When the First Amendment Intersects with the Lanham Act for Trademark Protections
Conflicts Between the First Amendment and Trademark Protection
Traditionally, product or brand-placement within a television series or movie—think Spielberg’s E.T. and Reese’s Pieces candies—requires a license or other agreement with the brand (and often, payment of a license fee) to avoid legal issues arising out of trademark infringement. But that’s not always the case. As Pepperdine and Duke University have learned in recent months, the intersection of the First Amendment with the Lanham Act is a completely different matter.
In February, just prior to the release of the Netflix series Running Point, Pepperdine University filed suit against Warner Bros. Entertainment and Netflix, asserting claims for trademark infringement, contributory trademark infringement, false designation of origin, dilution, and false advertising under the federal Lanham Act, as well as similar common-law and state law claims. The show, which features a fictitious basketball team known as the Los Angeles Waves, is meant to be an homage to the Los Angeles Lakers. However, as noted in Pepperdine’s Original Complaint, rather than utilize the colors and insignia of the L.A. Lakers (owned by Jeanie Buss, who is involved in the production of the show and has the authority to use), Defendants “chose instead to usurp Pepperdine’s trademarked name in its registered field of use for a team in Pepperdine’s home town, … chose to appropriate Pepperdine’s color palette [and even] the number 37, reflecting the year of Pepperdine’s founding,” which is “worn by Pepperdine’s mascot” and “the number on ‘Waves’ merchandise sold by Pepperdine.” See https://drive.google.com/file/d/19BRqeaGttwyP6DeSC8RczCkO7zIbHeMB/view at p. 2. Pepperdine takes particular offense to this use given the series is a “raunchy comedy” and Pepperdine is based on traditional Christian values.
Pepperdine University and the DuPont Factors
Section 2(d) of the Trademark Act prohibits registration of a mark that “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). To be successful on Lanham Act claims, a party must demonstrate, by a preponderance of the evidence that it has either a registration of or priority in its mark, and that a third party’s use of its mark is likely to cause confusion, mistake, or deception regarding the source of the goods covered by the trademark. Ordinarily, the likelihood of confusion analysis comes down to the probative facts in the record that are relevant to the likelihood of confusion factors set forth in E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”), including the strength of the mark, the similarities of the marks at issue, the similarities of the goods and services and channels of trade, sophistication of consumers, and the existence of actual confusion. And while varying weights may be assigned to the separate DuPont factors, two key considerations in the analysis are the similarities between the marks and the similarities between the goods and services.
Consistent with these DuPont factors, Pepperdine asserts that the Defendants’ near-exact use of Pepperdine’s registered and common-law trademarks has already caused and will continue to cause confusion, relying on a comment on social media in which a viewer identifies the obvious similarities. They likewise maintain that the parties have marketed their goods to the same consumers, namely, sports fans and consumers of sports media—and, even more specifically, basketball fans.
The Rogers Test: Balancing First Amendment and Trademark Rights
At first glance, those familiar with trademark law and the Lanham Act might think the case a “slam dunk.” Yet, the Central District of California district court rejected Pepperdine’s attempts to secure a temporary restraining order on the release of the series. As a threshold matter, prior to even discussing the DuPont factors, the Court questioned the applicability of the test created by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Specifically, the district court noted that “[u]nder Rogers, courts have held that First Amendment concerns sometimes require a heightened showing for a trademark infringement claim to proceed.” Pepperdine v. Netflix, at al., Cause No. 2:25-cv-01429-CV-ADS, Document 26, February 26, 2025 at p. 5 (“TRO Order”) quoting Punchbowl, Inc. v. AJ Press LLC, 90 F.4th 1022, 1027 (9th Cir. 2024); see (https://drive.google.com/file/d/1AiOAxvqSCE3zwc9-2HLmztTYA0XTUPAy/view). Rogers applies in cases where the trademark use is part of an expressive work protected by the First Amendment. “If the defendant meets this burden, the Lanham Act does not apply unless the defendant’s use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source of the content of the work.” Id. Importantly, as noted by the U.S. Supreme Court, Rogers does not apply where “an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” Jack Daniel’s Properties, Inc. v. VIP Products, LLC, 599 U.S. 140, 152 (2023).
