The Flora-Bama Lounge, Package and Oyster Bar (the “Lounge”) on the Florida-Alabama border is often rated as one of the best beach bars in the country. Throughout its colorful and storied history it has played host to many athletic and entertainment events. It plays an outsized role in the culture of this part of the Gulf coast. Recently its owners have been in the news for another reason — as the plaintiffs (“Plaintiffs”) in a trademark suit against Viacom and 495 Productions (“Defendants”) that reached the Eleventh Circuit Court of Appeals. MGFB Props., Inc. v. Viacom Inc., 2022 U.S. App. LEXIS 32879, Nov. 29, 2022 (herein referred to as “Flora-Bama”). Unfortunately for the Lounge, despite its registered trademarks, the Court held that trademark concerns were outweighed by the Defendants’ interest in free speech.

In 2016 Defendants created a reality TV series called MTV Floribama Shore as a spin-off from its six season hit series Jersey Shore. Jersey Shore profiled a group of twenty-somethings in a subculture “centered on a love of clubbing, taking care of one’s physical appearance, and a dedication to family and Italian culture.” Id. at *6. Following several international spin-offs, Floribama Shore was intended to profile the same age group in a Southern beach culture.

Shortly before the show was set to premiere, Plaintiffs sent Defendants a cease-and-desist letter claiming trademark infringement and asking them to change the series name. They refused, explaining that “[t]itles of artistic works are entitled to substantial deference against Lanham Act and unfair competition claims.” Id. at *12.

Ultimately the Lounge sued for trademark infringement and unfair competition, alleging confusion among their patrons between the series and the Lounge that had damaged their brand. The District Court granted summary judgment in favor of Defendants and Plaintiffs appealed.

In affirming the District Court’s grant of summary judgment, the Court relied on the test the Second Circuit had established in Rogers v. Grimaldi, 875 F.2d 994 (2d. Cir. 1989), which construes the Lanham Act narrowly in order to avoid negating free speech rights. In that case, international celebrity Ginger Rogers asserted a Lanham Act claim against the producers and distributors of a film entitled Ginger and Fred. In holding for the producers of the film, the Court enunciated a two-part test, which states that the title of an artistic work does not violate the Lanham Act “[(1)] unless the title has no artistic relevance to the underlying work whatsoever, or, [(2)] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Flora-Bama at *17-18, quoting Rogers at 999.

The Flora-Bama Court noted that the Eleventh Circuit had recently explicitly adopted the Rogers test in Univ. of Ala. Bd. Of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278, when it found that the work of an artist who had painted famous football scenes involving the University’s football team was protected against trademark infringement claims by the University’s Board of Trustees:

Moore’s paintings, prints, and calendars very clearly are embodiments of artistic expression, and are entitled to full First Amendment protection. The extent of his use of the University’s trademarks is their mere inclusion (their necessary inclusion) in the body of the image which Moore creates to memorialize and enhance a particular play or event in the University’s football history. Even if “some members of the public would draw the incorrect inference that [the University] had some involvement with [Moore’s paintings, prints, and calendars,] . . . that risk of misunderstanding, not engendered by any overt [or in this case even implicit] claim . . . is so outweighed by the interest in artistic expression as to preclude” any violation of the Lanham Act. Citing Rogers, 875 F.2d at 1001. Id. at 1279.

Similarly, in Flora-Bama, the Court found that Defendants clearly met the first prong of the Rogers test:

The relationship between the series title and the series content itself is well above the artistic relevance threshold. “Floribama” describes the subculture profiled in the series and the geographic area exemplified by the subculture. To break it down even further, the former part of “Floribama,” i.e., “Flori,” refers to Florida and the beach culture the series sought to capture, while the latter part, i.e., “bama,” refers to Alabama and the Southern culture the series sought to capture. Flora-Bama at *22-23.

Likewise, the Court found that the second prong of the test was met since there was

…no evidence Defendants held the series out as endorsed or sponsored by Plaintiffs, nor did they explicitly state that the series was affiliated with Plaintiffs. To the contrary, Viacom chose a title that includes its own house mark (MTV) and the name of one of its iconic franchises (Shore). Id. at *26.

The Court dismissed as irrelevant to this case (Id. at *28-32) dicta contained in a footnote in Rogers, sometimes known as the “title to title” exception, which states that “[The Rogers test] would not apply to misleading titles that are confusingly similar to other titles [because t]he public interest in sparing consumers this type of confusion outweighs the slight public interest in permitting authors to use such titles.” Rogers at 999, note 5. In his concurring opinion in Flora-Bama, Judge Andrew Brasher argued that the Eleventh Circuit should join the Ninth Circuit in explicitly rejecting the title-to-title exception:

First, I think the title-versus-title exception is inconsistent with the First Amendment values that led us to adopt the Rogers defense. Second, even if the exception were appropriate under the First Amendment, I think the title-versus-title exception is impractical as a matter of doctrine because it is hard to apply in a consistent and logical way. Flora-Bama at *33-34.

As of this writing, Plaintiffs have not filed a petition for certiorari with the Supreme Court. However, the Supreme Court has granted cert. in Jack Daniel’s v. VIP Products, a case involving a dispute over a doggie chew toy parodying a Jack Daniel’s bottle. That case may provide an opportunity for the Supreme Court to balance trademark rights with free speech rights. We will monitor and report on the Jack Daniel’s case. As always, please do not hesitate to contact us if you have concerns about the permissible use of third-party trademarks or other intellectual property issues.