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

No. 22-148

In the

Supreme Court of the United States

JACK DANIEL’S PROPERTIES, INC.,

Petitioner,

v.

VIP PRODUCTS LLC,

Respondent.

On 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 NEITHER PARTY

David A. Donahue

Fross Zelnick Lehrman

& Zissu, P.C.

151 West 42nd Street,

17th Floor

New York, New York 10036

(212) 813-5900

Vijay K. Toke

Counsel of Record

Rimon P.C.

423 Washington Street,

6th Floor

San Francisco, CA 94111

(415) 683-5472

vijay.toke@rimonlaw.com

Carrie A. Hefte

Cjh Services

3945 Rolling Hills Road

Arden Hills, MN 55112

(651) 639-0228

Counsel for Amicus Curiae

318044

A

(800) 274-3321 • (800) 359-6859

i

TABLE OF CONTENTS

Page

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . . i

TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . . . . iv

AMICUS CURIAE BRIEF OF THE

INTERNATIONAL TRADEMARK ASSOCIATION

IN SUPPORT OF NEITHER PARTY . . . . . . . . . . . . . . 1

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

SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . 4

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

I.

T H E N I N T H C I R C U I T ER R E D

WHEN IT APPLIED HEIGHTENED

FIRST AMENDMENT PROTECTION

T O A C L A I M E D T R A DE M A R K

INFRINGEMENT BY AN ORDINARY

COMMERCIAL PRODUCT BECAUSE

IT ALLEGEDLY CONTAINED SOME

EXPRESSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

A. The Rogers Test Was Originated

t o P rov ide Height ened F i r st

A mendment P rot ect ion On ly t o

Artistically Expressive Works Such as

Movies, Books, and Art . . . . . . . . . . . . . . . . . 9

ii

Table of Contents

Page

B. The Ninth Circuit Overbroadly Defined

an “Expressive Work” as Any Product

that Contains Any Expression . . . . . . . . . . 12

C. No Other Circuit Has Applied Rogers to

Ordinary Commercial Products, Even

if They Contain Some Expression . . . . . . . 15

D. T r a d i t i o n a l T r a d e m a r k L a w

Already Provides Protections for

Fi rst A mendment -P rotected

E x p r e s s ion I n c or p or a t e d I nt o

Ordinary Commercial Products . . . . . . . . . 17

II. T H I S C A S E P R O V I D E S A N

OPP ORT U N I T Y T O C ORR EC T A

LEGAL ERROR AND TO CLARIFY

WHEN THE ROGERS “EXPRESSIVE

WORK” TEST APPLIES . . . . . . . . . . . . . . . . . . 20

A. P r o v i d i n g a D e f i n i t i o n o f a n

“Expressive Work” Under Rogers

Will Lead to Greater Certainty in

Applying Trademark Law . . . . . . . . . . . . . . 20

III. A N “ E X P R E S S I V E W O R K ” I S

ONE IN WHICH EX PRESSION IS

IN EX T RICA BLE FROM T H E

PRODUCT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .23

iii

Table of Contents

Page

IV. THE NINTH CIRCUIT’S DILUTION

A N A LY S I S DI S R E G A R D S T H E

S T A T U T OR Y F R A M E WOR K O F

15 U. S .C. § 11 2 5 (c)(3) A N D T HIS

C OU RT ’ S J U R I S PRU DENCE ON

NONCOMMERCIAL SPEECH . . . . . . . . . . . . 25

A. The Ninth Circuit Did Not Apply

or Consider the TDRA’s Parody

Exception . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

B. The Ninth Circuit Failed to Apply

the Bolger Test for Determining

Noncommercial Speech . . . . . . . . . . . . . . . . 26

C. Resort to Constitutional Principles,

Rather than Traditional Trademark

Pr inciples, Was Unnecessar y to

Resolve this Dispute . . . . . . . . . . . . . . . . . . 29

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30

iv

TABLE OF CITED AUTHORITIES

Page

Cases

A.V.E.L.A., Inc. v.

Estate of Marilyn Monroe, LLC,

364 F. Supp. 3d 291 (S.D.N.Y. 2019) . . . . . . . . . . . . . 18

Abitron Austria GmbH et al. v.

Hetronic Int’l, Inc.,

No. 21-1043 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1-2

Already, LLC v. Nike, Inc.,

568 U.S. 85 (2013) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979) . . . . . . . . . . . . . . . . . . . . 12

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

666 F. Supp. 2d 974 (E.D. Mo. 2008) . . . . . . . . . . . . . 19

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

962 F.2d 316 (4th Cir. 1992) . . . . . . . . . . . . . . . . . . . . 19

B&B Hardware, Inc. v. Hargis Indus., Inc.,

575 U.S. 138 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . 2, 6

Bad Frog Brewery, Inc. v.

N.Y. State Liquor Auth.,

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

Bolger v. Youngs Drug Prods. Corp.,

463 U.S. 60 (1983). . . . . . . . . . 4, 6, 26, 27, 28, 29, 30, 31

v

Cited Authorities

Page

Cardtoons, L.C. v. Major League Baseball

Players Ass’n,

95 F.3d 959 (10th Cir. 1996) . . . . . . . . . . . . . . . . . . . . 19

Caryn Mandabach Prods. Ltd. v.

Sadlers Brewhouse Ltd.,

2021 WL 2497928 (C.D. Cal. May 19, 2021) . . . . . . . 21

Christian Louboutin S.A. v.

Yves Saint Laurent Am. Holdings, Inc.,

696 F.3d 206 (2d Cir. 2012) . . . . . . . . . . . . . . . . . . . . . . 2

Cliffs Notes, Inc. v.

Bantam Doubleday Dell Pub. Group, Inc.,

886 F.2d 490 (2d Cir. 1989) . . . . . . . . . . . . . . . . . . . . . 16

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

346 F. Supp. 1183 (E.D.N.Y. 1972) . . . . . . . . . . . . . . . 29

Dastar Corp. v.

Twentieth Century Fox Film Corp.,

539 U.S. 23 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

DC Comics v. Mad Engine, Inc.,

2015 WL 9122562 (C.D. Cal. 2015) . . . . . . . . . . . . . . 19

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

547 F.3d 1095 (9th Cir. 2008) . . . . . . . . . . . . . . . . . . . 16

Fleischer Studios, Inc. v. A.V.E.L.A., Inc.,

654 F.3d 958 (9th Cir. 2011) . . . . . . . . . . . . . . . . . . . . . 2

vi

Cited Authorities

Page

Gomez v. United States,

490 U.S. 858 (1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . 30

Hana Fin., Inc. v. Hana Bank,

574 U.S. 418 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

Heisman Trophy Trust v. Smack Apparel Co.,

637 F. Supp. 2d 146 (S.D.N.Y. 2009) . . . . . . . . . . . . . 19

Hush Hush Sound, Inc. v.

