Amicus Curiae Brief — Jack Daniel's Properties, Inc., Petitioner v. VIP Products LLC
Supreme Court briefJan 18, 2023
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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
BRIEF OF AMICI CURIAE INTELLECTUAL
PROPERTY PROFESSORS AND
ADJUNCT PROFESSORS IN SUPPORT
OF NEITHER PARTY
Megan K. Bannigan
Counsel of Record
David H. Bernstein
Jared I. K agan
Timothy Cuffman
Debevoise & Plimpton LLP
66 Hudson Boulevard
New York, NY 10001
(212) 909-6000
mkbannigan@debevoise.com
Counsel for Amici Curiae
318257
A
(800) 274-3321 • (800) 359-6859
TABLE OF CONTENTS
TABLE OF AUTHORITIES ..................................... iii
INTEREST OF AMICI CURIAE ............................... 1
SUMMARY OF ARGUMENT.................................... 1
ARGUMENT .............................................................. 6
I. When considering Lanham Act claims against
expressive works, courts should apply heightened
scrutiny, because the likelihood-of-confusion test is
ill-suited to protect the public interest in free
expression. .................................................................. 6
A. Protecting First Amendment interests requires
courts to tolerate some likelihood of consumer
confusion resulting from works of noncommercial
expression................................................................ 6
B. Courts need engage in a First Amendment
analysis only when an expressive work is likely to
result in some likelihood of consumer confusion, as
in the case of an “unsuccessful parody.” .............. 12
II. Balancing the public interest in free expression
against the public interest in avoiding confusion
requires a categorical test that focuses on the nature
of the expression and on the alleged infringer’s
conduct. ..................................................................... 18
III. In determining whether the First Amendment
precludes Lanham Act liability against a work,
courts should focus on the context and content of the
work’s expression, not its medium. ......................... 21
A. Distinguishing between a “consumer good” or
“commercial product” and an expressive good is
untenable and is contrary to this Court’s
precedents. ............................................................ 21
B. The threshold question for whether a work
that incorporates another party’s trademark is
subject to heightened scrutiny should be whether a
reasonable person would understand the work
inherently to convey noncommercial expression or
to convey such expression in a manner inextricable
from the functional or commercial elements of the
work. ...................................................................... 26
IV. A modified version of the Rogers v. Grimaldi test
can properly balance the interests protected by the
First Amendment and trademark law. ................... 29
A. Rogers has served as a useful tool for courts to
balance First Amendment and Lanham Act
interests................................................................. 29
B. The Rogers test should be modified so that it is
administrable and so that it appropriately
balances First Amendment and Lanham Act
interests................................................................. 31
1.
The new test ................................................ 31
2.
Explicit misleadingness .............................. 32
3.
Clear gratuitousness ................................... 36
4.
Application of the test to Bad Spaniels ...... 45
CONCLUSION ......................................................... 46
ii
TABLE OF AUTHORITIES
Cases
44 Liquormart, Inc. v. Rhode Island,
517 U.S. 484 (1996) ............................................... 26
A.V.E.L.A. v. Est. of Marilyn Monroe,
364 F. Supp. 3d 291 (S.D.N.Y. 2019).................... 43
Am. Dairy Queen Corp. v. New Line Prods., Inc.,
35 F. Supp. 2d 727 (D. Minn. 1998) ............... 10, 42
Am.’s Best Fam. Showplace Corp. v. N.Y.C., Dep’t of
Bldgs., 536 F. Supp. 170 (E.D.N.Y. 1982) ............ 22
AMF, Inc. v. Sleekcraft Boats,
599 F.2d 341 (9th Cir. 1979)................................... 7
Anheuser-Busch, Inc. v. Balducci Pubs.,
28 F.3d 769 (8th Cir. 1994)............................... 9, 41
Bantam Books, Inc v. Sullivan,
372 U.S. 58 (1963) ................................................ 25
Bd. of Trs. of State Univ. of N.Y. v. Fox,
492 U.S. 469 (1989) ............................................... 26
Bleistein v. Donaldson Lithographing Co.,
188 U.S. 239 (1903) ............................................... 36
BMW of N. Am., Inc. v. Gore,
517 U.S. 559 (1996) ............................................... 19
Bond v. United States,
572 U.S. 844 (2014) ............................................... 12
Brown v. Elec. Arts, Inc.,
724 F.3d 1235 (9th Cir. 2013)............................... 34
iii
Brown v. Ent. Merchants Ass’n,
564 U.S. 786 (2011) ................................... 21, 22, 25
Burck v. Mars, Inc.,
571 F. Supp. 2d 446 (S.D.N.Y. 2008).................... 16
C.B.C. Distr. and Mktg., Inc. v. Major League
Baseball Advanced Media, L.P.,
505 F.3d 818 (8th Cir. 2007)................................. 23
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) ........................13, 17, 20, 27, 37
Cardtoons, L.C. v. Major League Baseball Players
Ass’n, 95 F.3d 959 (10th Cir. 1996) ...................... 24
City of Cincinnati v. Discovery Network, Inc.,
507 U.S. 410 (1993) ............................................... 25
City of Lakewood v. Plain Dealer Pub’g Co.,
486 U.S. 750 (1988) ............................................... 25
Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub.
