Court: District Court, W.D. Kentucky; December 12, 2017; Federal District Court
Defendants' motions to dismiss the claims brought by Plaintiffs, who operate a youth sports publication and hold a registered trademark for "THE SPORTING TIMES," have been granted by the Court. The case revolves around Defendants' use of the trademark in the film "Spaceman," a biopic about baseball player Bill "Spaceman" Lee, which included a montage featuring a fictional magazine cover titled "The Sporting Times." Plaintiffs argue that this use constitutes trademark infringement and dilution, among other claims, as it could mislead viewers into believing their publication endorses the film's portrayal of drug and alcohol use.
Plaintiffs sent a letter of objection to the film's producers shortly after the film's release, asserting that infringing materials remained available despite Defendants' claims of removal. The lawsuit, initiated on February 24, 2017, seeks substantial compensatory and punitive damages along with various forms of equitable relief.
Jurisdiction is established under federal law, and the standard for dismissal requires that a complaint must provide a clear and concise statement of claims. The Court will assume the truth of factual allegations while not accepting bare legal conclusions. The motions were granted due to a failure to state a claim upon which relief could be granted.
To withstand a Rule 12(b)(6) motion to dismiss, a plaintiff must provide sufficient factual allegations to establish a plausible claim for relief, allowing the court to infer the defendant's liability. A complaint may be dismissed if it lacks legal support, if the facts do not sufficiently state a claim, or if the complaint faces a definitive barrier to relief. During this review, the court can consider the complaint, attached exhibits, public records, and other relevant materials referenced in the complaint.
In this case, the plaintiffs allege that the defendants improperly used their trademark "THE SPORTING TIMES" in the film "Spaceman." A trademark is defined as any identifier that distinguishes goods and indicates their source. The plaintiffs have a registered trademark, which the defendants do not dispute. To prove trademark infringement, plaintiffs must show ownership of the trademark, that the defendants used it in commerce, and that such use is likely to confuse consumers regarding the source of the goods.
The defendants argue that their use of the trademark was non-trademark in nature, as it appeared as part of a fictional magazine masthead in a montage, suggesting that consumers would not infer any sponsorship or production connection between "The Sporting Times" and the film.
The Sixth Circuit's eight-factor likelihood of confusion test is inapplicable when a defendant uses a mark in a "non-trademark way." Trademark infringement cannot be established if the alleged infringer does not use the mark to identify the source of their goods. In *Interactive Products Corp. v. a2z Mobile Office Solutions, Inc.*, the court found that the plaintiff's trademarked product name in a defendant's website post-domain path did not cause consumer confusion regarding the website's source. Similarly, in *Gottlieb Development LLC v. Paramount Pictures Corp.*, the court ruled that the minimal visibility of the plaintiff's trademark in a film scene did not plausibly suggest consumer confusion regarding sponsorship.
The current Complaint fails to demonstrate that the Defendants' use of Plaintiffs' Mark is more than a non-trademark use, focusing instead on consumer confusion about the content of a publication rather than the film's sponsorship. The Mark appears briefly in a montage within the film, which aims to inform viewers about a character's career, and does not imply sponsorship. Additionally, the Mark was only applied to publications starting in 2004, while the contested use dates back to 1976. Thus, the Defendants' use is categorized as non-trademark, making the claim of confusion implausible and warranting dismissal of the trademark infringement and false designation of origin claims.
Furthermore, the Defendants assert that their use of the Mark in a feature film qualifies for First Amendment protection under the *Rogers v. Grimaldi* test, which has been recognized by the Sixth Circuit, suggesting additional grounds for dismissal.
Ginger Rogers filed a Lanham Act claim against the makers of the film *Ginger and Fred*, which features fictional characters inspired by her and Fred Astaire. The court ruled that Rogers' claim could only proceed if her name's use had no artistic relevance or if it explicitly misled consumers regarding the work's source or content. The "artistic relevance" standard is intentionally low, requiring only some connection to the work. In *Fortres Grand Corp. v. Warner Bros. Entertainment, Inc.*, the court found the use of a mark had artistic relevance, as acknowledged by the plaintiffs’ own complaint. In the current case, the defendants argued their use of the title *The Sporting Times* was relevant to the film's subject matter, contrasting it with *Parks v. LaFace Records*, where the court found a genuine issue of fact regarding artistic relevance. Plaintiffs claimed defendants conceded lack of artistic relevance by removing the mark from the film, although defendants asserted this was to avoid litigation costs. The film's depiction of the mark in a scene related to the storyline provided sufficient artistic relevance, thus passing the first prong of the Rogers test. The second prong assesses if the use explicitly misled consumers, which is not actionable without clear misrepresentation, regardless of public confusion.