H&M Hennes & Mauritz LP,

2018 WL 4962086 (C.D. Cal. Jan. 26, 2018) . . . . . . . 18

Iancu v. Brunetti,

139 S. Ct. 2294 (2019) . . . . . . . . . . . . . . . . . . . . . . . . 2, 3

Jack Daniel’s Props., Inc. v. VIP Prods. LLC,

141 S. Ct. 1054 (2020) . . . . . . . . . . . . . . . . . . . . . . . . . . 2

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

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

Knowles-Carter v. Feyonce, Inc.,

347 F. Supp. 3d 217 (S.D.N.Y. 2018) . . . . . . . . . . . . . . 19

KP Permanent Make-Up, Inc. v.

Lasting Impression I, Inc.,

543 U.S. 111 (2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

Lombardo v. Dr. Seuss Enters., L.P.,

729 Fed. Appx. 131 (2d Cir. 2018) . . . . . . . . . . . . . . . 16

vii

Cited Authorities

Page

Louis Vuitton Malletier S.A. v.

Haute Diggity Dog, LLC,

507 F.3d 252 (4th Cir. 2007) . . . . . . . . . . 2, 3, 17, 19, 29

Louis Vuitton Malletier, S.A. v.

Hyundai Motor Am.,

No. 10 Civ. 1611, 2012 WL 1022247

(S.D.N.Y. Mar. 22, 2012) . . . . . . . . . . . . . . . . . . . . . . . 29

Louis Vuitton Malletier, S.A. v.

My Other Bag, Inc.,

674 Fed. Appx. 16 (2d Cir. 2016) . . . . . . . . . . . . . . . . 19

LTTB LLC v. Redbubble, Inc.,

840 Fed. Appx. 148 (9th Cir. 2021) . . . . . . . . . . . . . . . 2

Matal v. Tam,

137 S. Ct. 1744 (2017) . . . . . . . . . . . . . . . . . . . . . . . . 2, 3

Mattel, Inc. v. MCA Records, Inc,

296 F.3d 894 (9th Cir. 2002) . . . . . . . . . . . . . . . . . 13, 26

Mattel, Inc. v. Walking Mountain Prods.,

353 F.3d 792 (9th Cir. 2003) . . . . . . . . . . . . . . . . . . . . 12

Metromedia, Inc. v. City of San Diego,

453 U.S. 490 (1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Mission Prod. Holdings, Inc. v.

Tempnology, LLC,

139 S. Ct. 1652 (2019) . . . . . . . . . . . . . . . . . . . . . . . . . . 2

viii

Cited Authorities

Page

Moseley v. V Secret Catalogue, Inc.,

537 U.S. 418 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

MPS Entm’t, LLC v.

Abercrombie & Fitch Stores, Inc.,

2013 WL 3288039 (S.D. Fla. 2013) . . . . . . . . . . . . . . 19

Ohio State Univ. v. Redbubble, Inc.,

989 F.3d 435 (6th Cir. 2021) . . . . . . . . . . . . . . . . . . . . . 2

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

Parks v. LaFace Records,

329 F.3d 437 (6th Cir. 2003) . . . . . . . . . . . . . . . . . . . . 16

Peter v. NantKwest, Inc.,

140 S. Ct. 365 (2019) . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

Polaroid Corp. v. Polarad Elecs. Corp.,

287 F.2d 492 (2d Cir. 1961) . . . . . . . . . . . . . . . . . . . . . 11

Pom Wonderful LLC v. Coca-Cola Co.,

573 U.S. 102 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

Radiance Found., Inc. v. N.A.A.C.P.,

786 F.3d 316 (4th Cir. 2015) . . . . . . . . . . . . . . . . . 16, 27

Rogers v. Grimaldi,

695 F. Supp. 112 (S.D.N.Y. 1988) . . . . . . . . . . . . . . . . . 9

ix

Cited Authorities

Page

Rogers v. Grimaldi,

875 F.2d 994 (2d Cir. 1989) . . . . . 4, 6, 7, 8, 9, 10, 11, 12,

13, 14, 15, 16, 18, 20,

21, 22, 23, 24, 29, 30

Romag Fasteners, Inc. v. Fossil, Inc.,

140 S. Ct. 1492 (2020) . . . . . . . . . . . . . . . . . . . . . . . . . . 2

Rosetta Stone Ltd. v. Google, Inc.,

676 F.3d 144 (4th Cir. 2012) . . . . . . . . . . . . . . . . . . . . . 2

Smith v. Wal-Mart Stores, Inc.,

537 F. Supp. 2d 1302 (N.D. Ga. 2008) . . . . . . . . . . . . 17

Squirt Co v. Seven–Up Co.,

628 F.2d 1086 (8th Cir. 1980) . . . . . . . . . . . . . . . . . . 6-7

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

588 F.3d 97 (2d Cir. 2009) . . . . . . . . . . . . . . . . . . . . 2, 19

TrafFix Devices, Inc. v. Mktg. Displays, Inc.,

532 U.S. 23 (2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

Twin Peaks Products, Inc. v.

Publications International, Ltd.,

996 F.2d 1366 (2d Cir. 1993) . . . . . . . . . . . . . . 10, 11, 16

U.S. Patent & Trademark Office v.

Booking.com B.V.,

140 S. Ct. 2298 (2020) . . . . . . . . . . . . . . . . . . . . . . . . . . 2

x

Cited Authorities

Page

Univ. of Alabama Bd. of Trustees v.

New Life Art, Inc.,

683 F.3d 1266 (11th Cir. 2012) . . . . . . . . . . . . . . . . . . 16

Vans, Inc. v. MSCHF Prod. Studio, Inc.,

2022 WL 1446681 (E.D.N.Y. April 29, 2022) . . 2, 21, 22

Vans, Inc. v. MSCHF Product Studio, Inc.,

Case No. 22-1006 (2d Cir. December 15, 2022) . . . . 22

VIP Prods. LLC v. Jack Daniel’s Props., Inc.,

2016 WL 5408313 (D. Ariz. Sept. 27, 2016) . . . . . . . 12

VIP Prods. LLC v. Jack Daniel’s Props., Inc.,

291 F. Supp. 3d 891 (D. Ariz. 2018) . . . . . . . . . . . . . . 13

VIP Prods. LLC v. Jack Daniel’s Props., Inc.,

No. C V-14 - 0 2 0 57-PH X- SMM, 2 0 21 W L

5710730 (D. Ariz. Oct. 8, 2021), aff’d, No. 2116969, 2022 WL 1654040 (9th Cir. Mar. 18,

2022), cert. granted, 143 S. Ct. 476 (2022) . . . . . 14, 21

VIP Prods. LLC v. Jack Daniel’s Props., Inc.,

953 F.3d 1170 (9th Cir. 2020) . . . . . . . . . . 13, 25, 26, 27

VIP Prods. LLC v. Jack Daniel’s Props., Inc.,

Case No. 18-16012 (9th Cir. June 3, 2020) . . . . . . . . . 2

Wal-Mart Stores, Inc. v. Samara Bros.,

529 U.S. 205 (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

xi

Cited Authorities

Page

Westchester Media v. PRL USA Holdings, Inc.,

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

World Wrestling Fed’n Entm’t, Inc. v.

