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A&E Television Networks, LLC v. Big Fish Entertainment, LLC

District court denies motion to dismiss copyright and trademark infringement claims, finding plaintiff had plausibly pleaded that its live-feed police television show Live PD was protectable, that there was substantial similarity between show and defendant’s show On Patrol: Live, and that there was likely to be consumer confusion between two shows.

A&E Television Networks owns the trademark and copyrights to the TV show Live PD, which features live-feed broadcasts of police activity from across the country. A&E hired Big Fish Entertainment to produce Live PD as a work for hire. Pursuant to the parties’ Series Agreement, A&E holds exclusive ownership of all rights associated with Live PD, including copyright and trademark, in perpetuity. The Series Agreement also provides that Big Fish assigned all of its rights to A&E, and that Big Fish cannot authorize the broadcast of any shows that are substantially similar to Live PD for a one-year period without A&E’s written consent.

Live PD aired from 2016 to 2020. During this period, A&E registered the trademark Live PD and applied to register the mark in connection with other media. During its production run, Live PD was frequently the No. 1 rated show on television (besides sports) among key adult demographics. A&E also authorized the creation of a number of spinoffs, for which it was also the exclusive owner of all trademarks and copyrights.  

A&E suspended production of Live PD during the summer of 2020 after nationwide protests against police brutality in the wake of the murder of George Floyd. A&E did not relinquish or assign its rights to Live PD during this period, but in May 2022, Big Fish announced the “return” of Live PD on REELZ, a competitor network to A&E. The new show, which was titled On Patrol: Live, had the same producer, host and co-host as Live PD. A&E sent two cease and desist letters to REELZ and Big Fish, ordering them to stop referring to On Patrol: Live as a revival of Live PD or similar framing. REELZ aired the first episode of On Patrol: Live in July 2022, and it quickly became one of the most popular shows on cable television. A&E brought suit against Big Fish and REELZ the following month, claiming copyright infringement, trademark infringement and unfair competition under both state and federal law. Defendants moved to dismiss.

The court first noted that to state a claim for copyright infringement, a plaintiff must allege both the ownership of a valid copyright and the copying of original elements of the work in question. Under Second Circuit precedent, district courts are required to apply a holistic view of the parties’ works that focuses on whether the allegedly infringing work misappropriates the plaintiff’s original contributions to its work, even if the individual elements of the work would not otherwise be protectable, noting that this may include stock elements and scenes a faire.

The court noted there was no dispute that A&E holds a copyright to at least 24 episodes of Live PD, and that defendants appeared to concede that, for purposes of the motion to dismiss, A&E had adequately pleaded actual copying of Live PD. Defendants argued that A&E failed to adequately establish substantial similarity between On Patrol: Live and the protectable elements of Live PD. Specifically, defendants argued that Live PD was not protectable under the Copyright Act because the idea for an unscripted police show and accompanying scenes a faire (such as wanted lists, segments about missing children, and switching back and forth between the hosts in the studio and the live footage) were not copyrightable. Noting that A&E “implicitly concedes” that there are no copyrightable elements of Live PD in isolation, the court found that under the Second Circuit’s holistic view standard, the mix and arrangement of the elements of the show warranted protection.  

Defendants also argued that despite the fact that A&E held copyright for each of the 24 episodes in question, each episode is the same and does not contain any original protection. Defendants argued that the similarities across episodes of Live PD and On Patrol: Live evince the generic format of the shows. The court disagreed, finding that the protectable elements of Live PD were not the overall idea of a live-feed police show with a studio host; rather, it was the particular elements of Live PD’s production, including the three studio hosts, the choice of music, guests and other visual elements that both made Live PD protectable and made the “near-exact copying” by defendants potentially rise to copyright infringement.  

The court also analyzed whether there was substantial similarity between the shows, finding that On Patrol: Live “copies nearly every single element in the same manner, coordination, and arrangement as Live PD” and that the shows are, at first glance, virtually indistinguishable. While Live PD comprised numerous unprotectable elements under copyright law, their specific arrangement, viewed holistically, “contains the requisite originality to be protectable under copyright law.” The court therefore denied defendants’ motion to dismiss A&E’s copyright infringement claim.  

In support of its trademark infringement and unfair competition claims, both of which were raised under the Lanham Act, A&E alleged that REELZ initially announced that the working title of On Patrol: Live was PD Live, a simple inversion of Live PD (which A&E had registered as a trademark), and that the new name On Patrol: Live infringed on the name of Live PD: Police Patrol, a spinoff of Live PD. A&E also alleged that REELZ retweeted a number of articles that claimed that Live PD was returning to the air in 2022 or otherwise represented that On Patrol: Live was a continuation of Live PD. Defendants countered that the initial name change came before any press releases were made public, that the only common term is “Live,” which is not protectable, and that the use of Live PD’s name was nominative fair use. 

