Case 2:20-cv-01556-WSH Document 23 Filed 03/30/22 Page 1 of 12

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF PENNSYLVANIA

HIGH OFF LIFE, LLC, )

)
Plaintiff, )
)
v. ) Civil Action No. 20-1556
)
FREEBANDZ PRODUCTIONS, LLC )
and SONY MUSIC HOLDINGS, INC., )
)
Defendants. )

MEMORANDUM OPINION

I. INTRODUCTION

Plaintiff High Off Life, LLC (“HOL”) alleges federal trademark infringement and unfair

competition claims, in violation of 15 U.S.C. §§ 1114 and 1125(a), against Defendants Freebandz
1
Productions, LLC (“Freebandz”) and Sony Music Holdings, Inc. (“Sony”) (together,

“Defendants”). (See Docket No. 1, ¶¶ 37-47). Plaintiff also asserts common law trademark

infringement and unfair competition claims against Defendants. (See id., ¶¶ 48-52). Presently

before the Court is Defendants’ Motion to Dismiss Plaintiff’s Complaint Pursuant to Fed. R. Civ.

P. 12(b)(6), which is opposed by Plaintiff. (Docket Nos. 19-22). After careful consideration of

the parties’ arguments in light of the prevailing legal standards, Defendants’ Motion will be

denied.

II. BACKGROUND

As alleged in the Complaint, HOL has “deep roots” in the hip-hop community,

particularly in Pennsylvania and the Atlanta area. (Docket No. 1, ¶ 1). In 2004, HOL’s

1 Defendant Sony Music Entertainment is incorrectly identified as Sony Music Holdings, Inc. in the
Complaint. (See Docket No. 19 at 1).

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founder, Zach Richards, began using the mark “High Off Life” relative to his music business to

emphasize his focus on more positive, conscious subject matter. (Id., ¶ 1). Beginning in

2009, HOL began manufacturing and selling HIGH OFF LIFE branded apparel and merchandise,

and it owns the domain www.highofflife.com, where it sells those items. (Id., ¶ 2). Since

2009, Richards and his associates have worn and advertised clothing bearing HIGH OFF LIFE

marks at concerts and other events, and Richards and HOL have held events under the HIGH

OFF LIFE brand. (Id., ¶¶ 2, 3). In 2017, Richards started a creative agency under the HIGH

OFF LIFE brand, from which HOL has produced hip-hop related content, including shooting

music videos and managing projects and advertising for hip-hop artists and brands. (Id., ¶ 3).

HOL also is known for producing a hip-hop focused commentary and freestyle rap show called

“High Off Life TV,” which streams on YouTube. (Id., ¶ 4).

HOL avers that it owns the following three federal trademark registrations issued by the

United States Patent and Trademark Office: (1) Reg. No. 5,569,671, issued on September 25,

2018, for the word mark HIGH OFF LIFE ENTERTAINMENT in International Class 41 for

“Entertainment services in the nature of recording, production and post-production services in

the field of music;” (2) Reg. No. 5,690,553, issued on March 5, 2019, for the HIGH OFF LIFE

mark in International Class 25 for “Shirts; . . . T-shirts; Athletic apparel . . . Graphic T-shirts; . . .

wearable garments and clothing . . .;” and (3) Reg. No. 5,690,565, issued on March 5, 2019, for

the HIGH OFF LIFE mark in International Class 35 for “Advertisement for others on the Internet

. . . .” (collectively, “HOL’s Registered Marks”) (Docket No. 1, ¶¶ 19-21). HOL alleges that

it has been using its HIGH OFF LIFE marks in relation to hip-hop music, clothing, events

promotion, and branding and advertising since early 2009, it has invested significant money and

time into building consumer recognition of its HIGH OFF LIFE brands in those areas, and thus it

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has acquired common law rights to HIGH OFF LIFE marks. (Id., ¶ 22).

