Lions, Tigers, and Trademarks: IP Lessons from “Tiger King”

Author: Alison Pringle

Netflix’s recent docu-series “Tiger King” has quarantined Americans captivated—a reported 34 million viewers binged the series within the first ten days of its release alone. Amongst the series’ tiger-related exploits lies a bitter trademark lawsuit brought against the series’ mullet-sporting anti-hero Joseph Maldonado-Passage (known to viewers as “Joe Exotic”).

Maldonado-Passage created the Oklahoma-based “GW Exotic Animal Memorial Park” and filled it with tigers, lions, and other exotic animals. Throughout the 2000s, Maldonado-Passage became infamous in animal rights circles for breeding tiger cubs and exhibiting his animals at malls across the country.

The “Tiger King” series chronicles the long-standing feud between Maldonado-Passage and Carole Baskin. Baskin is the founder of “Big Cat Rescue,” a non-profit sanctuary for big cats. Maldonado-Passage was eventually put on trial after an unsuccessful plot to murder Baskin went awry. While Maldonado-Passage is currently serving a twenty-two year prison sentence for attempted murder-for-hire and violations of the Endangered Species Act, it was a trademark judgment that served as the catalyst for Exotic’s downfall.

Trademark Litigation

In 2005, the Big Cat Rescue Corp. registered a BIG CAT RESCUE logo for charitable fund raising services, animal rescue services, and entertainment services such as animal exhibition1:

After trying to shut down Maldonado-Passage for years, it was Baskin’s trademark rights that allowed her to finally pounce and take legal action against him. In 2011, Big Cat Rescue filed a lawsuit in the Middle District of Florida against Maldonado-Passage and GW Exotic after the latter adopted the trade name “BIG CAT RESCUE ENTERTAINMENT.” Big Cat Rescue alleged Maldonado-Passage and GW Exotic sought to disparage Big Cat Rescue through the “BIG CAT RESCUE ENTERTAINMENT” mark by causing the public to believe Big Cat Rescue was engaged in the exploitation of exotic animals.

For a trademark infringement claim, a plaintiff must show that: (1) it has developed a protectable trademark right in a trademark; (2) the defendant uses a confusingly similar mark in such a way that creates a likelihood of confusion, mistake and/or deception with the public; and (3) the plaintiff incurred damages as a result of the defendant’s infringing actions.

Big Cat Rescue’s trademark registration evidenced its rights in the “BIG CAT RESCUE” mark. Big Cat Rescue also did not have a large hurdle to jump in demonstrating Maldonado-Passage’s “BIG CAT RESCUE ENTERTAINMENT” mark was confusingly similar to the “BIG CAT RESCUE” mark. Big Cat Rescue further presented three key facts demonstrating Maldonado-Passage willfully infringed its mark.

First, Maldonado-Passage created the below ad featuring the “BIG CAT RESCUE ENTERTAINMENT” mark over a photo of a snow-leopard’s eyes, which Big Cat Rescue alleged was “virtually identical” to a photograph Big Cat Rescue used as the banner for its website at the time. The ad for the Oklahoma-based zoo displayed a Florida telephone number and the words “Florida Office,” which Big Cat Rescue argued would confuse the public into believing “Big Cat Rescue Entertainment” was affiliated with the Florida-based Big Cat Rescue.

Second, Big Cat Rescue demonstrated Maldonado-Passage used the BIG CAT RESCUE ENTERTAINMENT mark to try to divert Google traffic to his sites rather than those of Big Cat Rescue. A Facebook post created by a user named “Joe Exotic” stated, “If you must know, I registered Big Cat Rescue Entertainment and leased the name out so you could ruin BCR on Google all by yourself, and it is working. LOL.” Another “Joe Exotic” post referred to Big Cat Rescue Entertainment as “My new company LOL.” Maldonado-Passage attributed both posts to hackers.

Finally, Big Cat Rescue alleged Maldonado-Passage had also sought to file the trade name “The Caroll Baskin Entertainment Group.”

