FriendFinder Networks Inc., the parent corporation of adult film producer Penthouse Media Group, Inc., successfully defended itself against trademark infringement claims related to the title of one of its films.  Roxbury Entertainment, which owns the trademark rights to the 1960s-era TV show Route 66, brought suit against Penthouse Media Group when the company released their adult film Route 66 on DVD.  Roxbury claimed that Penthouse’s use of its ROUTE 66 trademark created a likelihood of confusion among consumers, who might believe that the pornographic film was somehow associated with the decidedly non-pornographic TV show.  Roxbury further claimed that its ROUTE 66 trademark was unlawfully diluted by Penthouse’s use.

On November 9, 2009, the  US District Court for the Central District of California found that the First Amendment provided a complete defense to all of Roxbury Entertainment’s trademark infringement claims.  To evaluate Roxbury’s trademark infringement claim, Judge Florence-Marie Cooper applied the Grimaldi test that was created by the US Court of Appeals for the Second Circuit in 1989 and endorsed by the Ninth Circuit in 2008.  Under this test, a judge balances the public interest in avoiding consumer confusion against the public interest in free expression.  A trademark infringement claim brought against the creator of an expressive work – such as a film or novel – can succeed only if the public interest in avoiding consumer confusion outweighs the public interest in free expression.

Judge Cooper found that Penthouse had not infringed Roxbury’s mark because (1) Penthouse’s use of the ROUTE 66 mark was relevant to its pornographic road-trip film and (2) Penthouse’s use of the mark did not explicitly mislead consumers about the source or content of the work.   Because consumers would not be misled into thinking that the adult film was made by the same people who produced the Route 66 television show, Penthouse’s use of the ROUTE 66 mark was non-infringing.  In a footnote, the court found that the First Amendment also provided Penthouse with a full defense to Roxbury’s dilution claims.

This case exemplifies the dynamic nature of the interplay between intellectual property law and the First Amendment.  Film and television producers are advised to seek counsel during the production process to resolve any possible trademark and copyright issues.  To find out more about Arent Fox’s work in this field, please contact:

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Matthew R. Mills
mills.matthew@arentfox.com
202.715.8582

Grace L. Applefeld
applefeld.grace@arentfox.com
202.857.6498