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

Supreme Court briefSep 16, 2022

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No. 22-148

In the Supreme Court of the United States

JACK DANIEL’S PROPERTIES, INC.,

Petitioner,

VIP PRODUCTS LLC,

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED

STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

BRIEF OF AMERICAN INTELLECTUAL

PROPERTY LAW ASSOCIATION

AS AMICUS CURIAE SUPPORTING

PETITION FOR WRIT OF CERTIORARI

PATRICK J. COYNE

PRESIDENT

AMERICAN INTELLECTUAL

PROPERTY LAW

ASSOCIATION

1400 Crystal Drive

Suite 600

Arlington, VA 22202

(703) 415-0708

WILLIAM G. BARBER

Counsel of Record

GIULIO E. YAQUINTO

PIRKEY BARBER PLLC

1801 East 6th Street

Suite 300

Austin, TX 78702

(512) 482-5223

bbarber@pirkeybarber.com

LISA M. TITTEMORE

SUNSTEIN LLC

100 High Street

BOSTON, MA 02110

Counsel for Amicus Curiae

QUESTION PRESENTED

Whether humorous use of another’s trademark on

a commercial product is subject to the Lanham Act’s

traditional likelihood-of-confusion analysis, or instead

receives heightened First Amendment protection from

trademark-infringement claims.

