On Sept. 9, 2011, Judge Freda Wolfson of the United States District Court for the District of New Jersey granted summary judgment for Electronic Arts (“EA”) on the claims of a putative class of NCAA football players that EA had misappropriated their likeness and identity under New Jersey law by featuring them in its NCAA Football video games. Hart v. Electronic Arts, Inc., 2011 WL 4005350 (D.N.J. Sept. 9, 2011)The Court held that EA‘s First Amendment right to free expression outweighed the plaintiff‘s right of publicity under either the “transformative use” test developed by California state courts or the “Rogers” test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).Judge Wolfson‘s thorough and scholarly opinion is a significant contribution to the law on the interplay between the Fi r s t Amendment and the right of publicity.
With free expression under the First Amendment at stake, Activision argues that AMG’s trademark rights, asserted under the Lanham Act, should be read narrowly to avoid suppressing speech. In the Second Circuit, where this case is pending, the standard for balancing trademarks against First Amendment rights is known as the Rogers test, named for Rogers v. Grimaldi (1989). Under that test, the balance between trademark rights and the First Amendment “will normally not support application of the Lanham Act unless  the use of the plaintiff’s name [or in the case of AM General, its trademark] has no artistic relevance to the underlying work whatsoever.
Epic Games notes in its motion to dismiss Ferguson’s Milly Rock suit that the Swipe It emote is not substantially similar, the crux of any copyright claim. Further, Epic Games argues that its use of the Swipe It dance is sufficiently transformative to overcome any trademark rights or right of publicity held by Ferguson under the precedent set by Rogers v. Grimaldi, 875 F2d 994 (2d Cir. 1989), a case that weighs First Amendment freedom of speech/expression against trademark rights and right of publicity, allowing artistic works that are transformative enough to survive the echoes of fame created by the original artists. It remains to be seen whether a case about Ginger Rogers and Fred Astaire should set precedent for 2 Milly, or whether those writing the Copyright Act of 1976 could anticipate how one dance move could catapult an artist to worldwide fame on YouTube.
The Expansion of the Rogers Test The predominant approach taken by courts is to limit the application of the Lanham Act to expressive works where “the public interest in avoiding consumer confusion outweighs the public interest in free expression” as set forth by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). Under the Rogers test, the use of another’s mark in an expressive work will not be actionable under the Lanham Act unless it “has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, unless [it] explicitly misleads as to the source or content of the work.”
Empire Distribution counterclaimed for trademark infringement, trademark dilution, unfair competition and false advertising. After Fox moved for summary judgment, the district court determined that Fox’s use of “Empire” is protected by the First Amendment under the two-prong test laid out by the US Court of Appeals for the Second Circuit in Rogers v. Grimaldi (1989). Under the Rogers test, the title of an expressive work does not violate the Lanham Act unless the title “has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads consumers as to the source or content of the work.”
In most instances, likelihood of confusion is the method for determining trademark infringement. However, when the allegedly infringing use is in connection with an expressive work, courts in the 9th Circuit will apply a different test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Courts apply this different test primarily because such situation implicates the First Amendment right of free speech which must be balanced against the public’s interest in avoiding consumer confusion.
There are two bases for treating expressive works differently: (1) they implicate First Amendment free speech rights that must be weighed against the public interest in avoiding consumer confusion; and (2) “consumers are less likely to mistake the use of some else’s mark in an expressive work for a sign of association, authorship, or endorsement.” When an expressive work contains an allegedly infringing use, the Ninth Circuit applies the two-part test first announced by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) to determine if there is liability under the Lanham Act. Under that test, if the allegedly infringing use has some artistic relevance to the expressive work, and does not explicitly mislead as to the source of the expressive work, then there can be no Lanham Act violation.
The district court granted Fox’s motion for summary judgement on all claims and counterclaims and Empire Distribution appealed. The Ninth Circuit Extends First Amendment Protection The Ninth Circuit’s November 16, 2017 ruling in the Empire case expanded the coverage of the Rogers defense in Rogers v. Grimaldi (2nd Cir. 1989) to cover promotional activities. Trademark infringement claims are generally analyzed under the likelihood-of-confusion test.
In that case, the court applied the Second Circuit’s “Rogerstest,” under which“an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.”Rock Star Videos, 547 F.3d at 1095 (quotingRogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)). The court held that this defense was established, because theSan Andreas video game was an artistic work; the reference to the “Play Pen” mark for a strip club had “at least some artistic relevance” (this is a low threshold–the level of relevance “merely must be above zero”); and the reference did not explicitly mislead consumers as to the source of the work.Id.at 1099-1101.
Various cases have held that “artistic or political use” of a trademark do not violate the Lanham Act so long as the level of relevance to the underlying work is “above zero.”Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Where the First Amendment and the Lanham Act intersect, the value of political speechtakes precedence.