Clearing titles for creative projects has become more challenging after the Supreme Court’s decision in Jack Daniels v. VIP Products. In this episode of The Briefing, Scott Hervey and Tara Sattler explore the evolution of the Rogers test and the new hurdles studios face in title selection.

Cases Discussed:

• Jack Daniels Properties, Inc. v. VIP Products LLC
• HomeVestors of America, Inc. v. Warner Brothers Discovery
• Rogers v. Grimaldi
• Punchbowl, Inc. v. AJ Press

Watch this episode on the Weintraub YouTube channel.

Show Notes:

Scott: One of the things we do for our production company and studio clients is clear the titles to their projects. Now, ever since the Supreme Court case of Jack Daniels Properties versus VIP products, clearing titles have become a little bit more challenging. And last year’s district Court case of Home Investors of America versus Warner Brothers shows exactly how challenging it’s become. I’m Scott Hervey from the Entertainment and Media Group at Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We’re going to talk about the impact of Jack Daniels on clearing titles for creative works on this installment of The Briefing. Tara, welcome back to the briefing. It’s good to have you back, especially on this topic, because this is something you and I deal with quite frequently.

Tara: Absolutely. It’s great to be here, and thanks for having me back.

Scott: All right. So, let’s provide a quick recap of the Rogers test and the impact that Jack Daniels had on the Rogers test.

Tara: That’s a great place to start. The Rogers test comes from the 1989 Second Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question in that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act as well as state right of publicity laws, for using a celebrity’s name in the title of a work. The District Court and the Second Circuit on appeal both said no, and from that case, the Rogers test was created.

Scott: Under the Rogers test, First, the use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever. If the title has some artistic relevance, the use does not violate the Lanham Act unless the title explicitly misleads as to the source or content of the work. Now, the first line of inquiry is whether the use of the third-party mark has some artistic relevance. Now, that threshold is extremely low. Basically, if the level of artistic relevance is more than zero, this is enough. Now, the second line of inquiry is to whether the use of the third-party mark explicitly misleads as to the source of content or work. Now, the Rogers test has been widely adopted by other circuits, including California’s Ninth Circuit.

Tara: On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties Inc. Versus VIP products. The dispute involves the claim by Jack Daniels that the dog toy, Bad Spaniels, infringed a number of its trademarks. At the district Court and on appeal at the Ninth Circuit, the issue was framed as whether the dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test.

Scott: That’s right. But on appeal to the Supreme Court, the Supreme Court said that the issue was not whether the dog toy is an expressive work, but rather the nature of the use of Jack Daniel’s marks. The Supreme Court found that VIP’s use of the marks, while humorous, was for the purpose of serving as a source identifier. So, trademark use, in other words. The Supreme Court held that the Rogers test does not apply to instances where a third-party mark is used as a source identifier, regardless of whether it’s also used to perform some expressive function.

Tara: So, Scott, how has this impacted the way you advise studio and production company clients when you’re advising them on whether or not they can use specific series titles?

Scott: Previously, titles to expressive works like movies and TV series enjoyed protection from infringement claims under the Rogers test. Now, the title of a single artistic work generally does not function as a trademark because the title does not identify the source of the work. However, the title of a series of works, like a book series or, a TV series or a movie series, can and does function as a trademark since it serves to identify the source of the work. And since the title to a TV series functions as a trademark and acts as a source identifier, we can’t apply the Rogers test. So, ever since I was in the VIP products case, I have expressed concern that the Rogers test can no longer be applied when analyzing a TV series title. Last year’s case of Home Investors of America, Inc., Versus Warner Brothers Discovery proved my concern to be well-founded.

Tara: So HomeVestors of America, known for their We Buy Ugly Houses slogan, sued Warner Brothers Discovery, claiming that the title for an HDTV show, Ugliest House in America, infringed on their trademarks. Home Investors owns a family of trademarks, 30 of them actually, related to ugly houses, including the ugliest house of the year, which is used in connection with a yearly home renovation contest. Apparently, a production company, on behalf of HGTV, contacted HomeVestors regarding a possible collaboration on a show that features the largest Houses in America. Ultimately, those conversations went nowhere. However, in 2022, HGTV premiered a new show called The Ugliest House in America. Of course, Home investors then sued for trademark infringement, claiming that HGTV’s use of the show title was likely to cause confusion among consumers, leading them to believe that the show was affiliated with Homebusters.

Scott: Now, Discovery moved to dismiss the case primarily on Rogers. However, after briefing was completed on Discovery’s motion to dismiss, the Supreme Court decided the Jack Daniels case. Both Discovery and Home Investors filed supplemental briefing on the applicability of the Jack Daniels case to their case. Discovery argued that the court should continue to apply Rogers and that the Supreme Court opinion in Jack Daniels does not meaningfully alter the analysis because the holding in Jack Daniels concerned branded consumer products and not the descriptive title of a television series. Unfortunately for discovery, the court did not read Jack Daniels in the same manner. The court said as follows: I do not read Jack Daniels to be compatible with a blanket rule that any title alleged to infringe another’s mark is necessarily entitled to a Rogers analysis or is necessarily non-infringing. Instead, Jack Daniels makes clear that a First Amendment defense under Rogers does not apply if an alleged infringer’s use of the mark is source-identifying.

