Amicus Curiae Brief — Jack Daniel's Properties, Inc., Petitioner v. VIP Products LLC

No. 20-365

In the

Supreme Court of the United States

Jack Daniel’s Properties, Inc.,

Petitioner,

v.

VIP Products LLC,

Respondent.

On Petition for a Writ of Certiorari to the United

States Court of A ppeals for the Ninth Circuit

AMICUS CURIAE BRIEF OF THE INTERNATIONAL

TRADEMARK ASSOCIATION IN SUPPORT

OF PETITIONER

Jennifer Gregor

Gregor & K ahn, S.C.

One East Main Street,

Suite 500

Madison, WI 53703

(608) 284-2629

David H. Bernstein

Counsel of Record

Jeremy Feigelson

Jared I. K agan

Emily Rebecca Hush

Debevoise & Plimpton LLP

919 Third Avenue

New York, NY 10022

(212) 909-6696

dhbernstein@debevoise.com

Vijay K. Toke

Pillsbury Winthrop

Shaw Pittman LLP

Four Embarcadero Center,

22nd Floor

San Francisco, CA 94111

(415) 984-1089

Counsel for Amicus Curiae

299096

i

TABLE OF CONTENTS

INTEREST OF AMICUS CURIAE ........................... 1

SUMMARY OF ARGUMENT.................................... 5

ARGUMENT ............................................................ 11

I.

II.

The Ninth Circuit’s Infringement

Analysis Diverges From Other Federal

Circuits And Upsets The Balance

Between Trademark Law And The First

Amendment ................................................... 11

A.

The Rogers Test Strikes The

Right Balance By Granting First

Amendment Protection Only To

Artistic Works, Not Commercial

Goods. .................................................. 11

B.

No Other Circuit Has Applied

Rogers To Commercial Products. ....... 15

C.

The Ninth Circuit’s Extension Of

Rogers Wrongly Tilts The

Balance Against The Application

of Trademark Law And Its

Protection Of Consumers. .................. 22

The Ninth Circuit’s Dilution Analysis

Departs From The Existing Statutory

Framework And Disregards This

Court’s Precedent. ......................................... 24

CONCLUSION ......................................................... 29

ii

TABLE OF AUTHORITIES

Cases

A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, LLC,

364 F. Supp. 3d 291 (S.D.N.Y. 2019) ................. 14, 15

Am. Dairy Queen v. New Line Prods.,

35 F. Supp. 2d 727 (D. Minn. 1998)........................... 6

Am. Express Co. v. Vibra Approved Lab’ys. Corp.,

1989 WL 39679, 10 U.S.P.Q.2d 2006

(S.D.N.Y. Apr. 19, 1989) ............................................ 9

Anheuser-Busch, Inc. v. Balducci Publ’ns,

28 F.3d 769 (8th Cir. 1994) ...................................... 18

Bad Frog Brewery, Inc. v. N.Y. State Liquor Auth.,

134 F.3d 87 (2d Cir. 1998) ................................. 27, 28

Cardtoons, L.C. v. Major League Baseball Players

Ass’n,

95 F.3d 959 (10th Cir. 1996) .................................... 20

Central Hudson Gas & Electric Corp. v. Pub. Serv.

