Rogers v. Grimaldi
875 F.2d 994 (1989)
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Rule of Law:
The Lanham Act does not apply to the use of a celebrity's name in the title of an artistic work unless the title has no artistic relevance to the underlying work, or, if it has some artistic relevance, the title explicitly misleads as to the source or content of the work.
Facts:
- Ginger Rogers was an internationally famous actress and dancer, primarily known for her on-screen partnership with Fred Astaire.
- The pairing of their first names, 'Ginger and Fred,' became an iconic symbol of style and elegance.
- Italian filmmaker Federico Fellini created and directed a film entitled 'Ginger and Fred.'
- The film is a fictional story about two Italian cabaret performers, Pippo and Amelia, who in their youth imitated Rogers and Astaire and were known professionally in Italy as 'Ginger and Fred.'
- The plot focuses on a televised reunion of the fictional performers many years after their retirement and serves as a satire of modern television.
- The film is not a biography of or about the actual lives of Ginger Rogers and Fred Astaire.
- Rogers did not sponsor, endorse, or have any involvement in the production of the film.
- Alberto Grimaldi, MGM/UA Entertainment Co., and PEA Produzioni Europee Associate, S.R.L. produced and distributed the film.
Procedural Posture:
- Ginger Rogers filed a lawsuit against Alberto Grimaldi, MGM/UA Entertainment Co., and PEA Produzioni Europee Associate, S.R.L. in the U.S. District Court for the Southern District of New York.
- The complaint alleged violations of the Lanham Act, the common law right of publicity, and false light defamation.
- After discovery, the defendants moved for summary judgment.
- The District Court granted the defendants' motion for summary judgment, dismissing all of Rogers' claims.
- Rogers, as appellant, appealed the dismissal to the U.S. Court of Appeals for the Second Circuit; Grimaldi et al. were the appellees.
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Issue:
Does the use of a celebrity's name in the title of a fictional, artistic work that is not directly about that celebrity violate either the Lanham Act or the celebrity's common law right of publicity?
Opinions:
Majority - Judge Newman
No. The use of Rogers' name in the movie title is protected artistic expression and does not violate the Lanham Act or her right of publicity. The court must balance the public interest in avoiding consumer confusion with the public interest in free expression. Titles of artistic works are a hybrid of commercial and expressive speech and require more protection than ordinary commercial labeling. The court rejects a 'no alternative avenues of communication' standard as too restrictive on speech, but also finds that the First Amendment does not grant an absolute privilege to artistic titles. Instead, the Lanham Act should only apply to an artistic title if it has (1) no artistic relevance to the underlying work whatsoever, or (2) if it has some artistic relevance, it explicitly misleads as to the source or content of the work. Here, the title 'Ginger and Fred' has artistic relevance because the characters in the film imitated Rogers and Astaire. Furthermore, the title is not explicitly misleading; it does not overtly claim Rogers endorsed the film or that it is a biography. The slight risk of implicit consumer confusion is outweighed by the First Amendment interest in protecting artistic expression. Similarly, Rogers' right of publicity claim under Oregon law fails because the title is not 'wholly unrelated' to the film and is not a 'disguised commercial advertisement.'
Concurring - Judge Griesa
No, the title does not violate Rogers' rights, but the majority's reasoning for this conclusion is flawed. The District Court's original reasoning—that the artistically relevant title was protected by the First Amendment—was sufficient to resolve this case. The majority's creation of a new, complex test distinguishing between 'explicitly misleading' and 'implicitly misleading' titles is unnecessary, poorly defined by unrealistic hypotheticals, and likely to prove unworkable. It would be better to allow future courts to address potential exceptions to First Amendment protection for titles as real cases arise, rather than fashioning a broad, abstract rule in an unusual case like this one.
Analysis:
This decision established the seminal 'Rogers test,' a landmark framework for balancing Lanham Act trademark claims against First Amendment free speech rights in the context of artistic works. The test provides significant protection for creators using celebrity names or trademarks in titles, so long as the use is artistically relevant and not explicitly deceptive. This precedent has become the controlling standard in subsequent cases involving movies, books, songs, and video games, shaping the legal landscape for expressive works that reference cultural figures and brands. It carves out a vital space for artistic freedom, preventing trademark law from being used to stifle creative expression.
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