Big Dog Holdings, Inc.,

280 F. Supp. 2d 413 (W.D. Pa. 2003) . . . . . . . . . . . . . 18

Statutes & Other Authorities

U.S. Const., Amend. I . . . . . 1, 4, 5, 8, 9, 11, 12, 13, 15, 16,

18, 19, 20, 25, 26, 29, 30

15 U.S.C. § 1114 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

15 U.S.C. § 1125 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

15 U.S.C. § 1125(c)(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

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

15 U.S.C. § 1125(c)(3)(A)(ii) . . . . . . . . . . . . . . . . . . . . . . . 25

3 J. T h o m a s M c C a r t h y , M c C a r t h y o n

T r a d e m a r k s a n d U n fa i r C o m p e t i t i o n

§ 31:153 (4th ed. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . 18

Pierre N. Leval, Trademark: Champion of Free

Speech, 27 Colum. J. L. & Arts 187 (2004) . . . . . 20, 30

Sup. Ct. R. 37.6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

xii

Cited Authorities

Page

S. Rep. No. 1333 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

H.R. Rep. No. 104-374, 104th Cong. (1st Sess.

1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

1

AMICUS CURIAE BRIEF OF THE

INTERNATIONAL TRADEMARK ASSOCIATION

IN SUPPORT OF NEITHER PARTY

The International Trademark Association (“INTA”)

submits this brief in support of neither party.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. With more than 6,500 member

organizations from 185 countries, INTA’s members share

the goal of promoting the essential role that trademarks

play in fostering informed decisions by consumers and

fair competition.

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

participated as amicus curiae in numerous cases on

significant Lanham Act issues, including on the First

Amendment. 2

1. Counsel for amicus curiae INTA certifies that no party

or counsel for a party authored this brief in whole or in part, 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. Cases in which INTA has filed amicus briefs since 2000

include: Abitron Austria GmbH et al. v. Hetronic Int’l, Inc., No.

2

INTA was founded in part to encourage enactment

of federal trademark legislation after the invalidation

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 at issue

in this appeal.

21-1043; Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 141 S. Ct.

1054 (2020); 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); B&B Hardware, Inc. v. Hargis Indus., Inc., 575

U.S. 138 (2015); Hana Fin., Inc. v. Hana Bank, 574 U.S. 418 (2015);

Pom Wonderful LLC v. Coca-Cola Co., 573 U.S. 102 (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); Wal-Mart Stores, Inc.

v. Samara Bros., 529 U.S. 205 (2000); Vans, Inc., et al. v. MSCHF

Product Studio, Inc., Case No. 22-1006-cv (2d Cir. Pending); LTTB

LLC v. Redbubble, Inc., 840 Fed. Appx. 148 (9th Cir. 2021); Ohio State

Univ. v. Redbubble, Inc., 989 F.3d 435 (6th Cir. 2021); VIP Prods.

LLC v. Jack Daniel’s Props., Inc., 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); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d

97 (2d Cir. 2009); Louis Vuitton Malletier S.A. v. Haute Diggity Dog,

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

3

At its core, trademark law is about protecting

consumers. Trademarks enable consumers to identify the

source of products and services and are crucial indicators

of quality. INTA therefore seeks to protect the interests

of consumers and brand owners alike. As applied to

this case, INTA’s principal interest is in promoting the

appropriate balance between trademark law and the First

Amendment.

INTA advocates for a balance of free speech with

consumer protection. For example, in its amicus briefs

in Iancu v. Brunetti, 139 S. Ct. 2294 (2019) and Matal

v. Tam, 137 S. Ct. 1744 (2017), INTA supported First

Amendment rights to register marks that are scandalous

or disparaging; while in its amicus brief in Louis Vuitton

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

(4th Cir. 2007), INTA argued that parodies that use

another’s trademark on ordinary commercial products

as the defendant’s own brand should be examined under

traditional trademark principles to assess whether they

confuse consumers or dilute the plaintiff’s famous mark.

INTA also supported the addition of the fair use defense

in Section 43(c)(3)(A) of the Lanham Act, 15 U.S.C. §

1125(c)(3)(A).

In this case, INTA takes no position on whether the

Respondent’s dog toy is infringing or diluting. Those issues

are better decided on the facts. Nor is INTA taking the

position—argued by Petitioner Jack Daniel’s Properties,

Inc. (“Petitioner” or “JDPI”)—that a heightened First

Amendment standard of some kind is per se improper in

all circumstances. INTA does, however, take a position

on the correct analytic framework to determine whether

heightened First Amendment protection is potentially

4

applicable. To the extent this Court determines certain

circumstances warrant a departure from long-standing

and established likelihood of confusion analysis, INTA

urges this Court to provide guidance on the definition

of the types of works that warrant such a departure.

Specifically, INTA suggests that the Court adopt a

definition for “expressive work” under the test for

heightened First Amendment protection set forth in

Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)

(“Rogers”), or whatever test this Court may adopt. Under

the definition proposed by INTA, or any other definition

the Court adopts, the Respondent VIP Products LLC’s

(“Respondent” or “VIP”) dog toy should not qualify for

heightened First Amendment protection.

Regarding dilution, this Court should confirm that

this Court’s Bolger test should have been applied to

determine whether the dog toy is a “noncommercial use”

under the TDRA, and remand for further proceedings

on these claims.

SUMMARY OF ARGUMENT

Although never addressed by this Court, the Rogers

test and its application of heightened First Amendment

protection in circumstances involving artistically

expressive works has been adopted by every Circuit

Court to consider the issue. Therefore, INTA asserts

the test itself need not be addressed in this case. But by

expanding the reach of Rogers beyond the artistically

expressive works (e.g., movies, art, or books) for which

the Second Circuit created the test, the Ninth Circuit’s

error below sets dangerous precedent that could upend

nearly a century of trademark jurisprudence. The Ninth

Circuit’s overexpansion of the Rogers test to ordinary

5

commercial products highlights the need for a definition

for what constitute “expressive works” to determine when

heightened First Amendment protection should apply.

Therefore, INTA proposes that the Court define

the types of products that qualify as “expressive works”

for such heightened First Amendment protection when

assessing trademark infringement claims against those

products. Specifically, INTA urges this Court to define

“expressive works” as those products where expression is

inextricably intertwined with the product itself such that

the product cannot exist without expression, i.e., that the

expression is conceptually inseparable from the product.

For example, because a novel cannot function as a novel

if it is completely devoid of expressive content, it would

qualify as an “expressive work.” In contrast, a coffee mug

can still function as a coffee mug (or a dog toy can still

function as a dog toy) even without any expressive content

and, thus, would not qualify as an “expressive work” for

the purposes of applying heightened First Amendment

protection.

