875 F.2d 994 (2nd Cir. 1989), 600, Rogers v. Grimaldi

Docket Nº:600, 601, Dockets 88-7826, 88-7828.
Citation:875 F.2d 994
Party Name:Ginger ROGERS, Plaintiff-Appellant, v. Alberto GRIMALDI, MGM/UA Entertainment Co., and PEA Produzioni Europee Associate, S.R.L., Defendants-Appellees.
Case Date:May 05, 1989
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 994

875 F.2d 994 (2nd Cir. 1989)

Ginger ROGERS, Plaintiff-Appellant,

v.

Alberto GRIMALDI, MGM/UA Entertainment Co., and PEA

Produzioni Europee Associate, S.R.L., Defendants-Appellees.

Nos. 600, 601, Dockets 88-7826, 88-7828.

United States Court of Appeals, Second Circuit

May 5, 1989

Argued Dec. 22, 1988.

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[Copyrighted Material Omitted]

Page 996

Barry G. Saretsky, New York City (Steven J. Ahmuty, Alan G. Katz, Debra J. Guzov, and Bower & Gardner, New York City, on the brief), for plaintiff-appellant.

Stephen F. Huff, New York City (Tom J. Ferber, Charles B. McKenna, and Pryor, Cashman, Sherman & Flynn, New York City, on the brief), for defendants-appellees.

Before NEWMAN and ALTIMARI, Circuit Judges, and GRIESA, District Judge. [*]

JON O. NEWMAN, Circuit Judge:

Appellant Ginger Rogers and the late Fred Astaire are among the most famous duos in show business history. Through their incomparable performances in Hollywood musicals, Ginger Rogers and Fred Astaire established themselves as paragons of style, elegance, and grace. A testament to their international recognition, and a key circumstance in this case, is the fact that Rogers and Astaire are among that small elite of the entertainment world whose identities are readily called to mind by just their first names, particularly the pairing "Ginger and Fred." This appeal presents a conflict between Rogers' right to protect her celebrated name and the right of others to express themselves freely in their own artistic work. Specifically, we must decide whether Rogers can prevent the use of the title "Ginger and Fred" for a fictional movie that only obliquely relates to Rogers and Astaire.

Rogers appeals from an order of the District Court for the Southern District of New York (Robert W. Sweet, Judge) dismissing on summary judgment her claims that defendants-appellees Alberto Grimaldi, MGM/UA Entertainment Co., and PEA Produzioni Europee Associate, S.R.L., producers and distributors of the motion picture "Ginger and Fred," violated the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), and infringed her common law rights of publicity and privacy. Rogers v. Grimaldi, 695 F.Supp. 112 (S.D.N.Y.1988). Although we disagree with some of the reasoning of the District Court, we affirm.

Background

Appellant Rogers has been an international celebrity for more than fifty years. In 1940, she won an Academy Award for her performance in the motion picture "Kitty Foyle." Her principal fame was established in a series of motion pictures in which she co-starred with Fred Astaire in the 1930s and 1940s, including "Top Hat" and "The Barkleys of Broadway."

There can be no dispute that Rogers' name has enormous drawing power in the entertainment world. Rogers has also used her name once for a commercial enterprise other than her show business career. In the mid-1970s, she licensed J.C. Penney, Inc. to produce a line of GINGER ROGERS lingerie. Rogers is also writing her autobiography, which she hopes to publish and possibly sell for adaptation as a movie.

In March 1986, appellees produced and distributed in the United States and Europe a film entitled "Ginger and Fred," 1 created and directed by famed Italian film-maker Federico Fellini. The film tells the story of two fictional Italian cabaret performers, Pippo and Amelia, who, in their heyday,

Page 997

imitated Rogers and Astaire and became known in Italy as "Ginger and Fred." The film focuses on a televised reunion of Pippo and Amelia, many years after their retirement. Appellees describe the film as the bittersweet story of these two fictional dancers and as a satire of contemporary television variety shows.

The film received mixed reviews and played only briefly in its first run in the United States. Shortly after distribution of the film began, Rogers brought this suit, seeking permanent injunctive relief and money damages. Her complaint alleged that the defendants (1) violated section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), by creating the false impression that the film was about her or that she sponsored, endorsed, or was otherwise involved in the film, (2) violated her common law right of publicity, and (3) defamed her and violated her right to privacy by depicting her in a false light.

