Sam I ain't: When do TV show titles violate trademark law?

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In May, ABC announced a new show for its fall line up called "Sam I Am," a comedy starring Christina Applegate as Samantha Newly, a woman who loses her memory in an accident and later learns she was not a good person. Of course, Sam I Am is also the primary character in the beloved Dr. Seuss children's book "Green Eggs and Ham.

Not surprisingly, the owner of the rights to the works of Theodor S. Geisel, the author and illustrator of the books written under the pseudonym "Dr. Seuss," asserted a trademark infringement claim against ABC. The network then changed the name of the show, initially to "Samantha Be Good" and now to "Samantha Who?" It has become one of the few clear hits of the new TV season.

The situation begs the question: When, under federal law, can you use a famous trademark or a celebrity's name as the title of a song, television series or motion picture?

The Legal Framework

The framework for such an analysis was first established in Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989). In this case, the 2nd Circuit considered a challenge by the actress Ginger Rogers to the film "Ginger and Fred." The movie told the story of two fictional Italian cabaret dancers nicknamed "Ginger and Fred" who made a living by imitating Ginger Rogers and Fred Astaire. Rogers argued the film's title created the false impression she was associated with the film.



The 2nd Circuit rejected Rogers' common law trademark claim under section 43(a) of the Lanham Act (15 U.S.C. ยง1125(a)), concluding that literary titles do not violate the law "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work." 875 F.2d at 999.

Because the names of the central characters in the film were not arbitrarily chosen just to exploit the publicity value of their real life counterparts but instead had genuine relevance to the film's story of two fictional dancers who imitated their real life counterparts, the court found the tile of film had artistic relevance to the content of the film. And because the title "Ginger and Fred" contained no explicit indication that Rogers endorsed the film or had a role in producing it, the title fell within the realm of artistic expression protected by the First Amendment.

Contrast the Ginger and Fred case with the challenge by the civil rights icon Rosa Parks to the OutKast song "Rosa Parks" that was released on the group's 1998 album "Aquemini." Rosa Parks v. Laface Records, 329 F.3d 437 (6th Cir. 2003). Parks argued that the song misled consumers into believing it was about her or that she had sponsored or approved the song and the album.

Applying Rogers v. Grimaldi, the Sixth Circuit reversed the trial court's decision sustaining the First Amendment defense of the artists and their record producer as a matter of law. Under the first prong of Rogers, the court held a jury could conclude that the title of the song had no artistic relevance to the content of the song. Although the phrase "move to the back of the bus" is repeatedly used in the chorus of the song, the phrase considered in the context of the lyrics had nothing to do with Rosa Parks or the civil rights movement. 329 F.3d at 453.

To the contrary, the court found "reasonable people could find the name was appropriated solely because of the vastly increased marketing power of a product bearing the name of a national heroine of the civil rights movement." Id. Thus, the court held that on remand if the jury determined that OutKast placed the title Rosa Parks on a song to which it had no artistic relevance at all, then this would violate the Lanham Act without needing even to consider the second prong of Rogers (the "misleading" prong).

The Ninth Circuit's decision the "Barbie Girl" case is also instructive. That case involved Mattel's challenge to the release by the group Aqua of the song titled "Barbie Girl" on the 1997 album Aquarium. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). The toy manufacturer argued that the use by the group and their record producers of the famous Barbie doll trademark as the title of their song infringed Mattel's trademark rights.

The Ninth Circuit upheld the First Amendment defense of the group and their record companies. 296 F.3d at 901. Applying the first prong of Rogers, the court found the use of Barbie in the title was clearly relevant to the underlying work because the content of the song pokes fun at Barbie and the plastic values that Aqua claims she represents. Id. at 902. Applying the second prong of Rogers, the court also found that the song title did not explicitly mislead as to the source of the work because it did not explicitly suggest that it was produced by Mattel. Id.

So what about "Sam I Am," a comedy series about a woman nicknamed "Sam" who has amnesia? First, we have a world famous character in children's literature with a name that has resonance -- and value -- only because it is identified by millions of people with Dr. Seuss. Second, the show isn't about the Sam I Am character from Dr. Suess and does not represent the values that Dr. Seuss children's books represent. But "Sam I Am" sure was a catchy name for the show. Not surprisingly, the rights owner took the position that the name of the series was chosen solely because of the vastly increased marketing power of a television series bearing the name of a famous Dr. Suess character.

Practical Considerations

As these cases make clear, if an author, musician or television studio is going to use a famous name or trademark as the title of a literary work, there needs to a strong artistic connection between the title of the work and the content of the underlying work in order to fall within the realm of First Amendment protection.

The strongest cases for protection will be those like the Barbie Girl case where the song or film is about the famous person or character or the values they represent. The weakest cases will be those where the content of the work is not about the famous person or the values they represent and it appears the title was chosen merely to capitalize on the increased marketing power of a work bearing the name of a famous person or trademark.

About the author: Jonathan Sokol is an intellectual property attorney at Greenberg Glusker Fields Claman & Machtinger in Los Angeles and specializes in copyright, trademark and unfair competition litigation in the entertainment industry.
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