Comm’n,

447 U.S. 557 (1980) .................................................. 24

Coca-Cola Co. v. Gemini Rising, Inc.,

346 F. Supp. 1183 (E.D.N.Y. 1972)............................ 9

E.S.S. Ent’mt 2000 Inc. v. Rock Star Videos Inc.,

547 F.3d 1095 (9th Cir. 2008) .................................. 21

iii

ETW Corp. v. Jireh Publ’g, Inc.,

332 F.3d 915 (6th Cir. 2003) .................................... 17

Gomez v. United States,

490 U.S. 858 (1989) .................................................. 28

Gordon v. Drape Creative, Inc.,

909 F.3d 257 (9th Cir. 2018) .................................... 23

Iancu v. Brunetti,

139 S. Ct. 2294 (2019) ................................................ 4

Jordache Enters., Inc. v. Hogg Wyld, Ltd.,

828 F.2d 1482 (10th Cir. 1987) .......................... 19, 20

Louis Vuitton Malletier S.A. v. Haute Diggity Dog

LLC,

507 F.3d 252 (4th Cir. 2007) ................................ 4, 15

Louis Vuitton Malletier, S.A. v. Hyundai Motor Am.,

No. 10 Civ. 1611, 2012 WL 1022247

(S.D.N.Y. Mar. 22, 2012) ............................................ 9

Matal v. Tam,

137 S. Ct. 1744 (2017) ................................................ 4

Mattel, Inc. v. Walking Mountain Prods.,

353 F.3d 792 (9th Cir. 2003) ...................................... 6

Metromedia, Inc. v. City of San Diego,

453 U.S. 490 (1981) .................................................. 26

Mutual of Omaha Ins. Co. v. Novak,

836 F.2d 397 (8th Cir. 1987) .................................... 18

iv

Nike, Inc. v. Just Did It Enters.,

6 F.3d 1225 (7th Cir. 1993) ...................................... 17

Parks v. LaFace Records,

329 F.3d 437 (6th Cir. 2003) ................................ 6, 17

Radiance Foundation, Inc. v. NAACP,

786 F.3d 316 (4th Cir. 2015) .................................... 16

S.F. Arts & Athletics, Inc. v. U.S. Olympic

Committee,

483 U.S. 522 (1987) .................................................. 23

Stouffer v. Nat. Geographic Partners, LLC,

2020 WL 2306854 (D. Colo. May 8, 2020) ............... 20

Sugar Busters LLC v. Brennan,

177 F.3d 258 (5th Cir. 1999) .................................... 17

Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC,

221 F. Supp. 2d 410 (S.D.N.Y. 2002) ....................... 14

Twentieth Century Fox Television v. Empire Distrib.,

Inc.,

875 F.3d 1192 (9th Cir. 2017) ............................ 22, 23

Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd.,

996 F.2d 1366 (2d Cir. 1993) ....................... 13, 14, 17

Univ. of Alabama Bd. of Trustees v. New Life Art,

Inc.,

683 F.3d 1266 (11th Cir. 2012) ............................ 7, 20

Utah Lighthouse Ministry v. Found. for Apologetic

Info. & Rsch.,

v

527 F.3d 1045 (10th Cir. 2008) ................................ 19

VIP Prods. LLC v. JDPI,

953 F.3d 1170 (9th Cir. 2020) .................16, 23, 25, 27

Westchester Media v. PRL USA Holdings, Inc.,

214 F.3d 658 (5th Cir. 2000) .......................... 6, 16, 17

Statutes

15 U.S.C. § 1125 ........................................... 4, 5, 8, 24

Other Authorities

H.R. Rep. No. 104-374, 104th Cong.

(1st Sess. 1995) ......................................................... 25

H.R. Rep. No. 109-23, 109th Cong.

(1st Sess. 2005) ........................................................... 4

Pierre N. Leval, Trademark: Champion of Free

Speech,

27:2 COLUM. J. L. & ARTS 188 (2004) ................. 15, 29

1

AMICUS CURIAE BRIEF OF THE

INTERNATIONAL TRADEMARK

ASSOCIATION IN SUPPORT OF PETITIONER

The

International

Trademark

Association

(“INTA”) submits this brief in support of the petition

for certiorari by Jack Daniel’s Properties, Inc.

(“JDPI”).1

INTEREST OF AMICUS CURIAE

Founded in 1878 as the United States Trademark

Association, INTA is a not-for-profit organization

dedicated to the advancement of trademarks and

related intellectual property concepts as essential

elements of trade and commerce. INTA has more

than 7,200 member organizations from 191

countries, including trademark owners, law firms,

and other professionals who assist brand owners in

the

creation,

registration,

protection,

and

enforcement of trademarks. INTA’s members share

the goal of promoting the essential role that

trademarks play in fostering informed decisions by

consumers and fair competition.

1 Both parties received notice of INTA’s intent to file an amicus

brief more than 10 days prior to the filing deadline, and both

parties consented. S. Ct. R. 37.2(a). This brief was authored

solely by INTA and its counsel. No party or counsel for a party,

and no person other than INTA and its counsel, made a

monetary contribution intended to fund the preparation or

submission of this brief. S. Ct. R. 37.6.

2

INTA’s members frequently are plaintiffs,

defendants, and advisors in legal actions under the

Lanham Act. INTA is interested in the development

of clear, consistent, and equitable principles of

trademark law. INTA has substantial expertise. It

has participated as amicus curiae in numerous cases

on significant Lanham Act issues, including on the

First Amendment.2

2 Cases in which INTA has filed amicus briefs include:

U.S.

Patent & Trademark Office v. Booking.com B.V., 140 S. Ct.

2298 (2020); Romag Fasteners, Inc. v. Fossil, Inc., 140 S. Ct.

1492 (2020); Peter v. NantKwest, Inc., 140 S. Ct. 365 (2019);

Iancu v. Brunetti, 139 S. Ct. 2294 (2019); Mission Prod.

Holdings, Inc. v. Tempnology, LLC, 139 S. Ct. 1652 (2019);

Matal v. Tam, 137 S. Ct. 1744 (2017); Hana Fin., Inc. v. Hana

Bank, 135 S. Ct. 907 (2015); B&B Hardware, Inc. v. Hargis

Indus., Inc., 135 S. Ct. 1293 (2015); Pom Wonderful LLC v.

Coca-Cola Co., 134 S. Ct. 2228 (2014); Already, LLC v. Nike,

Inc., 568 U.S. 85 (2013); KP Permanent Make-Up, Inc. v.

Lasting Impression I, Inc., 543 U.S. 111 (2004); Dastar Corp. v.

Twentieth Century Fox Film Corp., 539 U.S. 23 (2003); Moseley

v. V Secret Catalogue, Inc., 537 U.S. 418 (2003); TrafFix

Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001); WalMart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000); LTTB

LLC v. Redbubble, Inc., No. 19-16464 (9th Cir. pending); Ohio

State Univ. v. Redbubble, Inc., Case No. 19-3388 (6th Cir.

pending); JDPI v. VIP Products, Case No. 18-16012 (9th Cir.

June 3, 2020) (denying rehearing); Christian Louboutin S.A. v.

Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir.

2012); Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir.

2012); Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958

(9th Cir. 2011) (on rehearing); Levi Strauss & Co. v.

Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir.

2011) (on rehearing); Chloe v. Queen Bee of Beverly Hills, LLC,

616 F.3d 158 (2d Cir. 2010); Starbucks Corp. v. Wolfe’s Borough

Coffee, Inc., 588 F.3d 97 (2d Cir. 2009); ITC Ltd. v. Punchgini,

Inc., 482 F.3d 135 (2d Cir. 2007), certified questions accepted,

3

INTA was founded in part to encourage

enactment of federal trademark legislation after the

invalidation on constitutional grounds of the United

States’ first trademark act. Since then, INTA has

provided recommendations and assistance to

legislators in connection with almost all major

federal trademark legislation, including the Lanham

Act and the Trademark Dilution Revision Act

(“TDRA”), both of which are at issue in this appeal.

