial matter, I believe the title-versus-title exception
is incompatible with the First Amendment principles that justify
the Rogers defense. To be clear, this exception would give the first
person who uses a mark in a title to an artistic work a monopoly
over the use of that mark in the titles to other artistic works. Why
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21-13458 BRASHER, J., Concurring 33
should the law treat “confusingly similar titles” of artistic works
differently than other equally confusing uses of trademarks in artis-
tic works? I can think of three possible justifications, but none bear
up under scrutiny.
First, one could argue that titles don’t warrant the same de-
gree of First Amendment protection as the other parts of an artistic
work. But that doesn’t make any sense. The title of an artistic work
is almost always itself artistic because it conveys an idea or point of
view about the work. See Punchbowl, Inc. v. AJ Press, LLC, ___
F.4th ___, 2022 WL 16911996 at *4 (9th Cir. 2022). And the Rogers
court acknowledged that trademark law usually gives “greater lee-
way for the use of titles than for names of ordinary commercial
products, thus allowing breathing space for free expression.” 875
F.2d at 998 n.3. Accordingly, it makes little sense to establish an
exception to Rogers’s First Amendment protections in cases involv-
ing titles—an area where First Amendment protection should ar-
guably be higher, not lower. At a minimum, there is nothing about
titles that reduces the weight of the First Amendment interests
against Lanham Act liability identified in Rogers.
Second, one could argue that the First Amendment calculus
is different when two artists use the same title because both the
plaintiff and defendant are engaged in artistic expression. Most
Rogers cases, like this one, involve a commercial trademark and
the use of that mark in artistic expression. But a true title-versus-
title dispute occurs between two parties who are both engaged in
artistic expression and use the same or similar title for their works.
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34 BRASHER, J., Concurring 21-13458
The implicit idea behind the Rogers footnote may be that, in a true
title-versus-title dispute, both the plaintiff and the defendant have
a First Amendment interest on their side.
Ultimately, I don’t think this argument—that both parties
are engaged in artistic expression—warrants an exception to Rog-
ers. The First Amendment promotes and protects a “marketplace
of ideas.” See Gundy v. City of Jacksonville, 50 F.4th 60, 71 (11th
Cir. 2022) (quotation marks omitted) (quoting Walker v. Tex. Div.,
Sons of Confederate Veterans, Inc., 576 U.S. 200, 207 (2015)). But
liability under the Lanham Act gives priority in the marketplace of
ideas to whoever speaks first and silences the speech of the second
speaker. As the Rogers court made clear, this result is hard to
square with the First Amendment when the second speaker’s use
is artistic and not expressly misleading.
This First Amendment calculus doesn’t change just because
both the first and second speakers are engaged in artistic expres-
sion. Even if both parties are using a trademark in the title of an
artistic work, the First-Amendment question is the same: should
the court invoke the Lanham Act to silence the second speaker’s
speech? And the answer should be the same as well. “The First
Amendment forbids the government to regulate speech in ways
that favor some viewpoints or ideas at the expense of others.”
Matal v. Tam, 137 S. Ct. 1744, 1757 (2017) (cleaned up) (quoting
Lamb’s Chapel v. Center Moriches Union Free Sch. Dist., 508 U.S.
384, 394 (1993)). Absent a neutral time, place, or manner re-
striction, one person’s right to speak cannot justify silencing a
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21-13458 BRASHER, J., Concurring 35
second person’s speech. Another way to say it: no one has a First
Amendment right to stop someone else from speaking.
Consider the following illustration of how the title-versus-
title exception can stifle artistic speech and discriminate on view-
point. A company uses its trademark as the title of a documentary
about its business, which casts the business in a flattering light. If
someone later produces a documentary that casts the company in
an unfavorable light, the company could wield its trademark and
the title-versus-title exception to require that the second documen-
tary not use the company’s mark in its title. The result is that the
company’s favorable documentary would have an advantage in the
marketplace of ideas over the critical documentary—only the com-
pany’s documentary would be able to identify itself by using the
mark. Under the First Amendment, the government has no busi-
ness promoting the first documentary over the second. It simply
doesn’t matter that the favorable documentary is also an artistic
work.