Defendants' use of Plaintiffs' Mark in their film does not imply sponsorship or partnership, nor does it constitute overt misrepresentation. The Sixth Circuit's precedent affirms that speech, even when profit-driven, is protected under the First Amendment. Defendants have met both prongs of the Rogers test, thereby safeguarding their use of the Mark under First Amendment protections.
Regarding the dilution claim under the Lanham Act, Plaintiffs argue that Defendants’ use of their Mark dilutes its value. However, Defendants assert this claim is invalid as the federal anti-dilution statute exempts noncommercial speech, supported by the Ninth Circuit’s ruling in Mattel, Inc. v. MCA Records, which states that only purely commercial speech is subject to the Lanham Act. The court agrees with this interpretation, concluding that Defendants’ use of the Mark, being noncommercial and protected by the First Amendment, renders Plaintiffs' dilution claim meritless and subject to dismissal.
Additionally, Plaintiffs allege commercial disparagement under the Lanham Act, which requires demonstrating false or misleading statements about a product that deceive a significant audience and affect purchasing decisions. The court finds that Plaintiffs fail to plausibly allege such falsehoods concerning Defendants’ product. Their claims are overly general, lacking factual substantiation, which does not meet the burden for a plausible claim. Consequently, the commercial disparagement claim is also dismissed.
Plaintiffs assert state law claims against Defendants for false and misleading advertising and unauthorized commercial use of their Mark. Defendants contend that the defenses applicable to Plaintiffs' federal Lanham Act claims also bar these state claims. The First Amendment protects Defendants' use of the Mark, which negates any state law culpability. Citing relevant case law, the Court indicates that state law claims, when based on the same permissible conduct as Lanham Act claims, are subject to dismissal. As a result, the Court grants Defendants' Motions to Dismiss and dismisses Plaintiffs' claims with prejudice.
The document identifies Podium Pictures, LLC and Rhino Films, LLC as producers of a film, with distribution rights in Latin America licensed to a subsidiary of Metro-Goldwyn-Mayer Studios Inc., while Orion Pictures is incorrectly named by Plaintiffs. Gunpowder Sky Distribution, LLC is noted as the successor-in-interest to Filmbuff, following a merger. Plaintiffs seek to prevent Defendants from using their Mark in the film and trailers, compel destruction or recall of the movie, require corrective advertising, and request an accounting of profits made by Defendants.
Additionally, Plaintiffs have made federal claims for trademark dilution and "passing off," with the latter being subsumed under the false designation of origin claim. The Court decides not to separately address the "passing off" claim. Plaintiffs also conflate their claims with defenses related to trademark infringement, specifically the Fair Use and Nominative Use doctrines, which Defendants clarify are distinct from their non-trademark use defense. Plaintiffs argue that their reputation is harmed by the association of their products with negative portrayals in the film, which contradicts their desired public image.
Plaintiffs question why Defendants did not directly pay for the rights to use a photograph of Bill Lee from Sports Illustrated's August 7, 1978, issue, which featured an article titled "In an Orbit All His Own." The issue's cover was occupied by Pete Rose, while the montage in question includes identifiable marks from various real and fictitious publications and entities. The film's opening credits indicate it as "An Orion Pictures Release," followed by other production companies, before the montage containing Plaintiffs' Mark appears. The Rogers test, which assesses the use of a celebrity's name or image, has been applied more broadly in trademark cases, not limited to celebrity identity (see Volkswagen AG v. Dorling Kindersley Publ'g, Inc.). Plaintiffs attempt to frame their claim as trade libel or disparagement by citing a Kentucky Court of Appeals case, but the court notes that their complaint is specifically alleging "commercial disparagement" under the Lanham Act and state law. Plaintiffs have not sufficiently alleged a "false statement of fact," a necessary element for both trade libel and commercial disparagement, leading the court to reject any expansion of their claims. Additionally, Kentucky law does not recognize a separate cause of action for "commercial disparagement."