According to the Complaint, Freebandz is owned by the rapper Future, and both are

based in Atlanta, Georgia, where HOL previously operated for nearly 10 years. (Docket No. 1,

¶¶ 5, 14, 23). HOL claims that associates of Freebandz and Future know of HOL’s founder,

Richards, and his long-time use of HIGH OFF LIFE marks to identify his hip-hop related music

and business ventures. (Id., ¶¶ 8, 23, 33). Nonetheless, Defendants allegedly knowingly

copied HOL’s marks in the release of Future’s album titled “High Off Life” on or about May 15,

2020 (the “Album”). 2 (Id., ¶ 5). HOL alleges that the Album originally was titled “Life is

Good,” but the title was changed to “High Off Life” at the last minute due to concern about

coronavirus-related negative press. (Id., ¶¶ 6, 25). HOL asserts that the replacement title

“High Off Life” bears no relation to the expressive content of the Album. (Id., ¶¶ 7, 26).

In addition to the Album, Freebandz began marketing and selling “High Off Life”

branded apparel and merchandise bearing marks that HOL claims are confusingly similar to

HOL’s Registered Marks and its common law HIGH OFF LIFE marks (“the Alleged Infringing

Goods”). (Docket No. 1, ¶¶ 8, 27, 28, 35). Freebandz allegedly sells the Alleged Infringing

Goods on its two websites and through its Instagram “Freebandz Shop.” (Id., ¶ 27, 29).

Defendants also supposedly engaged in a wide-spread advertising campaign for the Album and

the Alleged Infringing Goods, focusing on the hip-hop market segment that had been central to

HOL’s business since 2009. 3 (Id., ¶ 9).

HOL avers that it used its HIGH OFF LIFE marks extensively and continuously before

2 HOL alleges that Sony released the album through its Epic Records label. (Docket No. 1, ¶ 24).

3 Related thereto, HOL avers that it has lost its placement on search engines such as Google to links associated
with Defendants’ Album and apparel, thus interested customers are unable to find HOL’s website to make purchases,
and HOL’s goodwill has been damaged. (Docket No. 1, ¶ 9).

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Freebandz and Sony began to produce, market and sell the Album and the Alleged Infringing

Goods. (Docket No. 1, ¶ 34). HOL claims that the Album and the Alleged Infringing Goods

bear marks that are confusingly similar to HOL’s Registered Marks and common law marks.

(Id., ¶¶ 40, 50). Consequently, HOL alleges that Defendants’ use of the “High Off Life” marks

are likely to cause consumer confusion as to whether the Album and the Alleged Infringing

Goods originated from, or are affiliated with, HOL. (Id., ¶¶ 35, 38, 44, 49). Additionally,

HOL claims that it has suffered “significant” reverse confusion, causing consumers to believe

that HOL’s products and productions are associated with Defendants. (Id., ¶¶ 9, 35, 39).

All told, HOL alleges that Defendants’ actions infringe HOL’s Registered Marks, along

with its common law rights in the HIGH OFF LIFE brand. (Docket No. 1, ¶ 10). On June 12,

2020, HOL sent cease and desist letters to Defendants demanding that they immediately cease

their allegedly infringing activities, but Defendant did not respond and subsequently expanded

sales of the Alleged Infringing Goods. (Id., ¶¶ 11, 30). HOL then initiated this action

asserting claims for federal trademark infringement and unfair competition, (Counts One and

Two), and common claims for the same (Count Three). (See id., ¶¶ 37-52).

Defendants have moved to dismiss Plaintiff’s Complaint pursuant to Fed. R. Civ. P.

12(b)(6), Plaintiff filed a Response opposing Defendants’ Motion, and Defendants filed a Reply

thereto. (Docket Nos. 19-22). The matter is now ripe for disposition.

