MGM ekes out motion to dismiss TM claim against movie content

Deus ex Machina Motorcycles Pty. Ltd. v. Metro-Goldwyn-Mayer Inc., No. CV 20-4822-PLA, 2020 WL 6875178 (C.D. Cal. Oct. 23, 2020)

The Honey Badger case continues to screw up 9th Circuit law, here making a movie’s protection against allegations of trademark infringement based on its content appear contingent on the movie having a different vibe than the trademark owner’s brand allegedly does. Ugh. At least MGM did win the motion to dismiss, but with leave to amend.

Deus Ex Machina makes custom motorcycle parts, hand-built motorcycles, and related goods, including clothing “compatible with a motorcycle riding lifestyle.” It owns registrations for DEUS EX MACHINA for various articles of clothing, including jackets and alleged that many years of effort had created “a very specific brand image and reputation for quality,” drawing on “custom motorcycle culture and vintage surf culture, along with the intersection and mingling of those lifestyle cultures with art, music, and other popular culture.” Its “core market” is males, ages 18 to 30 years old. 

One of plaintiff's motorcycle jackets

Although sales of apparel and accessories comprise 80% of its business, DEM alleged that it also makes and publishes movies to promote its brand. Its movies “portray surf, motorcycle, and other cultural themes and activities like music and snowboarding” and are “a core part of its cultural foundation to enhance the value of its brand.”

MGM made “The Sun is Also a Star,” “a schmaltzy, teen-style love story.” In the film and trailer, the “lead actress ... Yara Shahidi” wears a blue and rustic gold bomber jacket “with the words ‘DEUS EX MACHINA’ inscribed in the back in large letters.” It plays a role in the plot (and the plot of the book on which the film is based) because the male lead writes the phrase in a notebook before meeting the female lead and deciding they're meant for each other based on her jacket.

MGM allegedly authorized copies of the jacket to be sold by, among others, two different websites. This jacket was allegedly inferior in quality to plaintiff’s products, and inconsistent with what DEM’s consumers expect from its products. (Although DEM alleged that a non-defendant actor who played a teen in the film “posed for pictures posted to social media to help promote the [Film] in which he wore clothing actually sold by [plaintiff],” he wasn’t wearing the allegedly infringing jacket nor did DEM allege that MGM directed or encouraged this appearance, so this part of the claim failed no matter what.)

DEM alleged that its customers and potential customers were therefore “confused” as to the image it “is trying to create with its products,” and it was being associated with a teen love story that is “totally inconsistent” with its brand image.

First, Rogers and its 9th Circuit progeny applied both to the trademark and to the false advertising claims because the false advertising claims were “in connection with the use of a trademark in an expressive work.”

Rogers applied to the film, its trailer, and the promotional appearance by one of its stars in which he allegedly wore plaintiff’s clothing because, as Empire held, “efforts to advertise, promote, and market an expressive work are merely extensions of the use of a mark in the original expressive work.”

Artistic relevance: DEM didn’t allege any facts showing lack of artistic relevance. Despite being willing to take judicial notice of the trailer and film, however, the court declined to go any further and evaluate artistic relevance, though it noted that showing lack of artistic relevance would be an “uphill battle.”

Explicitly misleading as to source/content: This prong is now complicated because, after Gordon, explicit misleadingness can be implicit. However, it’s not enough to show that consumers are confused. The focus is on “the nature of the [junior user’s] behavior” as opposed to “the impact of the use.”

In assessing explicit misleadingness, courts should consider “the degree to which the junior user employs the mark in the same way as the senior user.” Use in a “different context” isn’t explicitly misleading (citing the Barbie cases and Empire). “By contrast, where the junior user employs the mark in the same way as the senior user, the explicitly misleading component of the Rogers test is likely to be satisfied.” (Citing to Gordon’s dicta about TV show “Law and Order: Special Hip Hop Unit” being explicitly misleading.) Also, “[c]ourts consider the extent to which the junior user has added its own expressive content to the work beyond the mark itself.”