In defense of the infringement claim, Maldonado-Passage argued in his pre-trial statement that his actions were a necessary response to BCR’s campaign of disseminating misinformation about him in an effort to shut him down:

Defendants had no alternative but to respond, in part, by reflecting the egregious conduct of BCR and the Baskins back upon BCR through a counter-campaign designed to do nothing more than cause BCR to suffer from its own misconduct.

This lawsuit, and BCR’s abuse of copyright laws, is merely one more tool for the Baskins and BCR in their all-out assault on Defendants.

This argument did not absolve Maldonado-Passage from liability for the trademark claims brought against him. The parties ultimately stipulated to entry of a consent judgment against Defendants prior to trial.

References to Baskin’s Late Husband Excluded from Trademark Trial

Of note for fans of the series and legal procedure buffs, Big Cat Rescue filed a motion in limine to exclude any reference at trial to Baskin’s late husband, Jack Donald Lewis. Lewis’s 1997 disappearance remains a significant source of controversy and was featured heavily in the docu-series. Throughout his feud with Baskin, Maldonado-Passage frequently spouted his belief that Baskin killed Lewis and fed him to one of her tigers. Maldonado-Passage even went so far as to reference Lewis’s disappearance in his pretrial statement and press releases related to the lawsuit. As Big Cat Rescue argued, and the Court affirmed in granting the motion (unsurprisingly), mention of Lewis’s disappearance would likely prejudice a jury against Big Cat Rescue and had no relevance to the trademark infringement claims at issue.

Trademark Judgment

 The docu-series demonstrates the power and value of a trademark as well as the potentially high stakes of an infringement suit. The trademark judgment aided in eventually bringing down the “Tiger King.” Big Cat Rescue was able to recover all of Maldonado-Passage and GW Exotic’s profits from their mall road shows during the time period Defendants adopted the “BIG CAT RESCUE ENTERTAINMENT” mark. Total gross receipts from Defendants’ road shows between 2010 and 2011 equaled $653,000.00. Big Cat Rescue was also entitled to $300,000 for its attorneys’ fees and costs related to the trademark lawsuit, amounting to a total judgment of $953,000.

As shown in the series, the judgment financially ruined Maldonado-Passage and GW Exotic. Big Cat Rescue’s aggressive judgment enforcement actions seem to have sent Maldonado-Passage into a tailspin that eventually led to him hiring a hitman to take out Baskin.

Tiger King offers much in the way of Jerry Springer-esque entertainment and nothing when it comes to moral guidance. Viewers can take away one lesson, though: don’t use your competitor’s trademark as a weapon and brag about it on the internet.

Alison Pringle is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on intellectual property and commercial litigation, with an emphasis on trademark, copyright, contract, technology, and privacy disputes. She also counsels clients on transactional intellectual property issues. Ms. Pringle’s biography can be found here.
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1 USPTO Serial No. 76568568. In 2014, the Big Cat Rescue Corp. also registered the word mark BIG CAT RESCUE under USPTO Serial No. 85850084.

SCOTUS Redefines State “Piracy”

Author: Alison Pringle

The Supreme Court recently ruled in favor of keeping state governments immune from copyright infringement lawsuits in Allen v. Cooper (Case No. 18-877). The decision affirmed the Fourth Circuit’s dismissal of a videographer’s infringement claim against the state of North Carolina.

The Shipwreck Footage in Dispute

The copyrighted material at issue involved footage of wreckage from the Queen Anne’s Revenge, famed pirate Blackbeard’s ship that ran aground off North Carolina’s coast in 1718. Videographer Frederick Allen spent over a decade creating videos and photos of the ship’s underwater excavation. Allen later registered copyrights in the works.

The dispute began when North Carolina used Allen’s footage as part of an online marketing campaign. The State hosts frequent Blackbeard-festivals and its Maritime Museum features artifacts from the Queen Anne’s wreckage. The State used Allen’s works to promote its Blackbeard-related tourism.