The third, and perhaps best, justification for the title-versus-
title exception is that the public has an interest in preventing con-
fusion as between the sources of two artistic works. If two movies
are running at the same time at the same theater with the same
title, it could be impossible for moviegoers to identify the movie
they want to see. So one could argue that the law should not pro-
tect confusingly similar titles to artistic works.
This justification has some intuitive appeal. As early as me-
dieval times, trademarks served as a method of tracing a good to
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36 BRASHER, J., Concurring 21-13458
its source. Per guild requirements, medieval craftsman placed
marks on their goods “to facilitate the tracing of ‘false’ or defective
wares.” F. Schechter, The Historical Foundations of the Law Relat-
ing to Trade-marks 47 (1925). Source identification remained at the
forefront as trademark law evolved from guild regulations to part
of the common law of England. See Keith M. Stolte, How Early
Did Anglo-American Trademark Law Begin? An Answer to
Schechter’s Conundrum, 8 Fordham Intell. Prop. Media & Ent. L.J.
505, 506, 533 (2006); 1 McCarthy on Trademarks and Unfair Com-
petition § 5:2 (5th ed. updated Sept. 2022). And solving this prob-
lem is the very reason the Lanham Act exists: “‘to protect the ability
of consumers to distinguish among competing producers.’” Two
Pesos, Inc., v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992) (quoting
Park ‘n Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985)).
But, although this justification has some appeal, the Rogers
defense itself solves this problem. By its terms, Rogers does not ex-
tend its First Amendment protections to parts of artistic works—
whether titles or not—that “explicitly mislead” as to their source
or content. 875 F.2d at 999. In this respect, the Rogers defense is
already consistent with the historical and traditional goals of trade-
mark law. There is no need for a separate exception that applies to
“confusingly similar” titles alone.
One could argue that the courts have an interest in stopping
artists from using “confusingly similar” titles even if those titles
don’t “explicitly mislead.” But there are two problems with that
argument. First, to the extent the title-versus-title exception is
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21-13458 BRASHER, J., Concurring 37
directed at the difference between “explicitly mislead” and “confus-
ingly similar,” it strays from the core historical justification of trade-
mark law, which is identifying the source of a good. For this reason,
removing Rogers’s protection from titles that are confusingly sim-
ilar but not explicitly misleading raises serious First Amendment
concerns. Cf. N.Y. State Rifle & Pistol Ass’n v. Bruen, 142 S. Ct.
2111, 2127 (2022) (holding that historical regulation delineates the
outer bounds of permissible regulation under the Second Amend-
ment). Second, the problem of “confusingly similar” uses of a mark
is not specific to titles. If the First Amendment allows a musician to
use lyrics that fail the “confusingly similar” test but pass the “ex-
plicitly mislead” test, why not a title? This interest, to the extent it
is one, does not justify a different rule for titles than all other parts
of an artistic work.
In short, adopting the title-versus-title exception would ex-
pressly reduce Rogers’s protection for free expression and raise the
very First Amendment problems that led the Rogers court to adopt
a defense in the first place. See Antonin Scalia & Bryan A. Garner,
Reading Law § 38 at 247-48 (2012) (“[The constitutional-doubt
canon] militates against not only those interpretations that would
render the statute unconstitutional but also those that would even
raise serious questions of constitutionality.”). I don’t see any justi-
fication for giving the titles of artistic works less protection than
anything else in an artistic work. So, for the same reasons we have
adopted the Rogers defense, I think we should reject the title-ver-
sus-title exception to it.
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38 BRASHER, J., Concurring 21-13458
II.
But even if the title-versus-title exception could be justified
as a matter of principle, I would reject it as a matter of practicality.
The facts and procedural history of this case convince me that it is
not a workable test to apply. It is exceedingly difficult to figure out
what counts as a title-versus-title dispute and, even when the ex-
ception has some application, it seems just to mirror the test for
Lanham Act liability.
