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Speaker 1: This is Bloomberg Law with June Grosseo from Bloomberg Radio.

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Speaker 2: Her name was Kitty made a money being pretty and wit.

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Speaker 3: They gave her the keys to this city. Then they

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Speaker 3: said she get into it.

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Speaker 2: Legitly tell her. Swift's The Life of a Showgirl was

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Speaker 2: the fastest selling album in history. It became the pop

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Speaker 2: star's fifteenth number one album. Not quite as fast moving,

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Speaker 2: in fact, About six months later came the lawsuit by

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Speaker 2: a former Las Vegas showgirl who claimed that the album's

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Speaker 2: title infringed on her trademark for the phrase Confessions of

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Speaker 2: a Showgirl, and Maren Flagg is asking a court for

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Speaker 2: a preliminary injunction to stop Swift from using the phrase

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Speaker 2: while the litigation plays out. My guest is Intellect property

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Speaker 2: litigator Terence Ross, a partner at Katin Newtchen Rosenman Terry

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Speaker 2: tell us about this trademark infringement dispute.

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Speaker 1: The plaintiff was a showgirl in Las Vegas. She at

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Speaker 1: one point in time started a blog I guess it

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Speaker 1: would have been called in those days, talking about her

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Speaker 1: life as a showgirl and how challenging a difficult life

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Speaker 1: in the entertainment business.

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Speaker 3: Las Vegas. Is it morphed over time into.

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Speaker 1: A cabaret sho She at one point decided that she

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Speaker 1: would register as a trademark the title she was using

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Speaker 1: for this, which is Confessions of a Showgirl, and that

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Speaker 1: was back in two thoy fourteen. In August of twenty

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Speaker 1: twenty five. Last August, Taylor Swift announces her next album

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Speaker 1: will be entitled The Life of a Showgirl, based on

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Speaker 1: her experiences of her worldwide tour the The plaintiff, Miss

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Speaker 1: flag saw this at the time, as everybody in America did.

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Speaker 1: Everybody knew that Taylor Swift had a new album coming out.

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Speaker 1: It was gonna be called Life of a show Girl.

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Speaker 1: Miss Flagg chose not to do anything in the paper.

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Speaker 1: She argues that well, she did not realize that it

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Speaker 1: was going to be used as broadly. She did not

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Speaker 1: realize that Taylor Swift was going to seek a trademark

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Speaker 1: registration in it. She has other excuses. Shortly after the announcement,

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Speaker 1: Taylor Swift's lawyers applied for a trademark registration in the

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Speaker 1: wordmark The Life of a show Girl. In I think

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Speaker 1: it was November of twenty twenty five. The United States

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Speaker 1: Trademark office issued a non final office action saying that

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Speaker 1: they were going to deny the application as likely confusing

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Speaker 1: with other marks that already existed. Notwithstanding that the album

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Speaker 1: was launched, a wide range of products were sold. The

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Speaker 1: album us use the title The Life of a show Girl,

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Speaker 1: and many of these products that were being sold by

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Speaker 1: Taylor Swift's various business entities also used that clearly in

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Speaker 1: a trademark sense. In March of twenty twenty six, the

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Speaker 1: un I Say Trademark Office suspended Taylor Swift's application. There

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Speaker 1: is a suggestion in the papers that this was at

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Speaker 1: the request of the plaintiff, Marin Flag. I don't know

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Speaker 1: if that's true or not, but within weeks of the

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Speaker 1: suspension of Taylor Swift's trademark registration, miss Flag filed a

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Speaker 1: lawsuit in the Central District of California, which is the

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Speaker 1: Los Angeles area, in which she alleged trademark infringement of

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Speaker 1: her registered mark in the trademark Confessions of a show Girl,

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Speaker 1: as well as a federal cause of action for unfair

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Speaker 1: competition in a California state cause of action for unfair competition,

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Speaker 1: and a couple weeks after filing the lawsuit, Miss Flag

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Speaker 1: also filed a motion for a preliminary injunction. Now, preliminary

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Speaker 1: injunction essentially is a procedure by which a plaintive and

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Speaker 1: a lawsuit can have something stopped pending the outcome of

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Speaker 1: the lawsuit.

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Speaker 3: It is a very hard thing to get and.

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Speaker 1: For understandable reasons, no decision is made on the merits

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Speaker 1: of the case, and yet you're asking the court to

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Speaker 1: make the defendant stop doing something, So there's a very

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Speaker 1: high bar to obtain a preliminary injunction. Miss Swift and

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Speaker 1: her business entities responded and opposed that motion for a

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Speaker 1: preliminary junction as you expect, and a hearing was held

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Speaker 1: on May twenty seven, twenty twenty six, in front of

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Speaker 1: Judge Marillo in the Central District, California. And that's essentially

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Speaker 1: where we are procedurally.