TABLE OF CONTENTS

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

SUMMARY OF THE ARGUMENT ...................... 2

ARGUMENT.......................................................... 4

I. The Ninth Circuit’s Decision Creates a

Circuit Split on the Scope of Protection

Afforded by the First Amendment Against

Lanham Act Claims. ........................................ 4

A. Courts Have Historically Limited

Rogers’ Framework to Artistic Works ........ 5

B. Misleading Trademark Parodies Used

as Trademarks or Trade Dress for

Utilitarian Products Should Not

Receive Heightened Protection. ............... 12

II. Trademark Owners Would Rarely Prevail

under the Ninth Circuit’s Approach............... 18

CONCLUSION .................................................... 22

III

TABLE OF AUTHORITIES

Cases

Anheuser-Busch, Inc. v. L. & L. Wings, Inc.,

962 F.2d 316 (4th Cir. 1992) ........................ 12

Anheuser-Busch, Inc. v. VIP Prod., LLC,

666 F. Supp. 2d 974 (E.D. Mo. 2008) ........... 21

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

134 F.3d 87 (2d Cir. 1998) ............................ 15

Bolger v. Youngs Drug Prod. Corp.,

463 U.S. 60 (1983) .......................................... 3

Brown v. Elec. Arts, Inc.,

724 F.3d 1235 (9th Cir. 2013) ...................... 20

Brown v. Ent. Merch.’s Ass’n,

564 U.S. 786 (2011) ........................................ 8

Campbell v. Acuff-Rose Music, Inc.,

510 U.S. 569 (1994) ...........................12, 17, 18

Cliffs Notes, Inc. v. Bantam Doubleday Dell

Pub. Grp., Inc.,

886 F.2d 490 (2d Cir. 1989) .....................10, 13

Deere & Co. v. MTD Prod., Inc.,

41 F.3d 39 (2d Cir. 1994) ................................ 9

Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc.,

109 F.3d 1394 (9th Cir. 1997) ...................... 17

Elvis Presley Enters., Inc. v. Capece,

141 F.3d 188 (5th Cir. 1998) ........................ 16

ETW Corp. v. Jireh Pub., Inc.,

332 F.3d 915 (6th Cir. 2003) ........................ 11

Gordon v. Drape Creative, Inc.,

909 F.3d 257 (9th Cir. 2018) ...................19, 20

Grey v. Campbell Soup Co.,

650 F. Supp. 1166 (C.D. Cal. 1986).............. 17

Harley-Davidson, Inc. v. Grottanelli,

164 F.3d 806 (2d Cir. 1999) ................... passim

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

828 F.2d 1482 (10th Cir. 1987) .................... 12

Knauer v. United States,

328 U.S. 654 (1946) ...................................... 20

L.L. Bean, Inc. v. Drake Publishers, Inc.,

811 F.2d 26 (1st Cir. 1987) ......................17, 18

Louis Vuitton Malletier S.A. v. Haute Diggity

Dog, LLC,

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

Louis Vuitton Malletier, S.A. v. My Other Bag, Inc.,

156 F. Supp. 3d 425 (S.D.N.Y. 2016) ......16, 18

Lyons P’ship v. Giannoulas,

179 F.3d 384 (5th Cir. 1999) ........................ 15

MasterCard Int’l Inc. v. Nader 2000 Primary

Comm., Inc., No. 00-CV-6068,

2004 WL 434404 (S.D.N.Y. Mar. 8, 2004) ... 12

Mattel, Inc. v. MCA Recs., Inc.,

296 F.3d 894 (9th Cir. 2002) ........................ 11

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

6 F.3d 1225 (7th Cir. 1993) .....................12, 15

Radiance Found., Inc. v. NAACP,

786 F.3d 316 (4th Cir. 2015) ........................ 11

Recot, Inc. v. M. C. Becton,

56 USPQ2d 1859 (TTAB 2000) .................... 17

Rogers v. Grimaldi,

875 F.2d 994 (2d Cir. 1989) ................... passim

Shady Grove Orthopedic Assocs., P.A. v. Allstate

Ins. Co.,

559 U.S. 393 (2010) ...................................... 21

Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,

588 F.3d 97 (2d Cir. 2009) ............................ 16

Stop the Olympic Prison v. U.S. Olympic Comm.,

489 F. Supp. 1112 (S.D.N.Y. 1980) .............. 10

TE-TA-MA Truth Foundation—Family of

URI, Inc. v. World Church of Creator,

297 F.3d 662 (7th Cir. 2002) .......................... 9

Thompson v. Western States Med. Ctr.,

535 U.S. 357 (2002) ........................................ 3

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

221 F. Supp. 2d 410 (S.D.N.Y. 2002) ..8, 15, 16

Twentieth Century Fox Television v. Empire

Distrib., Inc.,

875 F.3d 1192 (9th Cir. 2017) ...................... 20

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

996 F.2d 1366 (2d Cir. 1993) ........................ 11

United We Stand Am., Inc. v. United We Stand, Am.

New York, Inc.,

128 F.3d 86 (2d Cir. 1997) .............................. 9

Univ. of Ala. Bd. of Trs. v. New Life Art, Inc.,

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

Wendy’s Int’l, Inc. v. Big Bite, Inc.,

576 F. Supp. 816 (S.D. Ohio 1983) ............... 16

Westchester Media v. PRL USA Holdings, Inc.,

214 F.3d 658 (5th Cir. 2000) ........................ 11

Yankee Pub. Inc. v. News Am. Pub. Inc.,

809 F. Supp. 267 (S.D.N.Y. 1992) ................ 13

Other Authorities

J. Thomas McCarthy, McCarthy on Trademarks

& Unfair Competition (5th ed. 2018) .....11, 13

Lynn M. Jordan & David M. Kelly, Another Decade of

Rogers v. Grimaldi: Continuing to Balance the

Lanham Act with the First Amendment Rights of

Creators of Artistic Works,

109 Trademark Rep. 833 (2019) .................. 19

INTEREST OF THE AMICUS CURIAE

Amicus curiae American Intellectual Property Law

Association (“AIPLA”) submits this brief in support of

the grant of certiorari. 1

AIPLA is a national bar association representing

the interests of approximately 7,000 members engaged

in private and corporate practice, government service,

and academia. AIPLA’s members represent a diverse

spectrum of individuals, companies, and institutions

involved directly or indirectly in the practice of trademark, copyright, and patent law, as well as other fields

of law affecting intellectual property. Our members

represent both owners and users of intellectual property. AIPLA’s mission includes providing courts with

objective analyses to promote an intellectual property

system that stimulates and rewards invention, creativity, and investment while accommodating the public’s interest in healthy competition, reasonable costs,

and basic fairness. AIPLA has no stake in any of the

parties to this litigation or in the ultimate result of the

case. AIPLA’s only interest is in seeking correct and

consistent interpretation of the law as it relates to intellectual property issues.

1 Under Rule 37.6, AIPLA certifies that no counsel for a party

authored this brief in whole or in part and that no person or entity

other than AIPLA, its members, and its counsel has made a

monetary contribution to the preparation or submission of this

brief. See Sup. Ct. R. 37.6. All parties received timely notice and

provided their written consent to the filing of this amicus brief.

SUMMARY OF THE ARGUMENT

Sections 32(1) and 43(a) of the Lanham Act regulate the use of trademarks “likely to cause confusion”

among consumers. For decades, courts have uniformly

understood that the use of misleading trademarks on

almost all commercial products may be enjoined under

this statutory standard. The Ninth Circuit’s decision

below unjustifiably extends a narrow, judicially created exception for artistic works to cases involving ordinary commercial products—like the dog toys in this

case—and creates a split among Courts of Appeals.

Artistic works like films, paintings, books, and

songs are protected speech under the First Amendment. Since the Second Circuit’s landmark decision in

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), courts

have recognized that titles of artistic works (as well as

trademarks used within such works) may be inextricably intertwined with the artistic work. Courts therefore

construe the Lanham Act to apply to artistic works and

their titles “only where the public interest in avoiding

consumer confusion outweighs the public interest in

free expression.” Id. at 999. Under Rogers, the Lanham

Act applies to trademarks used for artistic works only

if they have “no artistic relevance” to the underlying

work or if they are “explicitly misleading” as to its

source or content. Id. at 999. This heightened standard

for liability replaces the statutory “likelihood-of-confusion” standard and “insulates from restriction” trademark infringement in artistic works that is “only implicitly misleading.” Id. at 1000.

Ordinary commercial products, in contrast, remain

subject to the Lanham Act’s statutory standard.