Lower Court Rulings

Allen sued for monetary damages after the State posted his photos of the shipwreck online allegedly without payment or permission.

North Carolina argued sovereign immunity precluded Allen’s suit against the State and moved to dismiss. The District Court for the Eastern District of North Carolina refused to dismiss Allen’s claims but the Fourth Circuit reversed, finding Congress had not abrogated the States’ immunity from copyright infringement suits.

The Supreme Court affirmed by ruling Congress lacked a valid constitutional basis to abrogate North Carolina’s sovereign immunity under existing legislation. The ruling required a deep dive into constitutional interpretation and congressional power.

Congressional Action and Constitutional Limitations

Generally, under Eleventh Amendment sovereign immunity, federal courts cannot hear lawsuits brought by individuals against a non-consenting state. However, a court may permit such suits if: (1) Congress has enacted “unequivocal statutory language” abrogating the States’ immunity from suit;1 and (2) a constitutional provision allows Congress to encroach on the States’ sovereignty.2

In the early 1990’s, Congress passed two acts abrogating the States’ sovereign immunity with respect to copyright and patent litigation via the Copyright Remedy Clarification Act (“CRCA”)3 and “Patent Remedy Act” (“PRA”)4—fulfilling the first prong for abrogation based on unequivocal statutory language.5 The remaining issue for the Allen Court was whether Congress had the power to abrogate the States’ immunity from copyright infringement suits via the CRCA.

The Court considered two constitutional provisions that would arguably allow Congress to pass such legislation: Article I, Section 8 and Section 5 of the Fourteenth Amendment.

Congress Lacked Authority to Abrogate State Immunity Under Article I, Section 8

Article I, Section 8, Clause 8, also known as the Constitution’s “Intellectual Property Clause,” gives Congress the power to grant copyrights and patents.6 Under this Clause, copyright holders are entitled to certain “exclusive” rights in their creations and generally have the right to exclude others from using their works without permission.

Allen argued the Intellectual Property Clause should be construed as granting Congress the power to pass legislation abrogating the States’ sovereign immunity as to copyright lawsuits. Allen contended the Intellectual Property Clause could not provide an “exclusive” right to copyright holders if government infringers could pillage their works with immunity. According to Allen, it was “antithetical” to allow any government to infringe the rights Congress has secured:

When states infringe the exclusive federal rights that Congress is charged with securing, Congress can make states pay for doing so.7

The Court rejected this argument under precedent from Florida Prepaid v. College Savings Bank, determining that Article I did not confer such power on Congress.8

In Florida Prepaid, the Court ruled Congress lacked the power to abrogate State immunity from patent litigation pursuant to the Intellectual Property Clause. Thus, the Intellectual Property Clause could not support the PRA. The Allen Court extended its Florida Prepaid ruling with respect to the CRCA: Congress could not use its Article I powers to circumvent the limits sovereign immunity places upon federal jurisdiction. In delivering the Allen opinion, Justice Elena Kagan stated:

[T]he power to ‘secur[e]’ an intellectual property owner’s ‘exclusive Right’ under Article I stops when it runs into sovereign immunity.

With the Intellectual Property Clause negated as a potential source of Congressional authority for the CRCA, the Court next turned to the Fourteenth Amendment.

The CRCA Exceeded Congress’s Authority to Abrogate State Immunity Under the Fourteenth Amendment

The Fourteenth Amendment’s Due Process Clause provides that no State shall deprive any person of life, liberty, or property without due process of law.9 As the Court acknowledged in Allen, copyrights are a form of property.

Section Five of the Fourteenth Amendment authorizes Congress to enforce the commands of the Due Process Clause by creating legislation limiting the States’ authority. Thus, Congress can abrogate the States’ sovereign immunity under this clause. However, this abrogation must be “congruent and proportional” to the Fourteenth Amendment injury.10 In other words, Congress must only create remedies that are a proportionate response to the constitutional rights at issue.

The Allen Court ruled the CRCA exceeded Congress’s Section Five authority because it went too far in abrogating sovereign immunity for any and every infringement suit.

