In a recent installment of the Brand Lawyer, we discussed the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, a 2023 case in which SCOTUS narrowed the scope of the “Rogers test.” For our discussion of the Rogers test and the Jack Daniel’s decision, click here.
Just days ago, the Ninth Circuit Court of Appeals delivered its decision in Hara v. Netflix, in which it reaffirmed that the Rogers test applies where a third-party trademark (or, here, the likeness of a public figure) is used for expressive purposes.
In 2021, Netflix released Q-Force, an animated series about a group of LGBTQ+ spies. An episode of Q-Force included a ten-second scene involving a group of drag queens, one of whom resembled real-life drag queen Lance Hara, professionally known as Vicky Vox:
Left: Vox; right: a cropped still from Q-Force.
The scene was also shown in the official teaser for the show, and Netflix provided a still from the scene that included the above character to an online publication. Vox took issue with her apparent depiction in the show, teaser, and promotional still, claiming under the Lanham Act, the federal trademark act, that Netflix’s use of her likeness falsely implied that she endorsed the show and that such use constituted unfair competition.
As a reminder, in Jack Daniel’s, the Supreme Court found that defendant VIP Products’ use of BAD SPANIELS and certain branding (an alleged infringement of the JACK DANIEL’S® trademark and trade dress) served a source-identifying (i.e., trademark) purpose, and not an expressive purpose. In contrast, here, the Ninth Circuit determined that the use of Vox’s likeness contributed to Q-Force’s humor as well as its setting, namely, a gay bar in West Hollywood. As such, it found that Vox’s depiction in the show served an expressive, and not a source-identifying, purpose.
Therefore, the court found that the Rogers test applied to this use because it was artistically relevant but not explicitly misleading as to the source of the show or any endorsement by Vox of the show, and it affirmed the District Court’s dismissal of Vox’s claims. (The Court of Appeals did not address Vox’s claims under state publicity rights laws.)
The decision in Hara is useful to creatives who seek to use third-party trademarks or likenesses in their artistic works. Together with Jack Daniel’s, Hara provides a rough set of guidelines for the permissible use of these types of intellectual property in creative works. On the one hand, per Jack Daniel’s, creatives will want to avoid using third-party marks or any marks or names that are likely to cause confusion with third-party marks in any manner that a trademark normally would be used, such as in the names of consumer goods, on product packaging, or in marketing materials. On the other hand, as shown in Hara, fleeting, non-trademark, expressive uses of third-party marks or likenesses that support the concepts and themes of a larger creative work generally are lower risk and less likely to run afoul of intellectual property laws.