Noting that it was undisputed that A&E had a registered trademark for Live PD, the court then applied the Polaroid factors to determine whether defendant’s mark or use of its mark was likely to create consumer confusion. The first factor is the strength of the mark, which means the tendency of the mark to identify the source of goods or services. Given that Live PD was one of the most popular shows on television and that A&E produced multiple Live PD spinoffs, the court concluded that A&E had plausibly pleaded that Live PD is a strong mark.   

The second factor is the similarity of the marks, which requires the court to consider the context in which the marks are displayed and whether the competing marks create the same impression so that a consumer who is familiar with plaintiff’s mark would be confused by defendant’s mark in isolation. Here, the court found that the names of the shows were plainly dissimilar, and the fact that defendants initially promoted the show to advertisers as PD Live had no bearing on the consumer confusion analysis. Further, the words “live” and “patrol” are generic and descriptive terms for the show that do not establish consumer confusion. Based on the allegations in the complaint, the court therefore did not find that consumers would likely be confused by the similarity of the marks. 

The third factor is competitive proximity, which looks at the extent to which the products compete with each other in the marketplace. Defendants argued that because the shows never aired on television at the same time, A&E could not plausibly allege that there was proximate competition. However, the court found that clips from both shows are shown on their respective YouTube channels at the same time, and so the complaint had plausibly alleged that both shows exist within the same online video market. Further, because the shows share similar purpose, themes and viewers, this factor weighed in favor of A&E.  

The fourth factor is bridging the gap, which means the likelihood that the “senior user” will enter the “junior user’s” market, or that customers will perceive the senior user as likely to do so. However, if the products are already in competitive proximity, as was the case here, there is no “gap” to bridge. The court therefore found that this factor weighed in favor of A&E.  

The fifth factor is actual customer confusion, which requires only that plaintiff show a likelihood of confusion. The court noted that this is typically raised at a motion for summary judgment; on a motion to dismiss, evidence of actual confusion may be presented in anecdotal form. In its complaint, A&E pointed to numerous tweets and social media messages from viewers who assumed that On Patrol: Live was a return or revamp of Live PD. The court found that A&E had therefore plausibly pleaded actual consumer confusion, and found that this factor also favored A&E.  

The sixth factor is bad faith, which looks at whether defendant adopted its mark with the intent of capitalizing on plaintiff’s goodwill and reputation. While defendants argued that they changed the name of the show to On Patrol: Live after receiving A&E’s cease and desist letter, the court found that this was not dispositive. It noted that REELZ continued to retweet articles stating that Live PD was “back” and that one of the co-hosts of both shows noted that he was “thrilled” to have his team “back together.” The court therefore found that A&E had plausibly pleaded that defendants were attempting to exploit A&E’s goodwill, and this factor weighed in favor of A&E.

The seventh factor is the quality of the marks; if the quality of the junior user’s mark is inferior to that of the senior user’s mark, there is an increased risk of reputational harm. However, a wide disparity in quality may also decrease the likelihood of consumer confusion. Regardless, here the court found that A&E only made conclusory allegations about the quality of On Patrol: Live, and therefore found that this factor favored defendants.

The eighth and final factor is sophistication of the consumer group. The more sophisticated the consumer, the less likely they are to be confused. Here, A&E failed to plead any facts regarding consumer sophistication, so this factor was neutral. 

The court found that these factors generally weighed in favor of A&E but noted that nominative fair use, which allows a defendant to use a plaintiff’s trademark to describe its product or service, may complicate consumer confusion claims. Under Second Circuit precedent, nominative fair use requires consideration of three factors: whether the use of the mark is necessary to describe the plaintiff’s or defendant’s product or service; whether the defendant only uses the minimum amount of the plaintiff’s mark as is necessary to identify the product or service; and whether defendant’s conduct or language falsely creates the appearance of an endorsement by plaintiff. Defendants argued that they used the Live PD mark in promoting On Patrol: Live only to describe their prior work on that show, and that they would not have been able to do so without using the mark. The court agreed, finding that it would be impossible to describe Live PD without using its mark. 

A&E argued, however, that defendants made more reference to Live PD than was necessary as part of their advertising campaign. While defendants argued that these statements came from third parties like news organizations, the court found that at the motion to dismiss stage, this factor weighed in favor of A&E, as defendants had retweeted articles that incorrectly associated On Patrol: Live with Live PD. A&E also argued that there was no need for defendants to reference Live PD in their advertising. The court agreed here as well, finding that, at least for purposes of a motion to dismiss, plaintiff had plausibly pleaded that defendants were willingly attempting to confuse the public regarding the affiliation between Live PD and On Patrol: Live. Having determined that, at least under the deferential standard of a motion to dismiss, nominative fair use does not apply, the court declined to dismiss A&E’s trademark infringement and unfair competition claims.  

Summary prepared by Tal Dickstein and Alex Inman