This definition seeks to balance the interests of

consumers and trademark holders to avoid confusion in

the marketplace with the First Amendment protections

afforded creators of expressive works that incorporate

the trademarks of others. Infringement claims involving

ordinary commercial products that contain some expression

can be, and have been, successfully addressed through

traditional trademark principles, which themselves

already afford protections for free expression. INTA’s

proposed definition of “expressive works” further ensures

that courts will be able to readily distinguish trademark

infringement claims that are appropriately resolved under

traditional trademark principles from those that may

6

merit heightened First Amendment protection.

With respect to the Ninth Circuit’s determination

that the dog toy at issue qualified as noncommercial

speech under the TDRA, the Ninth Circuit’s perfunctory,

two-paragraph analysis failed to apply this Court’s

noncommercial speech test set out in Bolger. It should

have. INTA urges this Court to clarify the standard for

that determination and remand with instructions to carry

out that analysis.

ARGUMENT

I.

THE NIN TH CIRCUIT ERRED WHEN IT

APPLIED HEIGHTENED FIRST AMENDMENT

PROTECTION TO A CLAIMED TRADEMARK

I N F R I NGE M E N T BY A N OR DI NA RY

C OM M ER CI A L PR ODUC T BECAU SE I T

ALLEGEDLY CONTAINED SOME EXPRESSION.

This Court has never analyzed whether certain fact

patterns warrant a departure from the long-standing

likelihood of confusion tests applied by the various Circuit

Courts to provide a heightened level of First Amendment

protection where the defendant’s product in question

allegedly contains expression that incorporates another’s

trademark. 3 The Second Circuit’s Rogers test, which was

3. INTA further notes that this Court has also never

announced a specific test for infringement of trademarks.

However, this Court has acknowledged without criticism (rather,

with tacit acceptance) that the various Circuit Courts apply

variations of a multi-factor likelihood of confusion test. See, e.g.,

B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 154

(2015) (referring to Eighth Circuit’s use of multi-factor test set

forth in Squirt Co v. Seven–Up Co., 628 F.2d 1086, 1091 (8th Cir.

7

first announced in 1989, has been adopted by every Circuit

Court to consider it. As such, INTA posits that the Rogers

test and its application in narrow circumstances involving

artistically expressive works need not be addressed in

this case.

Given the consistent adoption of Rogers by the Circuit

Courts, INTA takes no issue with the Ninth Circuit’s

general acceptance and adoption of the Rogers test under

certain limited circumstances. INTA posits, however,

that the Ninth Circuit should not have applied Rogers

in this particular case. Specifically, the Ninth Circuit’s

overexpansive view of what constitutes an “expressive

work” represents a grave departure from trademark law

in other Circuit Courts that risks upending decades of

trademark precedent.

INTA submits this brief to provide its view, and that

of its thousands of trademark owner members, that if this

Court concludes some circumstances warrant a departure

from the established likelihood of confusion analysis,

such a test should apply only to “expressive works,” not

ordinary commercial products. To provide guidance on

what constitutes such an “expressive work” as opposed

to an ordinary commercial product, INTA proposes a

definition, in Section III, infra, to act as gatekeeper for

which cases warrant a departure from nearly a century

of likelihood of confusion jurisprudence.4

1980)). INTA asserts that the Circuit Courts’ multi-factor tests,

which are all very similar, are established law and need not be

disturbed. Moreover, analysis of the propriety of such multi-factor

tests is beyond the grant of certiorari in this case.

4. Petitioner’s brief argues that the creation of the Rogers

test in the first place was contrary to the statutory language for

8

Before doing so, however, INTA analyzes the

origins of Rogers, the Ninth Circuit’s overly broad

interpretation of what constitutes an “expressive work”

in the proceedings below, and the limited circumstances

in which other circuits have applied heightened First

Amendment protections under Rogers. This discussion

underscores that the Rogers test is a limited exception

to traditional trademark infringement law. As discussed

below, the Rogers test is properly reserved for artistically

expressive works of the kind that gave rise to the Rogers

test in the first place, not ordinary commercial products.

claims under Lanham Act Sections 32 and 43 (15 U.S.C. §§ 1114,

1125), which impose liability for unauthorized use of a mark that

“is likely to cause confusion, to cause mistake, or to deceive.”

More specifically, Petitioner argues that this plain language does

not contemplate different treatment for “expressive” works, and

that the Second Circuit thus erred by “appl[ying] a balancing

test of its own creation.” This argument proves too much. While

INTA recognizes that the plain language of the Lanham Act does

not expressly articulate a test for heightened First Amendment

protection in certain contexts, neither does that plain language

expressly articulate the multi-factor likelihood of confusion tests

applied by each Circuit Court of their “own creation” for decades.

Those tests, as noted in Footnote 3, supra, are settled law and

have been at least tacitly approved by this Court. Thus, the mere

absence of specific statutory language concerning heightened

First Amendment protection is not dispositive of whether such

a standard can exist under the Lanham Act’s plain language.

The key issue in this case—and the source of the Ninth Circuit’s

error below—is overestimating the limited types of products

that warrant a departure from traditional likelihood of confusion

analysis in favor of heightened First Amendment protection. If this

Court adopts a test for heightened First Amendment protection,

it should narrowly limit such protection to those products where

expression is inextricable from the product itself.

9

A.

The Rogers Test Was Originated to Provide

Heightened First Amendment Protection

Only to Artistically Expressive Works Such as

Movies, Books, and Art.

The circumstances that led the Second Circuit to

create the Rogers test illustrate the narrow situations to

which the test should apply. The Rogers test was developed

to resolve a specific problem: to shield the authors of

artistically expressive works from being unduly limited

in their artistry and expression due to an individual’s

rights under the Lanham Act. Rogers involved a Federico

Fellini film about two fictional cabaret performers who

imitated the renowned dancing duo Ginger Rogers and

Fred Astaire. Rogers sued, inter alia, under the Lanham

Act, arguing that the film’s title, “Ginger and Fred,”

created the false impression that the film was about Ginger

Rogers or that she endorsed, sponsored, or was otherwise

involved in the film.

Analyzing the Lanham Act claim, the district court

framed the central inquiry as “identify[ing] the line

between commercial and artistic speech,” concluding

that, where the speech at issue is “artistic expression

. . . not primarily intended to serve a commercial purpose,

the prohibitions of the Lanham Act do not apply, and the

[speech] is entitled to the full scope of protection under

the First Amendment.” Rogers v. Grimaldi, 695 F. Supp.

112, 120–21 (S.D.N.Y. 1988). The district court ruled

that the film was artistic expression protected by the

First Amendment and awarded the defendant summary

judgment.

10

The Second Circuit affirmed, holding that the Lanham

Act “should be construed to apply to artistic works only

where the public interest in avoiding consumer confusion

outweighs the public interest in free expression.” Rogers

v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (emphasis

added). The Second Circuit then articulated a two-part

test to strike that balance:

In the context of allegedly misleading titles using

a celebrity’s name, that balance will normally

not support application of the [Lanham] Act

unless the title has no artistic relevance to the

underlying work whatsoever, or, 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 then expressly distinguished between

the title of an artistic work, which is entitled to First

Amendment protection, and an “ordinary commercial

product[ ],” which is not:

Though consumers frequently look to the title of

a work . . . , they do not regard titles of artistic

works in the same way as the names of 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.

