District court denies motion to dismiss trademark infringement claims brought by High Off Life, LLC, over hip-hop artist Future’s album titled High Off Life and related merchandise, finding it premature to adjudicate defendants’ First Amendment defense based on two-prong Rogers test.
Plaintiff High Off Life, LLC (HOL), a hip-hop lifestyle company, filed a complaint against hip-hop artist Future’s Freebandz Productions, LLC, and Sony Music Holdings, Inc., asserting claims for trademark infringement and unfair competition under both federal and state law. In its complaint, HOL alleged that its founder, Zach Richards, has been using the mark “High Off Life” since 2004 to brand his music business and that, as early as 2009, HOL has been using the HIGH OFF LIFE mark in connection with merchandise, events promotion and the creation of hip-hop-related content. HOL further alleged that Freebandz and Sony copied its HIGH OFF LIFE mark in the release of Future’s 2020 album titled High Off Life and in connection with related apparel and other merchandise allegedly being sold by Freebandz in support of the album. HOL claimed ownership of three federally registered HIGH OFF LIFE-related marks for entertainment services, merchandise and advertisements, and that defendants’ use of the “High Off Life” phrase is likely to cause consumer confusion as to whether Future’s album and merchandise are affiliated with HOL, as well as reverse confusion as to whether HOL’s products are affiliated with defendants.
Defendants moved to dismiss pursuant to the First Amendment, relying on the two-part test first articulated in the Second Circuit’s 1989 decision Rogers v. Grimaldi. With respect to artistic works, that test provides that “a title will be protected unless it has ‘no artistic relevance’ to the underlying work or, if there is artistic relevance, the title ‘explicitly misleads as to the source or the content of the work.’” Defendants contended that the phrase “High Off Life” is artistically relevant to Future’s album and that it does not explicitly mislead any consumers as to the source or content of the work. In response, HOL argued that the motion should be denied because defendants’ First Amendment defense is based in fact and would therefore be prematurely adjudicated on a motion to dismiss at the pleadings stage. HOL also argued that even if the court were to apply the Rogers test, it would not shield defendants from claims relating to the use of the HIGH OFF LIFE marks on the merchandise, which, according to HOL, should be deemed commercial speech.
Noting that the Third Circuit has not expressly adopted the Rogers test, the district court held that it would be premature in any event to dismiss the case even if it were to apply Rogers, concluding that the inquiry would be better addressed at the summary judgment stage following the development of a factual record. Among other things, the court expressed doubt that Rogers would apply to defendants’ merchandise sold in support of the album. Additionally, the district court concluded that a factual record is required to determine whether the album title is artistically relevant to the underlying work. While acknowledging that the threshold for artistic relevance is low, the court noted that it “has no evidence concerning Future’s intent in choosing the Album’s title or that the Album is a product of Future’s reflection on his life and recognition of his good fortune.” Accordingly, the court denied the defendants’ motion to dismiss.
Summary prepared by Wook Hwang and Kyle Petersen