It's not every day that a zookeeper with the prison for murder for hire. Good afternoon, lady and gentleman. My name is Joe Exotic, and this sissary it was like a mythical character who owned twelve hundred tigers and lions and bears. But Carol blask And came head like tigger. If he ever had an animate in his life, it
was Carol Basket. Tiger King became a sensation on Netflix, incredibly popular and a distraction for people stuck at home during the pandemic, one of Netflix's most watch series ever, but Hollywood Weekly Magazine sued, claiming it was the first to dub Joe Exotic the Tiger King, and that the hit series copied the title and cribbed content from its ex buzz. A judge has thrown out the suit for trademark and copyright infringement, but is giving the magazine a
chance to try again. Joining me as intellectual property litigator Terrence Ross, a partner at Captain Euchen Rosenman, Orry, maybe you can clear something up first. Hollywood Weekly Magazine claims that it coined the moniker Tiger King, but Joe Exotics starred in the series called Joe Exotic Tiger King and sold products that were branded Tiger King. That's absolutely true, June, and the number of products hold with that moniker or
fairly large. This was not a random event or handful of products, and that was yet another fact that called into question the asserted rights by Hollywood Weekly magazine. Does it make a difference that Hollywood Weekly is claiming common law trademark because they didn't file a trademark application for the Tiger King until after the series became popular. I think on the margins it might have made a difference if this were a closer taste, but as a matter
of pure law, it does not. There are common law trademark, including some famous trademarks that most consumers would know, that have never been registered with the United States Trademark Office and are entitled to protection under the Lantim Act. Is it surprising that Joe Exotic didn't try to trademark the name Tiger King? It isn't. It isn't. It is a slightly cumbersome process and somewhat expensive for somewhat of a
limited means. It is hard process to navigate without an attorney that you almost have to have an attorney doing a filing, which runs up the cost. And so there is this tendency amongst people who have limited means or businesses that do not want to spend a lot of legal fees to practice their trademark at common law instead of registering it under the federal system. Did the judge's decision revolve around the First Amendment? Netflix's First Amendment claims yes,
it did so. There has been established for many years now what is known as the Rogers test with respect to the use of trademarks and artistic works. It is so named because it comes out of a case in the Second Circuit, which is the New York area, called Rogers versus Grimaldi, and involved the famous iconic Hollywood movie
star and dancer Ginger Rogers. There was a Frederica Felini movie involving two Italians who believed themselves to be as good at dancers as Ginger Rogers and Fred Stair, and who emulated their dance routines, and the name of the movie was Ginger and Fred. And Ginger Rogers brought a lawsuit claiming that that was unauthorized youth of her name, and the Second Circuit said, well, in light of the
First Amendment rights to freedom of speech. We are going to allow an exception to the trademark law if there is some artistic relevance to the use of the trademark in the movie, and if the use of the trademark does not mislead people. And in that case, clearly the use of Ginger Rogers name was relevant to the plot line which involved to Italian the answers to spot. They were for all practical purpose of Ginger and Fred and therefore it made a lot spent, was not purposely misleading.
And so the second stortit created this exception of trademark laws. It fundamentally reflects the tension between First Amendment freedom of speech and that were trademark laws which in effects say you can't use certain words. There has to be with respect to artistic work, even reality television shows, a certain amount of given the joints to allow the use of trademarks in these artistic works so as not to chill
freedom of speech. So explain the judges analysis as to why Netflix First Amendment claims under the Rogers test were successful. The key trademark that issue was the Tiger King, and this was a reality television show. It followed the lives of Joe Exotic and the people around him, including possibly a murder, and was a very popular show while it ran.
And the Court said, look, the use of the phrase tiger king clearly is relevant to the show because it is about Joe Exotic, the Tiger King, and therefore it meets the first part of the Rogers test. With respect to the second part, the use the term tiger king in no way misleads viewers into watching the show under some sort of false pretenses, because the show is about Joe Exotic, the Tiger King, and therefore it passed the second part of the Rogers test and qualified under the
special exemption to the trademark lak Terry. That song keeps playing in my head because the judge made a few references to a case involving Barbie. Is that the song he was talking about. That is the song that he's talking about, and is another famous case in the Ninth Circuit that involved that trademark revolving around the Barbie mark that Mattelo. Although yes, the court did rely upon it, it is clear that the core basis for dismissing Hollywood
Weekly Magazine's trademark lawsuit was Rogers test. There was a claimed by Hollywood Weekly Magazine that documentaries weren't entitled to First Amendment protection. The argument wants something like this on the part of Hollywood Weekly Magazine, that the Rogers test should be applied to creative work such as the original movie from which the test derived, Ginger and Fred, which is fictional work, and that documentaries are by nature not fictional.
They are fact based and therefore should not be entitled to the same protection as works of fiction. And the Court had very little trouble disposing of that argument. The First Amendment does protect both fact based expression and non fact based expression. The term used in the Rogers versus Grimaldi case was artistic work, and regardless of what you and I may think of reality based television, it would clearly be considered an artistic work, although based largely on facts.
But the First Amendment protects the expression of facts as well as fiction, and therefore the court held that the Rogers exemption should apply in this instance. Was the copyright claim separate copyright claim was a separate cause of action, and it's important to distinguish between the two. You cannot
copyright short expressions, individual words, or titles of works. The Copyright Office has long said that that's not appropriate given what copyright attempts to do, and therefore they were facing a very challenging legal background and bringing this copyright action. What the court said with respect of the copyright is that we're going to give you another bite of the apple.
We're going to allow you to amend the complaint only with respects of the copyright cause of action to clarify for the court certain elements of the purported copyright cause of action, such as, exactly what is the copyright in what are the parts of those articles that were published in the Hollywood Weekly magazine that you're claiming we're copyrighted and the copyrights were infringed here? In other words, we need some specificity as to what you say the infringement
is all about. And the court expressed some doubt as to whether it was possible to bring a copyright cause of action here since the reality television show didn't really follow the articles that have been published. It followed the day to day lives that we're going for award in time that were after the publication of these magazine articles. But the court said, well, we'll give you no chance to get more specific, and we'll look at it again.
As the court assumed, Netflix would bring another motion to this mess just to clarify the trademark cause of action is dead, but Hollywood Weekly has a chance to amend as far as the copyright cause of action. That is correct. That court said, we don't see any way on the trademark causes of action that you could amend in order to plead something that was not exempted by the Rogers test.
And we should point out that the plaintiff had already had one opportunity to amend the complaint with respect to all causes of action. Now was getting a second chance to amend the compliant with respect to just the copyright causes of action. Fascinating as always, Thanks so much, Terry. That's Intellectual property litigator Terence ross A partner Canton You in Rosenman and the Tiger King is back in court again. Joe Exotic is suing the Justice Department over the Trump
administration's rejection of his pardon request. He claims the denial is not valid because his request was not presented directly to President Trump. Exotic says his pardon application was rejected by the Acting Pardon Attorney two days after it was filed in September, and he wants the court to compel her office to present the pardon to Trump himself. The
Justice Department has not commented on the lawsuit. Exotic is serving a twenty two year prison sentence for trying to hire a hitman to kill his rival on Tiger King, Carol Baskin. And that's it for this edition of The Bloomberg Law Show. Remember you can always at the latest legal news on our Bloomberg Law Podcast. You can find them on Apple Podcasts, Spotify, and at www dot Bloomberg
dot com slash podcast Slash Law. I'm June Grasso. Thanks so much for listening, and please tune into The Bloomberg Law Show every week night at ten pm Eastern right here on Bloomberg Radio