Business Vantage Point Blog

Season 3 of HBO’s “The White Lotus” features the Ratliff clan. The patriarch, Timothy Ratliff, and his eldest son, Saxon, attended Duke University. Timothy’s spouse and Saxon’s mother, Victoria, went to Duke’s competitor, the University of North Carolina at Chapel Hill, where their daughter, Piper, is currently enrolled. Lochlan, the youngest son, currently weighs his options between these rival institutions.

However, only Timothy Ratliff knows that while the family is vacationing in Thailand, he has been implicated in a money-laundering scheme. Consequently, upon the family’s return home their existence will dramatically transform, sending Ratliff into a psychological tailspin. During his mental health crisis, Ratliff sports a shirt displaying the Duke name and trademark, including when he contemplates ending his life and repeatedly points a firearm at his head.

In response, Frank Tramble, vice president of communications, marketing and public affairs at Duke, said in a emailed statement that “Duke appreciates artistic expression and creative storytelling but characters’ prominently wearing apparel bearing Duke’s federally registered trademarks creates confusion and mistakenly suggests an endorsement or affiliation where none exists.” Tramble said that the show “not only uses our brand without permission, but in our view uses it on imagery that is troubling, does not reflect our values or who we are, and simply goes too far.”

Why No Legal Challenge? Enter the Rogers Test

Despite its objections, Duke pursued no action against HBO. The rationale may be that “The White Lotus” employs the Duke and Duke mascot trademarks to convey details about a character’s background rather than to brand the series itself. This storytelling application likely receives First Amendment protection under the Rogers test, which seeks to distinguish between protected fair use and trademark violation. The test, which has been applied by courts across the United States, seeks to find the line between protected fair use and trademark infringement. This determination is heavily dependent on context and requires analysis of whether an unauthorized trademark use furthers artistic expression at a level that is greater than zero or is simply branding.

The Rogers test emerged from the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In the 1989 case, Ginger Rogers sued the creators and distributors of the film “Ginger and Fred,” alleging the movie’s title infringed her trademark rights. The court dismissed the case, finding that the use of Rogers' name in the film title was an artistic work that had an expressive element, not commercial speech, and therefore was protected by the First Amendment and not subject to the Lanham Act (the federal trademark and unfair competition statute, 15 U.S.C. 101, et seq.). In short, the Rogers test establishes that when a use of a trademark is expressive, there is no trademark infringement unless (1) the use of the mark has no artistic relevance to the underlying work or (2) the use of the mark explicitly misleads as to the source of the content of the work. 

The Supreme Court’s Interpretation

The U.S. Supreme Court examined the Rogers test in 2023 in Jack Daniel’s Properties v. VIP Products, 143 S.Ct. 1578 (2023), an action which came out of the Ninth Circuit. In the ruling, the court restricted the scope of the Rogers test, determining it doesn’t apply when the alleged infringer uses the mark to identify its own merchandise. While a dog toy by VIP Products mimicking a Jack Daniel’s whiskey bottle was deemed expressive, its commercial application as branding invalidated the parody defense the defendant had asserted.

As a result, the court vacated the Ninth Circuit's judgment and remanded for further consideration of whether consumers are likely to mistakenly believe that the dog toy is a Jack Daniel's product under the likelihood-of-confusion analysis and whether the defendant was liable for dilution by tarnishment under the Lanham Act.

Conversely, the references by “The White Lotus” to Duke function within the fictional narrative and don’t imply Duke’s sponsorship or affiliation with the program. Such usage aligns with protected creative expression that courts have shielded from trademark claims.

Digital Era Reputational Oversight

Intellectual property conflicts involving entertainment enterprises and brands will likely continue to proliferate. In today’s environment where content rapidly spreads through social networks, organizations may need swift responses to perceived reputational damage, even with tenuous legal grounds. Remaining silent might suggest tacit approval.

Going forward, brand proprietors should:

• Establish mechanisms to monitor unauthorized trademark appearances before viral spread.
• Collaborate with producers to authorize and regulate usage before release.
• Assess whether silence, litigation or public statements best serve brand interests.

For organizations navigating this intricate terrain, emphasis should target genuinely harmful or misleading applications rather than reacting to all mentions. Occasionally, as Duke demonstrated, a calculated statement addressing concerns proves more effective than litigation with minimal chance of victory.