Liberty Tax Service filed a complaint in the SDNY on August 1, 2022 accusing AMC Networks and Sony Pictures Television of trademark infringement and defamation, alleging they disparaged the chain in the hit show “Better Call Saul” by depicting a similar tax service business that stole customers’ cash.
According to Liberty Tax, the episode of the show portrayed Liberty Tax in a bad light by depicting a “Sweet Liberty Tax Services” business that used nearly identical branding but that stole tax return money from its customers. The episode was the second of the show’s sixth and final season and aired in April. Liberty Tax seeks monetary damages and an injunction barring AMC and Sony from further distributing the episode.
The fictional business’s physical location also allegedly mimicked Liberty Tax’s storefronts by using an inflatable Statue of Liberty and American flags according to the complaint. In the series, the inflatable Statue of Liberty is later acquired by James McGill a/k/a “Saul Goodman” (Bob Odenkirk) and is displayed atop his store front law office. Saul’s store front office – complete with the inflatable Statue of Liberty – is prominently featured in another AMC series “Breaking Bad.” Better Call Saul is a spinoff from Breaking Bad and details the back and future story of Saul Goodman.
According to the complaint, Liberty Tax also has trademarks for variations of its name and for the use of the Statue of Liberty in advertising its tax preparation services. The depiction of the tax filing business “is an obvious imitation of an actual Liberty Tax location, but twisted to paint Liberty Tax in a negative and disparaging light,” the complaint states.
According to Liberty Tax, “Out of all the names Defendants could have used for the tax business portrayed in Episode 2, they decided not to be original at all, but instead rip off the famous Liberty Tax trademarks, which have been used for over 25 years, and mimic an actual Liberty Tax location just by adding the word ‘Sweet’ in front of Liberty Tax’s trademark.”
Liberty Tax seems to have an arguable claim, as demonstrated by Figures 1 and 2 in the complaint. Figure 1, below, depicts the fictional “Sweet Liberty Tax Service” operated by the Kettlemans, a shady husband and wife team who previously committed felonies. Figure 2 depicts an actual Liberty Tax store.
FIGURE 1
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FIGURE 2
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Liberty Tax stores also frequently use an inflatable Statue of Liberty as demonstrated by Figures 3 and 7 from the complaint, depicted below:
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In Better Call Saul and Breaking Bad, Saul’s store front law office features a near identical inflatable statute of liberty which he acquired from the Kettlemans, as depicted in Figure 9 in the complaint, reproduced below:
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In another scene from episode 2, character Betsy Kettleman prints a refund check with a logo for “Sweet Liberty Tax Services” that is similar to Liberty Tax’s registered LIBERTY TAX SERVICE with Statue of Liberty Design mark. Figure 11 from the complaint, below, is Liberty, Tax’s registered LIBERTY TAX SERVICE with Statue of Liberty Design mark. Figure 12 below, is a magnified screenshot from episode 2 of the “Sweet Liberty Tax Services” logo.
Despite maintaining policies for preventing trademark infringement, neither Sony nor AMC reached out to Liberty Tax to obtain permission to use its branding, according to the complaint. In addition to the trademark infringement claims, it also alleges that Sony and AMC defamed and disparaged Liberty Tax.
The complaint alleges six counts against the defendants: 1) Federal Trademark Infringement, 15 U.S.C. § 1114, 2) Federal Trade Dress Infringement, 15 U.S.C. § 1114, 3) Federal Trademark and Trade Dress Dilution, 15 U.S.C. § 1125(c), 4) Defamation, 5) Disparagement, and 6) Injurious Falsehoods. In addition to a permanent injunction, Liberty Tax seeks actual, punitive and treble damages in addition to attorneys fees as provided in the Lanham Act.
The case is JTH Tax LLC v. AMC Networks Inc. et al., case number 1:22-cv-06526, in the U.S. District Court for the Southern District of New York.
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Richard A. Catalina, Jr. is a senior partner and Chair of the Intellectual Property and Complex Litigation Department of Jardim, Meisner and Susser, P.C. Mr. Catalina specializes in litigating patent, trademark, trade secret and related Lanham Act disputes, and inter partes proceedings before the Patent Trial and Appeal Board. Mr. Catalina has been practicing law for more than 33 years and has litigated more than one hundred matters in federal and state courts across the U.S, as well as inter and ex partes matters before the Trademark Trial and Appeal Board and the Patent Trial and Appeal Board.