Trademark law is about protecting consumers.

Trademarks help consumers know where their

products and services are coming from. Trademarks

are crucial indicators of source and quality that

facilitate reliable and efficient purchasing decisions.

INTA’s principal interest in this case is in

promoting the appropriate balance between

trademark law and the First Amendment. INTA

members are sometimes plaintiffs in trademark

cases, and sometimes defendants. In parody cases,

INTA members are sometimes the parodist and

sometimes the parodied. INTA therefore does not

approach this case with any bias for or against

parody.

870 N.E.2d 151 (N.Y. 2007), cert. denied, 552 U.S. 827 (2007),

certified questions answered, 880 N.E.2d 852 (N.Y. 2007), later

proceedings, 518 F.3d 159 (2d Cir. 2008); Louis Vuitton

Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th

Cir. 2007); Penguin Grp. (USA) Inc., v. Am. Buddha, 946

N.E.2d 159 (N.Y. 2011).

4

In seeking balance between trademark law and

the First Amendment, INTA prioritizes the Lanham

Act’s main goals: providing consumers with accurate

information and avoiding deceptive or misleading

conduct. In Iancu v. Brunetti, 139 S. Ct. 2294 (2019)

and Matal v. Tam, 137 S. Ct. 1744 (2017), for

example, INTA argued that trademark applicants

have a First Amendment right to register marks

that are scandalous or disparaging; the statutory

restrictions on such registrations, since struck down

by this Court, had nothing to do with preventing

deception or confusion.

In Louis Vuitton Malletier S.A. v. Haute Diggity

Dog, LLC, 507 F.3d 252 (4th Cir. 2007), INTA again

prioritized consumer protection: It argued that some

parodies, as in the context of movies and magazines,

merit First Amendment protection, but parodies that

use another’s trademark as the defendant’s own

brand should be examined under trademark law to

assess whether they confuse consumers or dilute the

plaintiff’s famous mark.

Similarly, INTA supported the addition of a

parody defense for certain dilution claims in the

TDRA, codified at, 15 U.S.C. § 1125(c). H.R. Rep.

No. 109-23, 109th Cong., at 25 (1st Sess. 2005). That

defense provides that no actionable dilution results

from a “fair use” of a plaintiff’s trademark “in

connection with . . . parodying, criticizing, or

commenting upon the famous mark owner or the

5

goods or services of the famous mark owner,” but

only if defendant is using the mark “other than as a

designation of source for the person’s own goods or

services.” 15 U.S.C. § 1125(c)(3)(A). Other TDRA

defenses proposed by INTA and adopted by Congress

include comparative advertising, news reporting and

commentary and noncommercial uses. 15 U.S.C.

§ 1125(c)(3).

In this case, INTA takes no position on whether

the Respondent’s dog toy is infringing or diluting.

That is properly decided on the facts (and was

decided by the trial court below). INTA does take a

position on the correct analytic framework: It urges

this Court to grant certiorari and reverse the Ninth

Circuit.

SUMMARY OF ARGUMENT

The Ninth Circuit’s decision creates a sharp

circuit split on how to balance competing claims of

trademark protection and free speech in the context

of claimed parodies embodied in commercial

products as contrasted with artistic works.

With respect to infringement, the right answer

is found in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.

1989) and its progeny across the circuits that have

followed it. The Second Circuit held that titles of

artistic works do not infringe unless (1) the title has

no artistic relevance to the underlying work, or (2)

the title misleads as to the source of the work.

6

The body of law that has developed from Rogers

establishes that this two-part test applies to

infringement claims directed at artistic works, such

as movies, songs, books and photographs, because

such works enjoy core First Amendment protection;

that the test applies to both the titles and the

content of artistic works; and that the test does not

apply to mundane or utilitarian products sold in the

commercial marketplace, where the risks of

consumer confusion are of paramount concern.

The Rogers test is balanced. Plaintiffs sometimes

win. E.g., Parks v. LaFace Records, 329 F.3d 437,

451–52 (6th Cir. 2003) (reversing summary

judgment for defendants; whether song entitled

“Rosa Parks” had sufficient artistic connection to

plaintiff was question for jury); Westchester Media v.

PRL USA Holdings, Inc., 214 F.3d 658, 664–65, 668

(5th Cir. 2000) (magazine title POLO infringing

given “particularly compelling likelihood of

confusion” with Ralph Lauren’s POLO brand); Am.

Dairy Queen Corp. v. New Line Prods., Inc., 35 F.

Supp. 2d 727 (D. Minn. 1998) (enjoining movie title

“Dairy Queens” because movie lacked artistic

connection to plaintiff’s restaurant chain).

Defendants sometimes win, too. E.g., Mattel, Inc.

v. Walking Mountain Prods., 353 F.3d 792, 807 (9th

Cir. 2003) (where use of “Barbie” in titles of

photographs was artistically relevant, “public

interest in free and artistic expression greatly

7

outweighs its interest in potential consumer

confusion”); Univ. of Alabama Bd. of Trustees v. New

Life Art, Inc., 683 F.3d 1266, 1278–79 (11th Cir.

2012) (use of University of Alabama marks in

paintings of football games was artistically relevant

and protected under Rogers).

