Rogers v. Grimaldi lives on, at least for work content

Of note because the lawsuit was brought at all, suggesting that trademark owners are willing to try to roll back any First Amendment protections for noncommercial speech.

Pepperdine University v. Netflix, Inc., No. 2:25-cv-01429-CV(ADSx), 2025 WL 632983 (C.D. Cal. Feb. 26, 2025)

Pepperdine sued Netflix for LanhamAct trademark infringement, contributory infringement, dilution, falseadvertising, and coordinate state claims based on Netflix’s Running Pointseries, which depicts a team known as the Waves. The court denies a TRO becauseRogers is still good law, at least for things that aren’t titles.

Pepperdine’s athletic teams have been known as the “Waves”since the University’s founding in 1937, and it has registrations for WAVES marks. 

examples from complaint

Running Point was scheduled for release yesterday. It’san “original comedic television series” created by Mindy Kaling and WarnerBros. about a “very dysfunctional family” who owns and manages a “high-profile,multi-billion-dollar basketball franchise and arguably the most famousprofessional team in all of sports, the Los Angeles Waves.” Pepperdine allegedthat the fictional Los Angeles Waves team uses the word “WAVES” with a“strikingly similar font” and similar colors. An image in the Running Pointtrailer allegedly includes a framed jersey with the number “37,” similar tothat worn by Pepperdine’s mascot and denoting Pepperdine’s founding year. Pepperdinealso alleged that the story depicted in Running Point does not align withPepperdine’s values.

comparisons from complaint

Jack Daniels cited Mattel, Inc. v. MCA Records, Inc.,296 F.3d 894 (2002) (Barbie Girl) and University of Ala. Bd. of Trustees v. NewLife Art, Inc., 683 F.3d 1266 (2012) (sports art), and Louis Vuitton MalletierS. A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012)(use of “Louis Vuitton” to describe luggage in movie) with approval asnon-trademark uses.  

Post-Jack Daniels cases have also applied Rogers tonon-title uses. Haas Automation, Inc. v. Steiner, No. 24-CV-03682-AB-JC, 2024WL 4440914 (C.D. Cal. Sept. 25, 2024) (use of mark on book’s front cover, backcover, and on several pages, but mark was “not used to tell the consumer whopublished the book or the source of the book”; mark told the consumer what thebook was about and who the author worked for); JTH Tax LLC d/b/a Liberty Tax v.AMC Networks Inc., 694 F. Supp. 3d 315 (S.D.N.Y. 2023) (use of fictional taxpreparation business name in Better Call Saul).

Photos, including on back cover, from Guenther Steiner's book Surviving to Drive: A Year Inside Formula 1, recounting his experiences as Team Principal of the Haas F1 Team 

This is distinct from cases like Punchbowl, whichinvolved use in a business name, or Mar Vista Entertainment, LLC v. THQ NordicAB, No. 2:23-cv-06924-MEMF (SSC), 2024 WL 3468933 (C.D. Cal. July 8, 2024) (rejectingapplication of Rogers in a dispute between the owner of the rights tothe Alone in the Dark videogame franchise, and entities who released a horrorfilm titled Alone in the Dark).

The court found no use of “Waves” or related indicia as sourceindicator. The “product” at issue was Running Point, the series, anddefendants didn’t suggest Pepperdine was the source. The title cards confirmedthat Netflix, Warner Bros., and Mindy Kaling are responsible for the series.They didn’t use Waves in the title (sigh), and, there was an express statementthat the series is a fictional work, and “[a]ny similarity to any actualpersons ... events, firms and institutions or other entities, is coincidentaland unintentional.” “Ultimately, on this record, there is no evidence that anyviewer would be misled regarding the source of the series.” (That is not aprecondition for Rogers applying, though the court treats it as such; anysuch precondition makes Rogers irrelevant, at least to sourceconfusion.)

complaint's social media "evidence"

The use of Waves was artistically relevant: it “was chosenas a nod to the real-life Lakers, whose team name also alludes to a body ofwater.” It also evokes the Los Angeles area and the “Southern California‘vibe,’ associated with beaches, sun, surfing, and waves.” Nor was there anyexplicit misleadingness about source. “Neither Pepperdine nor the Waves Marksappear in the title cards for the series. There is therefore no implicit, letalone explicit statement that misleads the consumer as to the source of theseries.”

Of note, not all is lost for Rogers for titles: Downto Earth Organics, LLC v. Efron, No. 22-CV-06218 (NSR), 2024 WL 1376532(S.D.N.Y. Mar. 31, 2024), applied Rogers to the use Netflix and ZacEfron of the phrase “Down to Earth” for the documentary series entitled Down toEarth with Zac Efron. That court found that the defendants were “undoubtedlyusing ‘Down to Earth’ simply to identify the subject matter and tone of theSeries.”