USA – GEORGIA Trends and Developments Contributed by: Andrew Crain, Todd Deveau and Lani Burt, Thomas Horstemeyer LLP
Trade Mark Trends in Georgia for Film and Music In entertainment works, trade marks are vital for safe - guarding artist names, band logos, production com - pany identities, festival brands, and merchandise. These brands help audiences instantly recognise and connect with the source of creative offerings. Recent federal cases illustrate the frequent occurrence of trade mark disputes involving entertainment brands and services. Trade mark protection in the entertainment industry In Earth, Wind & Fire IP, LLC v Substantial Music Group LLC , 720 F.Supp.3d 1261 (S.D. Fla. 2024), the Court ruled in favour of Earth, Wind & Fire IP, LLC, finding that the defendants’ use of names like “Earth Wind & Fire Legacy Reunion” constituted trade mark infringement under the Lanham Act. This decision underscores the importance of protecting trade marks to prevent con - sumer confusion and unauthorised associations with established brands. The Court emphasised that even tribute bands must avoid suggesting endorsement by the original artists without clear disclaimers, highlight - ing the necessity of robust trade mark protection to maintain the integrity and value of well-known brands in the creative sector. In Hara v Netflix, Inc. , 146 F.4th 872 (9th Cir. 2025), the court applied the Rogers test, from Rogers v Grimaldi , 875 F.2d 994 (2d Cir. 1989), to trade mark infringe - ment claims under the Lanham Act involving expres - sive works. The Court held that the use of the plain - tiff’s trade mark in an artistic work is protected under the First Amendment if it has some artistic relevance to the underlying work and is not explicitly mislead - ing about the source or sponsorship. In this case, Netflix’s use of an animated drag queen background character and a recreated West Hollywood bar setting was deemed artistically relevant to the show’s plot and social commentary, satisfying the first prong of Rogers. This ruling underscores the balance between trade mark protection and free speech, clarifying that trade marks used in expressive content enjoy limited protection if they contribute artistically and do not mislead consumers. The case reiterates that trade mark owners must demonstrate either a complete lack of artistic relevance or explicit deception to succeed
in infringement suits against expressive works under the Lanham Act. Parody and trade mark law: limits and liabilities Of note, parodies do not function as safe harbours, per se, for infringing another’s trade mark, as seen in VIP Products LLC v Jack Daniel’s Properties Inc. , (D. Ariz. Jan. 23, 2025). Following remand from the Supreme Court, the District Court clarified that the Rogers v Grimaldi free-speech test does not protect a business when it uses another company’s trade mark as part of its own branding, even if the product is humorous or parodic. The Court held that VIP’s “Bad Spaniels” dog toy used Jack Daniel’s trade dress to identify source, so ordinary trade mark confusion and dilution rules applied instead of heightened First Amendment protection. Thus, parody in this case was not a safe harbour to use another’s mark to help sell a product. Rogers still matters when a mark appears incidentally in an expressive work (like a movie, book, or song), but once the mark is used on packaging, labelling, or marketing, courts will likely apply standard trade mark law ‒ and the risk of liability rises sharply. The trade mark trial and appeal board (TTAB) as a venue Along with the various methods for resolving copyright disputes, such as court litigation and DMCA takedown notices mentioned above, trade mark disputes can similarly be addressed through alternative means such as TTAB proceedings for disputes surrounding opposition to applications seeking registration of a trade mark and actions seeking cancellation of a reg - istered trade mark. The TTAB serves as a vital venue for resolving trade mark disputes in the entertainment industry. For instance, in Bureau National Interprofes- sionnel du Cognac v Cologne & Cognac Entertainment , 110 F.4th 1356 (Fed. Cir. 2024), the case originated as an opposition to a hip-hop record label’s trade mark application. In Johns v Winners Circle Entertainment, Inc. , 2025 WL 296541 (E.D.N.Y. 2025), opposition pro - ceedings were initiated when defendants filed notices of opposition, citing a likelihood of confusion between the plaintiff’s music publishing marks and the defend - ants’ entertainment marks. These cases illustrate how the TTAB provides an effective forum for addressing trade mark conflicts without resorting to full litigation.
692 CHAMBERS.COM
Powered by FlippingBook