Rogers defines “ordinary commercial products” or

“utilitarian products” as products that are not inherently protected speech. See id. at 997-1000. The First

Amendment has never protected “false, deceptive, or

misleading” commercial speech, Bolger v. Youngs Drug

Prod. Corp., 463 U.S. 60, 69 (1983); accord Thompson

v. Western States Med. Ctr., 535 U.S. 357, 367 (2002)

(commercial speech that “is misleading … is not protected by the First Amendment”), and the Lanham

Act’s prohibition on misleading trademarks comports

with that standard. Rogers’ limiting construction is

meant to apply only in the slim margin of cases where

a trademark’s commercial-speech function is “inextricably intertwined” with other protected speech. 875

F.2d at 998. Marks used with ordinary commercial

products lack those inseparable “artistic and commercial elements.” Id.

The decision below turns Rogers’ distinction between artistic works and ordinary commercial products on its head. The Ninth Circuit applied Rogers to a

dog toy based on the incorrect premise that VIP’s use

of Jack Daniel’s marks communicates a “humorous

message” deserving of First Amendment protection as

parody. 953 F.3d 1170, 1175. The court wrongly held

“[t]he fact that VIP chose to convey this humorous

message through a dog toy is irrelevant.” Id. But there

is no “humor”-based First Amendment exception for

misleading trademarks used on ordinary commercial

products. Nor does parody automatically transform an

ordinary product into an artistic work entitled to

heightened protection under Rogers. See e.g., HarleyDavidson, Inc. v. Grottanelli, 164 F.3d 806, 812-13 (2d

Cir. 1999). Courts overwhelmingly analyze humorous

or parodic uses of marks for ordinary commercial products under the Lanham Act’s likelihood-of-confusion

standard, including parodic dog toys. See, e.g., Louis

Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507

F.3d 252, 259-60 (4th Cir. 2007).

The Ninth Circuit’s decision extends Rogers well

beyond its original reasoning and conflicts with decisions from other Courts of Appeals. Courts asked to

decide whether Rogers applies to “humorous” or parodic uses of trademarks on ordinary commercial products have always answered that question no; the Ninth

Circuit now answers it yes. Neither the First Amendment nor the Lanham Act justifies this result. The first

question presented by Jack Daniel’s petition implicates an important question of federal law on which

the Courts of Appeals disagree. Given the significance

of that question to trademark litigants, AIPLA urges

this Court to grant certiorari.

ARGUMENT

The Ninth Circuit’s Decision Creates a

Circuit Split on the Scope of Protection

Afforded by the First Amendment Against

Lanham Act Claims.

Two interrelated but separate errors led the Ninth

Circuit to conclude that VIP’s use of Jack Daniel’s

marks for dog toys enjoys heightened protection under

the First Amendment. First, the court held that the

narrow framework articulated in Rogers applied to

VIP’s products because they communicated a “humorous message.” Second, its basis for this holding was

that Rogers invariably applies to trademark parodies

regardless of whether the dispute involves a protected

artistic work or a utilitarian product. Both premises

conflict with well-established precedent.

The reasoning underlying Rogers—and decades of

subsequent lower court decisions—is that a heightened standard applies to artistic works because they

are forms of protected speech. In contrast, ordinary

commercial products (i.e., “utilitarian products”) do

not enjoy the same protection as artistic works. Rogers, 875 F.2d at 997-1000. Incorporating trademark

parody into a utilitarian product does not transform

the product into protected speech. No other court has

applied Rogers as aggressively as the Court below to a

commercial product, as is the dog toy in this case. Nor

has Rogers been held applicable to all parodies regardless of what form they take. To the contrary, the Second Circuit has held that using an alleged parody of

another’s mark to sell any commercial product does

not receive heightened protection under Rogers. See

e.g., Harley-Davidson, 164 F.3d at 812-13. Other circuit courts have applied the Lanham Act’s statutory

likelihood-of-confusion standard to trademark parodies involving commercial products. See, e.g., Haute

Diggity Dog, 507 F.3d at 259 (parodic dog toy).

A. Courts Have Historically Limited Rogers’

Framework to Artistic Works.

The Second Circuit’s decision in Rogers established

a narrow First Amendment exception to the Lanham

Act. Rogers requires heightened free speech protection

for artistic works. Rogers never supplanted the Lanham Act’s traditional liability standard in cases involving other commercial products.

In Rogers, the court considered whether the Lanham Act can permissibly prohibit allegedly misleading

film titles. Renowned filmmaker Federico Fellini cre-

ated a fictional movie based on entertainers who impersonated famous real-life dancing partners Ginger

Rogers and Fred Astaire. 875 F.2d at 996-97. The

movie was titled Ginger and Fred and featured two

Italian dancers who make a career imitating Rogers

and Astaire, and then reunite thirty years later for a

television special. Id. The film was promoted as “the

bittersweet story of these two fictional dancers and as

a satire of contemporary television variety shows.” Id.

at 997. Rogers filed suit under Section 43(a) of Lanham

Act, alleging the title was likely to confuse consumers

into believing she endorsed the film or was otherwise

associated with it. The district court ruled against her,

reasoning that Fellini’s title was not “intended primarily to serve a commercial purpose” and, thus, beyond

the Lanham Act’s scope as part of an “artistic work.”

