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‘Floribama Shore’ trademark battle hits 11th Circuit

The regionally famous Flora-Bama Lounge claims the creators of a “Jersey Shore” spin-off series stole its name after not being allowed to film at the Pensacola bar.

ATLANTA (CN) — A federal appeals court heard arguments Friday in a trademark dispute between the owners of the Flora-Bama Lounge and Oyster Bar on the Florida-Alabama state line and the creators of the MTV reality series "Floribama Shore."

Owners of the lounge filed suit in 2019 seeking an injunction and damages for infringing profits and lost licensing royalties from the show's producers, alleging they intentionally derived the series' title from their registered trademark "Flora-Bama."

After four seasons of the "Jersey Shore" spin-off series, the creators are accused by the bar of using their success to "stomp on the established business of a smaller competitor."

495 Productions and ViacomCBS, a global media and entertainment company that runs MTV and numerous other television brands including Nickelodeon and Comedy Central, initially sought out the Flora-Bama Lounge in Pensacola as a potential filming location for their show.

The bar has become regionally famous since it first opened in 1964, from selling its own merchandise to 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.

Since August 2011, the reality show's creators made repeated advances to the Flora-Bama Lounge, requesting that they be allowed to film there, according to the lawsuit.

The Flora-Bama owners said they allowed for the production company to do a few casting calls at the bar, but declined all other involvement.

After "Floribama Shore" premiered in 2017 on MTV and other television and internet platforms, the Flora-Bama Lounge said guests became confused by the apparent association between the establishment and the show, asking employees about cast members and expressing confusion on social media posts.

The owners began to fear that the show would cause them to suffer a loss in customers who believe they are linked to a show that is described as featuring nine young adults who come to the coast to "party, hook up, fight and stir up plenty of other southern-fried shenanigans."

According to court filings, they have "lost the right to control their own identity and destiny" and "one can no longer hear, think, or Google the word Flora-Bama" without the show coming to mind.

Their argument was sufficient enough for the district court to examine evidence, but the court granted summary judgment for the show creators on First Amendment grounds instead of permitting a jury to make the decision.

U.S. District Judge Robert Hinkle, a Bill Clinton appointee, ruled last year that although "Flora-Bama" has been used in the title of songs, the lounge owners' use of its mark refers to their facilities and not to the title of an artistic work.

"The issue is close and not squarely controlled by prior decisions. This order grants summary judgment because the plaintiffs’ showing of likelihood of confusion—an element of the plaintiffs’ infringement claims—is not strong enough to meet the standard that applies to artistic works. This is so in part because the plaintiffs and defendants use the competing marks in substantially different settings," Hinkle wrote in his September 2021 order.

On appeal to the Atlanta-based 11th Circuit, counsel for the Flora-Bama Lounge argue that the district court mistakenly applied a "confusingly similar titles" exception to trademark use, established in a case where the Ninth Circuit found that the public interest in avoiding consumer confusion outweighs the public interest in free expression. Before that, the 1989 Rogers v. Grimaldi case declared that an expressive work of a similar title is non-infringing unless "the use has no artistic relevance to the underlying work whatsoever" or is "explicitly mislead[ing]."

But the members of Friday's three-judge panel expressed they have never adopted this footnote exception and that applying it may not be the best method to determine whether the lounge's mark was infringed upon or if their claims are barred by the First Amendment.

Senior U.S. Circuit Judge Frank Hull, a Bill Clinton appointee, said she was concerned about the footnote title exception and pointed to the district court's finding that the lounge owners are not using "Flora-Bama" as the title of a song or specific event.

"Coca-Cola, Nike, Pepsi, those are brands, not artistic works," said U.S. Circuit Judge Robert Luck, a Donald Trump appointee, who questioned the line between branding for a commercial business and an artistic work.

William Cash, representing the Flora-Bama Lounge owners, argued that the show creators had many different possible title choices, because it wasn't even filmed on the Florida-Alabama border but in Panama City Beach, Tampa and other areas .

"Wouldn't it be worse for the mark holder if they specifically used the mark?" asked U.S. Circuit Judge Andrew Brasher, another Trump appointee.

Cash said his clients were not so much worried about possible negative commentary about their establishment as they were about their name being "stapled onto [a] show" that has nothing to do with them.

The show creators' attorney Susan Kohlmann of Jenner & Block agreed that the show title "Floribama Shore" doesn't pertain to the establishment and only refers to the area where the series was set and its subculture. Kohlman argued that her clients create and distribute television shows, while the Flora-Bama Lounge runs a food, beverage and live music business.

"In an effort to expand the success of the 'Shore' franchise to a new geographic setting, ViacomCBS executives looked for a title that would define the subculture represented—young Southerners who rent summer 'shore houses' in beach towns along the Gulf Coast," Kohlmann wrote in her brief to the 11th Circuit. "Why would ViacomCBS’s choice of title for a major new series be driven by a desire to appropriate the goodwill of a mark known to only 1-2% of the national population?"

Luck said he struggles with the lounge's argument that it has artistic works attached to it, such as being referenced in songs and featured in documentaries, even though "Flora-Bama" was not an expressive work at the time it was trademarked.

The judges did not signal when they intend to issue their ruling.

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