The intersection of trademark law and the First Amendment remains one of the most complex battlegrounds in intellectual property. A recent ruling in the dispute between the surf and lifestyle brand Lost International and Lady Gaga provides a critical look at how courts are navigating trademark conflicts involving expressive works in a post-Jack Daniel’s landscape.
In December, a federal court denied Lost International’s motion for a preliminary injunction, allowing Lady Gaga to continue using the mark “Mayhem” for her 2025 album, worldwide concert tour, and tour merchandise.
The Core of the Dispute
Lost International, established in 1985, has utilized the mark “Mayhem” since 1988 for surfboards, equipment, and clothing. They hold a federal word mark registration for the term covering various apparel items.
The conflict arose when Lady Gaga released her album Mayhem in March 2025 and launched a global tour of the same name. Lost International sought to enjoin the sale of tour-related clothing and headwear, arguing that these items served as source identifiers that would cause consumer confusion and irreparable injury to their brand.
The Rogers Test vs. Traditional Confusion Analysis
Typically, trademark infringement is analyzed in the Ninth Circuit using the Sleekcraft factors to determine likelihood of confusion. But the District court took a different approach. The District court applied the Rogers test.
Lost International argued that while the album itself might be expressive, putting the word “Mayhem” on t-shirts and hoodies shifted the use from artistic expression to source identification. The court rejected this “disaggregation,” citing precedent from Twentieth Century Fox v. Empire Distribution, which extends First Amendment protection to auxiliary, revenue-generating promotional activities—including merchandise.
In Twentieth Century Fox v. Empire Distribution, the Ninth Circuit rationalized that its merely a “minor logical extension of the reasoning of Rogers to hold that works protected under its test may be advertised and marketed by name.” The Ninth Circuit also said that the balance of First Amendment interests struck in Rogers and the cases that followed could be “destabilized if the titles of expressive works were protected but could not be used to promote those works.” .
Applying the Two-Prong Framework
Under the Rogers test, the court found Lady Gaga’s use of the mark protected based on two criteria:
- Artistic Relevance: The bar for relevance is “above zero.” Since the merchandise directly relates to the titled album and tour, this prong was easily satisfied.
- Explicitly Misleading: To fail this prong, there must be an “explicit indication” or “overt claim” that misleads consumers. The court ruled that the mere use of the mark on clothing is not enough to satisfy this requirement.
Navigating the Post-Jack Daniel’s Landscape
This decision is particularly noteworthy given the Supreme Court’s ruling in Jack Daniel’s Properties v. VIP Products, which stated that the Rogers test does not apply when a defendant uses a trademark as a trademark (a source identifier) even when that is in connection with an expressive work.
While recent Ninth Circuit cases like Punchbowl, Inc. v. AJ Press, LLC have narrowed the application of Rogers following the Jack Daniel’s decision, this district court chose to maintain the protection for promotional merchandise tied to expressive titles.
It would be easy to say that this decision reinforces that promotional merchandising—when tied directly to expressive works—continues to enjoy First Amendment protection under Rogers. However, in light cases such as Punchbowl that apply Jack Daniels, it wouldn’t be prudent to read this decision this way. That said, the analytical framework applied by the court, appears to be the correct approach. There is an argument that Jack Daniels has been over applied, specifically to situations that are the closer to the factual context of Rogers…the use of a mark in connection with the title of an expressive work.
In Jack Daniels, the Supreme Court not only called out facts under which the Rogers test was created, in an announcing the limitations of the application of Rogers, it also noted that there may be a “rare occasion where Rodgers may be applicable to the use of a mark in connection with an expressive work that also functions as a source identifier. It seems possible that some lower courts have forgotten this caveat.