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Speaker 1: It's not every day that a zookeeper with the prison

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Speaker 1: for murder for hire. Good afternoon, lady and gentleman. My

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Speaker 1: name is Joe Exotic, and this sissary it was like

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Speaker 1: a mythical character who owned twelve hundred tigers and lions

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Speaker 1: and bears. But Carol blask And came head like tigger.

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Speaker 1: If he ever had an animate in his life, it

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Speaker 1: was Carol Basket. Tiger King became a sensation on Netflix,

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Speaker 1: incredibly popular and a distraction for people stuck at home

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Speaker 1: during the pandemic, one of Netflix's most watch series ever,

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Speaker 1: but Hollywood Weekly Magazine sued, claiming it was the first

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Speaker 1: to dub Joe Exotic the Tiger King, and that the

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Speaker 1: hit series copied the title and cribbed content from its

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Speaker 1: ex buzz. A judge has thrown out the suit for

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Speaker 1: trademark and copyright infringement, but is giving the magazine a

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Speaker 1: chance to try again. Joining me as intellectual property litigator

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Speaker 1: Terrence Ross, a partner at Captain Euchen Rosenman, Orry, maybe

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Speaker 1: you can clear something up first. Hollywood Weekly Magazine claims

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Speaker 1: that it coined the moniker Tiger King, but Joe Exotics

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Speaker 1: starred in the series called Joe Exotic Tiger King and

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Speaker 1: sold products that were branded Tiger King. That's absolutely true, June,

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Speaker 1: and the number of products hold with that moniker or

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Speaker 1: fairly large. This was not a random event or handful

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Speaker 1: of products, and that was yet another fact that called

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Speaker 1: into question the asserted rights by Hollywood Weekly magazine. Does

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Speaker 1: it make a difference that Hollywood Weekly is claiming common

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Speaker 1: law trademark because they didn't file a trademark application for

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Speaker 1: the Tiger King until after the series became popular. I

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Speaker 1: think on the margins it might have made a difference

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Speaker 1: if this were a closer taste, but as a matter

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Speaker 1: of pure law, it does not. There are common law trademark,

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Speaker 1: including some famous trademarks that most consumers would know, that

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Speaker 1: have never been registered with the United States Trademark Office

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Speaker 1: and are entitled to protection under the Lantim Act. Is

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Speaker 1: it surprising that Joe Exotic didn't try to trademark the

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Speaker 1: name Tiger King? It isn't. It isn't. It is a

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Speaker 1: slightly cumbersome process and somewhat expensive for somewhat of a

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Speaker 1: limited means. It is hard process to navigate without an

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Speaker 1: attorney that you almost have to have an attorney doing

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Speaker 1: a filing, which runs up the cost. And so there

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Speaker 1: is this tendency amongst people who have limited means or

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Speaker 1: businesses that do not want to spend a lot of

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Speaker 1: legal fees to practice their trademark at common law instead

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Speaker 1: of registering it under the federal system. Did the judge's

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Speaker 1: decision revolve around the First Amendment? Netflix's First Amendment claims yes,

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Speaker 1: it did so. There has been established for many years

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Speaker 1: now what is known as the Rogers test with respect

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Speaker 1: to the use of trademarks and artistic works. It is

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Speaker 1: so named because it comes out of a case in

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Speaker 1: the Second Circuit, which is the New York area, called

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Speaker 1: Rogers versus Grimaldi, and involved the famous iconic Hollywood movie

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Speaker 1: star and dancer Ginger Rogers. There was a Frederica Felini

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Speaker 1: movie involving two Italians who believed themselves to be as

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Speaker 1: good at dancers as Ginger Rogers and Fred Stair, and

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Speaker 1: who emulated their dance routines, and the name of the

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Speaker 1: movie was Ginger and Fred. And Ginger Rogers brought a

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Speaker 1: lawsuit claiming that that was unauthorized youth of her name,

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Speaker 1: and the Second Circuit said, well, in light of the

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Speaker 1: First Amendment rights to freedom of speech. We are going

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Speaker 1: to allow an exception to the trademark law if there

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Speaker 1: is some artistic relevance to the use of the trademark

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Speaker 1: in the movie, and if the use of the trademark

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Speaker 1: does not mislead people. And in that case, clearly the

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Speaker 1: use of Ginger Rogers name was relevant to the plot

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Speaker 1: line which involved to Italian the answers to spot. They

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Speaker 1: were for all practical purpose of Ginger and Fred and

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Speaker 1: therefore it made a lot spent, was not purposely misleading.

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Speaker 1: And so the second stortit created this exception of trademark laws.

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Speaker 1: It fundamentally reflects the tension between First Amendment freedom of

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Speaker 1: speech and that were trademark laws which in effects say

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Speaker 1: you can't use certain words. There has to be with

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Speaker 1: respect to artistic work, even reality television shows, a certain

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Speaker 1: amount of given the joints to allow the use of

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Speaker 1: trademarks in these artistic works so as not to chill

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Speaker 1: freedom of speech. So explain the judges analysis as to

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Speaker 1: why Netflix First Amendment claims under the Rogers test were successful.

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Speaker 1: The key trademark that issue was the Tiger King, and

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Speaker 1: this was a reality television show. It followed the lives

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Speaker 1: of Joe Exotic and the people around him, including possibly

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Speaker 1: a murder, and was a very popular show while it ran.