See 695 F. Supp. 112, 120-21 (S.D.N.Y. 1988).

On appeal, the Second Circuit disagreed with the

lower court’s bright-line rule. While films are “indisputably works of artistic expression,” 875 F.2d at 997,

free speech principles “do not insulate titles of artistic

works from all Lanham Act claims,” id. at 998. After

all, films are sold “in the commercial marketplace like

other more utilitarian products, making danger of consumer deception a legitimate concern that warrants

some government regulation.” Id. at 997. Rather than

dispensing with the Act entirely, the court reasoned

that “First Amendment concerns” should “inform our

consideration of the scope of the Act as applied to

claims involving” a protected work’s title. Id. at 998.

The court next looked specifically to the relationship between artistic works and their titles.

Titles, like the artistic works they identify, are

of a hybrid nature, combining artistic expression

and commercial promotion. The title of a movie

may be both an integral element of the filmmaker’s expression as well as a significant

means of marketing the film to the public. The

artistic and commercial elements of titles are inextricably intertwined.

Id. (emphasis added). This intertwined nature of literary titles is critical. “Film-makers and authors frequently rely on word-play, ambiguity, irony, and allusion in titling their works.” Id. Also, “[t]he subtleties of

a title can enrich a reader’s or a viewer’s understanding of a work.” Id. Given the inherent connection between artistic works and their titles, regulating a title’s “commercial elements” (i.e., their function as an

identifier) would necessarily interfere with protected

“artistic” elements that the First Amendment seeks to

promote. See id.

To account for this concern, the Rogers court held

that the Lanham Act does not apply to allegedly misleading film titles that are “artistically relevant” to the

work and do not “explicitly mislead” as to the film’s

source or origin. See id. at 999. These dual requirements were intended to balance First Amendment interests and the Lanham Act’s purpose of eliminating

consumer deception in the commercial marketplace.

Rogers permits use of “ambiguous or only implicitly

misleading” film titles to allow leeway for protected

speech. Id. at 1000. This accommodation is not absolute. “A misleading title with no artistic relevance cannot be sufficiently justified by a free expression interest.” Id. at 999. Also, if an artistically relevant title

contains “explicit references” that are “false as applied

to the underlying work,” the “interest in avoiding deception would warrant application of the Lanham Act.”

Id. As an example, the court noted that titling Fellini’s

film The True Life Story of Ginger and Fred may satisfy this explicitly misleading standard. Id. at 1000.

The Rogers framework is a narrow and specific

limit on the Lanham Act for artistic works. As the Second Circuit made clear, Rogers allows use of misleading designations the Lanham Act would otherwise prohibit. The Rogers’ court’s reasoning rests on two

threshold conditions that have tightly cabined its

subsequent application.

First, the “product” identified and described by

film titles (i.e., the film) must be protected speech.

While the First Amendment broadly protects artistic

works in the realm of “entertainment,” see Brown v.

Ent. Merch.’s Ass’n, 564 U.S. 786, 790 (2011) (“we have

long recognized that it is difficult to distinguish politics from entertainment . . . . Like the protected books,

plays, and movies that preceded them, video games

communicate ideas . . . through many familiar literary

devices.”), the vast majority of utilitarian products sold

in the commercial marketplace do not qualify for this

protection. Rogers is not meant for cases involving

commercial products lacking artistic expression, and

courts have overwhelmingly recognized this limitation. See, e.g., Tommy Hilfiger Licensing, Inc. v. Nature

Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002)

(perfume parody not subject to Rogers); cf. Haute

Diggity Dog, 507 F.3d at 259-63 (statutory standard

applied to parodic dog toy).

In contrast, the Ninth Circuit’s decision in the present case substantially expands the holding in Rogers

to a utilitarian dog toy. This is the first time any court

has expanded Rogers to a product that is not inherently protected speech. The Second Circuit itself specifically rejected expanding Rogers under similar circumstances. See Harley-Davidson, 164 F.3d at 812; cf.

Deere & Co. v. MTD Prod., Inc., 41 F.3d 39, 45 (2d Cir.

1994) (First Amendment did not bar state dilution law

from regulating humorous parody “accomplished for

the sole purpose of promoting” competing tractors).

The court in Harley-Davidson specifically found that

“somewhat humorous[]” use of Harley-Davidson’s logo

for motorcycle repair services and T-shirts did not

qualify for First Amendment protection and was subject to Lanham Act’s statutory enforcement standard.

164 F.3d at 813.

Second, film titles are uniquely “of a hybrid nature.” Rogers, 875 F.2d at 998. They identify the film

for promotional purposes and communicate information about the film’s substance in a manner that is

“inextricably intertwined.” Id. The inherent link between a title’s expressive and identifying functions is

not analogous to all uses of marks that relate in some

tangential way to protected speech. Courts have long

imposed trademark liability on unauthorized users engaged in political speech who “furnish[] a wide variety

of non-commercial public and civic benefits.” United

We Stand Am., Inc. v. United We Stand, Am. New York,

Inc., 128 F.3d 86, 90, 93 (2d Cir. 1997). The same is

true about uses of misleading marks that implicate

speech relating to the exercise of religion. See, e.g., TETA-MA Truth Foundation—Family of URI, Inc. v.

