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11th Circuit sides with ‘Floribama Shore’ creators in trademark battle

The regionally famous Flora-Bama Lounge sued the creators of the "Jersey Shore" spin-off series, seeking profits from their "confusingly-similar" names.

ATLANTA (CN) — A federal appeals court panel on Tuesday ruled in favor of the creators of the MTV reality series "Floribama Shore" in a trademark infringement lawsuit brought by the Flora-Bama Lounge and Oyster Bar over the right to use the word "Floribama."

The ruling by a three-judge panel of the 11th Circuit held that the show's title was relevant to the content of the series as it refers to the geographic area and the southern, beach subculture the creators sought to portray. It notes that the title is clearly not meant to reference the bar, which is located on the Florida-Alabama state line, because it includes the MTV mark and the word "shore," taken from its iconic franchises.

After four successful seasons of "Jersey Shore," 495 Productions and ViacomCBS, which runs MTV and numerous other television brands including Nickelodeon and Comedy Central, sought to capitalize on the wildly popular show with a spin-off series featured in the South.

The producers initially sought out the Flora-Bama Lounge in Pensacola as a potential filming location for their show, but the bar's owners only allowed them to do a few casting calls there. Panama City Beach, which is over 100 miles away from the bar, ultimately ended up being the show's filming location.

"Floribama Shore" quickly attracted viewers after the show first premiered in 2017 on MTV and other television and internet platforms.

Two years later, after the release of a second season, the owners of the Flora-Bama Lounge filed a lawsuit seeking an injunction and damages, alleging the producers intentionally derived the series' title from the bar's registered trademark "Flora-Bama."

The bar argued that guests were becoming confused by the apparent association between the establishment and the show, asking employees about cast members and expressing confusion on social media posts.

But the panel of circuit judges upheld last year's ruling by U.S. District Judge Robert Hinkle, a Bill Clinton appointee, who said that the lounge owners failed to show a strong enough likelihood of confusion as both parties use the competing marks in "substantially different settings".

Senior U.S. Circuit Judge Frank Hull, a Bill Clinton appointee, explained in Tuesday's ruling that the risk of misunderstanding does not outweigh the interest in artistic expression by the show's creators.

"Here, MTV Floribama Shore is the title of an artistic work. However, Plaintiffs use Flora-Bama as a mark to identify their bar and other commercial enterprises—not to identify any artistic works created or owned by Plaintiffs. Thus, this is not a title-versus-title case," Hull wrote.

U.S. Circuit Judges Robert Luck and Andrew Brasher, who were both appointed by Donald Trump, also presided on the panel.

The Flora-Bama Lounge has become regionally famous since it first opened in 1964 from selling its own merchandise and developing facilities for hosting events, including a beachfront concert venue,

Jimmy Buffet even refers to the lounge in his song "Bama Breeze" and country music star Kenny Chesney has a song named after it, which he has performed there on live television.

The owners said that third parties have used "Flora-Bama" in the titles of artistic works with their permission, but Hull said it was "telling" that the titles were being used to identify what the song or the book is about, rather than who produced it.

"For example, the television program 'Kenny Chesney Live at the Flora-Bama' describes the content of the broadcast (i.e., Kenny Chesney performing live at the Flora-Bama Lounge). Similarly, the title of the book Food n’ Fun at the Flora-Bama describes the book’s content (i.e., recipes by the owners, musicians, songwriters, bartenders, and others from the Lounge). Simply put, the titles are not being used as trademarks to identify and distinguish the source of the artistic works," Hull wrote, adding the owners haven't given evidence of their own interests in those artistic works as trademakrs for their services.

On appeal to the Atlanta-based federal appeals court, counsel for the Flora-Bama Lounge argued that the court should apply an exception to the two-part test that applies the Lanham Act to protect First Amendment interests in titles of artistic works. In Rogers v. Grimaldi, the Second Circuit determined the title of an artistic work doesn't violate the Lanham Act unless it "has no artistic relevance to the underling work whatsoever," or, if it has some artistic relevance, is explicitly misleading "as to the source or the content of the work."

The exception at issue, contained in a footnote in the above case, states that the Rogers test wouldn't apply to "misleading titles that are confusingly similar to other titles."

Hull noted that no federal circuit court has adopted that exception and one has rejected it outright, but determined the 11th Circuit need not make any determination of its own on that exception because the case at hand is not a "title-versus-title case" since the bar doesn't use the term "Flora-Bama" to identify any artistic works it owns. 

In his concurring opinion, Brasher said he believes the 11th Circuit should join the Ninth Circuit in rejecting the exception, writing that it is "inconsistent with the First Amendment values that led us to adopt the Rogers defense" and is "hard to apply in a consistent and logical way."

While the Lanham Act prioritizes those who have spoken first, that's "hard to square with the First Amendment when the second speaker's use is artistic and not expressly misleading," Brasher wrote.

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