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Speaker 1: And the Court said, look, the use of the phrase

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Speaker 1: tiger king clearly is relevant to the show because it

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Speaker 1: is about Joe Exotic, the Tiger King, and therefore it

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Speaker 1: meets the first part of the Rogers test. With respect

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Speaker 1: to the second part, the use the term tiger king

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Speaker 1: in no way misleads viewers into watching the show under

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Speaker 1: some sort of false pretenses, because the show is about

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Speaker 1: Joe Exotic, the Tiger King, and therefore it passed the

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Speaker 1: second part of the Rogers test and qualified under the

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Speaker 1: special exemption to the trademark lak Terry. That song keeps

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Speaker 1: playing in my head because the judge made a few

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Speaker 1: references to a case involving Barbie. Is that the song

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Speaker 1: he was talking about. That is the song that he's

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Speaker 1: talking about, and is another famous case in the Ninth

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Speaker 1: Circuit that involved that trademark revolving around the Barbie mark

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Speaker 1: that Mattelo. Although yes, the court did rely upon it,

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Speaker 1: it is clear that the core basis for dismissing Hollywood

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Speaker 1: Weekly Magazine's trademark lawsuit was Rogers test. There was a

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Speaker 1: claimed by Hollywood Weekly Magazine that documentaries weren't entitled to

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Speaker 1: First Amendment protection. The argument wants something like this on

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Speaker 1: the part of Hollywood Weekly Magazine, that the Rogers test

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Speaker 1: should be applied to creative work such as the original

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Speaker 1: movie from which the test derived, Ginger and Fred, which

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Speaker 1: is fictional work, and that documentaries are by nature not fictional.

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Speaker 1: They are fact based and therefore should not be entitled

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Speaker 1: to the same protection as works of fiction. And the

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Speaker 1: Court had very little trouble disposing of that argument. The

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Speaker 1: First Amendment does protect both fact based expression and non

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Speaker 1: fact based expression. The term used in the Rogers versus

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Speaker 1: Grimaldi case was artistic work, and regardless of what you

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Speaker 1: and I may think of reality based television, it would

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Speaker 1: clearly be considered an artistic work, although based largely on facts.

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Speaker 1: But the First Amendment protects the expression of facts as

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Speaker 1: well as fiction, and therefore the court held that the

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Speaker 1: Rogers exemption should apply in this instance. Was the copyright

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Speaker 1: claim separate copyright claim was a separate cause of action,

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Speaker 1: and it's important to distinguish between the two. You cannot

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Speaker 1: copyright short expressions, individual words, or titles of works. The

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Speaker 1: Copyright Office has long said that that's not appropriate given

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Speaker 1: what copyright attempts to do, and therefore they were facing

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Speaker 1: a very challenging legal background and bringing this copyright action.

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Speaker 1: What the court said with respect of the copyright is

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Speaker 1: that we're going to give you another bite of the apple.

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Speaker 1: We're going to allow you to amend the complaint only

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Speaker 1: with respects of the copyright cause of action to clarify

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Speaker 1: for the court certain elements of the purported copyright cause

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Speaker 1: of action, such as, exactly what is the copyright in

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Speaker 1: what are the parts of those articles that were published

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Speaker 1: in the Hollywood Weekly magazine that you're claiming we're copyrighted

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Speaker 1: and the copyrights were infringed here? In other words, we

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Speaker 1: need some specificity as to what you say the infringement

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Speaker 1: is all about. And the court expressed some doubt as

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Speaker 1: to whether it was possible to bring a copyright cause

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Speaker 1: of action here since the reality television show didn't really

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Speaker 1: follow the articles that have been published. It followed the

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Speaker 1: day to day lives that we're going for award in

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Speaker 1: time that were after the publication of these magazine articles.

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Speaker 1: But the court said, well, we'll give you no chance

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Speaker 1: to get more specific, and we'll look at it again.

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Speaker 1: As the court assumed, Netflix would bring another motion to

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Speaker 1: this mess just to clarify the trademark cause of action

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Speaker 1: is dead, but Hollywood Weekly has a chance to amend

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Speaker 1: as far as the copyright cause of action. That is correct.

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Speaker 1: That court said, we don't see any way on the

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Speaker 1: trademark causes of action that you could amend in order

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Speaker 1: to plead something that was not exempted by the Rogers test.

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Speaker 1: And we should point out that the plaintiff had already

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Speaker 1: had one opportunity to amend the complaint with respect to

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Speaker 1: all causes of action. Now was getting a second chance

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Speaker 1: to amend the compliant with respect to just the copyright

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Speaker 1: causes of action. Fascinating as always, Thanks so much, Terry.

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Speaker 1: That's Intellectual property litigator Terence ross A partner Canton You

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Speaker 1: in Rosenman and the Tiger King is back in court again.

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Speaker 1: Joe Exotic is suing the Justice Department over the Trump

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Speaker 1: administration's rejection of his pardon request. He claims the denial

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Speaker 1: is not valid because his request was not presented directly

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Speaker 1: to President Trump. Exotic says his pardon application was rejected

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Speaker 1: by the Acting Pardon Attorney two days after it was

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Speaker 1: filed in September, and he wants the court to compel

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Speaker 1: her office to present the pardon to Trump himself. The

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Speaker 1: Justice Department has not commented on the lawsuit. Exotic is

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Speaker 1: serving a twenty two year prison sentence for trying to

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Speaker 1: hire a hitman to kill his rival on Tiger King,

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Speaker 1: Carol Baskin. And that's it for this edition of The

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Speaker 1: Bloomberg Law Show. Remember you can always at the latest

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Speaker 1: legal news on our Bloomberg Law Podcast. You can find

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Speaker 1: them on Apple Podcasts, Spotify, and at www dot Bloomberg

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Speaker 1: dot com slash podcast Slash Law. I'm June Grasso. Thanks

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Speaker 1: so much for listening, and please tune into The Bloomberg

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Speaker 1: Law Show every week night at ten pm Eastern right

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Speaker 1: here on Bloomberg Radio