World Church of Creator, 297 F.3d 662, 667 (7th Cir.

2002) (“The World Church has every right to a distinctive name; it does not have a constitutional right to use

some other denomination’s incontestable trademark.”).

This second threshold condition ensures Rogers

does not displace the Lanham Act’s likelihood-of-confusion standard simply because a dispute involves

some allegedly protected speech unless that expression

is part-and-parcel with any commercial purpose. Few

circumstances beyond titles of artistic works fulfill this

condition. Compare Stop the Olympic Prison v. U.S.

Olympic Comm., 489 F. Supp. 1112, 1126 (S.D.N.Y.

1980) (use of Olympic marks in poster protesting

planned construction of federal prison was likely protected under the First Amendment). As a result, only

a small subset of trademark disputes involving protected speech is subject to Rogers.

Although the Second Circuit subsequently expanded the reach of Rogers beyond film titles, it has

not altered these two threshold conditions. Nor has the

Second Circuit extended the Rogers framework beyond

artistic works, literary works, and other protected entertainment. Less than a year after Rogers, the Second

Circuit considered an infringement action involving a

parody of Cliffs Notes study guides called Spy Notes

that mimicked visual elements of the familiar Cliffs

Notes cover. Cliffs Notes, Inc. v. Bantam Doubleday

Dell Pub. Grp., Inc., 886 F.2d 490, 491-93 (2d Cir.

1989). Recognizing that the film title in Rogers involved somewhat different considerations than a parodic book cover, the court nevertheless applied Rogers

because books (i.e., literary works) also qualify as protected artistic works. Id. at 493-94. The court held

“that the Rogers balancing approach is generally applicable to Lanham Act claims against works of artistic

expression.” Id. at 494-95 (emphasis added). “This approach,” the court explained, “takes into account the

ultimate test in trademark law, namely, the likelihood

of confusion.” Id. at 495. Several years later in a case

involving a book title, the court further clarified that a

“finding of likelihood of confusion must be particularly

compelling to outweigh the First Amendment interest

recognized in Rogers.” Twin Peaks Prods., Inc. v.

Publ’ns Int’l, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993).

At least five circuits have adopted the Rogers

framework, all of which have maintained its two

threshold limitations. See Radiance Found., Inc. v.

NAACP, 786 F.3d 316, 328-29 (4th Cir. 2015); Univ. of

Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266,

1277 (11th Cir. 2012); ETW Corp. v. Jireh Pub., Inc.,

332 F.3d 915, 928 (6th Cir. 2003); Mattel, Inc. v. MCA

Recs., Inc., 296 F.3d 894 (9th Cir. 2002); Westchester

Media v. PRL USA Holdings, Inc., 214 F.3d 658, 664665 (5th Cir. 2000). Those courts have applied Rogers

to disputes involving artistic works like songs, paintings, books, magazines, and video games. See J.

Thomas, 6 McCarthy on Trademarks & Unfair Competition § 31:139 (5th ed. 2022). “Circuit courts have also

applied Rogers in cases where trademark law is being

used to attack the content—as opposed to the title—of

works protected by the First Amendment.” See, e.g.,

Univ. of Ala., 683 F.3d at 1277. None of these courts

have applied Rogers to utilitarian products having a

commercial purpose. The Ninth Circuit’s application of

Rogers to a dog toy unjustifiably extends Rogers and

threatens the framework’s decades of stability.

B. Misleading Trademark Parodies Used as

Trademarks or Trade Dress for Utilitarian

Products Should Not Receive Heightened

Protection.

The Ninth Circuit’s mistaken conclusion that Rogers governed this case rests on its faulty determination

that VIP’s dog toy is protected speech merely because

it is a humorous parody. Even assuming arguendo that

VIP’s dog toy is a parody, Rogers has never been held

to insulate all parodies. The Ninth Circuit’s conclusions on this point depart from well-established precedent in the Second Circuit and elsewhere.

This Court has described parody as a “literary or

artistic work that imitates the characteristic style of

an author or a work for comic effect or ridicule.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580 (1994).

Successful parodies mimic the original source while

conveying simultaneously that they are not the original, which ensures “the customer would not be confused, but amused.” Nike, Inc. v. Just Did It Enters., 6

F.3d 1225, 1228 (7th Cir. 1993). Parodies can take

many forms. Sometimes they are used in political advertising. See MasterCard Int’l Inc. v. Nader 2000 Primary Comm., Inc., No. 00-CV-6068, 2004 WL 434404,

at *16 (S.D.N.Y. Mar. 8, 2004). Others appear as visual

works printed on apparel. See Anheuser-Busch, Inc. v.

L. & L. Wings, Inc., 962 F.2d 316, 321 (4th Cir. 1992).

Parody may also identify the name and source of utilitarian products sold for commercial purposes. See Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482,

1486 (10th Cir. 1987) (parody as trademark for plussized jeans).

