Hara v. Netflix, Inc.

Ninth Circuit affirms dismissal of Lanham Act claims regarding use of drag queen Vicky Vox’s image and likeness in animated Netflix show and teaser trailer, holding, under Rogers test, that use was artistically relevant to underlying work and not expressly misleading as to source.

In 2021, Netflix released an animated series called Q-Force, about a group of underappreciated queer spies who must save the planet from various dangers. Plaintiff Vicky Vox, a famous Los Angeles drag queen who regularly hosts events in West Hollywood and is best known for her drag band, brought suit against Netflix and others connected to the series, asserting claims for unfair competition and false endorsement under the Lanham Act and alleging that the unauthorized use of her likeness led viewers to believe that she was affiliated with the series. Vox alleged that an animated version of her image and likeness was featured in a 10-second scene in an episode of Q-Force, in the official teaser trailer for the show and in a still image that Netflix provided to an online LGBT publication, Them. The district court dismissed Vox’s Lanham Act claims at the pleading stage, and the Ninth Circuit affirmed on appeal.

Though Lanham Act Section 43(a) claims are typically reviewed under the likelihood of confusion test, when the alleged infringement involves the title or some other aspect of an expressive work, courts apply the Second Circuit’s test from its 1989 decision in Rogers v. Grimaldi to determine whether the Lanham Act applies. Rogers recognized a First Amendment interest in protecting expressive works and held that the Lanham 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.” Under Ninth Circuit precedent, Section 43(a) of the Lanham Act does not apply to expressive works unless the use of the trademark or other identifying material explicitly misleads as to the source or content of the work.

On appeal, the Ninth Circuit first addressed whether Netflix allegedly used Vox’s trademark image and likeness on Q-Force in a “source-identifying manner” because, in such instances, the U.S. Supreme Court determined, in Jack Daniel’s Properties, Inc. v. VIP Products LLC, that the Rogers test does not apply. The panel determined that the Rogers test applied here because the 10-second use of Vox’s image and likeness in an episode of Q-Force, and the related teaser and still image, did not suggest or identify Vox as a source or origin of the series.

The panel explained that the Q-Force scene at issue was incidental to the overall theme of the episode and series. The animated drag queen alleged to resemble Vox was shown as “an unspeaking background character whose sole role [was] to perform a fan ‘thworp’ as a punchline to another character’s joke.” Accordingly, the panel concluded that Vox failed to establish that her likeness was used “as a mark.” Instead, Vox’s likeness was used “solely to perform some other expressive function” for the series: it, along with the likenesses of three other distinctive drag queens, helped set the scene of a West Hollywood gay bar. The panel held that because the series did not use Vox’s likeness as a source identifier, the Rogers test applies.

The Rogers test requires a defendant to first make a “threshold legal showing” that the allegedly infringing use is part of an expressive work protected by the First Amendment. If a defendant meets this burden, the Lanham Act does not apply unless the use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work.

The parties did not dispute that Q-Force is an expressive work. Vox argued, however, that Netflix’s use of her likeness extended beyond the scope of the show and to the official teaser and still image in promotional materials. As the panel noted, although promotional materials technically fall outside the title or body of an expressive work, the Ninth Circuit has held that promotional activities, even those that produce revenue, are auxiliary to the work itself. Accordingly, the panel held that Q-Force’s official teaser and the still image were still subject to the Rogers test.

Under the first prong of Rogers, Lanham Act claims for misappropriating a person’s likeness in an expressive work are actionable only if the use of the mark has no artistic relevance to the underlying work whatsoever. And the bar for “artistic relevance” is low—it “merely must be above zero.” Here, the use of an animated drag queen alleged to resemble Vox was artistically relevant to Q-Force because the series itself is about a group of LGBT spies and Vox is depicted inside a bar in West Hollywood, the panel held. Accordingly, setting the scene of a West Hollywood bar with references to drag queens and cocktails was artistically relevant to both the plot and social commentary of Q-Force. The panel therefore concluded that Vox’s allegations failed to satisfy the first prong.

Under Rogers’ second prong, if the use of the mark is artistically relevant to the expressive work, the creator of the work can still be subject to a Lanham Act claim if the mark is used in a way that explicitly misleads consumers as to the source or content of the work. To satisfy this prong, there must be an “explicit indication, overt claim, or explicit misstatement” about the source of the work; mere use of the mark alone is not sufficient. In the panel’s view, Vox’s allegations that Netflix admitted every character in Q-Force was based on someone in real life and that producers cast individuals who are actually in the drag community were not sufficient to establish that Netflix made an overt claim or explicitly misled consumers into thinking that Vox was behind the series. The panel held that the use of Vox’s likeness as a “background character” in a single scene was likewise not sufficient to make her claim actionable under the second prong of Rogers. That Vox’s family, friends, fans and fellow members of the drag community contacted her “express[ing] confusion and concern about her connection with” Q-Force was also insufficient. As the panel noted, “[t]o be relevant, evidence must relate to the nature of the behavior of the identifying material’s user, not the impact of the use.” Ultimately, such allegations failed to demonstrate an explicit indication, overt claim or explicit misstatement by the defendants themselves regarding Vox’s relationship with Q-Force.

Last, Vox argued that she was denied the opportunity to conduct discovery regarding actual consumer confusion and Netflix’s intent, but, as the panel held, these inquiries are relevant only under the likelihood of confusion test, which would come into play only if Vox’s claim were actionable under the Rogers test, which it was not. Accordingly, the panel held that Vox was not entitled to such discovery and affirmed the district court’s dismissal of Vox’s claims.

Summary prepared by Frank D’Angelo and Elena De Santis