Whoever wins, the test always has been limited

to artistic works. Before this case, it had never been

extended to confer First Amendment protection to

non-artistic commercial goods. The Ninth Circuit

has put an unwarranted thumb on the scales by

extending First Amendment protection to nonartistic commercial goods such as dog toys.

The Ninth Circuit’s departure from Rogers’s focus

on artistic works has created a sharp conflict with

the Second, Fourth, Fifth, Sixth, Seventh, Eighth,

Tenth and Eleventh Circuits. The expansion of

Rogers to non-artistic commercial goods would

enable evasion of infringement analysis under the

Lanham Act simply by grafting some purported

artistic element onto the packaging of commercial

goods.

This divide already encourages forum shopping.

In this very case, Respondent sought a declaratory

judgment in the Ninth Circuit, having lost an

infringement case within the Eight Circuit involving

a different dog toy. Anheuser-Busch, Inc. v. VIP

Prods., LLC, 666 F. Supp. 2d 974 (E.D. Mo. 2008).

8

Only by this Court bringing harmony to the law can

such forum shopping be stopped.

With respect to dilution, the TDRA contains an

express exclusion for some parodies, and thus

already strikes the needed balance with the First

Amendment. 15 U.S.C. § 1125(c)(3)(A)(ii). That

exclusion applies to the “fair use” of another’s mark,

but only if it does not serve to identify the

defendant’s own goods. Other exclusions protect

news reporting, comparative advertising, and

noncommercial use. 15 U.S.C. § 1125(c)(3).

These exclusions make clear that certain parodies

are protected against dilution claims, but not where

defendant uses plaintiff’s mark as a designation of

source of defendant’s own goods (here, use of the

“Bad Spaniels” mark, together with JDPI’s trade

dress, on Respondent’s dog toy). Whether a use is

diluting should be decided under the substantive

provisions of the TDRA (i.e., whether the use blurs

the distinctiveness or tarnishes the reputation of the

famous mark). There is no need to consult the First

Amendment when the TDRA already provides

balance, especially given principles of constitutional

avoidance.

Just as the Rogers test is flexible enough to allow

for appropriate results in different cases, so too is

the statutory dilution framework. In Louis Vuitton,

for example, the Fourth Circuit resolved a claim of

dilution by dog toys via parody in the parodist’s

9

favor. It did so solely by reference to the statute,

without even mentioning the First Amendment,

because the court found no risk of harm to Louis

Vuitton’s mark. Where harm to the distinctiveness

or reputation of a famous mark has been shown,

courts have enjoined parodies. See, e.g., Louis

Vuitton Malletier, S.A. v. Hyundai Motor Am., No. 10

Civ. 1611, 2012 WL 1022247, at *1 (S.D.N.Y.

Mar. 22, 2012) (enjoining use of Louis Vuitton trade

dress in commercial for Hyundai cars on dilution

grounds despite claim that commercial was intended

to make “a humorous, socio-economic commentary on

luxury defined by a premium price tag”); Am.

Express Co. v. Vibra Approved Lab’ys Corp., 1989

WL 39679, 10 U.S.P.Q.2d 2006, at *10 (S.D.N.Y.

Apr. 19, 1989) (enjoining condom sold under

infringement of American Express trade dress and

DON’T LEAVE HOME WITHOUT IT trademark);

Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp.

1183, at 1192–93 (E.D.N.Y. 1972) (enjoining poster

in Coca-Cola trade dress that said ENJOY

COCAINE).

The Ninth Circuit’s absolutist

approach, which renders any product noncommercial

if it includes some expressive element, lacks any

such balance.

Furthermore, the Ninth Circuit’s legal conclusion

that this dog toy is noncommercial is at odds with

this Court’s decision in Bolger v. Youngs Drug Prods.

Corp., 463 U.S. 60 (1983), in which the Court

articulated a multi-part test for assessing whether

10

speech is commercial. The Ninth Circuit made no

mention of Bolger or its standard.

The Rogers test and the dilution statute each

supply

a

flexible,

largely

speech-protective

framework for balancing First Amendment and

trademark interests in particular cases. In many

cases, parodies will be protected because they are

not confusing or diluting. But, nothing in the text,

history, or jurisprudence of the First Amendment

suggests that it provides protection for purely

commercial products that are likely to confuse or

dilute.

No basis exists for applying the First

Amendment to protect humor in the form of a dog

toy that appropriates a trademark and trade dress to

designate the source of the toy, and that neither

comments on nor criticizes the underlying trade

dress. Rather, whether the toy is infringing or

diluting is appropriately analyzed under trademark

law. The Court should grant certiorari and correct

the Ninth Circuit’s error.

11

ARGUMENT

I.

THE

NINTH

CIRCUIT’S

INFRINGEMENT

ANALYSIS DIVERGES FROM OTHER FEDERAL

CIRCUITS AND UPSETS THE BALANCE

BETWEEN TRADEMARK LAW AND THE FIRST

AMENDMENT

A.

The Rogers Test Strikes The Right

Balance

By

Granting

First

Amendment Protection Only To

Artistic Works, Not Commercial

Goods.

Rogers involved a Fellini film about two fictional

cabaret performers who imitated the renowned

dancing duo Ginger Rogers and Fred Astaire.

Rogers sued on the theory that the film’s title

created the false impression that the film was about

her or that she endorsed or sponsored the film. The

Second Circuit recognized that the Lanham Act

applies to artistic works, but “only where the

public interest in avoiding consumer confusion

outweighs

the

public

interest

in

free

expression.” Rogers, 875 F.2d at 998 (emphasis

added). The Rogers court articulated this two-part

test:

In the context of allegedly misleading

titles using a celebrity’s name, that

balance will normally not support

application of the [Lanham] Act unless

[1] the title has no artistic relevance to

12

the underlying work whatsoever, or, [2]

if it has some artistic relevance, unless

the title explicitly misleads as to the

source or the content of the work.

