Saul Goodman Wins Real-Life Legal Case as Judge Dismisses Trademark Suit

Saul Goodman: one part lawyer, one part used car salesman. A one-man circus with a 1.000 batting average for his crooked clients. Now, it looks like his good luck is playing out in the real world.

Better Call Saul is the spin-off and prequel series to the acclaimed Breaking Bad. The universe that encompasses both shows is rife with caricatures, which you'll know if you've seen them (and if you haven't, what are you doing still reading this article? Get on Netflix already!). Jimmy McGill, a.k.a. the eponymous Saul, embodies the archetype of the sleazy plaintiff's attorney. He has some close encounters with the law in more ways than one, and some brilliant mug shots to prove it.

The most recent close encounter? A trademark suit from a real-life business that claims that the creators of the series ripped it off by creating a fictional, comical version of the same business within the universe of the show.

Real Tax Business Says Show Took Too Many Liberties

At the center of the trademark dispute is the fictional tax preparation business called Sweet Liberty Tax Services, which viewers may recognize from the final season. Sweet Liberty is portrayed as a humorous and exaggerated caricature of a tax preparation service with an over-the-top patriotic theme. The business is adorned with various symbols of Americana, including an inflatable Statue of Liberty outside of its office and a mural featuring Lady Liberty and exploding fireworks.

The owners of Sweet Liberty are also portrayed as somewhat eccentric characters who are involved in morally dubious activities related to tax returns. They engage in tax fraud by filing accurate returns with the IRS while providing their clients with dummy versions that underreport the amount owed to the government. This allows the Kettlemans to pocket the difference and profit from their clients' dishonesty. The business's exaggerated theme and the owners' antics add humor and intrigue to the show's storyline.

But not every viewer seems to have found it so funny. Out in the real world, JTH Tax is a tax preparation service that's been using the name Liberty Tax Service since 1997. They've spent a lot of money and time making sure people recognize their brand, which includes specific trademarks and design elements like the colors red, white, and blue, and images of the Statue of Liberty. These trademarks are officially registered.

JTH claims that the fictional Sweet Liberty Tax Services is a clear copy of their real business, Liberty Tax Service, but portrayed negatively. They say the show used their brand's imagery, like the Statue of Liberty and specific colors. They point that when people search Liberty Tax Service, they would get search results instead related to Sweet Liberty, from the show. They complained to AMC (the network that Better Call Sault appears on) and Sony Pictures (the show's producer and distributer), this damaged their brand.

About a year ago, they filed a complaint against AMC and Sony for trademark and trade dress infringement (which are federal claims), as well as for defamation (a state claim). They brought their lawsuit in federal court, because federal courts can electively hear state claims if they are sufficiently tied to the federal claim being brought.

Commotion Stopped with a Motion

The media companies in response filed a "motion to dismiss" — more specifically, a motion for the judge to toss out the lawsuit under Federal Rule of Civil Procedure 12(b)(6).

A 12(b)(6) motion is a "pretrial motion", meaning that the defendant is asking the court to dismiss a plaintiff's lawsuit before it even goes to trial. In a 12(b)(6), the defendant has to show that the plaintiff has not alleged enough facts to show that they have a legal right to sue the defendant. In other words, defendant must show that the plaintiff's complaint is legally insufficient. This can be done by showing that the plaintiff does not have a valid legal cause of action, that the plaintiff has not alleged enough facts to support their claim, or that the plaintiff's claim is barred by law. If the court grants a 12(b)(6) motion, the plaintiff's lawsuit is dismissed.

It is important to note that 12(b)(6) motions are difficult to win. The court will assume that all of the plaintiff's allegations are true and will draw all reasonable inferences in the plaintiff's favor. The court will only dismiss the plaintiff's case if it is clear that the plaintiff does not have a legal right to sue.

And yet, even with a thumb on the scale for plaintiff JTH, Federal District Judge Paul G. Gardephe sided with defendants AMC and Sony, and dismissed the suit.

'Roger That,' Says the Judge

The judge applied what is known as the "Rogers test" (from a 1989 called called Rogers v. Grimaldi) to determine whether the use of a trademark in an expressive work is protected by the First Amendment. There are two prongs to the test, and if either is met, then the use of the trademark is protected by the First Amendment and cannot be found to be trademark or trade dress infringement.

The first prong asks if the use of the trademark have any artistic relevance to the underlying work. The threshold for artistic relevance is purposely low and will be satisfied unless the use has no artistic relevance to the underlying work whatsoever. Here, the judge found that the use of the tax company was artistically relevant to the plot and comedic nature of the show.

The second prong asks whether the copier of the trademark was trying to deceive people and causing confusion. Since the show wasn't trying to pass itself off as a tax prep service, but using the trademark for very different purposes, the court reasoned that there was no risk of confusion.

So, under either prong of the test, the court concluded that the First Amendment protection kicked in such that AMC and Sony could not be infringing trademark or trade dress with their portrayal of a similar tax prep service. The court granted the defendant's 12(b)(6) motion, dismissing the federal issues. And because both of the federal issues were dismissed, the court declined to weigh in on the state court issue of defamation.

86ed on the 12(b)(6)

12(b)(6) motions are hard to win, so AMC and Sony ought to be pretty content with their legal team. They basically got the ideal outcome: nipping the suit in the bud with just a pretrial motion and avoiding having to go to trial. That might not sound glamorous, and would probably make for a really boring episode of Better Call Saul. But in the real world, winning a motion to dismiss is the ultimate mic drop, so they should be popping bottles on the ice. After all, they made the trademark claim die with a b(6). Now they're feelin' so fly like a G6.

Related Resources:

• Farewell, Saul Goodman, Esq. (FindLaw's Practice of Law)
• Resources for Current and Aspiring Law Students (FindLaw for Law Students)
• Why Lawyers Love to Hate Legal Dramas (FindLaw's Practice of Law)