Thus, the Rogers test applied when Mattel sued a band over the song “Barbie Girl” (finding the band did not use the Barbie name as a source identifier), when the University of Alabama sued to halt the depiction of the Crimson Tide’s trademark football uniforms to “memorialize” a notable moment in “football history,” and when a character in a film described his luggage as a “Louis Vuitton.” The district court here found that all three of these cases used a trademark “not to designate a work’s source, but solely to perform some other expressive function.” Id. The court likewise took note of an opinion from the Southern District of New York where the plaintiff was a tax preparation service known as Liberty Tax Service and the defendants’ television show Better Call Saul depicted a fictional tax preparation business named “Sweet Liberty Tax Services.” See JTH Tax LLC d/b/a Liberty Tax v. AMC Networks, Inc., 694 F. Supp. 3d 315, 330-340 (S.D.N.Y. 2023). There, the Southern District of New York held that the mark at issue was not used “to identify the source” of the television show or any of the defendants’ products and, therefore, defendants had not used the marks “as their own identifying trademark.” Id. at 332-333.
Finding that the use of the “Waves” mark does not speak to the source of the Running Point series but is simply expressive and is a plot point in the series, the court held “there is no evidence that any viewer would be misled regarding the source of the series,” such that the Rogers test is applicable to Pepperdine’s claims. Having so concluded, the court then moved to the actual application of the Rogers test to these facts, specifically, whether the defendants’ use of the marks (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work. Noting the Ninth Circuit’s holding that “the level of artistic relevance under Roger’s first prong need only exceed zero,” Gordon v. Drape Creative, Inc., 909 F.3d 257, 268 (9th Cir. 2018), the court considered Defendants’ explanation that the name was chosen as a nod to the Lakers, whose name also refers to a body of water, and in order to elicit the Southern California vibe of beaches, sun, surfing, and waves. Based on this evidence, the court held the use of the “Wave” trademarks and other marks is artistically relevant to the Running Point series.
As to the second prong—the explicit misleading as to the source of the content of the work—the court found that because the show would be broadcast on Netflix with title cards that confirm Netflix, Warner Bros., and Mindy Kaling are responsible for the series, there is therefore no implicit or explicit misleading of consumers as to the source of the series. Thus, the court concluded, the second prong of the Rogers test was likewise satisfied, such that the Lanham Act does not apply and Pepperdine failed to demonstrate a likelihood of success on the merits of its Lanham Act claims.
Revisiting the Rogers Test
The Rogers test is not new. Yet, as technology advances, we may see increased opportunities to revisit the law as courts seek to distinguish between what is mere product or brand-placement requiring a license and what is true expressive use under the First Amendment sufficient to trigger Rogers. Take, for example, recent objections lodged by Duke University to Warner Bros. and HBO regarding the use of Duke’s well-known trademark on a t-shirt worn by one of the main characters in the series White Lotus, where the character abuses drugs and considers suicide. The Duke Blue Devils reportedly are “not happy” with this use. Although a court likely would hold that the use of the Duke trademark in White Lotus does not cause confusion as to the source of the series, it is unclear whether this use is “artistically relevant” to the work. Additionally, beyond asserting that Warner Bros. and HBO do not have permission to use Duke’s federally registered trademarks, the university’s Vice President for Communications noted in a statement that the use is “on imagery that is troubling, does not reflect our values and who we are, and simply goes too far,” given the fact that suicide is the second-leading cause of death on college campuses. While Duke has not yet decided whether it will file suit, if it were to do so, the lawsuit would no doubt involve further consideration of the Rogers test to a television series and would, hopefully, further delineate what constitutes sufficient “artistic relevance” to justify application of the test.
Final Thoughts on Pepperdine Trademark Dispute
Overall, the Pepperdine case is a stark reminder that not all brand-placement must be authorized and that not all trademark use is governed by the Lanham Act. Brands must keep in mind the First Amendment and potential application of the Rogers test in evaluating complaints; in certain circumstances, a softer approach to negotiating unauthorized use may be necessary given that the Rogers test can completely nullify the protections afforded under the Lanham Act.
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