Content creators use brands, both real and fictional, to help tell stories. They might include real-world trademarks to make a story feel more authentic. Or they may employ iconic marks to establish a location, recreate a bygone era, or delineate a character’s extravagant or pedestrian tastes. The Devil, after all, does wear Prada. In an influential 1989 decision, Rogers v. Grimaldi, the Second Circuit held that where a trademark is used in the title of an expressive work like a film or television show, the First Amendment requires that courts strike a more speech-protective balance than that afforded under the standard likelihood-of-confusion multifactor test. The ensuing three decades have seen Rogers adopted in various forms in at least five circuits, including the Ninth Circuit, and applied in situations where a trademark is used in the body (and not necessarily the title) of an expressive work, including in cases involving videogames, greeting cards, and novelty products like pet toys.
Two experienced IP litigators—Karin Pagnanelli of Mitchell Silberberg & Knupp and Susan Kohlmann of Jenner & Block—join us to chart the twists and turns of the Rogers test with reference to some recent decisions involving, among other things, military videogames and an oyster bar and tavern perched on the Florida-Alabama line. We hope you can join us.
Karin G. Pagnanelli is the National Chair of Mitchell Silberberg & Knupp’s Entertainment & IP Litigation Practice Group, Co-Chair of the Video Game Practice Group, and a member of the firm's management. She specializes in copyright and trademark actions, and in particular, focuses on issues of first impression relevant to the entertainment industry. Recently she successfully defended Activision Blizzard in trademark infringement actions based on the depiction of the HUMVEE military vehicle in the videogame Call of Duty, as well as the use of the term “Warzone” in the title of the videogame Call of Duty: Warzone. Earlier, Karin helped win a major victory for Take-Two Interactive Software and Rock Star Videos in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., one of the leading cases in the Ninth Circuit to address the Rogers test. A graduate of California State University, Long Beach, and of Southwestern Law School, Karin has been recognized as a “Top Trademark Star” and “Top Copyright Star” by Managing Intellectual Property magazine, as a “Most Influential Intellectual Property Attorney by the Los Angeles Business Journal, and as a “Top 75 Intellectual Property Litigator in California” by the Daily Journal.
Susan J. Kohlmann is the Chair of the Trademark, Advertising, and Unfair Competition Practice at Jenner & Block and a leader of the firm’s Content, Media and Entertainment Practice. Last year, she obtained a summary judgment win for ViacomCBS in a trademark dispute over the title of the MTV reality show MTV Floribama Shore. The plaintiffs—owners of a beach bar, restaurant and concert venue called The Flora-Bama Lounge, Package & Oyster Bar—argued that the show’s title infringed their trademark rights in the term “Flora-Bama.” Earlier, in Viacom v. YouTube, Susan resolved a “landmark legal battle” to prevent Google’s YouTube service from airing copyrighted videos without permission. And in 2017, Susan was named American Lawyer’s “Litigator of the Week” for leading a Jenner & Block team to a $13.15 million jury verdict for the Estate of Elaine Steinbeck, the late wife of the author John Steinbeck, in a trial over the rights to the writer’s works. A graduate of Yale University and Columbia Law School, Susan has consistently been recognized as Leading Lawyer in Copyright by Legal 500, and Chambers USA has regularly named her in its “Intellectual Property: Trade Mark & Copyright” category. A member of the firm’s Policy Committee, Susan also serves as chair of the firm’s Diversity Committee and this year began serving as President of the New York City Bar Association.
