JTIP Blog

INTRODUCTION 

Every day across the world many people, brands, and companies believe that their names are defamed, or trademarks have been infringed on. With over 440,000 US Trademark Applications filed in 2022 alone, disputes over these trademarks arise frequently. However, these quarrels are not always encircling such a large-scale platform like one of the highest rated television series ever created. But when they do, it often spurs up illustrious discussions by the media about intellectual property laws in the United States.  

On September, 25, 2023, the United States District Court of the Southern District of New York granted the Creators of the hit Television series “Better Call Saul,” their motion to dismiss for claims of defamation and trademark infringement brought by Liberty Tax Service for the show’s depiction of a tax preparation service in an episode of the show from April 2022. The depiction of the tax service in the show offers many similarities of Liberty Tax Service and its more than 2,500 offices across the country, including the same red, white, and blue colors, as well as the Statute of Liberty logo. This case, JTH Tax LLC v. AMC Networks Inc., implicates many facets of intellectual property law, including trademark infringement and dilution under the Lanham Act, trade dress, and New York statutory defamation law. Ultimately, the court ruled that the “Rogers Test” was applicable to the defendant’s alleged use of Liberty Tax Service’s trademarks. However, the Court’s decision on the motion to dismiss could certainly be up for debate, especially if Liberty Tax Service raised certain arguments regarding the second prong of the Rogers Test.   

A. APPLICABILITY OF THE “ROGERS TEST” 

The “Rogers Test” was developed by the United States Court of Appeals, Second Circuit in Rogers v. Grimaldi. It is a two-pronged balancing test that can be implicated when there are opposing interests under the First Amendment and the Lanham Act. The test states,  

“[w]here the title of an expressive work is at issue, the “balance will normally not support application of the [Lanham] Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”  

In the matter at hand, the court quickly and rightfully found that the applicability of the Rogers test was appropriate because to the extent that the defendant’s used the plaintiff’s marks, they were in furtherance of the plot of Better Call Saul by heightening the understanding of key characters for the audience.   

1. ARTISTIC RELEVANCE  

Under this prong, defendants argued that the alleged use of plaintiff’s marks met the purposely low threshold for artistic relevance in the Rogers Test because the reference to “Sweet Liberty” in the episode in question is undeniably ironic and clearly related to the character’s role in the series because it is the business they created with illegal intent. On top of that, the court found that the character’s use of the plaintiff’s trade dress (i.e., the design and configuration of the product itself) was simply an appropriation of patriotism that highlights their deceptiveness as crime ridden characters which all has relevance to the episode. Thus, the court concluded that the artistic relevance of the episode’s use of the plaintiff’s marks were clearly above “above zero.” 

2. WHETHER THE USE OF SUCH MARKS WERE “EXPLICITLY MISLEADING” 

Since the Court concluded that defendants’ alleged use of plaintiff’s marks had at least an ounce of artistic relevance to the show, the Court focused on the second prong of the Rogers Test, whether the defendants’ use of the plaintiff’s marks was “explicitly misleading,” which would allow the Lanham Act to apply to the show. The essential question to ask for the second prong is “whether the defendant[s’] use of the mark ‘is misleading in the sense that it induces members of the public to believe [the work] was prepared or otherwise authorized’ by the plaintiff.” To do so, the court focused on the eight non-exhaustive factors from Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), in order to assess the likelihood of confusion to satisfy this prong. The eight factors include: “(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may bridge the gap by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market.”  

a. THE COURT’S ASSESSMENT OF THE POLAROID FACTORS DISSECTED 

The court’s assessment of the eight Polaroid factors in this matter could genuinely be up for debate, especially if the plaintiff raised stronger, or any, arguments regarding multiple factors. The Polaroid factors are weighed against each other depending on which way a court decides each factor favors the respective parties. Here, the court found that only the first factor weighed in favor of the plaintiff, as the defendants did not contest the strength of the plaintiff’s mark. The other seven factors either weighed in favor of the defendant or were deemed neutral. Most of the factors were weighed in the defendant’s favor, but mainly because the plaintiff failed to argue them in their Amended Complaint.   

