CACD Federal MTD — Trademark (Rogers Test)

First Amendment concerns require a heightened showing for trademark-infringement claims when the allegedly infringing use is part of an expressive work. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Lanham Act does not apply unless defendant's use of the mark is (1) not artistically relevant or (2) explicitly misleads as to source. Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022, 1028 (9th Cir. 2024).

The threshold inquiry post-Jack Daniel's

Before reaching Rogers' two-prong test, the court asks a threshold question: is defendant using the mark as a designation of source for defendant's own goods? If yes, Rogers does not apply. Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140, 153 (2023). Where defendant clearly identifies itself as the source (network logo, studio attribution, "A Netflix Series"), and the alleged mark identifies a fictional element within the work, Rogers applies.

Rogers' two prongs

Where Rogers applies, the Lanham Act bars the claim unless plaintiff plausibly pleads:

1. No artistic relevance. Use of the mark must have no artistic relevance to the underlying work whatsoever. Even minimal artistic relevance suffices for defendant.

2. Explicitly misleading as to source. The use must explicitly mislead consumers about the source or content of the work. Mere similarity, or association with a real-world entity, is not enough. The misleading must be explicit — a statement or implication that plaintiff produced or endorsed the work.

Examples where Rogers applied

• Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) ("Barbie Girl").
• University of Alabama Bd. of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. 2012).
• Twentieth Century Fox v. Empire Distribution, 875 F.3d 1192 (9th Cir. 2017).

Examples where Rogers did not apply

• Mar Vista Entertainment v. THQ Nordic, 2024 WL 3468933 (C.D. Cal. July 8, 2024).
• Davis v. Blue Tongue Films, 2024 WL 5182630 (9th Cir. Dec. 20, 2024) (movie title same as book; source-identifying use).
• Belin v. Starz Entertainment, 2024 WL 4720795 (C.D. Cal. Sept. 20, 2024).

State-law and common-law claims fall with Lanham

Rogers extends to "claims under the Lanham Act, as well as state law claims for trademark infringement and unfair competition, and a common law unfair competition claim." E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1098 (9th Cir. 2008). When Rogers bars the federal claim, parallel state-law and common-law claims fall with it.

Exhibits-contradict-allegations rule

The court need not accept allegations contradicted by exhibits to the complaint. Produce Pay, Inc. v. Izguerra Produce, Inc., 39 F.4th 1158, 1161 (9th Cir. 2022). Where plaintiff alleges marks are "identical" but attached photographs show only "similar," the exhibits control.

How CACD applies it (corpus examples)

• 474237689 (Pepperdine v. Netflix — Valenzuela): granted on Rogers across all eight claims (Lanham Act trademark + false designation + false advertising; Cal. Bus. & Prof. Code § 14247, § 17200, § 17500; common-law unfair competition; contributory infringement). Series "Running Point" used "Waves" mark for fictional basketball team; Netflix and Warner Bros. clearly identified themselves as source; "essentially synonymous with show's identity" allegations insufficient under Mattel and Jack Daniel's.

If you're the moving party

• Lead with the Jack Daniel's threshold question. Identify how your client signals source (logo placement, studio attribution, network branding).
• Distinguish the alleged mark's role within the work (fictional element) from any source-identifying use.
• For the second Rogers prong, demand plaintiff plead explicit statements or implications that plaintiff produced or endorsed the work — generic association is insufficient.
• Cite E.S.S. for the parallel-claim sweep across state-law and common-law theories.

If you're the opposing party

• Build the source-identifying use theory carefully under Jack Daniel's. Mere appearance of the mark is not source identification.
• For the artistic-relevance prong, plead specific facts undermining any creative use (e.g., gratuitous reference, no narrative function).
• For the explicitly-misleading prong, plead specific consumer confusion as to source — endorsement, sponsorship, production credit.
• Anticipate the Produce Pay rule — ensure exhibits attached to the complaint do not undercut the core allegations.