For starters, there is no easy way to identify what counts as
a title-versus-title dispute. Here, the Court quickly concludes that
this dispute does not implicate the title-versus-title exception be-
cause, although third parties have used the “Flora-Bama” trade-
mark as the title of artistic works such as music and books, the
plaintiffs have not. I agree with that reasoning.
But it’s not hard to imagine a scenario in which the question
is much more difficult. Famous trademark holders use their marks
to brand and market all sorts of goods—some of which are artistic
in nature. Compare, e.g., Magnolia Table (a restaurant) at
https://magnolia.com/visit/eat/magnolia-table/ (last visited
Nov. 23, 2022) with Magnolia Table (a TV show) at https://mag-
nolia.com/watch/ (last visited Nov. 23, 2022). Because marks are
often used for multiple purposes, it's entirely unclear how a court
should go about deciding whether a mark is a title to an artistic
work for the purposes of applying the title-versus-title exception. If
Starbucks uses its mark as the title to a music album that it sells in
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21-13458 BRASHER, J., Concurring 39
its coffee shops, does a dispute about a book or documentary with
“Starbucks” in the title fall under a title-versus-title exception? A
broad understanding of title-versus-title would give trademark
holders a powerful a tool to stifle expression by merely placing
their mark in the title of an artistic work that they endorse. That
doesn’t seem right.
So, perhaps, the title-versus-title exception is implicated only
when the primary purpose of a trademark is to identify the source
of an artistic work. But, if that’s the case, how are courts to decide
what the primary purpose of a trademark is? Does it matter if the
first use of the title was in a movie and the second use was in a
book? Does it matter which use of the mark is more famous? If a
commercial establishment airs a TV show about itself, and the TV
show’s fame rivals that of the establishment, would the title-versus-
title exception then apply to an unauthorized book or documen-
tary that used the establishment’s name in its title? Who knows.
To be sure, the law can bear a little indeterminacy. But we
should not expect a judicially created defense to be so complicated
that a court needs extensive fact-finding just to determine if an ex-
ception to that defense is implicated. And certainty is especially im-
portant in an area like this one where even the prospect of liability
has the effect of chilling constitutionally protected speech. See
Glynn Lunney, Trademark’s Judicial De-Evolution: Why Courts
Get Trademark Cases Wrong Repeatedly, 106 Calif. L. Rev. 1195,
1201 (2018).
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40 BRASHER, J., Concurring 21-13458
On top of this indeterminacy problem, there is the added
problem that the title-versus-title exception—even where it clearly
applies—merely duplicates other aspects of the test for Lanham Act
liability. See Empire, 875 F.3d at 1197. The title-versus-title excep-
tion to the Rogers defense asks whether a title is “confusingly sim-
ilar” to another title. But, as explained above, the Rogers test itself
asks whether the artistic use of a trademark “explicitly misleads as
to the source or content of the work.” And liability under the Lan-
ham Act turns on a seven-factor likelihood-of-confusion test that
asks whether the defendant “adopted a mark or name that was the
same, or confusingly similar to [the plaintiff’s] mark.” Tana v. Dan-
tanna’s, 611 F.3d 767, 773-75 (11th Cir. 2010) (emphasis added).
Here, as the Court notes in footnote 4, the district court ap-
plied the title-to-title exception. But, in doing so, it simply followed
the test for liability under the Lanham Act, asking whether the two
marks are confusingly similar under our seven-part likelihood-of-
confusion test. I don’t fault the district court for its efforts to make
sense of the title-versus-title exception. But the problem with this
analysis is obvious. It cannot be that a defense against Lanham Act
liability fails simply because a defendant would otherwise be liable
under the Lanham Act. If proving a defense requires disproving li-
ability, it is no defense at all.
III.
The bottom line is that we should not adopt the title-versus-
title exception to the Rogers test. That exception is inconsistent
USCA11 Case: 21-13458 Date Filed: 11/29/2022 Page: 41 of 41
21-13458 BRASHER, J., Concurring 41
with First Amendment principles, and it is difficult to apply in any
logical way. Accordingly, in an appropriate case in which this issue
is dispositive, this Court should join the Ninth Circuit in rejecting
the title-versus-title exception to Rogers.