Later, in Twin Peaks Products, Inc. v. Publications

International, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993), a

11

trademark infringement case, the Second Circuit clarified

its Rogers test by explaining that the second prong of the

test (the “explicitly misleading” prong) involves application

of the Polaroid likelihood of confusion factors, 5 but that

the finding of likely confusion “must be particularly

compelling” to outweigh a defendant’s First Amendment

interest. Thus, the context matters for evaluating

consumer 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.” Twin Peaks Prods.,

Inc., 996 at 1380.

The decisions in Rogers and Twin Peaks establish that

heightened First Amendment protection is merited only

in limited circumstances, where artistically expressive

works (e.g., movies and books) incorporate another’s name

or trademark. Because consumers do not encounter marks

in such artistically expressive works in the same way they

do when purchasing an ordinary commercial product

in the marketplace, the enhanced First Amendment

protections of Rogers are more appropriate.

In the context of the commercial speech associated

with the purchase of an ordinary commercial product,

however, the risk of consumer confusion is greater and the

heightened free speech protections of Rogers are likely

to improperly shield infringing conduct. As discussed

below, the Ninth Circuit’s inappropriately expansive

interpretation of what constitutes an “expressive work”

5. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492,

495 (2d Cir. 1961).

12

represents a significant, and dangerous, outlier that

improperly extends Rogers well beyond the limited

circumstances that it was created to address.

B. The Ninth Circuit Overbroadly Defined an

“Expressive Work” as Any Product that

Contains Any Expression.

In its first decision on the parties’ cross motions

for summary judgment, the district court held that

Respondent’s dog toy “is not an expressive work” and

that the Rogers test did not apply because it only applies

to artistic (i.e., expressive) works such as movies, plays,

books, and songs. VIP Prods. LLC v. Jack Daniel’s Props.,

Inc., 2016 WL 5408313, at *5 (D. Ariz. Sept. 27, 2016).

The district court explained that “the First Amendment

affords no protection to VIP because it is trademark

law that regulates misleading commercial speech where

another’s trademark is used for source identification in

a way likely to cause consumer confusion.” Id. Thus, the

district court ruled the “standard trademark likelihood of

confusion analysis, not Rogers, is appropriate.” Id. (citing

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th

Cir. 1979)6, abrogated on other grounds by Mattel, Inc. v.

Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003)).

6. In Sleekcraft, the court held that the factors relevant to a

determination whether a defendant’s use constitutes trademark

infringement include (1) the strength of the plaintiff’s mark, (2)

the proximity of the parties’ goods in the marketplace; (3) the

similarity of the parties’ marks; (4) evidence of actual confusion;

(5) marketing channels used by the parties; (6) the type of goods

at issue and the degree of care likely to be exercised by the

purchaser; (7) the defendant’s intent in selecting the mark; and

(8) the likelihood of expansion of the parties’ product lines. 599

F.2d at 348-349.

13

Following a four-day bench trial, the district court

found in favor of JDPI and issued a permanent injunction

enjoining VIP from manufacturing and selling the dog

toy. VIP Prods. LLC v. Jack Daniel’s Props., Inc., 291 F.

Supp. 3d 891 (D. Ariz. 2018).

On appeal, the Ninth Circuit held that the district

court erred in finding that the dog toy was not an

expressive work. The court explained that “[a] work

need not be the expressive equal of Anna Karenina

or Citizen Kane” to be considered expressive; nor is a

work “rendered non-expressive simply because it sold

commercially.” VIP Prods. LLC v. Jack Daniel’s Props.,

Inc., 953 F.3d 1170, 1175 (9th Cir. 2020) (citations and

quotation marks omitted). Rather, “[i]n determining

whether a work is expressive, we analyze whether the work

is ‘communicating ideas or expressing points of view.’” Id.

at 1174 (quoting Mattel, Inc. v. MCA Records, Inc, 296

F.3d 894, 900 (9th Cir. 2002)). The court observed that it

recently had “little difficulty” concluding that greeting

cards containing trademarked phrases were expressive

works entitled to First Amendment protection, even

though they did not show great “creative artistry.” Id.

Although the court acknowledged that the dog toy “surely

[is] not the equivalent of the Mona Lisa,” it found that the

dog toy is nevertheless an expressive work because “it

‘communicates a humorous message.’” Id.

Accordingly, the Ninth Circuit held that the district

court should have applied heightened First Amendment

protection under Rogers, analyzing whether VIP’s use

of JDPI trademarks and trade dress either (1) is “not

artistically relevant to the underlying work,” or (2)

“explicitly misleads consumers as to the source or content

14

of the work.” Id. at 9 (citation omitted). The Ninth Circuit

vacated the district court’s finding of infringement and

remanded for a determination, in the first instance, of

whether JDPI could satisfy either element of the Rogers

test. Id.

On remand, VIP again moved for summary judgment

on JDPI’s trademark and trade dress infringement claims,

which the district court granted after applying the Rogers

test as formulated by the Ninth Circuit. VIP Prods. LLC

v. Jack Daniel’s Props., Inc., No. CV-14-02057-PHX-SMM,

2021 WL 5710730, at *6 (D. Ariz. Oct. 8, 2021), aff’d,

No. 21-16969, 2022 WL 1654040 (9th Cir. Mar. 18, 2022),

cert. granted, 143 S. Ct. 476 (2022). However, the district

court expressed its strong view that the Ninth Circuit’s

jurisprudence applying the Rogers test has led to an

untenable situation where any expression is artistically

relevant to the product and the “explicitly misleading”

standard under Rogers, which supplants the likelihood

of confusion test, excuses any unauthorized use but the

most egregious of infringements. Id.

The district court did not focus on the ordinarycommercial-product-versus-“expressive work” dichotomy

but rather made these comments as a general criticism

of the Ninth Circuit’s jurisprudence applying Rogers, and

suggested JDPI’s or others’ only recourse was to to seek

relief from this Court or Congress. Id. (“[W]hile JDPI

finds the depiction of a dog relishing a bowel movement

on a carpet distasteful and an abuse of its mark, in the

final analysis, JDPI has no means to protect the viability

of its trademark. Yet, the Court is bound by Ninth Circuit

precedent. For JDPI or similarly situated trademark

holders to obtain a different outcome, they must seek relief

15

before the United States Supreme Court or the United

States Congress.”).

INTA expresses no view here on the manner in which

the Ninth Circuit applies the Rogers test but rather asserts

that the court’s error below lies with when it applies the

test in the first place. The Ninth Circuit’s overbroad

interpretation of what constitutes an expressive work—

to encompass essentially any product that is claimed to

have some discernable expression in it—ensures that any

defendant can claim expression in an otherwise infringing

product to benefit from heightened First Amendment

protection and shield itself from trademark liability. This

overly broad interpretation of “expressive works” risks

toppling decades of trademark precedent.

