Everyone Loves the HBO Series ‘White Lotus,’ Except Duke University

Can HBO be sued over a T-shirt? Scott Hervey and Tara Sattler unpack Duke University’s beef with ‘White Lotus’ after a character wore a Duke tee on screen. Does this cross the legal line—or is it just creative expression? They’re talking trademark, the Rogers test, and what it all means for studios on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: In a recent episode, Timothy Ratliff is grappling with possible criminal liability for his involvement in a money laundering scheme. He thinks about taking his own life in a graphic scene where he holds a gun to his head while wearing a Duke University T-shirt. HBO didn’t get permission from Duke, and Duke publicly expressed its displeasure with the situation in a statement with the New York Times. I’m Scott Hervey, a partner with the law firm Weintraub Tobin, and today I’m joined by my partner, Tara Sattler. We are going to break down the potential of Duke’s trademark lawsuit against HBO on this installment of The Briefing. Tara, welcome back to The Briefing. Tara: Thanks for having me here, Scott. I do love the White Lotus series, so let’s talk about this one. Scott: Yeah, I love the White Lotus series, too. But this is something you and I deal with a lot in our representation of television studios and production companies. I think this one is really relevant for you and me and also relevant for a lot of our audience. Okay, jumping in. Duke really is not happy about the situation. I’m really not happy. Duke’s vice president for communications shared a statement with the New York Times, which stated as follows, Duke appreciates artistic expression and creative storytelling, but characters wearing apparel bearing Duke’s federally-registered trademarks create confusion and mistakenly suggests an endorsement or affiliation where none exists. He wrote that in an email. He also said, White Lotus 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. Tara: Like you said, Duke really isn’t happy happy at all. But let’s break down whether Duke really has any type of case against HBO besides just being unhappy. The shirt that was worn by the character had the name Duke on it, but it didn’t have any design elements, logos, anything like that. We’re really only talking about a trademark claim. Scott: Right. Yeah, it’s not a copyright claim. Okay, with it being just a trademark claim, what do you think? Does Duke have a case? Tara: No, I really don’t think that they do. As much as Duke may dislike the use of its T-shirt, all the things that the representative said, this is really exactly the situation that the Rogers test is meant to address. Scott: For us. For those that listen to this podcast, know that we talk about the Rogers test a lot. The Rogers test comes from a 1989 Second Circuit case, Rogers versus Grimaldi. It essentially creates a special framework for analyzing trademark claims when they involve expressive works protected by the First Amendment. Under the traditional Rogers test, the Lanamack doesn’t apply to an expressive works use of a trademark unless that use has no artistic relevance to the underlying work or explicitly misleads consumers about the source or content of the work. Tara: That Rogers test went through a pretty significant change in 2023. We’ve talked about this a lot, too. Then the Supreme Court decided the case Jack Daniels Properties versus VIP Products. That case involved a dog toy called Bad Spaniels that parodied a Jack Daniels whiskey bottle. The court there significantly clarified when the Rogers test should apply. Scott: Yeah, the key distinction the Supreme Court made was that the Rogers test doesn’t apply when a mark is used as a source identifier, regardless of whether it is also used to perform some expressive function. Tara: In other words, a third-party trademark is being used to identify the source of a product to tell consumers who made it, then the Rogers test doesn’t apply, and traditional trademark infringement analysis should be used. But if the third-party trademark is being used as part of an expressive work and not to identify who made the work, then the Rogers test does apply. Scott: I agree with you, Tara, that the Rogers test would apply since HBO wasn’t using the Duke Mark as a source identifier for the series. It just used it on a character’s wardrobe. It’s part of the creative, not a designation of who made the show. With Rogers being applicable, the first question is whether the use of Duke has any artistic relevance to the work. Then we’ll have to look at whether that use explicitly misleads consumers about the source of the content. Tara: For the first prong about whether Duke has any artistic relevance to the work. The Ninth Circuit has a very low bar. The artistic relevance just needs to exceed zero. The Timothy Ratliff character is a financier from Durham. Duke is located in Durham, North Carolina. Clearly, HBO was using the brand of T-shirt to establish at a minimum that Ratliff was from Durham. Scott: Right. Duke claimed that HBO’s use creates confusion and mistakenly suggests an endorsement or affiliation where none exist. The second prong of Rogers is supposed to look at whether the use is expressly misleading. Tara, what do you think? Tara: I really don’t think it’s misleading. I can’t see this use explicitly leading consumers to think that Duke was involved with the series or endorsed the series in any way because it’s one character wearing one shirt from a prominent university, from a town that he’s from. It all ties back to that one character. Anybody watching the show, it’s pretty clear that the entire show and the entire series doesn’t really have any other affiliation or otherwise seem to be endorsed by Duke, really, at all. Scott: Right. Going back to the creative relevance of the use, I think it also went towards not only just establishing where this guy was from, but also his prominence as a financier. He’s supposed to be a prominent, upstanding member of the community, a pillar of the financial community, a pillar of the financier community, yet he’s under criminal investigation for money laundering. I think that the use of Duke as a reflective of being a top-tier university, I think it was used for that very purpose. There’s been a lot of banter about this. This has gotten a lot of traction and a lot of talk in our industry. Thankfully, or not thankfully, most of the talking heads who have talked about this have come out with the same analysis that we have that Duke may be upset, but they don’t really have a case. I think that’s also necessary for the type of work that you and I do and the type of work that our clients do, right? Tara: Yeah, I agree. That’s often part of the analysis is Where is the differentiation between somebody being upset that their mark or product, et cetera, has been used and where that use would actually cross the line into giving rise to a where the other party would prevail over the production. We talk about that a lot. Scott: It’s important and necessary for our clients to create a realistic environment, an environment that its viewers can relate to. If you have to fake brands for every single thing, that environment becomes unrelatable. Then it doesn’t. Consumers, viewers, won’t really buy into it. Thank you, Roger’s test. Thank you, Second Circuit and Ninth Circuit. I guess that’s it. I don’t think there’ll be a case. I don’t think, unlike Pepperdine, which filed their lawsuit. I don’t think Duke is going to file a lawsuit here, but stranger things have happened, so we’ll see, right? Tara: Yeah, we’ll see. Scott: Well, that’s it for today’s episode of The Briefing. Thank you, Tara, for joining me today. And thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.