III. STANDARD OF REVIEW

To survive a Rule 12(b)(6) motion to dismiss for failure to state a claim, the well-pleaded

factual content in the complaint must allow “the court to draw the reasonable inference that the

defendant is liable for the misconduct alleged,” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), and

also “raise a right to relief above the speculative level.” Bell Atl. Corp. v. Twombly, 550 U.S.

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544, 555 (2007) (citation omitted). When analyzing a motion to dismiss, the factual

allegations should be separated from allegations that merely recite the legal elements of the

claim. Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). The well-pleaded facts

are accepted as true, but legal conclusions may be disregarded. Id. at 210-11. Next, a

determination is made as to “whether the facts alleged in the complaint are sufficient to show

that the plaintiff has a ‘plausible claim for relief.’ ” Id. at 211 (quoting Iqbal, 556 U.S. at 679).

This “plausibility” determination is “a context-specific task that requires the reviewing court to

draw on its judicial experience and common sense.” Iqbal, 556 U.S. at 679.

IV. DISCUSSION

A. Elements of Trademark Infringement and Unfair Competition

To state a claim for federal trademark infringement and unfair competition, a plaintiff

must plausibly allege three elements: “(1) it has a valid and legally protectable mark; (2) it owns

the mark; and (3) the defendant’s use of the mark to identify goods or services causes a

likelihood of confusion.” 4 A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d

198, 210 (3d Cir. 2000) (“We measure federal trademark infringement, 15 U.S.C. § 1114, and

federal unfair competition, 15 U.S.C. § 1125(a)(1)(A), by identical standards.”). “[T]he

elements of common law trademark infringement under Pennsylvania and federal law are

identical,” although the state law claim does not require the goods to travel in interstate

commerce. Standard Terry Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 780 n. 4 (3d Cir. 1986).

Given the factual content pled in the Complaint as summarized above, the Court find that HOL

4 “A likelihood of confusion exists when ‘consumers viewing the mark would probably assume that the
product or service it represents is associated with the source of a different product or service identified by a similar
mark.’ ” A & H Sportswear, 237 F.3d at 211 (quoting Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 862 (3d Cir.
1992)).

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has plausibly alleged these requisite elements to state trademark infringement and unfair

competition claims.

In moving to dismiss the Complaint, Defendants argue that HOL’s claims fail as a matter

of law because the Album’s title is protected by the First Amendment. (See Docket No. 20 at

16-23). In pressing this argument, Defendants urge the Court to apply the Rogers test, which

was developed by the Second Circuit Court of Appeals in Rogers v. Grimaldi, 875 F.2d 994 (2d

Cir. 1989). (See id. at 17-18). Defendants contend that HOL’s federal and state law trademark

infringement and unfair competition claims are barred by the First Amendment under Rogers

because the phrase “High Off Life” is artistically relevant to the Album, and the Album and the

Alleged Infringing Goods do not explicitly mislead consumers as to the source or content of the

work or the merchandise. (Id. at 22-23).

HOL responds that the Motion to Dismiss should be denied because a determination on

Defendants’ First Amendment defense is premature given that their arguments are fact-based and

thus not properly raised at this stage of the proceedings. (Docket No. 21 at 3-5). HOL

submits that the record should first be developed factually before the Court determines whether

the Album’s title is related to its content and whether Defendants’ use of HOL’s marks on the

Album and the Alleged Infringing Goods is explicitly misleading. (Id. at 5). Even if the Court

were to reach the merits and apply the Rogers test, HOL maintains that Defendants’ Motion still

should be denied under Third Circuit precedent, which bars application of Rogers to the Alleged

Infringing Goods because they are commercial speech. (Id. at 6-8). Even so, HOL contends

that sufficient facts are pled in the Complaint as to the Alleged Infringing Goods to support a

finding of likelihood of confusion. (Id. at 9-10). Further, as to the Album, the Rogers test is

inapplicable to the Album’s title, which uses an identical title in a confusingly similar manner.