Id. at 999.

The court expressly recognized that this test

would not protect “ordinary commercial products”:

Since consumers expect an ordinary

product to be what the name says it is,

we apply the Lanham Act with some

rigor to prohibit names that misdescribe

such goods.

Id. at 1000. The court thus made clear that an

ordinary commercial product—a category that

encompasses Respondent’s dog toy—would not

command the same protection as artistic works like

movies, books and songs. That is because consumer

confusion is a more legitimate concern when

“utilitarian products” are “sold in the commercial

marketplace.” Id. at 997.3

3

The fact that artistic works—like the film in Rogers—are

sold in the commercial marketplace does not change the

analysis.

Artistic works enjoy First Amendment

protection because the public has a strong interest in

enjoying the “results of the author’s freedom of

expression.” Rogers, 875 F. 2d at 998. Just because an

ordinary commercial good contains some expression does

not transform it into noncommercial speech worthy of First

Amendment protection.

Rather, with such ordinary

13

The Second Circuit subsequently noted that, even

if a work is artistically relevant, trademark liability

may be found if the case for confusion is compelling.

Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996

F.2d 1366 (2d Cir. 1993).

The court applied Rogers to assess whether a

book title—“Welcome to Twin Peaks: A Complete

Guide to Who’s Who and What’s What”—infringed

the trademark rights of the “Twin Peaks” television

show. Although the court held that “the title [was]

of some artistic relevance” to the book at issue, the

key question was whether the title explicitly misled

consumers as to the source or the content of the

book. Id. at 1379. Because the district court did not

give due consideration to the risk of confusion, the

Second Circuit remanded, emphasizing the

importance of looking at the title in context,

including with the trade dress used, in order to

assess the risk of confusion:

It is a fair question whether a title that

might otherwise be permissible under

Rogers violates the Lanham Act when

displayed in a manner that conjures up

a visual image prominently associated

with the work bearing the mark that

was copied.

commercial goods, the public’s interest in not being misled

takes precedence. Id.

14

Id. at 1380. That instruction is highly relevant here,

where Respondent’s dog toy is alleged to have copied

JDPI’s trade dress, “conjur[ing] up a visual image

prominently associated with the work bearing the

mark.” Id.

Consistent with Rogers and Twin Peaks, when

courts in the Second Circuit consider the use of a

mark on commercial products (including products

that could contain artistic elements, like T-shirts),

they apply neither Rogers nor the First

Amendmentjust trademark law. For example, in

Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC,

221 F. Supp. 2d 410 (S.D.N.Y. 2002) (cited by the

district court below), the court rejected First

Amendment protection for parody dog products

because the mark was being used “at least in part to

promote a somewhat non-expressive, commercial

product” and “trademark law permissibly regulates

misleading commercial speech.” Id. at 415–16.

Similarly, in A.V.E.L.A., Inc. v. Estate of Marilyn

Monroe, LLC, 364 F. Supp. 3d 291 (S.D.N.Y. 2019),

the court rejected the application of Rogers to Tshirts bearing marks related to Marilyn Monroe.

“[T]he Rogers test is usually not the appropriate

mechanism for examining an ordinary commercial

product. . . . [T]he Rogers test is not designed to

protect commercial products” because “any First

Amendment concerns are already addressed by the

consumer confusion test applicable to commercial

15

products.” Id. at 321–22; see also Pierre N. Leval,

Trademark: Champion of Free Speech, 27:2 COLUM.

J. L. & ARTS 188 (2004) (most trademark cases

should be decided under trademark law, not the

First Amendment, because trademark law itself

balances free expression with property rights).

B.

No Other Circuit Has Applied

Rogers To Commercial Products.

Courts in the Fourth, Fifth, Sixth, Seventh,

Eighth, Tenth and Eleventh Circuits likewise have

either analyzed commercial products purporting to

be a parody under a trademark likelihood-ofconfusion analysis, rather than a First Amendment

analysis, or have limited the application of Rogers to

artistic works.

None has applied Rogers to

commercial goods.

The Fourth Circuit applied trademark law to

hold that a “Chewy Vuiton” dog toy neither infringed

nor diluted Louis Vuitton’s trademarks.

Louis

Vuitton Malletier S.A., 507 F.3d at 263. The defense

of parody did not trigger First Amendment

protection; rather, the fact that the toy was a parody

simply “influence[d] the way in which the [likelihood

of confusion] factors are applied. . . . [A]n effective

parody will actually diminish the likelihood of

confusion, while an ineffective parody [will] not.” Id.

at 261.

16

Curiously, the Ninth Circuit in this case relied on

Louis Vuitton to “support[] [its] conclusion” that the

First Amendment protects Respondent’s toy. VIP

Prods. LLC v. JDPI, 953 F.3d 1170, 1175 (9th Cir.

2020). Louis Vuitton provides no such support

because that court never mentioned the First

Amendment.4

In Westchester Media v. PRL USA Holdings, Inc.,

214 F.3d 658 (5th Cir. 2000), the Fifth Circuit

applied Rogers to the title of a magazine, confirming

that a “particularly compelling likelihood of

confusion” is required in order to find liability for

trademark infringement in that context. Id. at 665.

