Eleventh Circuit affirms dismissal of trademark infringement claims against Viacom and other defendants related to title of television series MTV Floribama Shore brought by owner and operator of Flora-Bama Lounge after finding that title was artistically relevant to series—describing region where it took place—and that defendants did not expressly state or suggest that plaintiffs approved of, sponsored, or were affiliated with series.
Plaintiffs MGFB Properties Inc., Flora-Bama Management LLC and Flora-Bama Old S.A.L.T.S. Inc. own and operate the Flora-Bama Lounge, Package and Oyster Bar, a lounge and venue for entertainment and athletic events located on the Florida-Alabama border. Plaintiffs own “FLORA-BAMA” trademarks in connection with “bar and restaurant services” and other entertainment services. The marks have been featured in several artistic works, including song lyrics, televised concert events, films and books, all with plaintiffs’ purported consent. Defendants 495 Productions Holdings LLC, 495 Productions Services LLC and ViacomCBS Inc. create and distribute Jersey Shore, a television series that focuses on young party-going 20-somethings living on the Jersey Shore, as well as other television programs. Defendants, inspired by the success of the original Jersey Shore series, created several spinoffs filmed at different locations around the world, one of which is MTV Floribama Shore, featuring the nightlife and culture in Panama City Beach, Florida, near the border between Florida and Alabama. Defendants approached plaintiffs about using the Flora-Bama Lounge for a television show and casting calls. Plaintiffs permitted defendants to host a few casting calls at the lounge, but nothing more.
Before defendants’ MTV Floribama Shore series premiered, plaintiffs sent defendants a cease-and-desist letter, demanding that they change the title of the series. When defendants refused, plaintiffs sued for trademark infringement and unfair competition under the Lanham Act, alleging that the title of the series infringes their rights. Plaintiffs submitted evidence, including social media posts, articles and expert reports, purporting to demonstrate public confusion between the two businesses and as to whether plaintiffs had sponsored or approved of the series. In the development materials for the series, defendants reference the lounge and the term “Flora-bama” (using plaintiffs’ spelling). Viacom’s executive producer of the series emailed her team acknowledging that the term “Floribama” is mainly associated with the lounge. MTV also commissioned a survey of 300 young people regarding the culture and nightlife in the area beach towns, which determined that out of the 34% of respondents surveyed who had heard the term “Flora-bama,” half associated it with the lounge and the other half with the region.
The district court granted summary judgment in favor of defendants, and plaintiffs appealed. The Eleventh Circuit affirmed. The court acknowledged that the Lanham Act should be “construed to apply to artistic works only where the public interest in avoiding consumer confusion [about the source or sponsorship of products] outweighs the public interest in free expression” and the free flow of ideas under the First Amendment. The court applied the two-part Rogers test from the Second Circuit to determine whether the title of the series violates the Lanham Act. The first factor examines whether “the title has no artistic relevance to the underlying work whatsoever.” The court explained that in order to satisfy that standard, the relationship between the challenged title and the underlying work “merely must be above zero.” The court found that was “clearly” the case here, because the title is artistically relevant to the series—it describes the subculture and geography of the region profiled by the series, which is independent of the lounge. The court rejected plaintiffs’ argument that defendants’ use of the trademark must be “strictly necessary” in order to be artistically relevant.
The second prong—which targets the touchstone of trademark law—evaluates whether, although artistically relevant, the series title “explicitly misleads as to the source or the content of the work.” The court held that the title of the series did not, because defendants had not held the series out as having been endorsed or sponsored by, or affiliated with, plaintiffs. The court noted that defendants’ use of the house mark (MTV) and the name of one of its iconic franchises (Shore) undercut any claim that defendants’ use was expressly misleading as to source. The court also explained that intentional copying is not enough to permit an inference that the secondary use is expressly misleading. Plaintiffs must establish that defendants overtly “marketed” the protected work “as ‘endorsed’ or ‘sponsored’” by plaintiffs or “otherwise explicitly stated” that the protected work was “affiliated” with plaintiffs. The court found that plaintiffs failed to meet their burden on the second prong of the Rogers test and concluded that defendants’ use of Floribama in its series title did not violate the Lanham Act as a matter of law.
The court also rejected plaintiffs’ attempts to utilize an exception to the Rogers two-part test where a misleading title—as opposed to expressive content—is confusingly similar to other titles. The court noted that no appellate court has adopted that exception, and the Ninth Circuit has expressly rejected it. The court reasoned that the exception applies only when a defendant’s title is “confusingly similar to other titles” and that this is not a “title versus title” case. While the series title is the title of an artistic work, plaintiffs have never used the term Flora-Bama as a mark to identify any artistic works created or owned by plaintiffs. Nor could plaintiffs invoke the use of the title in third-party artistic works to warrant the exception, as the term Flora-Bama was used by those third parties to refer to plaintiffs’ lounge, not to identify the source of any artistic expression.
Summary prepared by Tal Dickstein and Ava Badiee