Florida A&M University (FAMU) recently filed a law suit against the maker of a porn video that depicted multiple individuals engaging in sexual acts in a setting that allegedly represented a dorm room on the FAMU campus. FAMU claims that such association constitutes false or misleading descriptions and misrepresentations under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), federal trademark dilution under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(c), disparagement and injury to business reputation and trademark dilution under Florida Statute § 495.151(2009), and common law trademark infringement under Florida law.
Although this suit does not relate directly to virtual worlds, we are writing about it because this type of fact pattern commonly occurs in virtual worlds where famous brands are used in seedy portions of virtual worlds. Like this case, such uses can be actionable to prevent brand disparagement and tarnishment and other harms.
FAMU claiims that the defendant used FAMU's trademarks in the registered mark "FAMU", its tradename, "Rattlers," and its orange and green color scheme, which was chosen to represent Florida's major industry (citrus). FAMU alleges that it has produced and sold merchandise bearing the "FAMU" mark since 1953 and the "Rattlers" mark since 1985.
The Complaint alleges that Defendant RK operates the website "daredorm.com," which depicts individuals engaging in sexually explicit activities in what appears to be dorm rooms at various college campuses throughout the United States and charges a fee to internet consumers who wish to view the videos depicted on its "daredorm.com" website.
The Complaint alleges that on or about March 1, 2010, RK posted a full-length video entitled "BigRattler77" on its "daredorm.com" website depicting no less than eight (8) individuals engaging in multiple acts of sexual intercourse in what is intended to appear to be a FAMU dorm room, that the video contains several visual depictions of and oral references to the FAMU and "Rattlers" marks and depicts the orange and green color scheme in connection with the "FAMU" and "Rattlers" marks. The Complaint further alleges that the caption for the "BigRattler77" video states that it was filmed 'at a historically black college in Florida" and that the individuals were FAMU students and contains derogatory and highly offensive racial innuendo and visual depictions of gang signs purportedly associated with FAMU.
FAMU complains that "BigRattler77" is a transparent attempt to trade on the good name and identity of Florida Agricultural and Mechanical University and its marks by wrongly insinuating that its students routinely engage in the debasing and degrading behavior depicted therein, that it is likely to deceive, confuse and mislead prospective purchasers and viewers of the video into believing that the video was produced, authorized or is in some manner associated with FAMU.
FAMU seeks a preliminary and permanent injunction to prevent such use.
The caption of the case is Florida Agricultural & Mechanical University Board of Trustees v. RK Netmedia Inc. et al., No. 10-0100, complaint filed (N.D. Fla., Tallahassee Div. Mar. 16, 2010).