Most courts applying Rogers distinguish between

parody in literary or artistic works and parody as a

source identifier for utilitarian products sold for commercial purposes. See McCarthy, supra, § 31:153. As

one court stressed: “When another’s trademark (or a

confusingly similar mark) is used without permission

for the purpose of source identification, the trademark

law generally prevails over the First Amendment.”

Yankee Pub. Inc. v. News Am. Pub. Inc., 809 F. Supp.

267, 276 (S.D.N.Y. 1992) (Leval, J.) (emphasis in original). In particular, two Second Circuit decisions highlight the dichotomy in how courts treat trademark parody in artistic works (Cliffs Notes) versus trademark

parody used with ordinary commercial products (Harley-Davidson).

The court in Cliffs Notes held that the parodic use

at issue in that case was protected under Rogers as a

“work[] of artistic expression.” 886 F.2d at 495. The

challenged product—a one-time parody of Cliffs Notes

study guides called Spy Notes—was a book, i.e., an artistic work that is inherently protected speech under

the First Amendment. The book “poke[d] fun at certain

novels” with known “literary shortcomings” by using a

“satirize[d] Cliffs Notes” style in explaining the novels

to readers. Id. at 493. “[T]aking into account that

somewhat more risk of confusion is to be tolerated

when a trademark holder seeks to enjoin artistic expression,” the court concluded that “the degree of risk

of confusion between Spy Notes and Cliffs Notes does

not outweigh” the First Amendment interest in allowing authors expressive freedom. Id.

Harley-Davidson, on the other hand, reached the

opposite result. That decision involved a logo for a motorcycle repair shop called “The Hog Farm” that performed maintenance on Harley-Davidson motorcycles.

164 F.3d at 808-10. The shop’s logo appropriated Harley-Davidson’s seventy-year old bar-and-shield logo,

except that it replaced the words “Harley-Davidson”

with “American Made” and included the disclaimer

“unauthorized dealer.” Id. at 809. The logo also included “a drawing of a pig wearing sunglasses.” Id. Rejecting an argument that the shop’s logo was protected

parody under the First Amendment, the court held:

“We have accorded considerable leeway to parodists

whose expressive works aim their parodic commentary

at a trademark or a trademarked product . . . but have

not hesitated to prevent a manufacturer from using an

alleged parody of a competitor’s mark to sell a competing product.” Id. at 812 (citing Rogers, 875 F.2d at

998). The court observed that the shop’s logo made “no

comment on Harley’s mark” and “simply uses it somewhat humorously to promote [its] own products and

services, which is not a permitted trademark parody

use.” Id. at 813.

The reasoning in Harley-Davidson illustrates how

Rogers’ two threshold conditions limit its application.

The shop’s “product” was competing repair services

and ancillary products offered in the commercial marketplace, not an artistic work that qualified as protected speech. The use of generalized humor in a logo

identifying the source of motorcycle repair services is

not part-and-parcel with these services or otherwise

an inherent component of protected speech. Thus, the

logo failed to meet either of Rogers’ threshold conditions. See supra Part I.A. Harley-Davidson establishes

that alleged parodies are not automatically protected

by Rogers or the First Amendment.

The Ninth Circuit’s substantial expansion of Rogers in this case establishes a split among the circuits.

The Ninth Circuit erroneously concluded Rogers applied simply because the dog toys convey a “humorous

message,” without ever considering their inherently

utilitarian and non-expressive commercial purpose.

This approach cannot be squared with Harley-Davidson or other Second Circuit caselaw. See, e.g.,

Tommy Hilfiger, 221 F. Supp. 2d at 416; cf. Bad Frog

Brewery, Inc. v. New York State Liquor Auth., 134 F.3d

87, 97 (2d Cir. 1998) (no First Amendment protection

for humorous beer labels that “at most link[ed] a product to a current debate”).

Nor can it be squared with the broad consensus

among lower courts that parody is generally subject to

the Lanham Act’s traditional likelihood-of-confusion

standard. For example, the Seventh Circuit has recognized that the First Amendment “allows ridicule in the

form of parody” while emphasizing that “[p]arodies do

not enjoy a dispensation” from the traditional infringement standard. Nike, 6 F.3d at 1227-28. Instead, parody is “another factor to be considered in determining

the likelihood of confusion” that may require recalibration of other considerations like intent. See id. at 1228,

1231-32. Numerous courts have endorsed this approach. See, e.g., Lyons P’ship v. Giannoulas, 179 F.3d

384, 389-90 (5th Cir. 1999). Likewise, courts across the

country have consistently applied the traditional liability standard to a range of parodic uses involving ordinary products. 2

Parodic pet products should be treated no differently. Indeed, the Fourth Circuit in Haute Diggity Dog

analyzed a chew toy for dogs called “Chewy Vuiton”

that mimicked Louis Vuitton purses. 507 F.3d at 258.

