Many clients view trademark law as a panacea of protection for their company, akin to a shield preventing others from any remote use of any remotely similar mark. The reality is trademark law, under the Lanham Act in federal law (and in some state trademark statutes), attempts to balance the protections of the trademark holder against the remaining public. This includes limits on the breadth of protection for a given mark, both relating to similar marks and similar goods or services, and in other areas of the law, such as copyright or patent.
In MGFB Properties, Inc. v. Viacom Inc., the plaintiff owns the common law trademark FLORA-BAMA, which is purportedly has used since 1964.[i] The lounge displays its mark as
The defendants, Viacom and 495 Productions wanted to continue the SHORE programs that began with JERSEY SHORE, and elected to begin a program in the south, centered in Panama City Beach.[ii] After some deliberation, Viacom selected FLORIBAMA SHORE as the title for the program,[iii] though Viacom and 495 Productions knew about FLORA-BAMA mark,[iv] having broadcast a concert from the FLORA-BAMA Lounge,[v] and contemplated using the lounge to hold casting calls and shooting at the lounge.[vi]
The defendants’ mark was not considered geographically descriptive so 495 Productions required the cast to recite lines explaining the meaning.[vii]
The case was dismissed early in litigation, using the Rogers test,[viii] which was adopted by the 11th circuit in 2012,[ix] and attempts to balance the trademark protections of the Lanham Act against the freedom of expression guarantees from the Bill of Rights. The Rogers test has two prongs, finding that the potentially infringing work is protected from Lanham Act claims;
[(1)] unless the title has no artistic relevance to the underlying work whatsoever, or,
[(2)] if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.[x]
In the first prong, in analyzing the artistic relevance of the title “the relationship between the challenged title and the underlying work itself “merely must be above zero.””[xi] The court found the title, Floribama, “describes the subculture profiled in the series and the geographic area” and therefore meets the relationship between the work and the title.[xii] Viacom also was found to add its MTV house mark and SHORE franchise mark to the title.[xiii] For the second prong, the court looked at “whether (1) the secondary user overtly “marketed” the protected work “as ‘endorsed’ or ‘sponsored’” by the primary user or (2) “otherwise explicitly stated” that the protected work was “affiliated” with the primary user.”[xiv] Further, the “evidence must relate to the nature of the behavior of the defendant, not the impact of the defendant’s use.”[xv] The court found Viacom did not state or suggest the program was endorsed or sponsored by the Lounge, and in fact added the MTV house mark and SHORE mark, which argues against this prong.[xvi]
As can be readily seen, there are significant limits on the protections afforded by trademarks. While trademark protection is an important part of building a company identity and brand, it is important to realize that those protections are afforded to the use of a mark on a type of good or service, and is designed to protect consumers from confusion as to the origin of the good or service. Similarly, trademark law has limited applicability in other areas of law, such as copyright law, as seen here. It is important to understand the uses, and limitations, of the protections afforded by different intellectual property.
Post script. An interesting side note to this controversy is the merchandising rights. Many restaurants merchandise its mark for shirts and other clothes, such as HARD ROCK CAFÉ[xvii] and HOOTERS.[xviii] The Flora-Bama Lounge is no different, with its own hats, shirts, cups, and other products.[xix]
Viacom has likewise marketed its own merchandise, selling FLORIBAMA SHORE clothing, towels, and drinking glasses.[xx]
While the images on clothing is typically not considered a trademark use, as it is commonly viewed as ornamentation, the bleed over of the marks into merchandising blurs the lines of the first amendment protections, and begins to bring Viacom closer to potential trademark infringement.
[i] No. 21-13458, slip opinion at 3 (11th Cir. Nov. 29, 2022); https://www.florabama.com/, last accessed Jan. 6, 2023. See also, U.S. Reg. Nos. 4,773,403; 4,272,440; 4,594,237; 6,175,079.
[ii] MGFB Properties, Inc., slip opinion at 9.
[iii] Id. See also, “Floribama Shore was selected due to ease of recognizing the region portrayed, and defendants decided against Florida Shore b/c the name would include Miami and other areas with different cultures and codes”.
[iv] MGFB Properties, Inc., slip opinion at 10.
[v] MGFB Properties, Inc., slip opinion at 5.
[vi] MGFB Properties, Inc., slip opinion at 7; Id. at 8 (“Defendant documents noted “Flora-Bama [Lounge]” is a “[f]amous, open-air bar,” but it also used the term “Florabama” to describe the region.””).
[vii] MGFB Properties, Inc., slip opinion at 11.
[viii] See, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
[ix] Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012).
[x] MGFB Properties, Inc., slip opinion at 20 (citing Univ. of Ala., 683 F.3d at 1278 See also, MGFB Properties, Inc., slip opinion at 19 (citing Rogers, 875 F.2d at 999).
[xi] MGFB Properties, Inc., slip opinion at 21-22 (citing E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008); Rogers, 875 F.2d at 999.
[xii] MGFB Properties, Inc., slip opinion at 22
[xiii] MGFB Properties, Inc., slip opinion at 22
[xiv] See, MGFB Properties, Inc., slip opinion at 22 (citing Univ. of Ala., 683 F.3d at 1279
[xv] MGFB Properties, Inc., slip opinion at 25 (citing Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1246 (9th Cir. 2013)).
[xvi] MGFB Properties, Inc., slip opinion at 24-25
[xvii] https://shop.hardrock.com/, last accessed Jan. 6, 2023.
[xviii] https://shop.hooters.com/, last accessed Jan. 6, 2023.
[xix] See, https://florabamastore.com/, last accessed Jan. 6, 2023.
[xx] https://www.mtvshop.com/collections/floribama-shore, last accessed Jan. 6, 2023.