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(Id. at 11-17). However, even if Rogers applies, the title “High Off Life” is not clearly related

to the Album’s content, and the title is explicitly misleading as to its content. (Id. at 17-20).

In reply, Defendants contend that the Complaint does not state a plausible cause of action

because it is insufficient for HOL to simply plead that the Album’s title, High Off Life, “bears no

relation to the expressive content of the album.” (Docket No. 22 at 7-8) (quoting Docket No. 1,

¶ 26)). Additionally, Defendants reiterate that the Album title is entitled to First Amendment

Protection because both prongs of the Rogers test are satisfied. (Id. at 9-15). Defendants

further assert that the Alleged Infringing Goods are entitled to First Amendment protection

because Third Circuit precedent does not preclude application of Rogers to goods. (Id. at

15-17). Further, HOL has not alleged any facts from which it is plausible to conclude that

consumers have been explicitly misled as to the source of the Alleged Infringing Goods. (Id. at

17-18). Finally, Defendants maintain that the Court may consider their First Amendment

defense at the motion to dismiss stage. (Id. at 19-20).

B. The Rogers Test

In Rogers, the Second Circuit Court of Appeals established a framework to analyze

when the First Amendment provides a defense against a trademark infringement claim where the

title of an artistic work is the subject of such a claim. See Rogers, 875 F.2d at 999. In that

case, film star Ginger Rogers claimed that the defendant’s film, “Ginger and Fred,” created the

false impression that she was associated with the film. Id. at 996-97. The Second Circuit

began its analysis by noting that “[m]ovies, plays, books, and songs are all indisputably works of

artistic expression and deserve protection.” Id. at 997. As the court observed, “[b]ecause

overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment

values, we must construe the Act narrowly to avoid such a conflict.” Id. at 998. However, the

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court also recognized that artistic works may be used to deceive consumers because they are

made available in the commercial marketplace. Id. at 997. The court held that “in general

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.” Id. at 999.

Under the test developed by the Second Circuit in Rogers, the proper balance between trademark

law and free expression “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.” Id.

In summary, under the Rogers test, a title will be protected unless it has “no artistic relevance” to

the underlying work or, if there is artistic relevance, the title “explicitly misleads as to the source

or the content of the work.” Id.

While a number of Courts of Appeals have adopted the Rogers test, 5 the Third Circuit

Court of Appeals has not yet done so. See Hart v. Elec. Arts, Inc., 717 F.3d 141, 157 (3d Cir.

2013) (“[W]e thus remain skeptical that the Rogers Test applies to the general contents of a work

when analyzing right of publicity claims.”); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1018

(3d Cir. 2008) (declining to apply Rogers to use of a narrator’s voice in a television production).

In declining to adopt the Rogers test, the Facenda Court expressed doubt whether it could apply

beyond the title of a work of artistic expression. See Facenda, 542 F.3d at 1018.

5 The Fifth, Sixth, Ninth and Eleventh Circuit Courts of Appeals have adopted the Rogers analysis. See
University of Alabama Bd. of Trustees v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012); Parks v. LaFace
Records, 329 F.3d 437, 451-52 (6th Cir. 2003); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002);
Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 & n. 7 (5th Cir. 1999).

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C. Defendants’ First Amendment Argument is Premature

Although Defendants cite various cases in which a court granted a motion to dismiss

Lanham Act claims by applying Rogers, (see Docket No. 22 at 19-20), 6 as one court has

observed, “consideration of the Rogers defense on a motion to dismiss appears to be the

exception, not the rule.” Sapieyevski v. Live Nation Worldwide, Inc., Civ. No. 18-830, 2019 WL

1284302, at *4 (D.D.C. Mar. 20, 2019). In this instance, even if the Court were to accept

Defendants’ invitation to apply the Rogers framework as a valid defense to HOL’s claims, the

Court concludes that a motion to dismiss is not the appropriate stage in this litigation to address

the applicability of the First Amendment defense. See e.g., Cornette v. Graver, No.

