By JTH Tax LLC d/b/a Liberty Tax v. AMC Networks, Inc.decided today by Judge Paul Gardephe (SDNY), dismisses plaintiff’s claim for trademark infringement in AMC’s You better call Saul:
[Season 6,] Episode 2 features a fictional tax preparation company called “Sweet Liberty Tax Services”, which is operated by “convicted felon Craig Kettleman and his wife Betsy Kettleman”. Craig Kettleman was a client of Saul Goodman in season 1 of You better call Saul who was imprisoned after being convicted of embezzlement. The Kettlemans and Sweet Liberty defraud their customers “by skimming money from their tax refunds.” Kim Wexler – one of the show’s main characters and Saul’s wife – calls the fictional tax industry a “decrepit little mom-and-pop group.” Wexler blackmails the Kettlemans by threatening to reveal their crimes to the IRS.
In the amended complaint, plaintiff alleges that the show’s Sweet Liberty Tax Services is “an obvious imitation of an actual Liberty Tax location, but distorted to portray Liberty Tax in a negative and disparaging light[,]” with “merely the word ‘Sweet’ added.” Similarities between the fictional Sweet Liberty Tax Services and the real Liberty Tax Service, according to plaintiff, include the use of an inflatable Statue of Liberty, the use of checks bearing the Statue of Liberty logo, a mural of the Statue of Liberty in the tax office, and the use of a red, white and blue motif on the exterior of the venue….
No, the court says:
In Rogers vs. Grimaldi (2d Cir. 1989), establishing the Second Circuit[ed] a new test for trademark infringement claims where the use of a trademark has both expressive and commercial components.” Rogers court ruled that “in general, the [Lanham] The law should be interpreted as applying to artistic works only when the public interest in avoiding consumer confusion outweighs the public interest in freedom of expression.”
The court devised a two-pronged balancing test involving competing interests under the First Amendment and the Lanham Act. Where the title of an expressive work is in question, the balance will not normally support the application of the term [Lanham] Act unless the title has no artistic relevance to the underlying work, or, if it has any artistic relevance, unless the title explicitly misleads as to the source or content of the work. Rogersthe case now “applies generally to Lanham Act claims against works of artistic expression.”
And under the Rogers According to the court, this use is not infringing: it is indeed artistically relevant to the show and is not explicitly misleading as to the source or content of the show. Seems entirely correct to me, and quite consistent with other cases (e.g. this one, in which my UCLA First Amendment Clinic filed an amicus brief).