Case(s): Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)

In Rogers v. Grimaldi, the U.S. Court of Appeals for the Second Circuit held that Section 43(a) of the Lanham Act does not bar a minimally relevant use of a celebrity’s name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content.

Rogers v. Grimaldi centered on “Ginger and Fred,” a fictional film by Alberto Grimaldi about two Italian cabaret performers who imitated the famed dancing duo Ginger Rogers and Fred Astaire. Rogers sued Grimaldi in the U.S. District Court for the Southern District of New York for violating the Lanham Act, arguing that the title of the film falsely implied that Rogers was involved with or sponsored the film. The district court granted Grimaldi summary judgment, and Rogers appealed to the Second Circuit.

The Second Circuit held that the Lanham Act “should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” In the context of allegedly misleading titles using a celebrity’s name, the Second Circuit explained that this “balance will normally not support application of the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

In short: The appeals court crafted the “Rogers” balancing test, which establishes that “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.”

Applying this test, the Second Circuit found that the Ginger and Fred title surpassed the minimum threshold of artistic relevance to the film’s content and contained no explicit indication that Ginger Rogers endorsed the film or had a role in producing it.