Speaker 1: It's not every day that a zookeeper with the prison
Speaker 1: for murder for hire. Good afternoon, lady and gentleman. My
Speaker 1: name is Joe Exotic, and this sissary it was like
Speaker 1: a mythical character who owned twelve hundred tigers and lions
Speaker 1: and bears. But Carol blask And came head like tigger.
Speaker 1: If he ever had an animate in his life, it
Speaker 1: was Carol Basket. Tiger King became a sensation on Netflix,
Speaker 1: incredibly popular and a distraction for people stuck at home
Speaker 1: during the pandemic, one of Netflix's most watch series ever,
Speaker 1: but Hollywood Weekly Magazine sued, claiming it was the first
Speaker 1: to dub Joe Exotic the Tiger King, and that the
Speaker 1: hit series copied the title and cribbed content from its
Speaker 1: ex buzz. A judge has thrown out the suit for
Speaker 1: trademark and copyright infringement, but is giving the magazine a
Speaker 1: chance to try again. Joining me as intellectual property litigator
Speaker 1: Terrence Ross, a partner at Captain Euchen Rosenman, Orry, maybe
Speaker 1: you can clear something up first. Hollywood Weekly Magazine claims
Speaker 1: that it coined the moniker Tiger King, but Joe Exotics
Speaker 1: starred in the series called Joe Exotic Tiger King and
Speaker 1: sold products that were branded Tiger King. That's absolutely true, June,
Speaker 1: and the number of products hold with that moniker or
Speaker 1: fairly large. This was not a random event or handful
Speaker 1: of products, and that was yet another fact that called
Speaker 1: into question the asserted rights by Hollywood Weekly magazine. Does
Speaker 1: it make a difference that Hollywood Weekly is claiming common
Speaker 1: law trademark because they didn't file a trademark application for
Speaker 1: the Tiger King until after the series became popular. I
Speaker 1: think on the margins it might have made a difference
Speaker 1: if this were a closer taste, but as a matter
Speaker 1: of pure law, it does not. There are common law trademark,
Speaker 1: including some famous trademarks that most consumers would know, that
Speaker 1: have never been registered with the United States Trademark Office
Speaker 1: and are entitled to protection under the Lantim Act. Is
Speaker 1: it surprising that Joe Exotic didn't try to trademark the
Speaker 1: name Tiger King? It isn't. It isn't. It is a
Speaker 1: slightly cumbersome process and somewhat expensive for somewhat of a
Speaker 1: limited means. It is hard process to navigate without an
Speaker 1: attorney that you almost have to have an attorney doing
Speaker 1: a filing, which runs up the cost. And so there
Speaker 1: is this tendency amongst people who have limited means or
Speaker 1: businesses that do not want to spend a lot of
Speaker 1: legal fees to practice their trademark at common law instead
Speaker 1: of registering it under the federal system. Did the judge's
Speaker 1: decision revolve around the First Amendment? Netflix's First Amendment claims yes,
Speaker 1: it did so. There has been established for many years
Speaker 1: now what is known as the Rogers test with respect
Speaker 1: to the use of trademarks and artistic works. It is
Speaker 1: so named because it comes out of a case in
Speaker 1: the Second Circuit, which is the New York area, called
Speaker 1: Rogers versus Grimaldi, and involved the famous iconic Hollywood movie
Speaker 1: star and dancer Ginger Rogers. There was a Frederica Felini
Speaker 1: movie involving two Italians who believed themselves to be as
Speaker 1: good at dancers as Ginger Rogers and Fred Stair, and
Speaker 1: who emulated their dance routines, and the name of the
Speaker 1: movie was Ginger and Fred. And Ginger Rogers brought a
Speaker 1: lawsuit claiming that that was unauthorized youth of her name,
Speaker 1: and the Second Circuit said, well, in light of the
Speaker 1: First Amendment rights to freedom of speech. We are going
Speaker 1: to allow an exception to the trademark law if there
Speaker 1: is some artistic relevance to the use of the trademark
Speaker 1: in the movie, and if the use of the trademark
Speaker 1: does not mislead people. And in that case, clearly the
Speaker 1: use of Ginger Rogers name was relevant to the plot
Speaker 1: line which involved to Italian the answers to spot. They
Speaker 1: were for all practical purpose of Ginger and Fred and
Speaker 1: therefore it made a lot spent, was not purposely misleading.
Speaker 1: And so the second stortit created this exception of trademark laws.
Speaker 1: It fundamentally reflects the tension between First Amendment freedom of
Speaker 1: speech and that were trademark laws which in effects say
Speaker 1: you can't use certain words. There has to be with
Speaker 1: respect to artistic work, even reality television shows, a certain
Speaker 1: amount of given the joints to allow the use of
Speaker 1: trademarks in these artistic works so as not to chill
Speaker 1: freedom of speech. So explain the judges analysis as to
Speaker 1: why Netflix First Amendment claims under the Rogers test were successful.
Speaker 1: The key trademark that issue was the Tiger King, and
Speaker 1: this was a reality television show. It followed the lives
Speaker 1: of Joe Exotic and the people around him, including possibly
Speaker 1: a murder, and was a very popular show while it ran.
