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First Amendment Protects the Floribama Shore

Posted by James Juo | Dec 01, 2022 | 0 Comments

The right to use “Floribama” on TV “lies at the crossroads of the Lanham Act and the First Amendment.” MGFB Properties, Inc. v. ViacomCBS, Inc., No. 21-13458, slip op. at 1 (11th Cir. Nov. 29, 2022). Namely, whether the title of the MTV Floribama Shore reality television show infringed the trademark of the regionally famous Flora-Bama Lounge.

As previously discussed on this blog, the district court in MGFB Properties, Inc. v. ViacomCBS, Inc., No. 5:19-cv-00257 (N.D. Fla. Sept. 22, 2021), had granted summary judgment of no infringement “because the plaintiffs' showing of likelihood of confusion—an element of the plaintiffs' infringement claims—is not strong enough to meet the standard that applies to artistic works.”

The district court applied the Rogers test that the Eleventh Circuit had adopted in Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012). The two-part Rogers test narrowly applies the Lanham Act in order to protect First Amendment interests in the titles of artistic works by providing 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.” Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).

The Appeal

On appeal, the Eleventh Circuit affirmed there was no infringement under the Rogers test. MGFB Properties, Inc. v. ViacomCBS, Inc., No. 21-13458 (11th Cir. Nov. 29, 2022).

The Court found that the MTV Floribama Shore show “clearly meets” the artistic relevance requirement of 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. . . . Viacom also added its house mark (MTV) and the name of one of its iconic franchises (Shore) to the title. And voilà, MTV Floribama Shore.


It is not our place to decide whether Defendants needed to use “Floribama” in their title. See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”); see also Parks, 329 F.3d at 450 (rejecting an approach that “would needlessly entangle courts in the process of” deciding “whether a title is ‘necessary' to communicate [an] idea”). It is enough that the title was relevant to the series Defendants sought to produce.

As for the second prong, the Court found “there is no evidence Defendants held the series out as endorsed or sponsored by Plaintiffs.”

            To reiterate, the question as to the explicitly misleading prong of Rogers is 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. Univ. of Ala., 683 F.3d at 1279. The question is not whether the artist intends to copy.

Accordingly, the Court concluded that the title of the television series—MTV Floribama Shore—did not infringe the plaintiffs' Flora-Bama trademark as a matter of law.

“Title-Versus-Title” Exception

There also is an exception discussed in a footnote in Rogers that has become known as the “confusingly similar titles” exception or the “title-versus-title” exception, where a title is confusingly similar to another title. But no circuit has explicitly adopted the exception in the Rogers footnote. And the Ninth Circuit explicitly rejected it in Twentieth Century Fox Television v. Empire Dist. Inc., 875 F.3d 1192, 1197 (9th Cir. 2017), explaining that the exception is “ill-advised or unnecessary.”

The Eleventh Circuit's decision included an extensive discussion of the Rogers footnote for completeness, even though “this is not a title-versus-title case, and thus the exception has no application.”

In a concurring opinion, Judge Brasher wrote that the title-versus-title exception was “incompatible with the First Amendment principles that justify the Rogers defense.”

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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