Does the First Amendment protect use by fictional television programs of products or services resembling trademarked products or services that exist in real life?

Defendants AMC Networks and Sony Picture Television – the creators of hit series, Better Call Saul – urged Judge Gardephe to dismiss Liberty Tax Service’s lawsuit accusing the creators of trademark infringement for naming a fictional tax service provider on Better Call Saul, “Sweet Liberty Tax Services,” and depicting that service as defrauding its customers. The show's creators say Liberty’s suit “stretches the Lanham Act beyond its breaking point” because the purported use of Liberty's marks is protected by the First Amendment. Check out the creators' brief in support of their motion to dismiss here.

Here is what you need to know:

Liberty claims the creators violated the Lanham Act by depicting a tax service provider named “Sweet Liberty Tax Services” stealing customer money in season six, episode two of Better Call Saul. On the show, Sweet Liberty Tax Services is owned and operated by convicted felon, Craig Kettleman, and his wife. The fictional storefront depicted in Better Call Saul features an inflatable Statute of Liberty and American flag imagery purportedly similar to the imagery used in Liberty’s own storefronts.

Typically, a trademark infringement plaintiff must show that the defendant’s unlawful use of its mark is likely to confuse consumers as to the origin, sponsorship, or approval of the defendant’s product. To determine likelihood of confusion, courts in this district apply an eight-factor, non-exhaustive test first articulated by the Second Circuit in Polaroid Corp. v. Polarad Elecs. Corp. But in widely-cited Second Circuit case Rogers v. Grimaldi, the Circuit held that when the use of a trademark at issue is artistic expression and not commercial speech, a repurposed version of the Polaroid test should be applied to accommodate First Amendment protection.

Rogers involved Ginger Rogers's trademark infringement action against the producers of Ginger and Fred, a Fellini film about two fictional dancers who had imitated Rogers and Fred Astaire and became known as “Ginger and Fred.” The producers argued that use of a trademark in an artistic work is protected by the First Amendment. The Second Circuit agreed: the likelihood of confusion standard should be modified for cases involving artistic expression to balance public interest in free artistic expression with the interest in protecting against flagrant public deception.

The Rogers court held that use of a mark in the title of a literary or expressive work is fair game unless it (1) has no artistic relevance to the work; or (2) explicitly misleads as to source or content. Courts have since applied the Rogers framework to use of trademarks in the content of expressive works.

Is the depiction of “Sweet Liberty Taxes” a relevant artistic expression? 

Applying Rogers, First Amendment protection does not apply where use of a mark has no artistic relevance to the expressive work whatsoever. This is a purposely low threshold; the level of artistic relevance must simply be above zero. Here, the creators argue that “Sweet Liberty Tax Services” is artistically relevant because it is founded by the Kettlemans after Craig is released from prison, so viewers could readily perceive “Sweet Liberty” to be a nod to Craig Kettleman’s newfound freedom. Kettleman’s choice to name his business “Sweet Liberty” and to decorate its storefront with “gaudy symbols of Americana” is “richly ironic” in light of his criminal history.

Liberty isn’t buying it, arguing that a nod to Craig’s release from prison could have been achieved in other ways which do not involve the use of Liberty’s intellectual property. Plus, the fictional business can be depicted as “patriotic” without ripping off Liberty’s trade dress – (i.e.,  that the creators could have selected alternative patriotic designs instead of the Statute of Liberty (e.g., bald eagles, maps, military insignias) and that this underscores their intent to exploit the publicity value of Liberty’s brand. 

But the Rogers court explicitly rejected the argument that free speech is curtailed simply because the creator might have an alternative means of expression, holding that you can’t forbid particular words without running a substantial risk of suppressing ideas in the process. At the end of the day, the court need only find that the defendant did not intend a commercial association with the plaintiff’s mark to exploit its popularity and goodwill.  It is early in the case, but it seems unlikely that the court will find that the Better Call Saul creators used Liberty’s marks to capitalize on Liberty’s goodwill.

Does “Sweet Liberty Taxes” explicitly mislead viewers?

The creators say that viewers will not be misled because the episode contains no affirmative statements suggesting that Liberty is responsible for, endorsed, or approved of its content. Plus, the episode is branded with the name Better Call Saul, and its credits expressly remind viewers that the characters portrayed are all fictional and not intended to convey a real-world connection to any persons or events. The creators argue that because Liberty’s complaint fails on its face to satisfy Rogers, it should be dismissed without weighing the Polaroid factors to determine likelihood of confusion. Liberty responds by arguing that the parties need discovery to develop a full factual record before the court can engage in the “fact-intensive” Polaroid factors.

What to watch: 

SCOTUS recently granted certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC – JD’s infringement action against the makers of squeaky dog toys known as “Bad Spaniels.” JD appealed the Ninth Circuit ruling that the Rogers test governs because the "humorous" toys are an “expressive work” entitled to speech protections under the First Amendment. JD submits that Rogers improperly rewrites the Lanham Act to privilege purported First Amendment interests of some speakers over others, and that the Ninth Circuit’s decision to extend Rogers to ordinary commercial products just because they are “humorous” underscores the slippery slope created by Rogers. It is possible that the Supreme Court will leave the Rogers test standing but hold that it was misapplied in cases like JD's which deal with a commercial product (as opposed to, say, a TV show), but it is also possible that the Court will determine that Rogers is bad law and that the likelihood of confusion factors should be applied irrespective of whether the product or service in question has some expressive value.

SCOTUS is likely to hear arguments in the Bad Spaniels case in March. Will Judge Gardephe wait to hear oral argument before deciding the creators’ motion to dismiss Liberty’s case? Stay tuned.