For example, and probably most convincing, factor five could have been evaluated in favor of the plaintiff. This factor requires evidence of actual consumer confusion, but it is considered black letter law that actual confusion does not need to be proven to prevail under the Lanham Act or this factor since it is often too challenging and expensive to prove. The Act strictly requires only that a likelihood of confusion be shown as to source, meaning that consumers will mistakenly believe the goods or services come from the same source, according to the Lois v. Sportswear, U.S.A., Inc. v. Levi Strauss & Co., case.  

An opportunity that the plaintiff failed to point out that could have helped satisfy this factor stems from an example the Supreme Court of the United States prescribed in the Jack Daniels case, which involved a somewhat analogous situation where Jack Daniels sued a company on similar grounds for their creation of a dog toy that closely represented a bottle of Jack Daniels whiskey. The illustration provided in that case by the court offered a scenario where a luggage manufacturer uses another brand’s marginally altered logo on their luggage to foster growth in the luggage market. The Supreme Court compared this example with another and noted that the greater likelihood of confusion would occur in the luggage illustration because it was conveying possible misinformation about who is responsible for the merchandise. Now, as stated in the Jack Daniels case, if the plaintiff were able to have created this analogy, relevant to the facts at bar, and argued it in their Amended Complaint by displaying that the show clearly conveyed misinformation through their image of “Sweet Liberty Tax Services” and that it was blatantly a slightly modified image of Liberty Tax Service, this factor would have most likely been weighed in favor of the plaintiff. This would be due to the likelihood of confusion as to the source of the show’s representation of the character’s business.  

Secondly, factor seven requires taking into account the respective quality of the product. In the Flushing Bank v. Green Dot Corp. case, the United States District Court for the Southern District of New York interpreted this factor to mean that if the quality of a junior user’s (the show) product or service is low compared to the senior user (Liberty Tax Service), the chance of actual injury when there is confusion would be increased. If confusion, as stated above, was created, then the plaintiff’s argument in their Amended Complaint regarding defendant’s use of their marks linking Liberty Tax’s Trademarks to the show’s depiction of an inferior quality of service would further the weighing of this factor in the plaintiff’s direction as well.  

Lastly, the eighth factor, based on the sophistication of purchasers, could strongly be construed in favor of the plaintiff. The theory for this factor is that the more sophisticated the senior user’s purchasers are, the less likely they will be confused by the presence of similar marks. To determine consumer sophistication, courts consider the product’s nature and price. The plaintiffs failed to raise any concern as to this factor. However, there is an argument that could have been made to weigh this factor in their favor, which would have evened out the weight of the factors equally between the plaintiff and defendant. If that were the case, it could be assumed to be viewed in the light most favorable of the plaintiff, which would be the standard at the motion to dismiss stage.  

If the plaintiff were to shed light on Liberty Tax Services’ prices compared to the average professional tax preparer, the evidence would clearly force this factor to fall in favor of the plaintiff. Liberty Tax Service has a basic tax preparation rate of only $69.00, while the average professional tax preparer charges an average of $129.00 for similar services. This distinction would logically prove that that Liberty Tax Service maintains a lower consumer sophistication than the average professional tax preparer, leading to the conclusion that their consumer’s would be more likely to be confused by the presence of similar marks. Therefore, this would result in the fourth of eight factors being found in favor of the plaintiff.  

CONCLUSION 

If the plaintiffs applied the arguments above in their Amended Complaint, which regard the second element of the Rogers Test, and further, the Polaroid factors, it would demonstrate that the plaintiff’s display of confusion is indeed plausible. Because such compelling arguments would tilt the scale in favor of the plaintiff, Liberty Tax Service, the Lanham Act would most likely be implicated. Therefore, this case may have concluded in a completely different verdict at this stage of litigation, supporting the plaintiff, rather than the creators of television series.