Tara: So, the court essentially said that even a television show title could potentially serve a source-identifying function.

Scott: Yeah, they Exactly said that, Tara. So the court, following the Jack Daniels guidance, conducted a thorough analysis of whether the ugliest house in America was used by discovery in a source-identifying manner. The court considered all the relevant factors alleged by Home Festers in their complaint, and they ultimately concluded that the allegations were sufficient to move the case forward.

Tara: Discovery did try to argue that the title was solely for artistic expression and not meant to identify a source. It argued that using a mark in an expressive work is inherently not source-identifying. However, the court disagreed, emphasizing that Jack Daniels’ requires an initial inquiry into source identification before applying Roger’s test.

Scott: That’s right, Tara. The court did emphasize that Jack Daniels requires an initial inquiry into whether or not the use of the mark functions as a trademark use before they will apply the Rogers test. And I think the reason why Warner Brothers Discovery would have a hard time and did have a hard time eventually having Roger’s why this was applied here and why other cases that I’ve read post-Jack Daniels dealing with the titles to a series of artistic works, whether it’s a television show or a series of video games, is I think because titles to a series of artistic works are deemed to function as trademarks, at least pursuant to trademark law. So what does this mean? So this means that, at least in in this case, it’s going to go forward, and the parties are going to have to engage in discovery, and they may potentially go to trial. The court’s going to analyze whether consumers are likely to be confused about the source of ugliest house in America based on home vestor’s family of ugly house trademarks.

Tara: Yeah, and I can understand why the court denied Discovery’s motion to dismiss, it was literally just following the guidance set forth in Jack Daniels. Nowhere in the Jack Daniels’ opinion does it say or even allude that its reasoning is limited to consumer good.

Scott: Right. I think the struggle has always been the idea of a TV series title as a source identifier, at least for entertainment services. I can see it as a source identifier for merch, for sure. But to be a source identifier for entertainment services, namely a television series, this means that an identification of the entity that controls the right in the work must be triggered by the use of the title. So in order to be a source identifier, a TV series title must convey the impression that it comes from, say, Paramount as opposed to Sony. I don’t think TV series titles ever do that. I mean, maybe in the past when we’ve had a limited number of television networks, but I mean, certainly not now.

Tara: Yeah, I agree with you. We really don’t see that now. But we also know that the USPTO will allow a trademark application for the title of a TV series. And if that has happened, the Rogers test will automatically not apply. You discussed this in the episode on the Punch Bull Inc. Versus AJ Press case.

Scott: Right. That’s right.

Tara: So, what does this mean for studios and production companies looking to clear a title?

Scott: It literally means that it’s going to be a lot more challenging for studios to find a title. Prior to Jack Daniels, there was a heavy reliance on the Rogers test. But now there’s going to be a greater scrutiny of any commercial association, not just with other show titles, but also with trademarks. And the results were probably going to take a lot more conservative risk assessment in clearing titles.

Tara: I agree with you, Scott. And so what does this mean if the title report identifies other TV programs with the same or very similar title?

Scott: Yeah, I was just dealing with that. The other day for another client. It presents an interesting challenge. If both programs are still commercially available, then I think it presents an issue. While you may be able to argue differences based on the genre of the program and where they are available for viewing, I think that might be just too thin to rely on entirely in order to clear a title.

Tara: I agree with you, especially because there are many different options these days for older titles to be revitalized on different platforms and viewing services. It’s an interesting thought about what impact it may have if an older title gets a new life on a new platform and is viewed by more viewers now than when the analysis was conducted.

Scott: Right. And not just new life in its original form, like suits, but new life in a new form, like a sequel, like suits.

Tara: Exactly. What are your thoughts on how a studio or a production company may be able to get ahead of this title conundrum?

Scott: Yeah, that’s a… Well, one, title conundrum is a great reference. It’s a great thing to call That’s a great question, too. Before a preliminary title is proposed to the network and before the network’s creatives fall in love with it, the producer should involve the legal team early in title brainstorming and have the legal team conduct frequent preliminary knockout searches before making any creative investment in the title. Have a few backup titles and be prepared for the time and cost of multiple full title searches.

Tara: I think that’s really good advice. I think as lawyers, we will be reviewing these reports with a lot more scrutiny, especially really digging into the trademarks that are identified in the report and specifically the registrants of those trademarks and what goods and services those trademarks are associated with.

Scott: Right. Remember, it’s not just the registered trademarks. Because you can have trademark rights in a mark that you don’t necessarily register with a patent and trademark office. It just opens a much bigger can of worms. Like I said, I think it’s going to make it a lot more difficult for studios to find good titles for their television series. Definitely. That’s all for today’s episode of The Briefing. Thanks to Tara Sattler for joining me today. Great conversation. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we cover today, please leave us a comment.