After two years of discovery, the defendants moved for summary judgment. In opposition to the motion, Rogers submitted a market research survey purporting to establish that the title "Ginger and Fred" misled potential movie viewers as to Rogers' connection with the film. Rogers also provided anecdotal evidence of confusion, including the fact that when MGM/UA publicists first heard the film's title (and before they saw the movie), they began gathering old photographs of Rogers and Astaire for possible use in an advertising campaign.

The District Court granted summary judgment to the defendants. Judge Sweet found that defendants' use of Rogers' first name in the title and screenplay of the film was an exercise of artistic expression rather than commercial speech. 695 F.Supp. at 120. He then held that "[b]ecause the speech at issue here is not primarily intended to serve a commercial purpose, the prohibitions of the Lanham Act do not apply, and the Film is entitled to the full scope of protection under the First Amendment." Id. at 120-21. The District Judge also held that First Amendment concerns barred Rogers' state law right of publicity claim. Id. at 124. He also rejected Rogers' "false light" claim without elaboration.

Discussion

I. Lanham Act

Section 43(a) of the Lanham Act creates civil liability for

Any person who shall affix, apply, or annex, or use in connection with any goods or services ... a false designation of origin, or any false description or representation ... and shall cause such goods or services to enter into commerce....

15 U.S.C. Sec. 1125(a) (1982).

The District Court ruled that because of First Amendment concerns, the Lanham Act cannot apply to the title of a motion picture where the title is "within the realm of artistic expression," 695 F.Supp. at 120, and is not "primarily intended to serve a commercial purpose," id. at 121. Use of the title "Ginger and Fred" did not violate the Act, the Court concluded, because of the undisputed artistic relevance of the title to the content of the film. Id. at 120. In effect, the District Court's ruling would create a nearly absolute privilege for movie titles, insulating them from Lanham Act claims as long as the film itself is an artistic work, and the title is relevant to the film's content. We think that approach unduly narrows the scope of the Act.

Movies, plays, books, and songs are all indisputably works of artistic expression and deserve protection. Nonetheless, they are also sold in the commercial marketplace like other more utilitarian products, making the danger of consumer deception a legitimate concern that warrants some government regulation. See Central Hudson Gas & Electric v. Public Service Commission, 447 U.S. 557, 563, 100 S.Ct. 2343, 2350, 65 L.Ed.2d 341 (1980) ("The government may ban forms of communication more likely to deceive the public than inform it ..."); Vidal Sassoon, Inc. v. Bristol-Myers Co., 661 F.2d 272, 276 n. 8 (2d Cir.1981). Poetic license is not without limits. The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product.

Page 998

Thus, it is well established that where the title of a movie or a book has acquired secondary meaning--that is, where the title is sufficiently well known that consumers associate it with a particular author's work--the holder of the rights to that title may prevent the use of the same or confusingly similar titles by other authors. See, e.g., Warner Bros. Pictures, Inc. v. Majestic Pictures Corp., 70 F.2d 310 (2d Cir.1934); Orion Pictures Co. v. Dell Publishing Co., 471 F.Supp. 392 (S.D.N.Y.1979); Dawn Associates v. Links, 4 Media L.Rep. (BNA) 1642, 1645-46 (N.D.Ill.1978). Indeed, it would be ironic if, in the name of the First Amendment, courts did not recognize the right of authors to protect titles of their creative work against infringement by other authors. Cf. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556-60, 105 S.Ct. 2218, 2228-30, 85 L.Ed.2d 588 (1985) (noting that copyright law fosters free expression by protecting the right of authors to receive compensation for their work).

Though First Amendment concerns do not insulate titles of artistic works from all Lanham Act claims, such concerns must nonetheless inform our consideration of the scope of the Act as applied to claims involving such titles. 2 Titles, like the artistic works they identify, are of a hybrid nature, combining artistic expression and commercial promotion. The title of a movie may be both an integral element of the film-maker's expression as well as a significant means of marketing the film to the public. The artistic and commercial elements of titles are inextricably intertwined. Film-makers and authors frequently rely on word-play, ambiguity, irony, and allusion in titling their works. Furthermore, their interest in freedom of artistic expression is shared by their audience. The subtleties of a title can enrich a reader's or a viewer's understanding of a work. Consumers of artistic works thus have a dual interest: They have an interest in not being misled and they also have an interest in enjoying the results of the author's freedom of expression. For all these reasons, the expressive element of titles requires more protection than the labeling of ordinary commercial products. 3

Because overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment values, we must construe the Act narrowly to avoid such a conflict. See Silverman v. CBS, 870 F.2d 40, 48 (2d Cir.1989); Stop The Olympic Prison v. United States Olympic...