3:19-cv-219, 2020 WL 1643370, at *7 (W.D. Pa. Apr. 2, 2020) 7 (whether a violation of the

Lanham Act has occurred is a question that is “predominantly factual in nature,” thus a motion to

dismiss is not the appropriate stage at which to resolve a defendant’s argument that the First

Amendment shields it from Lanham Act liability) (quoting Facenda, 542 F.3d at 1024). In

reaching this conclusion, the Court does not definitively hold that Defendants are not entitled to

First Amendment protection under the Rogers test. Instead, the Court finds that the analysis of

whether the First Amendment protects Defendants’ actions is more appropriately conducted at

the summary judgment stage after development and presentation of a factual record.

6 This includes a court in the Eastern District of Pennsylvania in Hidden City Philadelphia v. ABC, Inc., Civ.
No. 18-65, 2019 WL 1003637 (E.D. Pa. Mar. 1, 2019), wherein the court acknowledged that the Third Circuit has
declined to adopt Rogers, (id. at *3, n. 6), but applied the test in dismissing claims on a Rule 12(b)(6) motion based on
the record presented in that case. (Id. at *4-*5).

7 Defendants maintain that Cornette is inapposite because at issue there was whether the defendant’s shirts
were a parody protected by the First Amendment, which the court observed was “not a determination that is well
suited for a motion to dismiss,” and the opinion did not mention the Rogers test. (Docket No. 22 at 19) (quoting
Cornette, 2020 WL 1643370, at *7)). Despite these distinctions, the Court finds Cornette instructive for the general
proposition that whether a Lanham Act violation has occurred is a question that is predominantly factual in nature,
which is better resolved after development and presentation of a factual record. Cornette, 2020 WL 1643370, at *7.

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Although the Court expresses no opinion on the merits of Defendants’ First Amendment

defense, the Court briefly highlights two points to illustrate that this is not the appropriate stage

in the litigation to address that defense. First, as explained in Rogers, “[m]ovies, plays, books,

and songs are all indisputably works of artistic expression and deserve protection.” Rogers, 875

F.2d at 997. As such, while the Album would appear to qualify as a work of artistic expression

subject to the Rogers framework, it is unclear whether Rogers is applicable to the Alleged

Infringing Goods, particularly given that the Third Circuit Court of Appeals has expressed doubt

as to its applicability beyond the title of a work of artistic expression. 8 See Facenda, 542 F.3d at

1018. Accordingly, further factual development of the record relative to the nature of the

Alleged Infringing Goods will aid in ultimately resolving this issue.

By way of further example, with respect to Rogers’ first prong as applied to the

Album, the Court is cognizant that whether the title is artistically relevant to the underlying work

is a “low threshold of minimal artistic relevance,” which is met as long as the title of the work is

“not arbitrarily chosen just to exploit the publicity value of” a plaintiff’s trademark. Rogers,

875 F.2d at 999, 1001. Despite this low threshold, additional factual development is necessary

in order to make the artistic relevance determination in this case. On one hand, HOL alleges

that the Album’s original title, which was “Life is Good,” was changed to “High Off Life” at the

last minute due to concern about coronavirus-related negative press, and the title “High Off Life”

8 Defendants submit that “goods that bear an album title, and that were created and marketed specifically to
promote an album, should be included in a court’s assessment of whether the underlying artistic expression is
protected by Rogers.” (Docket No. 20 at 18). In support, Defendants cite Twentieth Century Fox Television v.
Empire Distribution, Inc., 875 F.3d 1192, 1196-97 (9th Cir. 2017) for the proposition that, “[a]lthough it is true that
these promotional efforts technically fall outside the title or body of an expressive work, it requires only a minor
logical extension of the reasoning of Rogers to hold that works protected under its test may be advertised and marketed
by name, and we so hold.” Despite the Ninth Circuit’s holding, to reiterate, the Third Circuit Court of Appeals in
Facenda expressed doubt as to Rogers’ applicability beyond the title of a work of artistic expression. See Facenda,
542 F.3d at 1018.

