MGFB Props., Inc. v. Viacom Inc.
| Decision Date | 29 November 2022 |
| Docket Number | 21-13458 |
| Citation | 54 F.4th 670 |
| Parties | MGFB PROPERTIES, INC., Flora-Bama Management LLC, Flora-Bama Old S.A.L.T.S. Inc, Plaintiffs-Appellants, v. VIACOM INC, f.k.a. MTV Networks, Defendant, 495 Productions Holdings LLC, 495 Productions Services LLC, ViacomCBS Inc., Defendants-Appellees. |
| Court | U.S. Court of Appeals — Eleventh Circuit |
William Franklin Cash, III, Brandon Lee Bogle, Wesley A. Bowden, Joshua Rhett Harris, J. Michael Papantonio, Troy Alan Rafferty, Matthew D. Schultz, Levin Papantonio Rafferty, Pensacola, FL, Fred H. Perkins, Morrison Cohen, LLP, New York, NY, for Plaintiff-Appellant.
Christine Riley Davis, Davis Appeals, PLLC, Tallahassee, FL, Remi Jaffre, Susan J. Kohlmann, Alison I. Stein, Jacob Tracer, Jenner & Block, LLP, New York, NY, Robert Pass, Carlton Fields, PA, Tallahassee, FL, Adam Granich Unikowsky, Jenner & Block, LLP, Washington, DC, for Defendants-Appellees.
Rebecca Tushnet, Harvard University, Cambridge, MA, for Amicus Curiae Intellectual Property Law Professors.
Lynn Jordan, David Kelly, Kelly IP, LLP, Washington, DC, Deanna K. Shullman, Shullman Fugate, PLLC, Tampa, FL, for Amicus Curiae Motion Picture Association, Inc.
Before Luck, Brasher, and Hull, Circuit Judges.
This dispute is about the right to use the word "Floribama" and lies at the crossroads of the Lanham Act and the First Amendment.
Plaintiffs-Appellants MGFB Properties, Inc. ("MGFB"), Flora-Bama Management LLC ("Flora-Bama Mgmt."), and Flora-Bama Old S.A.L.T.S. Inc. ("Old SALTS") (collectively, "Plaintiffs") own and operate the Flora-Bama Lounge, Package and Oyster Bar ("Lounge") on the Florida-Alabama border. The Lounge has been in operation since 1964 and has gained regional fame by hosting many entertainment and athletic events.
Defendants-Appellees 495 Productions Holdings LLC and 495 Productions Services LLC (jointly referred to as "495 Productions"), and ViacomCBS Inc. ("Viacom") (collectively, "Defendants") create and distribute television programs, including the hit reality series Jersey Shore and its spin-off MTV Floribama Shore .
Plaintiffs sued Defendants, alleging that the title of Defendants’ series, MTV Floribama Shore , infringes on Plaintiffs’ Flora-Bama trademarks. The district court granted summary judgment to Defendants. Plaintiffs timely appealed. After careful review and with the benefit of oral argument, we affirm the district court's judgment for Defendants.
Plaintiff MGFB is primarily an asset-holding company. It owns the "FLORA-BAMA" trademarks and the property on which the Lounge is located. MGFB registered its federal trademark in January 2013. The federal trademark covers use of the trademark in connection with "bar and restaurant services" and several entertainment services, including arranging, organizing, conducting, and hosting "social entertainment events," live musical performances, and "competitions for fish throwing." MGFB also obtained Florida and Alabama state trademarks covering similar services.
Plaintiffs have the same principals: John McInnis III, Cameron Price, Joe Gilchrist, and Pat McLellan. MGFB licenses its trademarks to Flora-Bama Mgmt. and Old SALTS.
Plaintiff Flora-Bama Mgmt. is responsible for the day-to-day operations of the Lounge and its related establishments (e.g., the Flora-Bama Ole River Grill, the Flora-Bama Liquor & Lotto, and the Flora-Bama Yacht Club). Plaintiff Old SALTS is responsible for managing the Flora-Bama marina and operating watersports and transportation services.
Plaintiffs continuously have used their "FLORA-BAMA" trademarks in connection with Plaintiffs’ entertainment, food, and drink establishments. They aggressively defend the trademarks, sending more than 80 cease-and-desist letters to businesses across the region.
Plaintiffs’ Lounge and MGFB's trademarks have been featured in artistic works by third parties. In "Ragtop Day," Jimmy Buffett sings, "Get ourselves a cool one at the Flora-Bama, ya!" Jimmy Buffett, Ragtop Day (1984). Two songs are named after the Lounge: Kenny Chesney's "Flora-Bama" and Neil Dover's "FloraBama Time."