In holding that plaintiff demonstrated a compelling

likelihood of confusion, the court acknowledged the

protection for artistic works:

4

The Louis Vuitton decision also did not address Rogers. In

contrast, the Fourth Circuit did apply Rogers in the

context of a billboard containing political speech—exactly

the type of speech protected by the First Amendment.

Radiance Found., Inc. v. NAACP, 786 F.3d 316 (4th Cir.

2015). In neither Radiance Foundation nor Louis Vuitton

did the Fourth Circuit suggest that commercial products

such as dog toys merit First Amendment protection.

17

Titles, according to the Rogers court,

combine both artistic expression and

commercial

promotion,

and

they

consequently require more First

Amendment protection than the

labeling of ordinary commercial

products.

Id. at 664 (emphasis added); see also Sugar Busters

LLC v. Brennan, 177 F.3d 258, 269 n.7 (5th Cir.

1999) (“Any finding that defendants’ book title is

likely to cause confusion with plaintiff’s book title

must be ‘particularly compelling’ to outweigh

defendants’ First Amendment interest in choosing

an appropriate book title for their work”) (quoting

Twin Peaks).

In Parks v. LaFace Records, 329 F.3d 437 (6th

Cir. 2003), the Sixth Circuit also applied Rogers to

an artistic work. In that case, the court held that

defendants’ use of Rosa Parks’s name in a song title

might infringe her rights if the title had no artistic

relevance to the song’s content. The court declined

to apply trademark law alone because that would

“treat[] the name of an artistic work as if it were no

different from the name of an ordinary commercial

product.” Id. at 449. See also ETW Corp. v. Jireh

Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003) (applying

Rogers to artistic painting depicting Tiger Woods).

In the Seventh Circuit, Nike, Inc. v. Just Did It

Enterprises, 6 F.3d 1225 (7th Cir. 1993) involved T-

18

shirts that said “MIKE” above a swoosh design—a

parody of the NIKE word mark and “swoosh” design

mark—intended for sale to persons named Mike.

The First Amendment allows individuals to ridicule,

the court explained, but such parodies “do not enjoy

a dispensation from [the traditional likelihood of

confusion] standard.” Id. at 1228 (remanding on

likelihood of confusion).

Likewise, the Eighth Circuit assessed a parody

under trademark law rather than the First

Amendment. In a case involving commercial goods

like mugs and T-shirts that displayed a parody of the

MUTUAL OF OHAMA trademark (“Mutant of

Omaha”), the court upheld a preliminary injunction,

and rejected the defendant’s parody defense, in order

to prevent confusion. The First Amendment did not

shield defendant’s confusing use of plaintiff’s marks

to market or identify his own products. Mutual of

Omaha Ins. Co. v. Novak, 836 F.2d 397, 402 (8th Cir.

1987). See also Anheuser-Busch, Inc. v. Balducci

Publ’ns, 28 F.3d 769 (8th Cir. 1994) (public interest

in avoiding consumer confusion outweighed public

interest in free expression where magazine’s use of

plaintiff’s marks caused actual confusion).

A district court in the Eighth Circuit considered

these same issues in a case involving Respondent.

In Anheuser-Busch, Inc. v. VIP Prods., LLC, 666 F.

Supp. 2d 974 (E.D. Mo. 2008), the court considered a

squeaky dog toy called “Buttwiper” that mimicked

19

the Budweiser trademark and trade dress. Like all

other courts until the Ninth Circuit’s decision, below,

the court held that trademark law, rather than the

First Amendment, should govern.

“Parody,” the court held, is just “another factor to

consider in determining the likelihood of confusion.”

Id. at 984–85 (quoting Utah Lighthouse Ministry v.

Found. for Apologetic Info. and Research, 527 F.3d

1045, 1055 (10th Cir. 2008)). It does not give rise to

a First Amendment defense when used on a

commercial product like a dog toy:

[T]he cry of “parody!” does not

magically fend off otherwise legitimate

claims of trademark infringement or

dilution. There are confusing parodies

and non-confusing parodies.

Id. at 985.

In the Tenth Circuit, Jordache Enters., Inc. v.

Hogg Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987)

analyzed the likelihood of confusion factors to

conclude that the JORDACHE mark for blue jeans

was not infringed by a LARDASHE parody mark

used on plus-sized jeans. Here too, the court found

no basis to apply the First Amendment:

The

tension

between

the

first

amendment and trademark rights is

most acute when a noncommercial

20

parody is alleged to have caused

tarnishment, a situation in which first

amendment protection is greatest. This

concern is not as great here because

Lardashe is being used as a

trademark to identify a commercial

product.

Id. at 1490 n.7 (emphasis added); see also Cardtoons,

L.C. v. Major League Baseball Players Ass’n, 95 F.3d

959 (10th Cir. 1996) (parody baseball cards

successfully amused, and did not confuse); Stouffer v.

Nat. Geographic Partners, LLC, 2020 WL 2306854

(D. Colo. May 8, 2020) (applying modified version of

Rogers to documentary title), appeal filed, No. 201208 (10th Cir. June 8, 2020).

The Eleventh Circuit’s decision in Univ. of

Alabama Bd. of Trustees v. New Life Art, Inc., 683

F.3d. 1266 (11th Cir. 2012) is instructive. In that

case, the court applied Rogers to protect “artistically

expressive

work[s]”paintings,

prints,

and

calendarsbut not “mundane” articles like mugs,

cups, flags, towels, and T-shirts. Id. 1278–79. Those

products instead are subject to the regular likelihood

of confusion analysis. That approach mimics the

Second Circuit’s distinction between artistic works

and “utilitarian products.” Rogers, 875 F.2d at 997.

