To Call An Ugly House By Any Other Name

Running a title report is common practice as part of a show’s launch but the practice, like many other aspects of our role as production counsel, exists primarily to reduce business risk rather than because of legal necessity. A new complaint lodged against Warner Bros. Discovery, Inc. surrounding the HGTV series, Ugliest House in America, (the “Show”) illustrates this point.

Liability for trademark infringement is found where there is consumer confusion over the source of goods or services.[1] The crux of this complaint is that the Show’s name is allegedly likely to cause consumer confusion because it is “confusingly similar” to trademarks owned by HomeVestors of America Inc. (the “Company”). Specifically, the Company owns and maintains several federal trademarks under the “We Buy Ugly Houses” brand (the “Brand”) related to real estate services, but is this enough to maintain an action for trademark infringement against the Show?

“Under the common law and the Lanham Act, 15 U.S.C. §§ 1051-1127, owners of trademarks are protected from other marks that are likely to cause confusion. However, a non-distinctive trademark, such as a [descriptive] mark, only achieves protection if the mark is shown to have secondary meaning.”[2] Building a brand around the premise of purchasing residences that are eyesores and calling it “We Buy Ugly Houses” is pretty darn descriptive. However, before the Company can even attempt to establish that the Brand has acquired secondary meaning, the Company must first clear a First Amendment hurdle.

It is well established that the First Amendment applies to entertainment[3] such as television programs.[4] How an author chooses to title their work is just as expressive as the underlying creation itself, so the fact that the Company is suing over a title makes this case different from most other trademark lawsuits. As the seminal trademark-versus-title case, Rogers v. Grimaldi, put it: consumers “do not regard titles of artistic works in the same way as the names of ordinary commercial products.”[5] Titles are primarily used in relation to the work’s underlying content and rarely as a source indicator. Therefore, the Rogers court came up with a two-pronged test to determine whether a particular title is a shameless attempt to capitalize on the popularity and brand recognition of trademark or is insulated from infringement: “Where a title with at least some artistic relevance to the work is not explicitly misleading as to the content of the work, it is not false advertising under the Lanham Act.”[6]

Applying the Rogers test, the Show’s title is directly relevant to the underlying content and it is hard to conceptualize an argument that the title is explicitly misleading in any sense.[7] Because the Show’s title satisfies the Rogers test, it is irrelevant whether “some members of the public would draw the incorrect inference that [the Brand] had some involvement with the [Show . . . because] that risk of misunderstanding . . . is so outweighed by the interests in artistic expression as to preclude application of the Lanham Act.”[8]

Should it matter that the Show approached the Company about working together and may have entertained the possibility of licensing the Brand as the program’s title? I would argue that it does not matter for reasons articulated in the fair use context. In a footnote to the pioneering fair use case, Campbell v. Acuff-Rose Music, Inc., the court concluded that “[i]f the use is otherwise fair, then no permission need be sought or granted,” and surmised that 2 Live Crew’s initial attempts to license the Acuff-Rose song may have been motivated by an effort to avoid costly litigation.[9] There are plenty of reasons why the Show may have wanted to work with the Brand, and none of those bona fide business determinations should take away from the legal foundations underpinning the Show’s potential defenses.

I can see why the Company isn’t particularly fond of the Show’s title, but I’ll end this post with one final case that should put the nail in their complaint’s’ coffin. In Stouffer v. National Geographic Partners, LLC, NatGeo launched a show called America the Wild and owners of the “Wild America” trademark sued.[10] In ruling for NatGeo, the court protected NatGeo’s First Amendment right to title its show with something obviously descriptive of its content, reminding the plaintiff and all future plaintiffs to come that “[w]hile the English language is notably quite expansive, the range of words to describe such programming is limited.”[11] So if there is a home renovation show about the ugliest houses in America, there is no legal obligation requiring the producers to jump through hoops to call it the Nastiest Nests in the Nation or any other subpar title simply because of someone else’s trademark. Call it what it is—a show about the Ugliest House in America. But maybe don’t expand into providing real estate services.

[1] “Any person who . . . uses in commerce any word, term, name, symbol, or device . . . which is likely to cause confusion” shall be liable for trademark infringement. 15 U.S.C. § 1125(a). [2] Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978) (citing Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495, 498-99 (2d Cir. 1962); 3 Restatement of the Law of Torts, § 716(b) and Comment b (1938)). [3] See Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 501 (1952) (“It cannot be doubted that motion pictures are a significant medium for the communication of ideas.”). [4] See Schad v. Borough of Mount Ephraim, 452 U.S. 61, 68 (1981) (“Entertainment, as well as political and ideological speech, is protected; motion pictures, programs broadcast by radio and television and live entertainment, such as musical and dramatic works fall within the First Amendment guarantee.”). [5] 875 F.2d 994, 1000 (2d Cir. 1989). [6] Id. [7] It is worth noting that the case in filed in Delaware and the Rogers test was formulated by the Second Circuit and not yet adopted by the Third Circuit. [8] Id. at 1001. [9] 510 U.S. 569, 585, n.18 (1994) (citing Fisher v. Dees, 794 F.2d 432, 437 (CA9 1986)). [10] NatGeo also tried unsuccessfully to license the Wild America show and later attempted to secure the owner’s blessing for calling their new NatGeo series Wild Americas or Wildest Americas. [11] Id. at 1145 (“The choice of a title for one's expressive creation is an expressive choice unto itself, including the choice of a descriptive title.”).