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bears no relation to the expressive content of the Album. (Docket No. 1, ¶¶ 25, 26). On the

other hand, Defendants contend in their briefing that the Album is a collection of songs about life

and its joys, “High Off Life” was not arbitrarily chosen as the Album’s title, Future supposedly

chose “High Off Life” as a substitute title because of its artistic relevance to the expressive

content of the Album, and the Album is a product of Future reflecting on his life and recognizing

his good fortune, which is apparent from the Album’s song titles alone. (Docket No. 20 at 6,

19, 20). Despite Defendants’ assertions, at this stage, the Court has no evidence concerning

Future’s intent in choosing the Album’s title or that the Album is a product of Future’s reflection

on his life and recognition of his good fortune. Contrary to Defendants’ suggestion, it is not

readily apparent from the song titles Defendants cite (Touch the Sky, Hard to Choose One,

Trillionaire, Too Comfortable, Accepting My Flaws and Life is Good), 9 (see Docket No. 20 at

19), that the Album title “High Off Life” is artistically relevant to the content of the Album. 10,11

9 “In deciding a Rule 12(b)(6) motion, a court must consider only the complaint, exhibits attached to the
complaint, matters of public record, as well as undisputedly authentic documents if the complainant’s claims are based
upon these documents.” Mayer v. Belichick, 605 F.3d 223, 230 (3d Cir. 2010). Here, HOL’s Complaint refers to the
songs on the Album. (See Docket No. 1, ¶ 26) (alleging that “[t]he album title ‘High Off Life’ bears no relation to the
expressive content of the album”)). The parties do not dispute that the Court may consider the song titles in ruling on
the Motion to Dismiss. (See Docket Nos. 20 at 8, n.1, 15; 21 at 16, n.3).

10 The Album title “High Off Life” and the song titles cited by Defendants differ from those at issue in Caiz v.
Roberts, 382 F. Supp. 3d 942, 945 (C.D. Cal. 2019), wherein the plaintiff alleged that the defendants infringed on his
federal trademark for “Mastermind” by releasing a hip-hop album entitled “Mastermind.” The Caiz court determined
at summary judgment that the album title “Mastermind” had artistic relevance to the underlying work for purposes of
the first prong of Rogers, where six of nineteen songs on the album made direct use of “mastermind” in the lyrics, one
song directly referenced the overall album itself by its title, linking the title to the contents, and the defendants
provided evidence of the use of the term “mastermind” as part of a larger, abstract theme used by hip-hop artists
claiming to be masterminds of music. (Id. at 949-50).

11 For similar reasons, even if the Rogers test can be applied to the Alleged Infringing Goods, it is premature to
determine without further factual development whether “[u]se of ‘high off life’ on the Goods is . . . artistically relevant
to the Album they are promoting, the title of which is artistically relevant to its content” as Defendants assert. (See
Docket No. 22 at 17; see also Docket No. 20 at 20 (asserting that the designs on the Alleged Infringing goods “were
intentionally chosen because they conformed to the Album’s expressive theme”)).

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Rather, Defendants’ arguments are factual contentions that must be balanced against HOL’s

allegations, and therefore are better addressed at the summary judgment stage.

V. CONCLUSION

Given that further development of a factual record is necessary before conducting an

in-depth analysis of Defendants’ First Amendment defense, the Court declines to further

consider Defendants’ First Amendment arguments at this stage of the proceedings.

Accordingly, Defendants’ Motion to Dismiss Plaintiff’s Complaint pursuant to Fed. R. Civ. P.

12(b)(6), (Docket No. 19), is denied.

An appropriate order follows.

s/ W. Scott Hardy
W. Scott Hardy
United States District Judge

Date: March 30, 2022

cc/ecf: All counsel of record

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