As these examples show, courts outside the Ninth

Circuit recognize that heightened First Amendment

protection is appropriate only for artistic works. Not

21

one of these courts has applied Rogers to cover

ordinary commercial products. To the contrary,

when addressing mundane commercial products—

like the dog toys here—courts do not extend First

Amendment protection.

Rather, courts analyze

products alleged to be parodies under trademark

law, considering whether the parody is so obvious

that confusion is unlikely.

The Ninth Circuit’s alternative approach means

that any seller of an ordinary commercial product

who uses a humorous message with another’s mark

will be entitled to First Amendment protection so

long as the mark has some artistic relevance to the

product (a standard the Ninth Circuit has said is any

relevance “above zero,” E.S.S. Ent’mt 2000 Inc. v.

Rock Star Videos Inc., 547 F.3d 1095, 1100 (9th Cir.

2008), and does not present a compelling likelihood

of confusion. Such a standard fails to strike the

proper balance between trademark law and the First

Amendment.

22

C.

The Ninth Circuit’s Extension Of

Rogers Wrongly Tilts The Balance

Against

The

Application

of

Trademark Law And Its Protection

Of Consumers.

This case warrants review by this Court because

the Ninth Circuit’s approach is far out of step with

all of the other circuits that have analyzed Rogers or

considered trademark claims involving parodies in

commercial goods. It is an outlier that threatens to

undermine long-standing likelihood of confusion

analysis for any product that arguably includes some

expression of any kind.

That instability is

exacerbated given the prominence and size of the

Ninth Circuit.

This is not the first time the Ninth Circuit has

insupportably expanded Rogers.

In Twentieth

Century Fox Television v. Empire Distrib., Inc., 875

F.3d 1192 (9th Cir. 2017), the Ninth Circuit held

that EMPIRE-branded sound recordings used to

market the Fox television series “Empire” (about a

fictional “Empire Entertainment” company) did not

infringe the trademark rights of a real-world record

label named Empire Distribution, Inc. The title of

the show—“Empire”—is exactly what Rogers was

intended to protect. But INTA was troubled by the

Ninth Circuit’s companion conclusion extending

Rogers to consumer goods like shirts, glasses and

records sold under the EMPIRE trademark, even

though the Ninth Circuit recognized “that these

23

promotional efforts technically fall outside the title

or body of an expressive work.” Id. at 1196.

In Gordon v. Drape Creative, Inc., 909 F.3d 257

(9th Cir. 2018), the Ninth Circuit expanded Rogers

again, this time to provide First Amendment

protection to greeting cards after the defendant

tried, without success, to license the plaintiff’s

trademark for its greeting cards.

JDPI goes substantially further. In JDPI, the

court completely untethered Rogers from its

moorings by offering First Amendment protection to

a dog toy that replicates a Jack Daniel’s whiskey

bottle—the precise type of “utilitarian” and

“mundane” product that courts since Rogers itself

have recognized do not merit First Amendment

protection. The Ninth Circuit’s conclusion that any

product that “communicate[s] a humorous message”

is an “expressive work” with First Amendment

protection, JDPI, 953 F.3d at 1175, clashes with

decades of precedent from the other circuits.

As a matter of First Amendment precedent, no

basis exists for this sort of protection. At most, a dog

toy would be considered a form of commercial speech

that would be subject to intermediate scrutiny,

which allows trademark law to regulate such uses to

advance the important interest of protecting the

public from confusion. S.F. Arts & Athletics, Inc. v.

U.S. Olympic Committee, 483 U.S. 522, 535, 541

(1987) (use of mark to induce sale of goods is

24

“commercial speech,” which “receives a limited form

of First Amendment protection”; commercial user

who claims partially expressive purpose does not

thereby earn “First Amendment right to

‘appropriat[e] to itself the harvest of those who have

sown.’” ); Central Hudson Gas & Electric Corp. v.

Pub. Serv. Comm’n, 447 U.S. 557, 562–63 (1980)

(“The Constitution . . . accords a lesser protection to

commercial speech than to other constitutionally

guaranteed expression.”). Nothing in this Court’s

free speech jurisprudence, or in the text or history of

the First Amendment, supports the constitutional

protection afforded by the Ninth Circuit.

II.

THE NINTH CIRCUIT’S DILUTION ANALYSIS

DEPARTS FROM THE EXISTING STATUTORY

FRAMEWORK AND DISREGARDS THIS COURT’S

PRECEDENT.

The Court should grant certiorari to confirm that

its own longstanding analysis for “commercial”

speech, not the Ninth Circuit’s novel approach,

applies under the TDRA.

The TDRA contains a number of defenses—

including for certain parodies, news reporting, and

noncommercial uses—that already strike a balance

with the First Amendment. 15 U.S.C. § 1125(c)(3).

With respect to parodies, the exclusion protects

parodies against claims of dilution, but only where a

defendant does not use the plaintiff’s mark as a

designation of source of the defendant’s own goods.

25

The Ninth Circuit did not purport to apply that

exclusion because Respondent branded its dog toy

with its own mark (Bad Spaniels) and trade dress,

both of which JDPI challenged as diluting.

Instead, the Ninth Circuit disregarded the limits

of the parody exclusion and seized on the exclusion

for noncommercial uses.

It held the dog toy

noncommercial because it “was used to convey a

humorous message.” JDPI, 953 F.3d at 1176.