The toys were found to be a parody because they

“poke[d] fun at the elegance and expensiveness of a

LOUIS VUITTON handbag, which must not be chewed

by a dog.” Id. at 261 (emphasis in original). That finding, however, did “not end the inquiry into whether

Haute Diggity Dog’s ‘Chewy Vuiton’ products create a

likelihood of confusion.” Id. Rather, the court assessed

liability under the statutory likelihood-of-confusion

standard. Id. at 262-63. “Recognizing that ‘Chewy

Vuiton’ is an obvious parody and applying the [traditional] factors,” the court held “that LVM has failed to

demonstrate any likelihood of confusion.” Id. at 263.

The Fourth Circuit relied in part on an earlier case

involving a “parody perfume product[] for use on pets”

called “Timmy Holedigger.” See Tommy Hilfiger, 221

F. Supp. 2d at 413. The court in that case refused to

apply Rogers because “the First Amendment does not

2 See Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d

97, 115 (2d Cir. 2009) (coffee); Elvis Presley Enters., Inc. v. Capece,

141 F.3d 188, 200 & 200 n.5 (5th Cir. 1998) (restaurant and bar

services); Jordache, 828 F.2d at 1486 (jeans); Louis Vuitton

Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425, 441

(S.D.N.Y. 2016) (handbags); Wendy’s Int’l, Inc. v. Big Bite, Inc.,

576 F. Supp. 816, 822 (S.D. Ohio 1983) (fast food).

extend” to infringing uses for “a somewhat non-expressive, commercial product.” Id. at 415-16. Applying the

statutory liability standard instead, the court concluded that the perfume was noninfringing under the

traditional factors. See id. at 416-21. Another court

similarly applied the statutory standard in a dispute

involving parodic dog treats. Grey v. Campbell Soup

Co., 650 F. Supp. 1166, 1173-75 (C.D. Cal. 1986) (use

of DOGIVA mark infringed GODIVA); see also Recot,

Inc. v. M. C. Becton, 56 USPQ2d 1859, 1860-62 (TTAB

2000) (refusing registration of FIDO LAY dog treats

based on likely confusion with FRITO LAY mark). The

decision below fails to explain why the “humorous” aspect of VIP’s toys is any different, and more deserving

of protection, than the parodic products in these cases.

Finally, the Ninth Circuit seemingly assumed,

without question, that VIP’s toys qualified as parody.

Although the court did not refer to the toys as protected parody, the precedents it relied on for applying

Rogers are almost all parody cases. 953 F.3d at 1176. 3

As ample precedent makes clear, however, “the heart

of any parodist’s claim” to use another’s work is for the

purpose of providing “commentary . . . bearing on the

substance of style of the original composition.” See,

e.g., Campbell, 510 U.S. at 580. “The message ‘must not

only differentiate the alleged parody from the original

but must also communicate some articulable element of

Those cases include Campbell, 510 U.S. at 580 (parodic

song); Haute Diggity Dog, 507 F.3d at 258-63 (parodic dog toy);

Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394,

1397 (9th Cir. 1997) (alleged parody of The Cat in the Hat); L.L.

Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987)

(parodic article).

satire, ridicule, joking or amusing.’” My Other Bag, 156

F. Supp. 3d at 434-35 (quoting Haute Diggity Dog, 507

F.3d at 260). An alleged trademark parody that “makes

no comment on [the original] mark” fails to establish an

absence of likely confusion and remains “vulnerable” to

liability. Harley-Davidson, 164 F.3d at 813.

The decision below considers only in passing the

significance of any commentary communicated by

VIP’s products. In a single sentence, the court suggested that the toys incorporated a “silly message” conveyed by “juxtaposing the irreverent representation of

the trademark with the idealized image created by the

mark’s owner.” 953 F.3d at 1175 (quoting L.L. Bean,

811 F.2d at 34). This generic reasoning applies to virtually every claimed parody that uses a mark in a manner inconsistent with the trademark owner’s usage.

Accordingly, the Ninth Circuit’s conclusion that

Rogers insulates all alleged parodies in connection

with utilitarian products conflicts with Second Circuit

precedent. See Harley-Davidson, 164 F.3d at 812-13.

The decision below is inconsistent with Rogers’ threshold conditions limiting its application to trademarks

used in artistic works that are inherently intertwined

with protected speech. The decision also breaks with

courts in multiple jurisdictions that do not apply any

heightened standard to a range of allegedly parodic

uses. See, e.g., Haute Diggity Dog, 507 F.3d at 259.

II.

Trademark Owners Would Rarely Prevail

under the Ninth Circuit’s Approach.

The Ninth Circuit’s extension of Rogers to ordinary

commercial products raises serious concerns for trademark owners. Rogers imposes a heightened “explicitly

misleading” standard in cases involving artistic works.

Far more often than not, trademark owners fail to

meet Rogers’ heightened standard. See Lynn M. Jordan & David M. Kelly, Another Decade of Rogers v. Grimaldi: Continuing to Balance the Lanham Act with the

First Amendment Rights of Creators of Artistic Works,

109 Trademark Rep. 833, 872 (2019) (observing that

courts in the Ninth Circuit often dismiss claims under

Rogers at the motion-to-dismiss stage). While a balancing test that favors First Amendment interests

may be sensible in cases involving artistic works that

are inherently intertwined with protected speech, the

decision below signals that infringers selling any kind

of utilitarian product for a commercial purpose may

now escape trademark liability, provided it incorporates some minimal “humorous” aspect. This approach

would place an unreasonable burden on trademark

owners to prove infringement and likely lead to forum

shopping among trademark litigants.