As discussed below, the Ninth Circuit is the only

Circuit Court to expand Rogers to an ordinary commercial

product. This Court should reverse and adopt a more

appropriate definition of “expressive work” if it chooses

to carve out an exception from traditional trademark law

that provides heightened First Amendment protections

where the defendant has used another’s trademark on its

product.

C.

No Other Circuit Has Applied Rogers to

Ordinary Commercial Products, Even if They

Contain Some Expression.

In contrast to the Ninth Circuit’s inappropriate

expansion of Rogers well beyond its origins, other

Circuit Courts have consistently reserved the heightened

protections of Rogers to artistically expressive works.

Specifically, other circuit courts have limited Rogers

16

to “indisputabl[e] works of artistic expression,” such as

“[m]ovies, plays, books, and songs.” Rogers, 875 F.2d at

997; accord Lombardo v. Dr. Seuss Enters., L.P., 729

Fed. Appx. 131, 133 (2nd Cir. 2018) (plays); Radiance

Found., Inc. v. N.A.A.C.P., 786 F.3d 316, 329 (4th Cir.

2015) (articles); Univ. of Alabama Bd. of Trustees v. New

Life Art, Inc., 683 F.3d 1266, 1278–79 (11th Cir. 2012)

(paintings);7 Parks v. LaFace Records, 329 F.3d 437,

451–52 (6th Cir. 2003) (songs); Westchester Media v. PRL

USA Holdings, Inc., 214 F.3d 658, 664–65 (5th Cir. 2000)

(magazines); Twin Peaks Prods., Inc. v. Publ’ns Int’l,

Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993) (book titles); Cliffs

Notes, Inc. v. Bantam Doubleday Dell Publ’g Group,

Inc., 886 F.2d 490, 494–95 (2d Cir. 1989) (books). No other

circuit, other than the Ninth Circuit, has applied Rogers

to ordinary commercial products.

As a result, in the Ninth Circuit, but nowhere else,

any seller of an ordinary commercial product who uses

a humorous message with another’s mark can avoid

traditional trademark infringement examination so long

as the mark has some minimally artistic relevance to the

product—a standard the Ninth Circuit has lowered to

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

Star Videos Inc., 547 F.3d 1095, 1100 (9th Cir. 2008).

The Ninth Circuit’s expansion of Rogers is therefore

7. In Univ. of Alabama Bd. of Trustees, the Eleventh

Circuit’s holding was limited to artistic paintings, which were

protected by the First Amendment, and did not extend to the

“mundane products” also at issue in the case, such as mugs, towels

and T-shirts. Although the court held that appellant waived his

argument regarding “mundane products” bearing copies of the

painting, it noted that “the artistic work [on those products]

is much less likely to have been considered significant by the

purchaser.” 683 F.3d at 1282, n.42.

17

an unprecedented departure from established law

and disrupts the careful balance struck by traditional

trademark principles. Moreover, as discussed below,

traditional trademark principles provide significant First

Amendment protections for the parodist or commenter

without sacrificing consumers’ interests in avoiding

confusion in the marketplace or unnecessary resort to

Constitutional principles.

D.

Traditional Trademark Law Already Provides

Protections for First Amendment-Protected

Expression Incorporated Into Ordinar y

Commercial Products.

Rejecting the Ninth Circuit’s unduly expansive view

of what constitutes an “expressive work” will not deprive

companies of their ability to incorporate expression in

their products. Indeed, parodists and commenters who

wish to incorporate expressive content that incorporates

another’s trademark into ordinary commercial products

are not without a defense under traditional trademark

principles.

For example, a claim of parody may “influence[ ] the

way in which the [likelihood of confusion] factors are

applied.” Louis Vuitton Malletier S.A. v. Haute Diggity

Dog, LLC, 507 F.3d 252, 261 (4th Cir. 2007). In particular,

if the parody is successful (i.e., if consumers “get” the

joke), confusion is not likely. On the other hand, if the

parody is unsuccessful, consumers may still be confused,

and liability may attach. See, e.g., Smith v. Wal-Mart

Stores, Inc., 537 F. Supp. 2d 1302, 1317 (N.D. Ga. 2008)

(critic’s successful parody of Wal-Mart marks on website

and merchandise only “influences the way the likelihood of

18

confusion factors are applied . . . [b]ecause even a parody

may constitute trademark infringement if that parody is

confusing.”).

Given the balance between commerce and free

expression that traditional trademark law seeks to

achieve, courts have recognized that Rogers “is usually

not the appropriate mechanism for examining an ordinary

commercial product.” A.V.E.L.A., Inc. v. Estate of Marilyn

Monroe, LLC, 364 F. Supp. 3d 291, 321–22 (S.D.N.Y. 2019)

(“the Rogers test is not designed to protect commercial

products [here, Marilyn Monroe T-shirts] and . . . any

First Amendment concerns are already addressed by

the consumer confusion test”). Rather, “[t]he Rogers

test applies only to artistic or expressive works,” and “is

not applicable to commercial works such as traditional

advertising” or the defendant’s commercial products

bearing a plaintiff’s trademark. Hush Hush Sound, Inc.

v. H&M Hennes & Mauritz LP, 2018 WL 4962086, at *3

(C.D. Cal. Jan. 26, 2018)(emphasis added). Other courts

have recognized, without discussing Rogers, that although

“free speech policies are involved” in cases concerning

parody products, commercial products are not entitled to

full First Amendment protection. World Wrestling Fed’n

Entm’t, Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d

413, 431 and 446 (W.D. Pa. 2003). That is because “the

claim of parody is not really a separate ‘defense’ as such,

but merely a way of phrasing the traditional response

that customers are not likely to be confused.” Id. (quoting

3 J. Thomas McCarthy, McCarthy on Trademarks and

Unfair Competition § 31:153 (4th ed. 2002)).

Notably, parodists and commenters often win even

without the heightened protections of Rogers. See, e.g.,

19

Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 674

Fed. Appx. 16, 18 (2d Cir. 2016); Louis Vuitton Malletier

S.A., 507 F.3d at 263; Cardtoons, L.C. v. Major League

Baseball Players Ass’n, 95 F.3d 959, 967 (10th Cir. 1996);

Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482,

1491 (10th Cir. 1987). With respect to ordinary commercial

products, a plaintiff in a trademark infringement suit

still must carry its burden to demonstrate a likelihood

of confusion, which is a fact-intensive analysis suffused

with principles of equity. Indeed, applying the traditional

likelihood of confusion factors to ordinary commercial

products purporting to parody another’s trademark is the

best way to separate the “confusing parodies” from the

“non-confusing parodies.” Anheuser-Busch, Inc. v. VIP

Prods. LLC, 666 F. Supp. 2d 974, 984-86 (E.D. Mo. 2008).

