From JTH Tax LLC d/b/a Liberty Tax v. AMC Networks, Inc., decided today by Judge Paul Gardephe (S.D.N.Y.), rejects plaintiff’s claim of trademark infringement in AMC’s Better Call Saul:
[Season 6,] Episode 2 depicts a fictional tax preparation business 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 Better Call Saul who was imprisoned after being convicted of embezzlement. The Kettlemans and Sweet Liberty defraud their clients “by skimming money from their tax refunds.” Kim Wexler—one of the Show’s central characters and Saul’s wife—refers to the fictional tax business as a “rundown little mom and pop outfit.” 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 twisted to paint Liberty Tax in a negative and disparaging light[,]” with “just the word ‘Sweet’ added.” According to Plaintiff, similarities between the fictional Sweet Liberty Tax Services and the real Liberty Tax Service include the use of an inflatable Statue of Liberty, the use of checks bearing a Statue of Liberty logo, a Statue of Liberty wall mural inside the tax preparation office, and the use of a red, white and blue motif on the location’s exterior ….
No, says the court:
In Rogers v. Grimaldi (2d Cir. 1989), the Second Circuit “establish[ed] a new test for trademark infringement claims where the use of a trademark has both expressive and commercial components.” The Rogers court instructed that “in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”
The court devised a two-prong balancing test where there are competing interests under the First Amendment and the Lanham Act. Where the title of an expressive work is at issue, the “balance will normally not support application of the [Lanham] Act 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 the content of the work.” Although an allegedly infringing film title was at issue in Rogers, the case is now “generally applicable to Lanham Act claims against works of artistic expression.”
And under the Rogers test, the court held, this use is not infringing: It is indeed artistically relevant to the show, and isn’t explicitly misleading as to the show’s source or content. Seems quite correct to me, and quite consistent with other cases (e.g., this one, in which my UCLA First Amendment Clinic filed an amicus brief).
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