McInnis, a principal in all three Plaintiffs and president of MGFB, allowed these artists to use Flora-Bama in the songs. For the Chesney song, McInnis testified that Chesney called him to say he had written a song about the Lounge and wanted to call it Flora-Bama, and McInnis told him "that's great [and h]ave at it." For the Dover song, McInnis could not recall whether there was a formal license agreement between Dover and the Plaintiffs, but McInnis said the Plaintiffs "100 percent gave him permission to use the title."
Additionally, Kenny Chesney performed on the Lounge's beachfront stage in front of thousands of fans at a 2014 concert. His performance was broadcast on Country Music Television ("CMT"), a Viacom channel. The agreement granting CMT a license to broadcast that program does not mention Plaintiffs. But Plaintiffs contend they "verbally" licensed their trademark to Kenny Chesney and the company that represents him, Blue Chair Bay Records, and then Blue Chair Bay Records sublicensed the rights to Viacom for the broadcast on CMT. The live concert was called the "Flora-Bama Jama," and the television program was called "Kenny Chesney: Live at the Flora-Bama."
"Flora-Bama" is also featured in a few book titles: Food n’ Fun at the Flora-Bama , Bushwhacked at the Flora-Bama , and If the Flora-Bama Walls Could Talk: If the Walls Could Talk .1 These books were written by Chris Warner. Warner obtained a license to use "Flora-Bama" in the title of his books. The agreement was entered into on August 21, 2019—several years after the books were published and a few weeks after Plaintiffs’ complaint in this case was filed on August 6, 2019. McInnis contends the agreement with Warner was verbal from the beginning, and the parties later consummated it in writing.
Lastly, "Flora-Bama" is featured in a few films, such as Mullet Men (a documentary about Flora-Bama's fish-throwing competition that Plaintiffs sell at the Lounge's giftshop) and Last American Roadhouse: The Documentary of the Flora-Bama (a DVD that Plaintiffs sell at the Lounge's gift shop).
From 2012 to 2019, Plaintiffs spent about $1.9 million in advertising "Flora-Bama" branded establishments. Plaintiffs’ Lounge and their related businesses have been featured in major news outlets, such as The New York Times and CNN , and received multiple "Best Of" awards, such as the "Best U.S. Beach Bar."
Defendant Viacom is a global media and entertainment company that operates several television brands, including MTV, VH1, Nickelodeon, and Comedy Central. Defendant 495 Productions is a television production studio that contracts with companies like Viacom to produce reality television series.
In 2009, 495 Productions and Viacom released a hit television series called Jersey Shore , which profiled "a group of fun-loving 20-somethings who lived together in a beach house in Seaside Heights, New Jersey." Jersey Shore lasted six seasons, thanks in part to the distinctive subculture its cast was perceived to belong to. That sub-culture centered on a love of clubbing, taking care of one's physical appearance, and a dedication to family and Italian culture.
The success of Jersey Shore spawned several international spin-offs also produced by 495 Productions and broadcasted by MTV. These spin-offs included Warsaw Shore , Acapulco Shore , and Geordie Shore . Like Jersey Shore , the spin-offs were dedicated to profiling subcultures of 20-somethings in different parts of the world.
The parties are familiar with one another. In 2011, 2013, and 2014, 495 Productions approached Plaintiffs about using the Lounge for a television show and casting calls. In January 2017, a development executive at 495 Productions emailed Plaintiffs again: Plaintiffs allowed 495 Productions to have a few casting calls at the Lounge, but nothing more.
In 2016, MTV's president, Chris McCarthy, made it a priority to bring the Shore franchise back to the United States. McCarthy wrote SallyAnn Salsano, the president of 495 Productions, that he wanted to build out the Shore franchise like the Real Housewives franchise, with multiple series in different locations: "Gulf Shore, Florida Shore, Jersey Shore, South Shore, etc."
Defendants began to develop a seventh Shore series, this one focused on Southern beach culture. Defendants wanted to highlight "young [S]outhern folks" who go to "shore houses" or "spend summers" on the Gulf of Mexico, extending from the Florida panhandle into Alabama and Mississippi.
MTV commissioned a survey of 300 young people familiar with the region to measure awareness and perceptions of the culture and nightlife in various beach towns. Then, 495 Productions prepared a 32-page slide deck, titled "Gulf Shores," profiling the region. One slide identified the region as spanning from Biloxi, Mississippi, to Panama City Beach, Florida. The slide deck noted the "Flora-Bama [Lounge]" is a "[f]amous, open-air bar," but it also used the term "Florabama" to describe the region. The slide deck calls Gulf Shores "[t]he epitome of ‘Florabama’—mix of nice, relaxing Florida beaches with the down-home Southern vibe of Alabama."
Of the 300 people surveyed, about 34% had heard of the term "Flora-bama," with half of the 34% identifying it as the bar and the other half identifying it as the region. Defendants also engaged a market research company to learn more about "southern beach culture." The research suggested that the term Flora-bama was "either unknown or though [sic] to refer strictly to the bar."
Ultimately, Defenda...
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