The Ninth Circuit has elaborated on Rogers’

“explicitly misleading” standard’s meaning more than

any other circuit. The court has emphasized that proof

of liability under Rogers requires evidence that the

alleged infringer’s use both “misleads consumers” and

does so “explicitly.” Gordon v. Drape Creative, Inc., 909

F.3d 257, 264 (9th Cir. 2018). In stark contrast to the

Lanham Act, “likely” confusion is insufficient, as is

actual confusion if caused implicitly. See id. at 267 (“it

is not enough to show that the defendant’s use of the

mark would confuse consumers as to the source”).

Liability instead requires an “explicit indication,”

“overt claim,” or “explicit misstatement” by the

infringer. Twentieth Century Fox Television v. Empire

Distrib., Inc., 875 F.3d 1192, 1199 (9th Cir. 2017).

Thus, the Ninth Circuit’s standard “reject[s] the

‘likelihood of confusion’ test.” Brown v. Elec. Arts, Inc.,

724 F.3d 1235, 1239 (9th Cir. 2013). It also seemingly

restricts the universe of relevant evidence. Refusing to

consider survey evidence that suggested significant

consumer confusion, the court in Brown emphasized:

“To be relevant, evidence must relate to the nature of

the behavior of the identifying material’s user, not the

impact of the use.” Id. at 1246 (emphasis added).

Thus, liability in the Ninth Circuit is exceedingly

difficult to prove when Rogers applies. The court has

“repeatedly observed that the mere use of a trademark

alone cannot suffice to make such use explicitly

misleading.” Gordon, 909 F.3d at 270. By focusing on

the “the nature of the [user’s] behavior” rather than

the deceptive “impact of the use,” see Brown, 724 F.3d

at 1239, the Ninth Circuit’s liability standard under

Rogers turns largely on the alleged infringer’s intent.

Yet, as this Court has noted: “Intent is a subjective

state, illusory and difficult to establish in absence of

voluntary confession.” Knauer v. United States, 328

U.S. 654, 659 (1946). Practically speaking, proving

liability in the Ninth Circuit under Rogers presents a

serious challenge that often becomes insurmountable.

As a result, the decision below has far reaching ramifications for trademark litigants. Expanding Rogers

with its heightened standard to disputes involving misleading marks on utilitarian products that merely convey a “humorous message” dramatically curtails trademark owners’ ability to protect their marks. Under the

Ninth Circuit’s approach, infringers could transform

the use of misleading trademarks on virtually any product into protected speech and avoid liability, short of

facts showing the most egregious, willful infringement

and despite substantial consumer confusion.

Rational trademark owners will undoubtedly take

notice. When possible, they will likely sue alleged infringers with a colorable claim of expressive use in jurisdictions outside the Ninth Circuit. By the same token, alleged infringers facing threats of litigation now

have a substantial incentive to file a declaratory judgment action in the Ninth Circuit.

The risk of forum shopping arising from the Ninth

Circuit’s expansion of Rogers to ordinary commercial

products is not merely speculative, as demonstrated by

this case. Indeed, VIP was previously sued in the

Eighth Circuit for the sale of a highly similar dog toy,

and the district court there preliminarily enjoined VIP

from further sales before the case settled. See Anheuser-Busch, Inc. v. VIP Prod., LLC, 666 F. Supp. 2d

974, 985 (E.D. Mo. 2008). When threatened with litigation by Jack Daniel’s six years later in the present case,

VIP filed a declaratory judgment action in Arizona, leveraging Rogers to obtain a contrary result.

The decision below portends similar gamesmanship among trademark litigants in disputes raising

First Amendment issues. Forum shopping will likely

become routine, as parties on both sides seek to either

leverage or avoid the Ninth Circuit’s expansion of Rogers. That practical impact alone warrants review by

this Court. As the Court has noted elsewhere, a rule of

decision that “produce[s] forum shopping” is “unacceptable when it comes as the consequence of judgemade rules.” Cf. Shady Grove Orthopedic Assocs., P.A.

v. Allstate Ins. Co., 559 U.S. 393, 415-16 (2010).

CONCLUSION

One of this Court’s primary functions is to reconcile

conflicts between the Courts of Appeals. The Second

Circuit’s Rogers rule is well-established law that

strikes an appropriate balance between protection of

trademark rights and First Amendment expression in

artistic works. The Ninth Circuit in the decision below

misapplied Rogers, expanding it substantially. This

expansion disturbs the appropriate balance in favor of

permitting misleading uses of trademarks that are

likely to cause confusion and lack the requisite characteristics of protected speech. This expansion of Rogers

effectively negates trademark owners’ rights to challenge misleading uses of their marks on virtually any

utilitarian product the infringer can colorably claim

uses its marks in a humorous fashion. AIPLA urges

the Court to review the Ninth Circuit’s decision and

restore an appropriate balance between these important competing interests.

Respectfully submitted,