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384 practice notes
  • 211 F.Supp.2d 264 (D.Mass. 2002), Civ. A. 00-11046, Davidson v. Cao
    • United States
    • Federal Cases United States District Courts 1st Circuit District of Massachusetts
    • April 11, 2002
    ...state law claims that are pendent to a federal claim must apply the choice of law rules of the forum state." Rogers v. Grimaldi, 875 F.2d 994, 1002 (2d Cir. 1989); see Klaxon Co. v. Stentor Elec. Mfg. Co., 313 U.S. 487, 496, 61 S.Ct. 1020, 85 L.Ed. 1477 (1941); see, e.g., Estates of Un......
  • 244 F.R.D. 538 (E.D.Mo. 2007), 4:05-CV-962 CAS, East Maine Baptist Church v. Union Planters Bank, N.A.
    • United States
    • Federal Cases United States District Courts 8th Circuit Eastern District of Missouri
    • February 15, 2007
    ...of the forum state. See Klaxon Co. v. Stentor Elec. Mfg. Co., 313 U.S. 487, 496, 61 S.Ct. 1020, 85 L.Ed. 1477 (1941); Rogers v. Grimaldi, 875 F.2d 994, 1002 (2d Cir.1989); Shields v. Consolidated Rail Corp., 810 F.2d 397, 399 (3d Cir.1987). Accordingly, Missouri's choice of law rules govern......
  • 822 F.Supp.2d 167 (N.D.N.Y. 2011), 7:09-CV-1252 (GTS/GHL), Car-Freshner Corp. v. Getty Images, Inc.
    • United States
    • Federal Cases United States District Courts 2nd Circuit Northern District of New York
    • September 28, 2011
    ...). [14] At this stage of the proceeding, the Court declines to apply the Rogers balancing test, set forth in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir.1989), which requires courts to construe the Lanham Act " to apply to artistic works only where the public interest in avoiding con......
  • 838 F.Supp. 1501 (N.D.Okl. 1993), 93-C-576, Cardtoons, L.C. v. Major League Baseball Players Ass'n
    • United States
    • Federal Cases United States District Courts 10th Circuit Northern District of Oklahoma
    • November 23, 1993
    ...a property right that is superior to the First Amendment right accorded to artistic expression"). For example, in Rogers v. Grimaldi, 875 F.2d 994, 997 (2nd Cir.1989), actress Ginger Rogers filed a Lanham Act claim against the producers of the film "Ginger and Fred." The movi......
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262 cases
  • 211 F.Supp.2d 264 (D.Mass. 2002), Civ. A. 00-11046, Davidson v. Cao
    • United States
    • Federal Cases United States District Courts 1st Circuit District of Massachusetts
    • April 11, 2002
    ...state law claims that are pendent to a federal claim must apply the choice of law rules of the forum state." Rogers v. Grimaldi, 875 F.2d 994, 1002 (2d Cir. 1989); see Klaxon Co. v. Stentor Elec. Mfg. Co., 313 U.S. 487, 496, 61 S.Ct. 1020, 85 L.Ed. 1477 (1941); see, e.g., Estates of Un......
  • 244 F.R.D. 538 (E.D.Mo. 2007), 4:05-CV-962 CAS, East Maine Baptist Church v. Union Planters Bank, N.A.
    • United States
    • Federal Cases United States District Courts 8th Circuit Eastern District of Missouri
    • February 15, 2007
    ...of the forum state. See Klaxon Co. v. Stentor Elec. Mfg. Co., 313 U.S. 487, 496, 61 S.Ct. 1020, 85 L.Ed. 1477 (1941); Rogers v. Grimaldi, 875 F.2d 994, 1002 (2d Cir.1989); Shields v. Consolidated Rail Corp., 810 F.2d 397, 399 (3d Cir.1987). Accordingly, Missouri's choice of law rules govern......
  • 822 F.Supp.2d 167 (N.D.N.Y. 2011), 7:09-CV-1252 (GTS/GHL), Car-Freshner Corp. v. Getty Images, Inc.
    • United States
    • Federal Cases United States District Courts 2nd Circuit Northern District of New York
    • September 28, 2011
    ...). [14] At this stage of the proceeding, the Court declines to apply the Rogers balancing test, set forth in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir.1989), which requires courts to construe the Lanham Act " to apply to artistic works only where the public interest in avoiding con......
  • 838 F.Supp. 1501 (N.D.Okl. 1993), 93-C-576, Cardtoons, L.C. v. Major League Baseball Players Ass'n
    • United States
    • Federal Cases United States District Courts 10th Circuit Northern District of Oklahoma
