The case is Roxbury Entertainment v. Penthouse Media Group, Inc. (C.D. Cal. Nov. 9):
It is well established that films are entitled to First Amendment protections. … [A] Lanham Act [false or misleading designation of origin] claim asserted against the creator of an expressive work can succeed only if the “public interest in avoiding consumer confusion outweighs the public interest in free expression.”The [applicable Rogers v. Grimaldi] test has two prongs. The first prong requires that the defendant’s use of plaintiff’s trademark be relevant to the underlying work: “the level of relevance must merely be above zero.” If the first prong is satisfied, the Lanham Act claim is still precluded unless the use explicitly misleads consumers about the source or content of the work.
Because Defendants’ movie is an expressive work, the Rogers test provides a complete defense to all of Plaintiff’s claims. With respect to the first prong, Defendants’ use of “Route 66″ is relevant to the underlying work. See Rock Star, 547 F.3d at 1100 (“[T]he level of relevance must merely be above zero.”). Defendants have introduced evidence demonstrating at least some relationship between the mental imagery associated with the term “Route 66,” e.g., road trips, cross-country travel, and the content of Defendants’ movie. Plaintiff’s argument that the association is tenuous does not controvert Defendants’ showing.
The second prong of Rogers requires the Court to evaluate whether Defendants’ use of “Route 66″ explicitly misleads consumers as to the source or content of the work. Mere use, without more, is insufficient to make the use explicitly misleading. As the Ninth Circuit has explained, the relevant inquiry is whether consumers would be misled about the source or sponsorship of Defendants’ movie.
This prong of the test points directly at the purpose of trademark law, namely to “avoid confusion in the marketplace by allowing a trademark owner to prevent others from duping consumers into buying a product they mistakenly believe is sponsored by the trademark owner.” The relevant question, therefore, is ["]whether the [product] would confuse [consumers]…. In answering that question, we keep in mind … that the mere use of trademark alone cannot suffice to make such use explicitly misleading.["] Here, there is nothing to indicate that there is any risk of Defendants’ use of the mark “duping” consumers into thinking they are buying a product sponsored by, or in any way affiliated with, Plaintiff or the 1960s television series in which it owns rights.
Accordingly, summary judgment is GRANTED in favor of Defendants on all of Plaintiff’s claims because Defendants’ use of “Route 66″ in or as the title of their adult film is protected by the First Amendment.
Strick says:
Wonder where the judge’s head was writing about the “prongs” in the law relevant to a porn-related case.
November 18, 2009, 6:26 pmArkady says:
Rather stiffly written opinion, if you ask me.
November 18, 2009, 6:55 pmFXKLM says:
I guess “Route 69″ was already taken.
November 18, 2009, 7:09 pmASlyJD says:
I nominated FXKLM for thread winner, can I get a second?
November 18, 2009, 7:35 pmASlyJD says:
Oh, and must again congratulate Prof. Volokh for his awe-inspiring Lexis alerts.
November 18, 2009, 8:02 pmCareless says:
IMDB has at least three pornographic “Route 69″ films listed
November 18, 2009, 8:36 pmBT says:
Great now I can start working on my opus, Debbie Does Route 66!!!!
November 18, 2009, 9:01 pmBrennan says:
Judge Rogers Plaintiff — claims Rock Star made her do it.
Sometimes two prongs make it a legal right, folks.
November 18, 2009, 9:30 pmASlyJD says:
I actually live not too far from 69 Hwy. Strangely, the 69 South sign gets stolen quite often…
November 18, 2009, 9:42 pmDotar Sojat says:
As long as they don’t use a Stingray convertible.
November 18, 2009, 10:03 pmTweets that mention The Volokh Conspiracy » Blog Archive » Pornography Route 66 Film Doesn’t Infringe Trademark in Route 66 TV Program -- Topsy.com says:
[...] This post was mentioned on Twitter by Peter Black, Ron Warnick. Ron Warnick said: RT @PeterBlackQUT: reading "pornography route 66 film doesn’t infringe trademark in route 66 tv program" http://j.mp/1lEmfe [...]
November 18, 2009, 11:28 pmEH says:
Does it matter that “Route 66″ was an actual highway? Surely this isn’t going so far as to say all porn remakes would pass the Rogers test, is it?
November 18, 2009, 11:31 pmJudge says porn film doesn’t infringe on “Route 66″ trademark « Route 66 News says:
[...] tip: Volokh Conspiracy and Peter Black, aka [...]
November 18, 2009, 11:42 pmElmer says:
Not everyone looks at the pictures on the box. I once rented the wrong version of Howard’s End, which gave me an erroneous impression of Merchant Ivory that lasted for some years.
November 19, 2009, 1:01 amSteven says:
Following on Elmer’s comment, the MIT student group that shows movies showed “Flash Gordon” once in the mid-90s. When they got the trailer, though, the trailer was for a movie called “Flesh Gordon”. They decided to show it anyway, with a disclaimer that it was not actually the movie scheduled for the Sci Fi marathon.
I’m not a lawyer, I don’t know Rogers, and I haven’t clicked through for context (maybe this will only be distributed through a pornography-only channel?), but I find it surprising that the judge(s) don’t think there’s a substantial likelihood of confusion.
November 19, 2009, 1:45 amCrunchy Frog says:
Which raises the question: when you learned the truth, were you disappointed?
November 19, 2009, 6:50 pmCan't find a good name says:
Steven: I think the likelihood of actual confusion is nil. If this film is shown on cable or pay-per-view, it would only be shown on an all-X-rated films channel, not a mainstream films channel. And the DVD cover features two topless women. I don’t think there are any customers looking in the adult section of their local DVD store thinking, “Oh, they made a film of the 1960s TV series Route 66, but with naked women in the leads instead of Martin Milner and George Maharis. Maybe this is one of those good TV-show remakes like The Fugitive or The Untouchables.”
November 19, 2009, 11:36 pmSandy MacHoots says:
Apropos the confusion issue, which was raised back in the discussion of “Going Rogue”/”Going Rouge,” at least two major news outlets, Fox and the CBC, have already accidentally used the knockoff “Going Rouge” cover as an illustration for Palin’s book. And dozens of newspapers appear to have spelled the title incorrectly Would the fact that the Canadian Broadcasting Company can’t tell the difference between the covers have any impact on the confusion claim?
November 20, 2009, 11:29 amMyrtle Beach Attorney says:
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December 2, 2009, 10:16 pmErmelinda Kummer says:
clearly I’m certain I’m not the only person to think this way.
September 4, 2010, 10:15 pm