District court grants Netflix’s motion to dismiss trademark and copyright claims brought by Hollywood Weekly Magazine and publisher, finding defendant’s use of “Tiger King” and “Hollywood Weekly” marks in popular Tiger King series is protected by First Amendment under Rogers test, and plaintiffs failed to adequately plead valid copyright and alleged infringement.
Hollywood Weekly Magazine LLC and Prather Jackson, the founder and publisher of Hollywood Weekly, brought copyright and trademark claims against Netflix and other defendants involved in the creation of the Netflix hit documentary series Tiger King: Murder, Mayhem and Madness, about Joseph Maldonado-Passage, known publicly as the Tiger King. The series was filmed from 2015 through 2019 and debuted in 2020. Plaintiffs claimed to own the trademarks “Tiger King” and “Hollywood Weekly.” They asserted claims for federal trademark infringement, false designation of origin and trademark dilution under the Lanham Act based on Netflix’s use of the phrase “Tiger King” in the series, federal trademark infringement for the use of the phrase “Hollywood Weekly” and the depiction of four issues of the magazine featuring cover stories about Maldonado-Passage, as well as federal copyright infringement based on Netflix’s unauthorized use of the phrase Tiger King and depiction of the four magazine issues. The court granted Netflix’s motion to dismiss all of plaintiffs’ Lanham Act claims without leave to amend and plaintiffs’ copyright claim with leave to amend.
On plaintiffs’ Lanham Act claims, Netflix argued that any unauthorized use of plaintiffs’ trademarks was protected by the First Amendment under the Rogers v. Grimaldi test. Under the Rogers test, “[a]n artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable ‘unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.’”
The court held that the Rogers two-prong test was applicable to these claims, and that both prongs were met. As to the first prong of the test, the court held that the Tiger King mark was artistically relevant. Per Ninth Circuit precedent, the Tiger King mark must only have “some relevance” to the documentary to satisfy this prong. By both parties’ accounts, the documentary chronicled the life and business of Maldonado-Passage, who starred in a reality television series titled Joe Exotic Tiger King and sold products branded with Tiger King. The court concluded that it was therefore “beyond question” that the relevance of the Tiger King mark was “above zero.”
As to the second prong of the Rogers test, because the Tiger King mark had some relevance to the documentary, Netflix’s use would be unprotected only if it explicitly misled as to the source or the content of the work. This portion of the test aligns with the purpose of trademark law: to avoid consumer confusion as to the source of a product or service. The use of a mark is not “explicitly misleading” absent the Netflix’s affirmative statement of sponsorship or endorsement by the plaintiff. Mere use of the trademark itself does not qualify and is protected under the Rogers analysis. The court found that plaintiffs alleged only bare legal conclusions and failed to identify any such explicit statement by Netflix.
On the copyright infringement claim, the court found that plaintiffs failed to state clearly what works their copyright registrations covered, and failed to allege details concerning how Netflix infringed those copyrights. The court granted defendant’s motion to dismiss, but gave plaintiffs leave to amend.
Summary prepared by Melanie Howard and Lisa Rubin