Eleventh Circuit Affirms MTV Floribama Shore Does Not Infringe Flora-Bama Trademark

• Jurisdiction: United States,Federal
• Law Firm: Venable LLP
• Subject Matter: Intellectual Property, Trademark
• Author: Mr Lee S. Brenner and Tatiana Nikolaeva
• Published date: 17 February 2023

The United States Court of Appeals for the Eleventh Circuit recently affirmed dismissal of a trademark infringement lawsuit against the producers of MTV Floribama Shore in MGFB Properties, Inc. v. Viacom Inc., 54 F.4th 670 (11th Cir. 2022) (the "Order"). The Court's Order sought to strike a balance between the trademark protections of the Lanham Act and the artistic freedoms guaranteed by the First Amendment.

At the heart of the MGFB dispute were two words, "Flora-Bama" and "Floribama." They refer to a popular beach area that borders the states of Florida and Alabama. "Flora-Bama" is a federal trademark registered by MGFB Properties, Inc. (MGFB). Order at 673. Together with Flora-Bama Management LLC and Flora-Bama Old S.A.L.T.S. Inc. (collectively, "Trademark Owners"), MGFB owns and operates a relatively well-known lounge on the Florida-Alabama border, the Flora-Bama Lounge, Package and Oyster Bar ("Lounge"). Id. at 672. "Floribama" is included in the title of a reality series, MTV Floribama Shore, developed and produced by 495 Productions Holdings LLC, 495 Productions Services LLC, and ViacomCBS Inc. ("Viacom") (collectively, "Producers") as a spin-off of their reality series, Jersey Shore. Id. In the spin-off, the Producers wanted to feature a subculture of "young [S]outhern folks" who spend time on the Gulf of Mexico, "extending from the Florida panhandle into Alabama and Mississippi." Id. at 674."Flora-Bama" Trademark Owners sued Floribama Shore Producers for trademark infringement and unfair competition under the Lanham Act and Florida statutory and common law. Id. at 676. The trial court granted summary judgment for the Producers on all claims, and Trademark Owners appealed. Id. at 677. The Eleventh Circuit affirmed the finding that MTV Floribama Shore passes the Rogers test. Id. at 683-84.

The Lanham Act protects consumers' ability to distinguish among competing producers as well as trademark owners' right to the goodwill of their business. Order at 677-78 (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992)). The Act creates civil liability for those who, without the trademark owners' consent, commercially use reproductions of registered trademarks in a manner that is likely to confuse consumers. Id. The First Amendment ensures freedom of speech, which includes protecting "[c]reative works of artistic expression," such as music, poetry, films, and countless other types of art. See 678. But tensions arise when the titles of...