Judge Dismisses Magazine’s Trademark Claims Against Netflix’s Tiger King Docuseries
Steven T. Lowe
On December 9, 2020, Judge Mark C. Scarsi of the U.S. District Court of California threw out trademark claims brought by a magazine against the producers of Netflix’s hit documentary series Tiger King: Murder, Mayhem, and Madness. Hollywood Weekly Magazine and its founder and publisher claimed that the publication coined the mark “Tiger King” in its 2013 profile of Joseph Maldonado-Passage, the titular subject of Netflix’s popular show. The magazine alleged that Netflix violated its trademark by using the mark “Tiger King” and featuring issues of Hollywood Weekly Magazine in the documentary series.
In response, Netflix contended that its use of “Tiger King” and inclusion of the magazine was protected by the First Amendment using a legal doctrine that balances the competing interests of expressive works and trademark rights. The doctrine upholds trademark protections in “expressive works” such as a film or television show only when the public interest in avoiding consumer confusion outweighs the public interest in free expression. Typically, the public interest in free expression prevails unless the use of the trademark offers absolutely no artistic relevance to the underlying work or explicitly misleads consumers as to the source of the trademark. In other words, under this doctrine, using trademarks in a documentary or a film generally does not give rise to claims by the owner of a trademark.
In applying the applicable test, the court found that the show’s use of the “Tiger King” mark met the artistic relevance requirement since the documentary explores the life of Joe Exotic, who is publicly known as the “Tiger King” and incorporates that moniker into his business branding and public persona. Since the marks possess “artistic relevance” to the expressive work, a trademark claim could only prevail if the use of “Tiger King” and inclusion of the magazine explicitly mislead Netflix’s viewers. Since the plaintiffs relied only on unsupported legal conclusions to allege such confusion, the court granted the motion to dismiss the trademark claims without leave to amend.
The Court also dismissed the copyright claim, noting that the plaintiffs failed to plead facts from which copyright infringement could be plausibly established. The complaint failed to identify sufficient details regarding the scope of their protected copyrights and how Netflix allegedly infringed these purported copyrights. For this reason, the court dismissed the copyright claim, but out of an abundance of caution, granted leave to amend this claim.
Hollywood Weekly and publisher Prather Jackson are represented by Matthew H. Schwartz of Schwartz Law Center LLC and Michael F. Frank.
Netflix is represented by Emily F. Evitt and Robert H. Rotstein of Mitchell Silberberg & Knupp LLP.
The case is Prather Jackson et al. v. Netflix Inc. et al., case number 2:20-cv-06354, in the U.S. District Court for the Central District of California.
* Lowe & Associates (“The Firm”) is an entertainment and business law firm located in Beverly Hills, California. The firm has extensive experience handling cases involving copyright and trademark law, having provided top quality legal services to its clients since 1991. The Firm is recognized for its many achievements, including successfully litigating many high-profile cases.
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