Speaker 1: And the Court said, look, the use of the phrase
Speaker 1: tiger king clearly is relevant to the show because it
Speaker 1: is about Joe Exotic, the Tiger King, and therefore it
Speaker 1: meets the first part of the Rogers test. With respect
Speaker 1: to the second part, the use the term tiger king
Speaker 1: in no way misleads viewers into watching the show under
Speaker 1: some sort of false pretenses, because the show is about
Speaker 1: Joe Exotic, the Tiger King, and therefore it passed the
Speaker 1: second part of the Rogers test and qualified under the
Speaker 1: special exemption to the trademark lak Terry. That song keeps
Speaker 1: playing in my head because the judge made a few
Speaker 1: references to a case involving Barbie. Is that the song
Speaker 1: he was talking about. That is the song that he's
Speaker 1: talking about, and is another famous case in the Ninth
Speaker 1: Circuit that involved that trademark revolving around the Barbie mark
Speaker 1: that Mattelo. Although yes, the court did rely upon it,
Speaker 1: it is clear that the core basis for dismissing Hollywood
Speaker 1: Weekly Magazine's trademark lawsuit was Rogers test. There was a
Speaker 1: claimed by Hollywood Weekly Magazine that documentaries weren't entitled to
Speaker 1: First Amendment protection. The argument wants something like this on
Speaker 1: the part of Hollywood Weekly Magazine, that the Rogers test
Speaker 1: should be applied to creative work such as the original
Speaker 1: movie from which the test derived, Ginger and Fred, which
Speaker 1: is fictional work, and that documentaries are by nature not fictional.
Speaker 1: They are fact based and therefore should not be entitled
Speaker 1: to the same protection as works of fiction. And the
Speaker 1: Court had very little trouble disposing of that argument. The
Speaker 1: First Amendment does protect both fact based expression and non
Speaker 1: fact based expression. The term used in the Rogers versus
Speaker 1: Grimaldi case was artistic work, and regardless of what you
Speaker 1: and I may think of reality based television, it would
Speaker 1: clearly be considered an artistic work, although based largely on facts.
Speaker 1: But the First Amendment protects the expression of facts as
Speaker 1: well as fiction, and therefore the court held that the
Speaker 1: Rogers exemption should apply in this instance. Was the copyright
Speaker 1: claim separate copyright claim was a separate cause of action,
Speaker 1: and it's important to distinguish between the two. You cannot
Speaker 1: copyright short expressions, individual words, or titles of works. The
Speaker 1: Copyright Office has long said that that's not appropriate given
Speaker 1: what copyright attempts to do, and therefore they were facing
Speaker 1: a very challenging legal background and bringing this copyright action.
Speaker 1: What the court said with respect of the copyright is
Speaker 1: that we're going to give you another bite of the apple.
Speaker 1: We're going to allow you to amend the complaint only
Speaker 1: with respects of the copyright cause of action to clarify
Speaker 1: for the court certain elements of the purported copyright cause
Speaker 1: of action, such as, exactly what is the copyright in
Speaker 1: what are the parts of those articles that were published
Speaker 1: in the Hollywood Weekly magazine that you're claiming we're copyrighted
Speaker 1: and the copyrights were infringed here? In other words, we
Speaker 1: need some specificity as to what you say the infringement
Speaker 1: is all about. And the court expressed some doubt as
Speaker 1: to whether it was possible to bring a copyright cause
Speaker 1: of action here since the reality television show didn't really
Speaker 1: follow the articles that have been published. It followed the
Speaker 1: day to day lives that we're going for award in
Speaker 1: time that were after the publication of these magazine articles.
Speaker 1: But the court said, well, we'll give you no chance
Speaker 1: to get more specific, and we'll look at it again.
Speaker 1: As the court assumed, Netflix would bring another motion to
Speaker 1: this mess just to clarify the trademark cause of action
Speaker 1: is dead, but Hollywood Weekly has a chance to amend
Speaker 1: as far as the copyright cause of action. That is correct.
Speaker 1: That court said, we don't see any way on the
Speaker 1: trademark causes of action that you could amend in order
Speaker 1: to plead something that was not exempted by the Rogers test.
Speaker 1: And we should point out that the plaintiff had already
Speaker 1: had one opportunity to amend the complaint with respect to
Speaker 1: all causes of action. Now was getting a second chance
Speaker 1: to amend the compliant with respect to just the copyright
Speaker 1: causes of action. Fascinating as always, Thanks so much, Terry.
Speaker 1: That's Intellectual property litigator Terence ross A partner Canton You
Speaker 1: in Rosenman and the Tiger King is back in court again.
Speaker 1: Joe Exotic is suing the Justice Department over the Trump
Speaker 1: administration's rejection of his pardon request. He claims the denial
Speaker 1: is not valid because his request was not presented directly
Speaker 1: to President Trump. Exotic says his pardon application was rejected
Speaker 1: by the Acting Pardon Attorney two days after it was
Speaker 1: filed in September, and he wants the court to compel
Speaker 1: her office to present the pardon to Trump himself. The
Speaker 1: Justice Department has not commented on the lawsuit. Exotic is
Speaker 1: serving a twenty two year prison sentence for trying to
Speaker 1: hire a hitman to kill his rival on Tiger King,
Speaker 1: Carol Baskin. And that's it for this edition of The
Speaker 1: Bloomberg Law Show. Remember you can always at the latest
Speaker 1: legal news on our Bloomberg Law Podcast. You can find
Speaker 1: them on Apple Podcasts, Spotify, and at www dot Bloomberg
Speaker 1: dot com slash podcast Slash Law. I'm June Grasso. Thanks
Speaker 1: so much for listening, and please tune into The Bloomberg
Speaker 1: Law Show every week night at ten pm Eastern right
Speaker 1: here on Bloomberg Radio