Jonathan Hyman, co-chair of Knobbe Martens’ advertising, media and entertainment practice, shared his perspective with The Recorder, Daily Journal, and The Hollywood Reporter, and Bloomberg Law on a recent trademark complaint brought by California-based Pepperdine University against Netflix and Warner Bros.
In the dispute, Pepperdine accused Netflix and Warner Bros. of trademark infringement, trademark dilution, and false advertising for the alleged use of the university’s WAVE team name and colors in the new television series Running Point. The school attempted to secure a Temporary Restraining Order (TRO) to prevent the streaming company from airing the show, but that request was denied by the U.S. District Court for the Central District of California hours before the show was set to premiere.
With this decision, Hyman told The Recorder and Daily Journal, the court clarified the applicability of the Rogers test, a key defense in trademark infringement cases involving the use of trademarks in expressive works and which has been the subject of recent high profile cases such as the Supreme Court’s decision in Jack Daniel’s and the ‘MetaBirkins’ case. He maintained that the judge’s decision to deny the temporary restraining order “is consistent with the spirit of Rogers, finding that in-show use of a mark in the way that Netflix used it does not break the fourth wall.” While Pepperdine could pursue other courses of action, Hyman explained, the denial of the TRO “comes as a relief for the entertainment industry” and “provides more clarity for entertainment companies moving forward.”
Speaking to The Hollywood Reporter on how the decision could impact brand owners, Hyman said the decision “does not mean the end of trademark rights but could make it harder for brand owners to object to trademark uses in movies and television shows.”
Hyman was also a guest on the Bloomberg Law podcast, where he discussed the case at length, delving into how the Rogers test played a role in the dispute and how the parties might approach future litigation on the issue. Listen to the full podcast episode here. (Mr. Hyman’s segment begins at 31:14).
Read Mr. Hyman’s full comments in The Recorder, Daily Journal, and The Hollywood Reporter. [Subscription may be required.]