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Speaker 2: And at the hearing on the motion for a preliminary

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Speaker 2: injunction last week, Taylor Swift's attorney argued that the Life

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Speaker 2: of a Showgirl didn't infringe on Flag's trademark because it

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Speaker 2: was absolutely undisputed that the album is an expressive work

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Speaker 2: entitled to legal protection so protected by the First Amendment.

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Speaker 2: Is that the basic defense argument.

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Speaker 1: Well, that's one of many arguments. The defense took the

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Speaker 1: typical shotgun approach where it threw up every argument under

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Speaker 1: the sun, some of which are stronger than others. Clearly,

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Speaker 1: at the core of the argument, however, was the notion

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Speaker 1: that the First Amendment protects express's speech against trademark liability.

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Speaker 1: And this is a doctrine that was first pioneered by

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Speaker 1: the Second Circuit, which is New York and Connecticut, in

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Speaker 1: connection with a movie that used Ginger Rogers name as

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Speaker 1: part of the title, and that lawsuit was called Rogers

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Speaker 1: versus Grimaldi, and the test that was developed, the doctrine

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Speaker 1: that came out that became known as the Rogers test,

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Speaker 1: And at its core it says that you cannot use

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Speaker 1: trademark to restrict expressive speech because of the First Amendment protections.

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Speaker 3: You and I talked.

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Speaker 1: About a case about a year and a half ago

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Speaker 1: in the Supreme Court that adjusted to Rogers test. It

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Speaker 1: was case involving Jack Daniels versus VIP Toys. In that case,

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Speaker 1: the Supreme Court cabined the Rogers doctrine. In other words,

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Speaker 1: it took position that Rogers doctrine has to be narrowly

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Speaker 1: interpreted to apply to the titles of expressive works. In

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Speaker 1: light of that case, a lot of changes have happened

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Speaker 1: in the way we approach trademark law in the context

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Speaker 1: of expressive works such as Taylor Swift's album. Now, all

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Speaker 1: of that said, it seems pretty clear to me that

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Speaker 1: the album's title Life of Jow Girl is going to

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Speaker 1: be preserved even in its changed form. The Rogers test

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Speaker 1: will still protect that because it is being used as

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Speaker 1: a title of an expressive work, Taylor Swift's sound recordings.

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Speaker 1: And so I think at the end of the day,

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Speaker 1: that's a win for Taylor Swift. And indeed, it seems

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Speaker 1: as if in her briefs the plaintif Miss Flag conceives

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Speaker 1: that that the Rogers test applies to the title of

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Speaker 1: the album. The distinction drawn by a plaint of is

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Speaker 1: it should not apply to anything else, and that is

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Speaker 1: a slightly better argument by the planeff.

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Speaker 2: Swift's attorney also argued that the plaintiff waited eight months

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Speaker 2: after the album was first announced to ask for an injunction,

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Speaker 2: and that shows there's no urgency or need for immediate relief,

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Speaker 2: and also that during some of those months she tried

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Speaker 2: to associate herself with swift and the Life of a

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Speaker 2: Showgirl album in her messaging. The defense says in one post,

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Speaker 2: the plaintiff used an album cover logo audio from the

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Speaker 2: album's title track, hashtags including the Life of a Showgirl, Swifties,

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Speaker 2: and tailor Nation. Is that a problem for the plaintiff.

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Speaker 1: It's probably worthwhile that briefly, without giving a law school lecture,

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Speaker 1: explains how you get preliminary junction.

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Speaker 3: It's very hard to get.

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Speaker 1: The party seeking a preliminary junction has to prove four things.

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Speaker 1: They have to prove first and foremost, a likelihood of

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Speaker 1: success on the merits that at the end of the

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Speaker 1: day they're going to win, and it's not worth the

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Speaker 1: time to wait. Just give me the injunction now. The

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Speaker 1: second thing they have to prove is irreparable harm that

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Speaker 1: money damages at the end of the process isn't going

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Speaker 1: to be good enough. And the third thing that got

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Speaker 1: to show is that the balance of hardships tips in

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Speaker 1: their favor. More pain is going to be inflicted, more

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Speaker 1: damage is go to be inflicted on the plaintiff. By

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Speaker 1: waiting until the end of the case for an injunction

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Speaker 1: than inflicted upon the defendant by granting the injunction. Now,

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Speaker 1: and then the fourth thing you have to show is

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Speaker 1: that a prelimary junction would be in the public interest.

