Down to Earth Organics, LLC v. Efron

Background

Down to Earth Organics, LLC (DTE) alleged that the defendants infringed its “Down to Earth” marks by producing, marketing, and distributing the documentary series “Down to Earth with Zac Efron.” DTE asserted claims for false designation of origin and trademark infringement under the federal Lanham Act, as well as New York unfair-competition, deceptive-practices, and unjust-enrichment claims.

DTE alleged that it operated a media and product business using the “Down to Earth” name, including podcasts, clothing, and food-related products. The complaint identified marks relating to clothing, snack bars, and podcasts. The court stated that the claims appeared to concern the Clothing Mark and Podcast Mark, and it limited its analysis to those marks. The defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim.

Federal Trademark Claims

The court explained that federal trademark infringement and false-designation claims generally require a valid, protectable mark and a likelihood that consumers will be confused about the source, sponsorship, or approval of the goods or services.

Because the alleged use involved the title of an expressive television series, the court first considered whether the First Amendment test from Rogers v. Grimaldi applied. The court also considered the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, which asks whether a defendant used a mark as a source identifier for its own goods. The court found that the defendants used “Down to Earth” to identify the series’ subject matter and tone, rather than as a source identifier for the series. It therefore applied the Rogers test.

Under that test, the Lanham Act does not apply to an expressive work unless its title has no artistic relevance to the work or, when it has some artistic relevance, explicitly misleads consumers about the work’s source or content. The court found that “Down to Earth with Zac Efron” had artistic relevance because the series featured Zac Efron traveling and exploring healthy and sustainable living. The court also found that the title did not explicitly mislead consumers into believing that DTE produced, sponsored, or authorized the series. The series identified itself as a Netflix original series, and its credits identified the producers.

The court separately considered the eight likelihood-of-confusion factors commonly called the Polaroid factors. It found that DTE’s allegations of actual confusion were conclusory and did not explain how, or which, consumers had been confused. The court also found that the marks and the series were presented differently, that the addition of “with Zac Efron” reduced the likelihood of confusion, and that a 65-episode audio podcast and an eight-episode television series distributed through different online channels were not in sufficiently close competitive proximity. Overall, the factors weighed overwhelmingly for the defendants.

The court therefore held that DTE had not plausibly alleged a likelihood of confusion, much less the particularly compelling confusion required to overcome the First Amendment protection recognized under Rogers. It dismissed DTE’s federal trademark-infringement and false-designation claims with prejudice.

State-Law Claims

Because the federal claims were dismissed, the court declined to exercise supplemental jurisdiction—the authority to hear related state-law claims—in accordance with 28 U.S.C. § 1367(c)(3). It also dismissed DTE’s state-law claims for unfair competition, violations of New York’s Deceptive and Unfair Practices Act, and unjust enrichment.

Leave to Amend and Disposition

The court granted DTE leave to file an amended complaint, stating that any amendment should include additional factual allegations rather than merely repeating conclusory statements. The amended complaint was due by April 29, 2024, and it was to replace, rather than supplement, the original complaint. The court stated that if DTE did not file an amended complaint by that date, its claims would be dismissed with prejudice. If DTE filed one on time, the defendants’ response was due May 20, 2024.

Judge Nelson S. Roman granted the defendants’ motion to dismiss and directed the Clerk of Court to terminate the motion at ECF No. 46.