When trademark rights collide with expressive works such as movies and music, some courts treat expressive works differently because: “(1) they implicate the First Amendment right of freedom of speech, which must be balanced against the public interest in avoiding consumer confusion; and (2) consumers are less likely to mistake the use of someone else's mark in an expressive work for a sign of association, authorship, or endorsement.” See Twentieth Century Fox Television v. Empire Distrib., Inc., 875 F.3d 1192, 1196 (9th Cir. 2017).

When an allegedly infringing use of a mark is an expressive work, the Ninth Circuit has adopted the Second Circuit's test from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) to determine whether the Lanham Act applies. Under the Rogers test, the defendant must first “make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment.” Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022, 1028 (9th Cir. 2024) (internal quotation marks omitted). The burden then shifts to the plaintiff to show that “the defendant's use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work.” Id. (internal quotation marks omitted). “Neither of these prongs is easy to meet.” Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443, 462 (9th Cir. 2020). 

With respect to the first Rogers prong, “any artistic relevance above zero means the Lanham Act does not apply unless the use of the trademark is explicitly misleading.” Dr. Seuss Enters., 983 F.3d at 462 (internal quotation marks omitted). 

To satisfy the second prong, there generally must be “an explicit indication, overt claim, or explicit misstatement about the source of the work,” which is a “high bar.” Id. (internal quotation marks omitted); see also Caiz v. Roberts, 382 F. Supp. 3d 942, 951 (C.D. Cal. 2019) (“Plaintiff only provides legal argument that Defendants' use of ‘Mastermind' in the same way is explicitly misleading, but points to no evidence indicating that Defendants' use even ‘implicitly suggest[s]' that the album is associated with Plaintiff, let alone any evidence of an overt association.”); Belin v. Starz Ent., LLC, 2022 WL 2192999, *7 (C.D. Cal. 2022) (“Plaintiff's allegations are limited to Defendants' use of the BMF Mark in the Series and in connection with related marketing and promotional merchandise. As such, the Complaint insufficiently alleges an explicit indication, overt claim, or explicit misstatement linking Plaintiff to the Series.” (internal quotation marks omitted)). 

“If the plaintiff satisfies both elements, it still must prove that its trademark has been infringed by showing that the defendant's use of the mark is likely to cause confusion.” Gordon v. Drape Creative, Inc., 909 F.3d 257, 265 (9th Cir. 2018).

In 2025, Lady Gaga released her studio album "Mayhem" to positive reviews that "[t]he songs are about all the ways that love and sex and stardom overlap" and "gets back to her core themes of sex, sleaze and celebrity." Lady Gaga also announced a worldwide concert tour under the “Mayhem” name. 

Lost International, LLC has used the trademark MAYHEM® since 1986 in connection with surfboards, surf equipment, clothing, accessories, and surf videos. And, in 2025, Lost sued to enjoin Lady Gaga from marketing and selling MAYHEM clothing and headwear. Lost Int'l. LLC v. Stefani Joanne Germanotta, No. SA CV 25-00592 FMO (KESx) (C.D. Cal. Aug. 18, 2026). 

There was no dispute that Lady Gaga's album was an expressive work and that the word "Mayhem" artistically relevant to it, so the first prong of Rogers was met. See E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099-1100 (9th Cir. 2008) (noting that plaintiff conceded the video game at issue is an expressive work and that the Rogers test applies). 

So, the issue was whether the use of "Mayhem" was explicitly misleading as to the source or content of Lady Gaga's work. 

Lost alleged that defendants “advertised and offered goods for sale with the intention of misleading, deceiving, or confusing consumers as to the origin of the goods” and their “purpose in using the Mark was and is to deceive, mislead and confuse customers and the public”; but the Court found such allegations to be conclusory and insufficient to constitute an “explicit indication, overt claim, or explicit misstatement” identifying Lost as the source of Lady Gaga's work. See Twentieth Century Fox Television, 875 F.3d at 1199 (internal quotation marks omitted). Indeed, “the use of a mark alone is not enough to satisfy this prong of the Rogers test.” Id. (internal quotation marks omitted).

The Court also found that the derivative state and common law claims were also barred under the Rogers test. See E.S.S. Ent. 2000, Inc., 547 F.3d at 1101 (holding that “the First Amendment defense applies equally to [plaintiff]'s [California] state law claims [of unfair competition and trademark infringement] as to its Lanham Act claim”); Belin, 2022 WL 2192999, *5 n.5 (dismissing plaintiff's state law claims as barred by Rogers); Stewart Surfboards, Inc v. Disney Book Grp., LLC, 2011 WL 12877019, *8 (C.D. Cal. 2011) (same).

Because Lost "has had three opportunities to state viable claims" but repeatedly failed to put forth sufficient allegations to address those deficiencies, the Court concluded that another opportunity to amend would be fatal, citing Stewart Surfboards, Inc, 2011 WL 12877019, at *8 (denying leave to amend where trademarks claims were dismissed under the Rogers test and “any amendment would be futile”); Haas Automation, Inc. v. Steiner, 750 F.Supp.3d 1107, 1119 (C.D. Cal. 2024) (“Because Haas Automation can make no additional allegations to avoid the Rogers test, this Court finds that amendment is futile.”); see Zucco Partners, LLC v. Digimarc Corp., 552 F.3d 981, 1007 (9th Cir. 2009) (“[W]here [plaintiffs have] previously been granted leave to amend and [have] subsequently failed to add the requisite particularity to [their] claims, the district court's discretion to deny leave to amend is particularly broad.”) (internal quotation marks and alteration omitted); Gonzalez v. Planned Parenthood of Los Angeles, 759 F.3d 1112, 1116 (9th Cir. 2014) (“[T]he district court's discretion in denying amendment is ‘particularly broad' when it has previously given leave to amend.”); Abcarian v. Levine, 972 F.3d 1019, 1032 (9th Cir. 2020) (“The district court . . . did not err in denying leave to amend and in dismissing Plaintiffs' federal claims with prejudice.”); see also Bonin v. Calderon, 59 F.3d 815, 845 (9th Cir.1995) (“Futility of amendment can, by itself, justify the denial of a motion for leave to amend.”).