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Speaker 1: So this is part of what it's known in the

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Speaker 1: old English law procedure is equitable jurisdiction. So it's within

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Speaker 1: the equity power of the court. You don't have a

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Speaker 1: jury deciding this, it's decided by the court. If you

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Speaker 1: come into equity seeking some sort of equity remedy, as

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Speaker 1: Miss Flagg pass here, you have to do equity. And

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Speaker 1: one of the ways you get undone one of the

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Speaker 1: ways you aren't doing equity is to come into equity

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Speaker 1: with unclean hands. Is the doctor and that Stone has

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Speaker 1: And here the defense is making the argument that miss

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Speaker 1: flag has been riding the coattail of Taylor Swift and

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Speaker 1: her phenomenal new album Life of a Showgirl, and that

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Speaker 1: constitutes unclean hands, and therefore, on that ground alone, a

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Speaker 1: preliminary junction has to be denied because coming into equity

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Speaker 1: and she's not doing equity. I think it's a real

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Speaker 1: stretch of an argument. I think it is an argument

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Speaker 1: that makes more sense in a jury setting, where you

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Speaker 1: can persuade lay people. That's just unfair what's going on here.

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Speaker 1: I don't think that argument in the self will go

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Speaker 1: very far. It's like a flavor of the case.

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Speaker 2: So then, what do you think is Swift's best argument?

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Speaker 1: I think the strongest argument for the defense here was

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Speaker 1: the one that made that there's no likelihood of success

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Speaker 1: on the merits. And every circuit court, every court appeals

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Speaker 1: has a different standard and different name. But here in

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Speaker 1: the Ninth Circuit it's referred to as the sleek Craft factors.

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Speaker 1: Based on an old Ninth circucase, there are eight things

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Speaker 1: you have to show to prove likelihood of confusion. They

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Speaker 1: are questions of fact. Questions of fact have to be

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Speaker 1: this by a jury, not by a judge.

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Speaker 3: It makes it really.

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Speaker 1: Really hard in trying to get a PI in a

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Speaker 1: trademark case to satisfy the likelihood of success of the America.

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Speaker 3: Just think about it this way.

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Speaker 1: Are you confused by this notion Confessions of a showgirl

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Speaker 1: versus life of a showgirl, knowing that the one is

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Speaker 1: Taylor Swift. This is the problem with Planet suing celebrities.

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Speaker 1: Everybody in the world knows Taylor Swift. Come on, let's

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Speaker 1: be honest, and this is the best selling album of

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Speaker 1: all the great albums as long as she's had This

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Speaker 1: is the best selling album so far in her career,

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Speaker 1: and I believe the best selling album of all time.

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Speaker 3: And it makes it.

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Speaker 1: Real hard to think in your mind that, oh, this

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Speaker 1: cabaret act being done by mister Flive is somehow associated.

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Speaker 3: With Taylor Swift. It's just very hard to see.

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Speaker 1: But that said, a jury gets to make that decision,

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Speaker 1: and one big part of that is has anybody really

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Speaker 1: been confused out there? The PLANEFF says, oh, yeah, there's

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Speaker 1: all these acts confusion. People are hashtagging me into conversations,

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Speaker 1: hashtagging my market the conversation vice versa. I don't know

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Speaker 1: that that's actual confusion. So that's why we do expert surveys.

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Speaker 1: We go out and we find the audience for these

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Speaker 1: types of goods and products and entertainment services, and we

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Speaker 1: have the experts due to surveys see if anybody's actually confused.

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Speaker 3: We haven't done that yet.

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Speaker 1: At the end of the day, I think the district

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Speaker 1: court judge is likely to say I can't on this

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Speaker 1: record find a likelihood of success on the merits because

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Speaker 1: I can't find likely confusion.

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Speaker 3: And therefore could deny the preliminary injunction.

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Speaker 1: That's just my opinion, but you know, reading the tea

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Speaker 1: leaves of the oral argument at the hearing, seemed like

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Speaker 1: the judge was disinclined to grant preliminary in junction anyway.

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Speaker 2: Putting the preliminary injunction aside, Let's say this goes to trial,

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Speaker 2: which side has the better case.

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Speaker 1: I think this is one of the more interesting celebrity

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Speaker 1: cases that I've seen come along, because both sides have

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Speaker 1: pretty good arguments and we are living in post Jack

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Speaker 1: Daniels world where the Supreme Court has changed the Rogers

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Speaker 1: test and we really don't know the parameters of it.

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Speaker 3: The one thing.