    • November 23, 1993
    ...a property right that is superior to the First Amendment right accorded to artistic expression"). For example, in Rogers v. Grimaldi, 875 F.2d 994, 997 (2nd Cir.1989), actress Ginger Rogers filed a Lanham Act claim against the producers of the film "Ginger and Fred." The movi......
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73 firm's commentaries
  • Bordering On Reality: Can A Work Of Fiction Give Rise To A Misappropriation Claim?
    • United States
    • Mondaq United States
    • July 13, 2001
    ...& Dunlap, Inc., 427 N.Y.S.2d 828, 829 (1980). 10. See, e.g., Matthews v. Wozencraft, 15 F.3d 432 (5th Cir. 1994); Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); Doe v. Roe, 638 So. 2d 826 (Ala. 1994), Rosemont Enterprises, Inc. v. McGraw-Hill Book Co., 380 N.Y.S.2d 839 (Sup. Ct. 1975)......
  • Intellectual Property Newsletter - January 2018
    • United States
    • JD Supra United States
    • January 12, 2018
    ...1227–28 (citing Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 66–67 (1983)). 7 Id. at 1228–29 (citing, inter alia, Rogers v. Grimaldi, 875 F.2d 994, 997 (2d Cir. 1989) and Charles v. City of Los Angeles, 697 F.3d 1146, 1152 (9th Cir. 2012)). 8 Id. at 1229 (citing Rogers, 875 F.2d at 999)......
  • Business Litigation Report -- July 2012
    • United States
    • JD Supra United States
    • July 24, 2012
    ...likeness is relevant to the work; and (2) 5(continued on page 6)that the use does not explicitly mislead consumers. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Court concluded that use of Brown’s likeness was not irrelevant to the game’s content, and that EA’s use of his likeness (......
  • Business Litigation Report -- October 2013
    • United States
    • JD Supra United States
    • October 24, 2013
    ...test is appropriate for evaluating that tension. In both cases, EA argued for the test used by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which seeks to balance Lanham Act trademark claims with First Amendment defenses. Under Rogers, a defendant’s use of a plaint......
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49 books & journal articles
  • Honey Badger Does Care About First Amendment Protections in Trademark Law.
    • United States
    • Missouri Law Review Vol. 84 Nbr. 3, June 2019
    • June 22, 2019
    ...McGeveran, Rethinking Trademark Fair Use, 94 IOWA L. REV. 49, 54 (2010). (37.) Gordon, 909 F.3d at 263; see also Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). (38.) Rogers, 875 F.2d at 999. (39.) Id. (40.) Gordon, 909 F.3d at 269. (41.) Brief for Plaintiff-Appellant Christopher Gordon at......
  • Running the gamut from A to B: federal trademark and false advertising law.
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    • University of Pennsylvania Law Review Vol. 159 Nbr. 5, April 2011
    • April 1, 2011
    ...Official Sponsors, AM. IDOL (Jan. 19, 2011, 3:04 PM), http://www.americanidol.com/news/view/pid/4251. (32) See, e.g., Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (holding that the Lanham Act does not apply to the use of a celebrity's name in the title of an artistic work unless the......
  • Scope.
    • United States
    • William and Mary Law Review Vol. 57 Nbr. 6, May 2016
    • May 1, 2016
    ...in relation to an expressive work is not infringing so long as it has some artistic relevance to the work and does not explicitly mislead. 875 F.2d 994, 1005 (2d Cir. 1989). This is clearly a scope doctrine, but--to our point about the superficiality of these categories--probably more a que......
  • Grounding Trademark Law Through Trademark Use
    • United States
    • Iowa Law Review Nbr. 92-5, July 2007
    • July 1, 2007
    ...Henson Prods., Inc., 73 F.3d 497, 502-05 (2d Cir. 1996) (finding no confusion based on parodic use of the SPAM mark); Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) ("[I]n general the [Lanham] Act should be construed to apply to artistic works only where the public interest in av......
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