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by Andrew Flake

You read certain appellate opinions and just know they were fun to write, and so it is with a trademark dispute, simmering over the past five years, involving a famous bar and an MTV reality television series filmed in Panama City, Florida. A new opinion from the Eleventh Circuit in this case is important in its own right, but this week, I’ll use it more to illuminate and compare some of the different ways we get legal disputes concluded.

First, for some background: The plaintiffs are entities that own the Flora-Bama Lounge, a beach bar and music venue on the Florida Panhandle. They have registered and own the trademark “FLORA-BAMA,” covering restaurant services and some entertainment services including live music.The defendants are ViacomCBS, which owns MTV Networks, and a production company that worked with Viacom to develop programming.

Looking to expand the successful MTV franchise of spinoffs from “Jersey Shore,” the Defendants decided to look at 20-somethings living on Gulf Coast beaches. They recognized a degree of association with the Lounge, but nonetheless settled on the name “MTV Floribama Lounge.”

The month before the show’s advertised November 2017 premiere, the Plaintiffs sent a letter invoking their trademark and requesting that the series change its name. Defendants declined, pointing out that “artistic works” are entitled to special deference under the Lanham Act and unfair competition laws. The show then aired, and not until the second season started, in August of 2019, did Plaintiffs file their lawsuit, a raft of federal and state trademark and unfair competition claims.

Ultimately, on motion by the Defendants, the district court granted summary judgment on all counts of the complaint in favor of Defendants, a result the Eleventh Circuit affirmed on appeal.

The case itself is interesting, involving the instances when protection of trademarks overlaps with First Amendment rights of artistic expression. As the Eleventh Circuit framed it, the case centered on the “interplay between the interests of the trademark owner and the consumer in avoiding confusion about the source or sponsorship of products and the First Amendment interests of the creator of the artistic work and the public in allowing freedom of expression and the free flow of ideas.” Sixteen amici, including law professors and the Motion Picture Association, weighed in on behalf of the Viacom Defendants.

For our purposes, though, it is a good case study in various modes of dispute resolution — when they fit, and when they might not. Let’s take a few, and I’ll save litigation, which of course occurred, for last.

Negotiated agreement. My impression from the Court’s statement of facts is that the Plaintiffs, which send upwards of 80 cease and desist letters each year, took a hard line in their request for a name change — and that they were acting somewhat inconsistently with their practice in other cases. Judge Hull, the opinions author, reviews singers, including Kenny Chesney, who received permission to use the bar’s name in songs, as well as books and television programs, including live concerts. Perhaps the Plaintiffs did make an offer to provide a royalty free license fee from MTV and the Defendants, but if they did, and it was declined, I’d be surprised. It’s of course also possible that Viacom’s interest in protecting First Amendment expression, as well as its own investment in advertising for the series, would have come into play. Regardless, when Plaintiffs moved forward with their lawsuit, they took on the risk of a very public loss, which is what occurred.

Arbitration. Because to arbitrate requires party agreement, it would not have been an available option here. Nor would agreeing post-filing to submit the matter to arbitration have been palatable to the parties, least of all, I think, to Viacom. There are features of a case involving important statutory and even constitutional issues, like the First Amendment, that parties often feel are better served by traditional litigation.

Mediation. I’m a proponent of mediation and generally find that even intractable and early-phase cases can benefit from mediation. Still, I can see why that option might not have materialized in the Flora-bama dispute. It could have been as simple as mediation not having come up in discussion, or perhaps it did and one side declined. But I think other factors were at play. Both sides were comprised of companies sophisticated and headed by experience executives, individuals who familiar with licensing and other brand-related agreements. Had they wanted to enter into such an agreement, they could have done so. Instead, they engaged in a fairly extensive discovery and briefing process, including submitting the evidence familiar to those of us in the IP world, including evidence of confusion and expert surveys analyzing the confusion and brand awareness issues.

Litigation and Appeal. There are cases, and this was one of them, involving the need to not only apply appellate caselaw, but to develop, elaborate on, or modify, precedent. Since the Defendants then filed their motions for summary judgment, I think their interest was not at all in licensing, and instead on an order vindicating the First Amendment issues, thereby clearing the path for series development. They would likely have been more comfortable in a federal court forum, knowing at the same time, if they were unsuccessful at the district court level, that they had resort to the Court of Appeals.

It’s a lively opinion, and worth review, including an interesting concurrence by Judge Brasher on a scenario, the “title-to-title” exception, involving two artists both using a trademark in the title of their respective works.

In other recent news, and I am sorry to disappoint, “Floribama Shore” was cancelled after four seasons.

[The case is MGFB Properties, Inc. v. Viacom Inc., 2022 WL 17261122 (11th Cir., filed Nov. 29, 2022).] [The Second Circuit decision discussed, and the source of the Rogers test, is Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).]