Bad Spirits – How a Dog Toy Changed TV Title Clearance

Clearing titles for creative projects has become more challenging after the Supreme Court’s decision in Jack Daniels v. VIP Products. In this episode of The Briefing, Scott Hervey and Tara Sattler explore the evolution of the Rogers test and the new hurdles studios face in title selection. Cases Discussed: * Jack Daniels Properties, Inc. v. VIP Products LLC * HomeVestors of America, Inc. v. Warner Brothers Discovery * Rogers v. Grimaldi * Punchbowl, Inc. v. AJ Press Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: One of the things we do for our production company and studio clients is clear the titles to their projects. Now, ever since the Supreme Court case of Jack Daniels Properties versus VIP products, clearing titles have become a little bit more challenging. And last year's district Court case of Home Investors of America versus Warner Brothers shows exactly how challenging it's become. I'm Scott Hervey from the Entertainment and Media Group at Weintraub Tobin, and today I'm joined by my partner, Tara Sattler. We're going to talk about the impact of Jack Daniels on clearing titles for creative works on this installment of The Briefing. Tara, welcome back to the briefing. It's good to have you back, especially on this topic, because this is something you and I deal with quite frequently. Tara: Absolutely. It's great to be here, and thanks for having me back. Scott: All right. So, let's provide a quick recap of the Rogers test and the impact that Jack Daniels had on the Rogers test. Tara: That's a great place to start. The Rogers test comes from the 1989 Second Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question in that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act as well as state right of publicity laws, for using a celebrity's name in the title of a work. The District Court and the Second Circuit on appeal both said no, and from that case, the Rogers test was created. Scott: Under the Rogers test, First, the use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever. If the title has some artistic relevance, the use does not violate the Lanham Act unless the title explicitly misleads as to the source or content of the work. Now, the first line of inquiry is whether the use of the third-party mark has some artistic relevance. Now, that threshold is extremely low. Basically, if the level of artistic relevance is more than zero, this is enough. Now, the second line of inquiry is to whether the use of the third-party mark explicitly misleads as to the source of content or work. Now, the Rogers test has been widely adopted by other circuits, including California's Ninth Circuit. Tara: On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties Inc. Versus VIP products. The dispute involves the claim by Jack Daniels that the dog toy, Bad Spaniels, infringed a number of its trademarks. At the district Court and on appeal at the Ninth Circuit, the issue was framed as whether the dog toy was an expressive work since trademark claims involving expressi...