On September 22, 2021, a U.S. District Judge for the Northern District of Florida granted ViacomCBS’s summary judgment motion against MGFB Properties’ trademark infringement claim under the Lanham Act.
The producers of MTV’s “Floribama Shore,” a spin-off of MTV’s popular “Jersey Shore” franchise, used the same name for their show as a restaurant in Florida called “Flora-Bama” which not only owns a registered trademark of “Flora-Bama,” but it also owns the establishment where that term was first used—a waterfront bar that has become a substantial entertainment complex since 1964.
In 2019, the Flora-Bama entertainment complex filed suit against Viacom over “Floribama Shore.” Of their multiple causes of action, Flora-Bama claimed that MTV violated their trademark rights under the Lanham Act.
The U.S. District Judge rejected the case on First Amendment grounds. The Judge found that the lawsuit failed the “Rogers test”. The Rogers test has historically been known to make it difficult to sue over the use of trademarks in creative works like movies or television shows. Under the Rogers test, plaintiffs can only prevail on their trademark claim if the alleged infringement has “no artistic relevance to the underlying work” or “explicitly misleads as to the source or content of the work.” Meaning the alleged infringed upon work is not connected to any artist or the said work leads someone to assume it is connected to the original work or source.
Ultimately, the judge wrote that the “record includes no evidence that any individual ever decided to watch — or not to watch — ‘Floribama Shore’ because the individual believed the show was related to or endorsed by the Flora-Bama.” Additionally, “the record includes no evidence that any individual ever decided to go — or not to go — to the Flora-Bama because the individual believed it was related to or endorsed by ‘Floribama Shore.'” Although the Judge questioned previous rulings that had applied the Rogers test, he said the case still faced a higher burden because of the First Amendment. Hence, Flora-Bama’s trademark was too “weak” to survive.
The plaintiffs — formally MGFB Properties Inc., Flora-Bama Management LLC, and Old S.A.L.T.S. Inc. — are represented by Joshua Harris and Mike Papantonio of Levin Papantonio Thomas Mitchell Rafferty & Proctor PA and Y. David Scharf and Fred H. Perkins of Morrison Cohen LLP.
Viacom and 495 Productions, the producer of “Floribama Shore,” are represented by Susan J. Kohlmann, Alison Stein, Jacob Tracer, Remi Jaffre, Ethan Wong, and Thomas Bullock of Jenner & Block LLP and Robert W. Pass of Carlton Fields.
The case is MGFB Properties Inc. et al. v. Viacom Inc. f/k/a MTV Networks et al., case number 5:19-cv-00257, in the U.S. District Court for the Northern District of Florida.
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