The TDRA’s “noncommercial use exclusion

“expressly incorporates the concept of ‘commercial’

speech from the ‘commercial speech’ doctrine, and

proscribes dilution actions that seek to enjoin use of

famous marks in ‘non-commercial’ uses (such as

consumer product reviews).” H.R. Rep. No. 104-374,

104th Cong., at 8 (1st Sess. 1995); Mattel, Inc. v.

MCA Records, Inc., 296 F.3d 894, 906 (9th Cir. 2002)

(discussing legislative history of Lanham Act’s

dilution provision). Before that exclusion can be

applied, a court must assess whether the use at issue

qualifies as “commercial.”

This Court in Bolger v. Youngs Drug Prods.

Corp., 463 U.S. 60 (1983), considered three

characteristics, the combination of which provides

“strong support” for finding speech to be

“commercial”:

(1)

Whether

advertisement;

the

material

is

an

26

(2)

Whether the materials refer to a

specific product;

(3)

Whether the speaker has an

economic motive;

Id. at 66–67.

The Court was mindful that

“[a]dvertisers should not be permitted to immunize

false or misleading product information from

government regulation simply by including

references to public issues.”

Id. at 68 (noting

approvingly Justice Brennan’s concurrence in

Metromedia, Inc. v. City of San Diego, 453 U.S. 490,

540 (1981), that “those who seek to convey

commercial messages will engage in the most

imaginative of exercises to place themselves within

the safe haven of noncommercial speech, while at the

same time conveying their commercial message”).

Although this Court has not addressed the

TDRA’s noncommercial use exception, other courts

have applied Bolger to analyze whether a trademark

use is “noncommercial” under the TDRA.

In

Radiance Foundation, the Fourth Circuit applied the

Bolger factors and added one more: “‘the viewpoint

of the listener’, i.e., whether the listener would

perceive the speech as proposing a transaction.” 786

F.3d at 331.

The Ninth Circuit did not consider Bolger at all.

Instead, in two paragraphs, it held as a matter of

law that Respondent’s dog toy was noncommercial,

27

and therefore statutorily exempt from a claim for

dilution, because the toy conveyed a “humorous

message” and did “more than propose a commercial

transaction.” JDPI, 953 F.3d at 1176. That analysis

ignores the other Bolger factors and improperly

shortcuts the analysis of whether a use is

“commercial.”

An example of Bolger’s proper application

involved a denial by the New York State Liquor

Authority of an application for a beer label with a

“picture of a frog with the second of its four

unwebbed ‘fingers’ extended in a manner evocative

of a well known human gesture of insult.” Bad Frog

Brewery, Inc. v. N.Y. State Liquor Auth., 134 F.3d

87, 90 (2d Cir. 1998). The Second Circuit applied

Bolger and held that the label, although it contained

expressive elements, nevertheless was commercial

speech:

We are unpersuaded by Bad Frog’s

attempt to separate the purported

social commentary in the labels from

the hawking of beer. Bad Frog’s labels

meet the three criteria identified

in Bolger: the labels are a form of

advertising, identify a specific product,

and serve the economic interest of the

speaker.

Moreover, the purported

noncommercial message is not so

“inextricably intertwined” with the

28

commercial speech as to require a

finding that the entire label must be

treated as “pure” speech. Even viewed

generously, Bad Frog’s labels at most

link[] a product to a current

debate, which is not enough to convert a

proposal for a commercial transaction

into “pure” noncommercial speech.

Id. at 97 (citations and quotation marks omitted).

As the Second Circuit did with beer in Bad Frog

Brewery, the Ninth Circuit should have done with

the dog toy here; it should have applied the Bolger

factors with reference to the district court’s factual

findings, rather than summarily conclude that the

toy made noncommercial use of Petitioner’s trade

dress.

The Ninth Circuit not only failed to apply this

Court’s established test for analyzing commercial

speech, but also unnecessarily resorted to the First

Amendment. The TDRA already includes provisions

balancing trademark interests with free speech. The

Ninth Circuit should have applied those provisions,

especially given this Court’s “settled policy” to avoid

unnecessary constitutional questions.

Gomez v.

United States, 490 U.S. 858, 864 (1989) (invoking

doctrine of constitutional avoidance in dispute

raising potential First Amendment issues).

Adherence to this “settled policy” calls for

instructing the lower courts to follow the statutory

29

framework and avoid injecting unneeded new First

Amendment rules. See also Leval, supra, at 210

(“Where the terms of the trademark law adequately

protect an accused infringer’s use as falling outside

the scope of the trademark owner’s exclusive right,

the court has no need to seek answers in the First

Amendment.”).

CONCLUSION

For the foregoing reasons, the Court should grant

JDPI’s petition for certiorari.

Dated: October 19, 2020

Respectfully submitted,

JENNIFER GREGOR

GREGOR & KAHN, S.C.

One East Main Street,

Suite 500

Madison, WI 53703

Tel. (608) 284-2629

VIJAY K. TOKE

PILLSBURY WINTHROP

SHAW PITTMAN LLP

Four Embarcadero

Center, 22nd Fl.

San Francisco, CA

94111

Tel. (415) 984-1089

DAVID H. BERNSTEIN

Counsel of Record

JEREMY FEIGELSON

JARED I. KAGAN

EMILY REBECCA HUSH

DEBEVOISE & PLIMPTON

LLP

919 Third Avenue

New York, NY 10022

(212) 909-6696

dhbernstein@debevoise.com

COUNSEL FOR AMICUS CURIAE

THE INTERNATIONAL TRADEMARK ASSOCIATION