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Speaker 1: I'm pretty confident of is that the album will not

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Speaker 1: have to change its name, and that the album will

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Speaker 1: not get recalled or selling of the album gets stopped

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Speaker 1: or streaming of the songs get stopped. I would bet

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Speaker 1: dollars to donates on that. And that's not simply because

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Speaker 1: the music's phenomenal and Taylor Swift is who she is.

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Speaker 1: I think as a matter of law and approaching this

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Speaker 1: from a neutral perspective, I think the Rogers test still

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Speaker 1: applies to titles of musical works, and so I think

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Speaker 1: that's the one outcome I'm certain of. However, I'm really

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Speaker 1: uncertain about all the other products that are being selled

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Speaker 1: by Taylor Swift entities that are also using the trademark

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Speaker 1: Life of a Showgirl.

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Speaker 3: I'll give you one example.

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Speaker 1: Apparently some Taylor Swift entity is selling candles with that name.

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Speaker 1: I don't know why they would choose to sell candles

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Speaker 1: with that name. I'm not enough of a swiftye I

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Speaker 1: guess to stand that I probably should have consulted one

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Speaker 1: of my daughters. But it is using that work, and

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Speaker 1: that's not expressive conduct, and therefore it's not entitled, in

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Speaker 1: my view, to the protection of the Rogers test. Now,

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Speaker 1: the defense argues it's a promotional product to support the album,

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Speaker 1: and I'm really hard pressed to see that. I went

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Speaker 1: online and it looked like these products are just goods

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Speaker 1: being sold to the public. And Taylor Swift's business entities

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Speaker 1: do this all the time. They're constantly selling T shirts

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Speaker 1: and things of that, Like, Hey, don't see how this

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Speaker 1: promotes the album.

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Speaker 3: Maybe I'm missing something.

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Speaker 1: The defense points to another case that came out recently

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Speaker 1: in same Court Central disc California. Different judge though, that

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Speaker 1: took the position that promotional products are protected by the

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Speaker 1: Rogers test, and they're not a lot of caseal on

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Speaker 1: that out there. I'm not sure that court got it right.

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Speaker 1: But also I think it's actually different from here where

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Speaker 1: we're selling candles. I mean, if you're selling Taylor Swift

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Speaker 1: t shirts with that logo on it had a life

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Speaker 1: of the Show Go concert, I think you've probably got

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Speaker 1: an argument it's a promotional product. But I don't know

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Speaker 1: if these candles and other goods are promotional products. One

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Speaker 1: and two, the Supreme Court didn't tell us whether or

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Speaker 1: not promotional products are covered by the Rogers test anymore.

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Speaker 1: The other argument that's made by the plaintive that I

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Speaker 1: think is a very interesting argument is that the fact

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Speaker 1: that Taylor Swift went out and applied.

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Speaker 3: For a trademark registration.

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Speaker 1: You only apply for trademark registrations if you intend to

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Speaker 1: label or brand a good or a service, and that's

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Speaker 1: exactly what the Spring Court Jack Daniels said is.

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Speaker 3: Not protected by the Rogers test.

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Speaker 1: So that might have been a mistake on the part

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Speaker 1: of the tailor Swift entities, because I think by applying

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Speaker 1: for the trademark. They're sort of conceding that the phrase

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Speaker 1: life of show Girl is going to be used in

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Speaker 1: a business identifier sense, and the Supreme Court said, sorry,

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Speaker 1: you lose protection when you do that. But these are

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Speaker 1: all issues of first impression, because we're in this new

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Speaker 1: world with this new Rogers test post spreehorsess in Jack Daniels.

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Speaker 1: And that's what makes this so interesting. I consider it fascinating.

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Speaker 1: And an interesting point that the plaintiff makes in its

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Speaker 1: motion for preliminary junction is the fact that if the

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Speaker 1: lawyers who applied for Life of a show Girl registration

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Speaker 1: on behalf of Taylor Swift had done the most cursory

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Speaker 1: trademark search, they would have found her trademark and that

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Speaker 1: should have given them pause. And the paper then goes

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Speaker 1: on to explain that assuming that the lawyers did such

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Speaker 1: a search, that means that Taylor Swift went forward with

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Speaker 1: the application and use of the mark knowing that there

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Speaker 1: was another mark out there, and therefore the infringement has

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Speaker 1: to be branded as willful and intentional, which is bad

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Speaker 1: thing obviously, especially on the damages side. It is absolutely

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Speaker 1: true that whenever we file for a trademark application, we

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Speaker 1: conduct a search of the existing register marks. At a minimum,

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Speaker 1: in a really important trademark application, as I would consider

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Speaker 1: this to be a really really important trademark application for

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Speaker 1: Taylor Swift's new album. In addition to searching the trademark

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Speaker 1: registration list, we would search all the fifty states doing

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Speaker 1: business names. In corporation names, we would do a Google search.

