By Shane Wax
Last June, I brought to you a summary of what I called the “finale” to Tiger King: Murder, Mayhem, and Madness saga, which centered on a long-running case involving copyright and trademark infringement claims levied by Carole Baskin’s Big Cat Rescue against Joe Exotic, which ultimately resulted in the Greater Wynnewood Exotic Animal Park being transferred to Big Cat Rescue.
It seems that my June 2020 headline foreshadowed yet another chapter in the Tiger King saga because, just a month later, a new intellectual property dispute arose centered around the true crime documentary mini-series. However, the latest drama did not last long as the lawsuit was quickly dismissed in January 2021 decision.
In July 2020, Netflix was sued for copyright and trademark infringement, as well as for unfair competition and similar common law claims, in federal court in California by Los Angeles publisher Prather Jackson and his media imprint, Hollywood Weekly Magazine.[1]
Jackson claimed that he coined the term “Tiger King” in a series of four exposes about the life of Joe Exotic that he wrote and/or published in 2013 through Hollywood Weekly Magazine. Since Jackson created the nickname “Tiger King,” Jackson claims that he and Hollywood Weekly Magazine own the trademark rights in the new pop culture phenomenon. Jackson also claims that his own Tiger King-related publications “were physically used and displayed . . . and spoken about” through the Netflix series over his objection – causing Hollywood Weekly Magazine to lose advertisers – and that his work “clearly served as the blueprint, concept, and basis” for the Netflix series, as implicitly evidenced (allegedly) by the use of the “Tiger King” mark in the Netflix series’ subtitle.
Just two weeks before filing the lawsuit, a trademark application was filed in the name of Hollywood Weekly Magazine seeking to register “The Tiger King” in International Class 16 for “magazine columns about entertainment, politics and general human interest,” claiming a first use date of March 1, 2013.[2] Hollywood Weekly Magazine also owns at least two U.S. Copyright Registrations, although it is not clear what content those registrations encompass.[3]
In September 2020, Netflix filed a pre-answer motion to dismiss the case for failure to state a claim.[4] Netflix argued that the First Amendment defeated all Lanham Act and trademark-related claims under the so-called “Rogers Test” – under the Rogers Test, the use of a trademark in the context of an expressive work only offends trademark laws if the use either (1) lacks “artistic relevance” to the underlying expressive work, or (2) is intentionally misleading as whether the trademark owner sponsors, endorses or is otherwise affiliated with the expressive work.[5]
Netflix argued that the titular phrase “Tiger King” and the occasional display of the cover of Hollywood Weekly Magazine in a handful of scenes had “artistic relevance” to the subject of the miniseries – Joe Exotic, who promoted himself as the “Tiger King,” in part based on his pride in his appearance in Hollywood Weekly Magazine – and there was nothing “explicitly” and intentionally misleading about its uses of either the “Tiger King” mark or its brief displays of Hollywood Weekly Magazine.
In its motion, Netflix also argued that Jackson’s copyright claims were impermissibly vague in that the Complaint’s reference to copyright registrations did not identify the specific original works that Jackson claimed to own and to be infringed and because the Complaint did not “identify the acts by which Netflix supposedly infringed.”[6] In a footnote, Netflix suggested the complaint could be dismissed on “fair use” grounds, but it principally argued that Jackson’s claims were so vague to preclude a reasonable assessment.
Upon reviewing “mutually agreed-upon” and “indisputably authentic” evidence that “depict[s] every instance where ‘Tiger King’ and Hollywood Weekly Magazine appear” in the Netflix mini-series, the Court agreed with Netflix entirely and, on December 9, 2020, dismissed the case in full.[7] The Court found that both prongs of the Rogers Test were met, noting that the footage showed Joe Exotic making his extensive commercial use of “Tiger King” for his own brand, and that the scenes showing Hollywood Weekly Magazine were scenes where Joe Exotic was posing with or signing magazine covers. The Court also agreed that the copyright claims were impermissibly vague, noting that despite amending the Complaint, “Plaintiffs inexplicably fail to provide cogent details concerning what works their registrations cover, or allege which parts of the copyrights Netflix infringed, when, and through what conduct.”[8]
While this case will likely never reach the merits, from an outside perspective, it seems unlikely that any of Jackson’s claims carried legal merit. The Rogers Test is what allows, for example, cinematic works to portray traffic scenes without worrying about trademark claims from BMW, Cadillac and Lincoln, and as the Court noted, the brief displays of the magazine during a handful of scenes was nothing more than such a similar “use,” and despite any common-law trademark rights Jackson claims in “Tiger King,” he did not attempt to register the mark with the USPTO until after the Netflix series came out, and it is questionable whether he can claim exclusive and universal ownership rights in mark given Joe Exotic’s own extensive use of the mark and the broad consumer association of the mark with the man and not with the Hollywood Weekly Magazine series. For similar, reasons, the momentary displays of magazine covers in a handful of scenes, where they are portrayed as being physically held by Joe Exotic or his supporters, likely constitutes fair use or de minimis use.
In any event, the real Joe Exotic likely remains in prison for another 20 years.
[1] Jackson et al v. Netflix, Inc., et al., Case No. 2:20-CV-6354 (C.D. Cal.), eDocket Doc. No. 1 (July 17, 2020). The lawsuit initially included Imagine Television, LLC, dba Imagine Television Studios and CBS Television Studios aka CBS Television as defendants, but the case was voluntarily dismissed as those parties less than one week after the lawsuit was filed.
[2] The Tiger King (Serial No. 90033173), Trademark Electronic Search System, U.S. Patent & Trademark Office (last accessed Feb. 5, 2021).
[3] See Copyright Reg. No. TX0008866617 (2016) for Hollywood Weekly Magazine (collective work) and Copyright Reg. VA0002206806 (2020) for “Hollywood Weekly, the magazine that brought you THE TIGER KING.” and other contributions., (for content created and published in issues of Hollywood Weekly Magazine in April 2020).
[4] See supra n.1, eDocket Doc. No. 18 et seq. (Sept. 16, 2020).
[5] Taken from the seminal case wherein famous entertainer Ginger Rogers sued over a fictional cabaret duo named “Ginger and Fred,” and lost on First Amendment grounds. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); see also Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) (holding Mattel could not sue over the song “Barbie Girl”).
[6] Jackson, 20-CV-6354, eDocket No. 18 p.14.
[7] Id., eDocket No. 33 (Dec. 9, 2020) (“Order Granting Defendant’s Motion to Dismiss”).
[8] Id. p. 12 (citing Imageline, Inc. v. CafePress.com, Inc., Case No. 10-CV-9794, 2011 WL 1322525, *4 (C.D. Cal. Apr.6, 2011)).