The Court looked to the nature and extent of State copyright infringement at the time of the CRCA’s passing in relation to the scope of Congress’s response. The Court found the CRCA’s broad abrogation of immunity was disproportionate where Congress identified only twelve instances of State-instigated copyright infringement. Further, of those twelve instances, only two constituted willful infringement (i.e. sufficient to raise a constitutional issue.).11 In the Court’s view, these examples did not identify a serious constitutional problem justifying complete abrogation of States’ sovereign immunity against infringement claims.

The Court emphasized that, like the PRA, the CRCA was overly broad where it did not set any limits on abrogation. For example, neither statute confined abrogation to suits alleging willful infringement or infringement authorized by state policy. Rather, both the PRA and CRCA impermissibly “exposed all States to the hilt—on a record that failed to show they had caused any discernible constitutional harm (or, indeed, much harm at all).”

Consequently, the Court ruled the CRCA failed the “congruence and proportionality” test. Evidence of Fourteenth Amendment injury supporting the CRCA was “exceedingly” slight and the CRCA’s “indiscriminate scope” was too out of proportion to any due process problem.

Can States Now Use Copyrighted Material Without Permission and With Impunity?

The Allen ruling presents uncertainty for copyright holders who fear States can now use their works without permission and consequence. For example, as the ruling stands, States can theoretically upload and use copyrighted movies and music onto government websites. As Justice Breyer posited to North Carolina’s counsel during oral argument:

What the state decides to do with its own website, charging $5 or something, is to run Rocky, Marvel, whatever, Spider-Man, and perhaps Groundhog Day, all right? Now, great idea. Several billion dollars flows into the treasury. Okay? Now, if you win, why won’t that happen?12

The future of copyright law as it pertains to States is indeed unclear. However, as the Court noted in its opinion, States generally respect copyright law and intentional infringement is uncommon.13 Additionally, while States are currently immune from infringement suits for monetary damages, copyright holders may still seek an injunction against an individual state employee responsible for the infringement under Ex Parte Young, 209 U.S. 123 (1908). Further, any third parties who facilitate or participate in state-sponsored infringement cannot expect immunity.

The Court also suggested States might be subject to private infringement suits in the future. Justice Kagan invited Congress to create new legislation addressing State copyright infringement that, unlike the CRCA, is narrowly tailored and designed to redress or prevent unconstitutional conduct, stating:

That kind of tailored statute can effectively stop States from behaving as copyright pirates. Even while respecting constitutional limits, it can bring digital Blackbeards to justice.

Read the Court’s opinion in its entirety here.

Alison Pringle is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on intellectual property and commercial litigation, with an emphasis on trademark, copyright, contract, technology, and privacy disputes. She also counsels clients on transactional intellectual property issues. Ms. Pringle’s biography can be found here.
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1 Seminole Tribe of Fla. v. Florida, 517 U. S. 44, 54 (1996)
2 Kimel v. Florida Bd. of Regents, 528 U. S. 62, 78 (2000)
3 Any State “shall not be immune, under the Eleventh Amendment [or] any other doctrine of sovereign immunity, from suit in Federal court” for copyright infringement. 17 U. S. C. § 511(a)
4 Also known as the “Patent and Plant Variety Protection Clarification Act”
5 17 U.S.C. § 511(a); 35 U.S.C. § 296(a)
6 “The Congress shall have power … to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Article I, § 8, cl. 8.
7 Transcript of Oral Argument heard November 5, 2019, p. 3:11-14
8 527 U.S. 627 (1999)
9 Amendment XIV, § 1
10 City of Boerne v. Flores, 521 U.S. 507, 520 (1997)
11 In Florida Prepaid and Allen, the Court defined an unconstitutional infringement as “intentional conduct” for which there is no adequate state remedy.
12 Transcript of Oral Argument heard November 5, 2019, p. 36:17-37:2
13 Copyright Office, Copyright Liability of States and the Eleventh Amendment 103 (1988) (Oman Report)