Moreover, avoiding the Constitutional issues presented

by Rogers, where traditional trademark principles provide

ample First Amendment protection, better balances

trademark rights with free expression. 8 As Circuit Judge

Leval has written:

When lawsuits pit claims of exclusive trademark

right against interests of free expression,

courts should not run unnecessarily to the

Constitution. The governing statutes. . . are

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

588 F.3d 97 (2d Cir. 2009) (coffee); Anheuser-Busch, Inc., v. L. & L.

Wings, Inc., 962 F.2d 316 (4th Cir. 1992) (T-shirts); Knowles-Carter

v. Feyonce, Inc., 347 F. Supp. 3d 217 (S.D.N.Y. 2018) (T-shirts); DC

Comics v. Mad Engine, Inc., 2015 WL 9122562 (C.D. Cal. 2015)

(T-shirts); MPS Entm’t, LLC v. Abercrombie & Fitch Stores, Inc.,

2013 WL 3288039 (S.D. Fla. 2013) (T-shirts); Heisman Trophy

Trust v. Smack Apparel Co., 637 F. Supp. 2d 146 (S.D.N.Y. 2009)

(T-shirts).

20

designed to balance the needs of merchants

for identification as the provider of goods with

the needs of society for free communication and

discussion.

Pierre N. Leval, Trademark: Champion of Free Speech,

27 Colum. J. L. & Arts 187, 210 (2004) (discussing, inter

alia, the appropriate application of the Rogers test). In

the context of ordinary commercial products that contain

expression incorporating another’s mark, traditional

trademark likelihood of confusion analysis strikes the

correct balance between that expression and trademark

rights.

II. THIS CASE PROVIDES AN OPPORTUNITY TO

CORRECT A LEGAL ERROR AND TO CLARIFY

WHEN THE ROGERS “EXPRESSIVE WORK”

TEST APPLIES.

A.

Providing a Definition of an “Expressive Work”

Under Rogers Will Lead to Greater Certainty

in Applying Trademark Law.

This Court should take this opportunity to settle

the scope of Rogers by clarifying when it applies. If

the bar for application of Rogers were, as the Ninth

Circuit suggests, that a product merely “communicat[es]

ideas or express[es] points of view,” then every case in

which courts rejected application of Rogers to ordinary

commercial products would have been wrongly decided.

That is an untenable position to maintain. Applying the

heightened First Amendment protections under Rogers

to an ordinary commercial product such as a dog toy that

also contains some expressive content would render it

21

“nearly impossible for any trademark holder to prevail

under the Rogers test” unless the defendant is “slapping

another’s trademark on [its] own work and calling it [its]

own.” VIP Products, 2021 WL 5710730 at *6. This would

subvert the dual purposes of the Lanham Act, “to secure

to the owner of the mark the goodwill of his business and

to protect the ability of consumers to distinguish among

competing producers.” Park ‘N Fly, Inc. v. Dollar Park

& Fly, Inc., 469 U.S. 189, 198 (1985) (citing S. Rep. No.

1333, at 3, 5).

INTA therefore urges this Court to adopt the

definition of “expressive work” suggested in Section

III, infra. Adopting such a definition of an “expressive

work” to determine when Rogers properly applies will

provide significantly greater certainty in cases involving

expression on ordinary commercial products that uses

another’s trademark or trade dress.

The dangers of the Ninth Circuit’s overapplication

of Rogers have already surfaced, with manufacturers

of commercial products arguing their products are

“expressive works” to avoid the rigors of the traditional

likelihood of confusion multi-factor tests. See, e.g., Vans,

Inc. v. MSCHF Prod. Studio, Inc., 2022 WL 1446681,

*7 (E.D.N.Y. April 29, 2022) (manufacturer of shoe

incorporating trademark and trade dress of iconic shoe

made by well-known shoe and apparel company argued

that the Ninth Circuit’s JDPI decision below should

shield it from trademark liability because of its alleged

expression); see also Caryn Mandabach Prods. Ltd. v.

Sadlers Brewhouse Ltd., 2021 WL 2497928, *1-2 (C.D. Cal.

May 19, 2021)(defendant brewery claimed its beer using

plaintiff’s PEAKY BLINDERS mark from hit television

22

show was an “expressive work” necessitating application

of Rogers under Ninth Circuit precedent).9 In addition,

adopting the Ninth Circuit’s low threshold for applying

heightened First Amendment protection under Rogers

would have yielded diametrically opposite holdings in

many cases that eschewed Rogers and instead found likely

consumer confusion under traditional trademark analysis.

Defining a Rogers-eligible expressive work as any

product containing any expression is further untenable

because it opens virtually every category of product to

heightened First Amendment protection. It is hard to

envision a product that cannot in some way convey a

message, and therefore be an “expressive work” under the

Ninth Circuit’s definition. Consider the tens of thousands

of utilitarian products (e.g., clothing, mugs, bags, phone

cases, jewelry, electronics, stickers, and housewares)

capable of bearing some imprinted message on the products

themselves, as well as standard packaging containing

“trademark spaces” designed to bear messaging (e.g.,

labels and box panels). The Ninth Circuit’s overbroad

application of Rogers to commercial products fails to

strike the proper balance between trademark law and

the First Amendment. The overapplication of heightened

First Amendment protection to ordinary commercial

products will, over time, lead to innumerable purported

commercial parodies that will confuse consumers and

erode the capacity of trademarks to effectively signal

source and quality.

9. The Vans, Inc. v. MSCHF Product Studio, Inc. action is

currently on appeal before the Second Circuit. The Second Circuit

has stayed the appeal pending the outcome of JDPI’s appeal in

this case. Vans, Inc. v. MSCHF Product Studio, Inc., Case No.

22-1006 (2d Cir. December 15, 2022).

23

This Court should therefore articulate a clear

definition of “expressive work.”

III. AN “EXPRESSIVE WORK” IS ONE IN WHICH

EXPRESSION IS INEXTRICABLE FROM THE

PRODUCT.

The Rogers court implied that in an expressive work,

the artistic expression is inextricably intertwined with

the product itself. See Rogers, 875 F.2d at 998 (“The

artistic and commercial elements of titles are inextricably

intertwined.”). Put another way, if the entirety of the

creator’s expression is removed from a movie or song, no

underlying product remains that is recognizable as being

in the same genus as the original—i.e., blank movies and

blank songs do not exist. If all expression is removed

from a greeting card, only paper remains, which is not

the original product. INTA therefore asserts that an

“expressive work” is one where the expression cannot

be removed from the product without it ceasing to be

the same product. An “expressive work” is therefore one

where expression is conceptually inseparable from the

product itself.

In contrast, upon removal of the expression from a

dog toy (or sneaker, coffee mug, tote bag, or water bottle),

a product recognizable as the same genus as the original

product remains (namely, a dog toy, sneaker, coffee mug,

tote bag, or water bottle). This separability suggests

that consumers perceive both the expressive content and

the underlying product, and therefore may perceive the

expressive content as potentially signifying origin of the

product. Accordingly, traditional trademark principles

are best suited to determine whether consumers perceive

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the expression as designating the source of that product

to such an extent that it infringes the trademark owner’s

rights in the mark.