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Speaker 1: Is a really comprehensive search to make sure we weren't

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Speaker 1: getting into trouble and that we were using a viable

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Speaker 1: name and getting registration on viable name before we launched

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Speaker 1: the business. I can't imagine that didn't happen here, and

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Speaker 1: that makes it even more interesting whether or not the

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Speaker 1: lawyers who did the search and report it back to

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Speaker 1: Taylor Swift gave her some sort of assurance or opinion

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Speaker 1: that she would prevail if challenged. And I would have

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Speaker 1: loved to have been a fly on the wall that

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Speaker 1: discussion when they came back and told Taylor Swift, I'm sorry,

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Speaker 1: somebody has already got Confessions of a shell Girl, so

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Speaker 1: we got a problem here.

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Speaker 3: I mean, that would have been very interesting to.

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Speaker 1: See for her reaction, but that is ignored deletely in

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Speaker 1: the defense opposition to the motion for prelimity junction, which

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Speaker 1: I also found interesting and very telling that they want

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Speaker 1: to stay away from any discussion of whether or not

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Speaker 1: they did a search and what the search found, and

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Speaker 1: why they went forward with the name. Anyway, it's these

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Speaker 1: little subtleties in briefs. It's always interesting to see what

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Speaker 1: the thinking is and what's going on behind the scenes

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Speaker 1: by a few little subtleties in the briefs like that.

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Speaker 2: So, Terry, just to clarify one thing. Let's say the

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Speaker 2: Rogers test doesn't apply because of the trademark element to it.

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Speaker 2: I mean, do they then go to a likelihood of

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Speaker 2: confusion test? What's the test after that?

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Speaker 3: Yes, that's exactly right.

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Speaker 1: That means that the central defense First Amendment defense is

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Speaker 1: non applicable, and so you engage in ordinary process of

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Speaker 1: determining whether or not trademark infringement has taken place, and

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Speaker 1: that is the likelihood of confusion tests. Is the consumer

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Speaker 1: for these goods and services likely to be confused between

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Speaker 1: the two products the two services as result of the

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Speaker 1: two different trademarks being used, and again that would go

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Speaker 1: to the jury for a decision. I would love to

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Speaker 1: see how the survey of consumers is constructed, because I

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Speaker 1: think that would be complicated.

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Speaker 3: I'd love to see the results.

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Speaker 2: You may get to.

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Speaker 3: We may well.

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Speaker 1: You know, there's an interesting subtext in the pleadings on

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Speaker 1: the motion for preliminary injunction. One of the requirements is

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Speaker 1: you have to show that the harm is irreparable, and

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Speaker 1: by irreparable they mean can't be fixed by monetary damages.

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Speaker 1: In arguing that the harm is not irreparable, the defense

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Speaker 1: argued that we can simply pay money to the plaintiff

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Speaker 1: at the end of the day if this is infringing.

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Speaker 1: And I don't know how that was intended, but I

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Speaker 1: read it as an invitation to settlement talks that will

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Speaker 1: simply buy the mark from you. And certainly Taylor Swift's

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Speaker 1: in a position to throw money at problems like this.

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Speaker 3: And I think if.

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Speaker 1: The plaintiff loses the preliminary junction motion, that puts Taylor

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Speaker 1: Swift in the defendants a much stronger bargain pocision, and

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Speaker 1: we might then see a settlement and we might never

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Speaker 1: get to see a survey, we might never get to

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Speaker 1: see how the jury.

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Speaker 3: Reacts to any of this.

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Speaker 1: But that's probably for the best for the judicial system,

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Speaker 1: although for those of us who follow these things, we'd

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Speaker 1: really like to see a judicial decision on some of

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Speaker 1: these issues.

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Speaker 3: A first impression, Oh.

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Speaker 2: Yeah, Tailor swift to the courtroom please.

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Speaker 3: That would be fascinating.

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Speaker 1: That would be a hard ticket to get, almost as

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Speaker 1: hard as her tour.

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Speaker 2: Don't forget to ask your daughters about those candles. Terry,

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Speaker 2: thanks so much. As always, that's intellectual property litigator Terrence Ross.

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Speaker 2: And that's it for this edition of The Bloomberg Law Show.

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Speaker 2: Remember you can always get the latest legal news on

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Speaker 2: our Bloomberg Law Podcast. You can find them on Apple Podcasts, Spotify,

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Speaker 2: and remember to tune into The Bloomberg Law Show every

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