DEM didn’t sufficiently allege explicit misleadingness. First, MGM’s use was different from DEM’s primary use—which is primarily on clothing.

Comment: This is an implicit harmonization of the Ninth and Second Circuit approaches: the Second doesn’t use Rogers in title-v-title cases, but Empire said the Ninth would do so, but then Gordon’s “same use” reasoning is really title-v-title on steroids. I think the Second Circuit’s approach, which is confined to titles and based on the advertising-like function of titles specifically, is a lot less dangerous than Gordon’s standardless “same use” reasoning, which apparently applies to all parts of a work. It’s not surprising that, in light of Gordon, the plaintiff here asserts that it is somehow in the moviemaking business. The court’s addition of “primary” to put the plaintiff’s uses in a hierarchy, so that Gordon will benefit only TM plaintiffs who are actually in the business of producing expressive works to make their money, is understandable but adds to the epicycles and uncertainty here.

Anyhow, this analysis then turns into content analysis of MGM’s movie:

Although plaintiff alleges that it also produces movies to promote its brand, those movies promote plaintiff’s brand story, which draws on custom motorcycle culture and vintage surf culture, along with the intersection and mingling of those lifestyle cultures with art, music, and other popular culture. Nothing in the Film touches on any of those themes and activities. On the contrary, as plaintiff alleges, the Film is “a schmaltzy, teen-style love story,” and is “totally inconsistent” with the brand image that plaintiff has built. Moreover, the mark in the Film appears on a jacket worn by a young female. This allegation also undermines a finding that the use of the mark is explicitly misleading because plaintiff alleges that its clothing, including its jackets, is “primarily marketed to males” between the ages of 18 and 30.

Just to be super clear, if the content of the film were focused on young males and surf culture, there would still be nothing “explicit” about source, sponsorship, or affiliation in it.

Second, the court said, MGM added its own expressive content to the film “beyond the mark itself.” The mark

plays only a part in a movie about, among other things, two young people who meet and fall in love over the course of the day, only to have events beyond their control tear them apart. Specifically, the Film uses the mark to establish a connection between the couple -- as the young man writes the words “deus ex machina” in a notebook and then later sees the young female wearing the Jacket bearing those same words.

Although the Court makes no determination at this point as to the artistic relevance of the mark in the Film, there is nothing in the Film or in plaintiff’s allegations to suggest that the mark, itself, is the centerpiece of the Film or that, like the unadorned use of the “Honey Badger” marks in Gordon, defendants used the mark without adding any artistic expression of their own.

DEM’s own description of the film, “a schmaltzy, teen-style love story,” was inconsistent with claiming that the mark was the centerpiece. (And again, even a centerpiece—like an unauthorized biopic about Tiger Woods—wouldn’t therefore be explicitly misleading about source or sponsorship.)

“Finally, although not dispositive, in and of itself, the Film includes no affirmative or implicit statement indicating plaintiff’s sponsorship of, or association with, the Film” (emphasis added). [That’s not what “explicit” means!] The jacket has no reference to surfing, motorcycles, or DEM’s “brand image.” The style and color were allegedly “inconsistent” with DEM’s use of its mark.

Trademark dilution: Not plausibly famous. DEM alleged that its mark was widely recognized only among “a discrete group of males,” and alleged only conclusory facts about its sales, especially in the US, which it didn’t enter until 2011.

The court did not dismiss the trademark infringement/false advertising claims with respect to the online sales of the jacket. “To be sure, an argument can be made that any purported sales of the Jacket could be considered promotional materials related to the Film. But defendants, at the pleading stage, cannot establish that fact, and plaintiff does not allege it.” Nor would the court take judicial notice of printouts showing that DEM’s mark didn’t appear on/wasn’t referenced in ads for the jacket, since those might only be a snapshot of time. (Given Empire’s findings about promotional goods, though, it’s hard to imagine how long this claim can last. Presumably targeted discovery should commence.)