INTA is careful to note that its proffered definition

should not ask whether the specific expression at issue (or

some subset of it) can be extracted. Instead, the question

is whether the type of product can exist without all the

expressive content within it. For example, in Rogers,

INTA’s suggested definition of an “expressive work” would

not ask whether the title could be removed while still

remaining a movie (it, of course, could) but rather whether

all expression could be removed from the movie without

nullifying the product itself. In that case, the Ginger &

Fred movie, stripped of all expression, would yield no

product at all. Thus, in the case of Rogers, the expression

was inextricable from the type of product at issue.

By contrast, here, the product in question is a dog

toy. Stripping all the expression from a dog toy would

still yield a functional dog toy. Traditional trademark

principles—like those applied by the numerous decisions

cited in Sections I.C. and I.D., supra—provide the better

rubric for balancing both trademark rights and First

Amendment protections where the product is not an

“expressive work,” as INTA defines it.

INTA takes no position on how such a traditional

trademark analysis should be resolved in this case but

asserts that its proposed definition of “expressive work”

will provide greater clarity for courts and litigants where

a product containing some expression incorporates

another’s trademark. INTA therefore urges this Court to

define “expressive works” as those in which expression and

25

the product itself cannot be separated without nullifying

the product itself.

IV. THE NINTH CIRCUIT’S DILUTION ANALYSIS

DISREGARDS THE STATUTORY FRAMEWORK

OF 15 U.S.C. § 1125(c)(3) AND THIS COURT’S

JURISPRUDENCE ON NONCOMMERCIAL

SPEECH.

A.

The Ninth Circuit Did Not Apply or Consider

the TDRA’s Parody Exception.

The Court should confirm that its 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

where a defendant does not use the plaintiff’s mark as a

designation of source of the defendant’s own goods. 15

U.S.C. § 1125(c)(3)(A)(ii).

The Ninth Circuit did not apply the parody exclusion,

even though Respondent claimed to be engaging in a parody

of JDPI’s trademark and trade dress. VIP Products, 953

F.3d at 1176. Presumably this was because Respondent

was clearly using JDPI’s trademark and trade dress as

a source identifier of Respondent’s own goods, so that

exception to trademark dilution liability was unavailable

under the plain language of the statute. Instead, the Ninth

Circuit applied the exclusion for noncommercial uses. It

held, without substantive analysis, that the dog toy is

26

noncommercial because Respondent’s humorous message

“is protected by the First Amendment.” Id.

B. The Ninth Circuit Failed to Apply the Bolger

Test for Determining Noncommercial Speech.

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 ‘noncommercial’ 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 first assess whether the use at issue qualifies

as noncommercial.

This Court in Bolger v. Youngs Drug Prods. Corp.,

considered three characteristics, the combination of

which provides “strong support” for finding speech to be

“commercial”:

(1) Whether the material is an advertisement;

(2) Whether the materials refer to a specific product;

(3) Whether the speaker has an economic motive.

463 U.S. 60. 66-67 (1983). This 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

27

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 cour ts have

applied Bolger to analyze whether a trademark use

is “noncommercial” under the TDRA. In Radiance

Foundation, the Fourth Circuit applied the Bolger factors

under similar circumstances and added one more factor:

“‘the viewpoint of the listener’, i.e., whether the listener

would perceive the speech as proposing a transaction.”

Radiance Foundation v. NAACP, 786 F.3d 316, 331 (4th

Cir. 2015).

Here, 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 and therefore

statutorily exempt from a claim for dilution because the

toy conveyed a “humorous message” and did “more than

propose a commercial transaction.” VIP Products, 953

F.3d at 1176. The Ninth Circuit’s opinion ignores the

Bolger factors and improperly shortcuts the analysis of

whether Respondent’s use of Petitioner’s trademarks and

trade dress is “commercial.”

An example of the Bolger case’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

28

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 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 a beer label in Bad

Frog Brewery, the Ninth Circuit should have done with

the dog toy here: apply the Bolger factors with reference

to the district court’s factual findings, rather than

summarily concluding that the toy made noncommercial

use of Petitioner’s trademarks and trade dress.

Applying Bolger would not deprive Respondent of

protections afforded by the TDRA. Just as the likelihood

of confusion test is flexible enough to allow for appropriate

results in different cases, so too is the statutory dilution

29

framework. In Louis Vuitton Malletier, S.A. v. Haute

Diggity Dog, LLC, for example, the Fourth Circuit

resolved a claim of dilution by dog toys via parody in

the parodist’s favor. 507 F.3d at 267-68. It did so solely

by reference to the TDRA, without relying on 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, however, courts have

enjoined purported 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, socioeconomic commentary on luxury defined by a premium

price tag”); cf. Coca-Cola Co. v. Gemini Rising, Inc., 346

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

in Coca-Cola trade dress that said ENJOY COCAINE

under New York State’s anti-dilution statute). The Ninth

Circuit’s absolutist approach, which renders any product

noncommercial if it includes some arguably expressive

element, lacks any such balance.

C.

Resort to Constitutional Principles, Rather

than Traditional Trademark Principles, Was

Unnecessary to Resolve this Dispute.

The Ninth Circuit not only failed to apply Bolger, but

also unnecessarily resorted to the First Amendment,

just as it did in inappropriately applying Rogers to

JDPI’s infringement claims. The TDRA already includes

provisions balancing trademark interests with free

30

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 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.”).

Accordingly, this Court should reverse the Ninth

Circuit’s decision below with instructions to apply Bolger

to determine if the dog toy qualifies as non-commercial

speech under the TDRA.

CONCLUSION

For the foregoing reasons, INTA asks this Court to

reverse the Ninth Circuit’s decision below applying the

Rogers test to an ordinary commercial product. Though

Respondent claims the product contains some expression,

it is not the type of product to which the heightened First

Amendment protection was meant to apply. Accordingly,

INTA urges this Court to clarify that when a seller uses

another’s mark on a product, only “expressive works”—

i.e., products where expression is conceptually inseparable

from the products themselves—warrant heightened First

Amendment protection. The dog toy at issue here is not

such an “expressive work.”

31

With respect to the Ninth Circuit’s decision on JDPI’s

dilution claim, INTA urges this Court to remand with

instructions to engage in the full Bolger noncommercial

speech analysis in order to determine if the dog toy in fact

constitutes noncommercial speech.

Dated: January 18, 2023

Respectfully submitted,

David A. Donahue

Vijay K. Toke

Fross Zelnick Lehrman

Counsel of Record

& Zissu, P.C.

Rimon P.C.

151 West 42nd Street,

423 Washington Street,

17th Floor

6th Floor

New York, New York 10036 San Francisco, CA 94111

(212) 813-5900

(415) 683-5472

vijay.toke@rimonlaw.com

Carrie A. Hefte

Cjh Services

3945 Rolling Hills Road

Arden Hills, MN 55112

(651) 639-0228

Counsel for Amicus Curiae