Grp., Inc., 886 F.2d 490 (2d Cir. 1989)..... 17, 35, 38
Cohen v. California,
403 U.S. 15 (1971) ................................................. 21
Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979)........... 10
Dickinson v. Ryan Seacrest Enters., Inc.,
No. 18-CV-2544 (GHW), 2019 WL 3035090 (C.D.
Cal. Mar. 26, 2019) ............................................... 39
E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc.,
547 F.3d 1095 (9th Cir. 2008)............................... 34
iv
Elec. Arts, Inc. v. Textron Inc.,
No. 12-CV-118 (WHA), 2012 WL 3042668 (N.D.
Cal. July 25, 2012) ................................................ 39
Elvis Presley Enters., Inc. v. Capece,
141 F.3d 188 (5th Cir. 1998)................................. 13
ETW Corp. v. Jireh Publ’g, Inc.,
332 F.3d 915 (6th Cir. 2003)................................. 39
Gertz v. Robert Welch, Inc.,
418 U.S. 323 (1974) ......................................... 12, 19
Harley Davidson, Inc. v. Grottanelli,
164 F.3d 806 (2d Cir. 1999) ...................... 27, 43, 45
Helene Curtis Indus., Inc. v. Church & Dwight Co.,
560 F.2d 1325 (7th Cir. 1977)................................. 7
Hidden City Philadelphia v. ABC, Inc.,
No. 18-cv-65 (JRS), 2019 WL 1003637 (E.D. Pa.
Mar. 1, 2019) ......................................................... 44
Hilton v. Hallmark Cards,
599 F.3d 894 (9th Cir. 2010)................................. 24
Hustler Mag., Inc. v. Falwell,
485 U.S. 46 (1988) ................................................. 19
In re Elster,
26 F.4th 1328 (Fed. Cir. 2022) ............................. 23
Interpace Corp. v. Lapp, Inc.,
721 F.2d 460 (3d Cir. 1983) .................................... 7
Jackson v. Netflix, Inc.,
506 F. Supp. 3d 1007 (C.D. Cal. 2020) ................. 41
Joseph Burstyn, Inc. v. Wilson,
343 U.S. 495 (1952) ......................................... 21, 24
v
KP Permanent Make-Up, Inc. v. Lasting Impression
I, Inc., 543 U.S. 111 (2004) ................................... 12
Lemme v. Nat’l Broad. Co., Inc.,
472 F. Supp. 2d 433 (E.D.N.Y. 2007) ................... 44
Louis Vuitton Malletier S.A. v. Haute Diggity Dog,
LLC, 507 F.3d 252 (4th Cir. 2007) ....................... 14
Louis Vuitton Malletier, S.A. v. My Other Bag, Inc.,
156 F. Supp. 3d 425 (S.D.N.Y. 2016).............. 14, 38
Lovell v. City of Griffin,
303 U.S. 444 (1938) ............................................... 25
Mastrovincenzo v. N.Y.C.,
435 F.3d 78 (2d Cir. 2006) .................................... 22
Mattel, Inc. v. MCA Recs., Inc.,
296 F.3d 894 (9th Cir. 2002)................................. 35
Mattel, Inc. v. Walking Mountain Prods.,
353 F.3d 792 (9th Cir. 2003)................................. 38
Minn. Voters Alliance v. Mansky,
138 S. Ct. 1876 (2018) ........................................... 22
Mut. of Omaha Ins. Co. v. Novak,
836 F.2d 397 (8th Cir. 1987)................................... 8
N.Y. Racing Ass’n, Inc. v. Perlmutter Publ’g, Inc.,
No. 95-CV-994 (FJS), 1996 WL 465298 (N.D.N.Y.
July 19, 1996) ........................................................ 30
NAACP v. Claiborne Hardware,
458 U.S. 886 (1982) ......................................... 18, 19
New York Times Co. v. Sullivan,
376 U.S. 254 (1964) ............................................... 19
vi
Pignons S.A. de Macanique de Precision v. Polaroid
Corp., 657 F.2d 482 (1st Cir. 1981) ........................ 7
Polaroid Corp v. Polarad Elecs. Corp.,
287 F.2d 492 (2nd Cir. 1961) .................................. 7
Pope v. Illinois,
481 U.S. 497 (1987) ............................................... 36
Radiance Foundation, Inc. v. NAACP,
786 F.3d 316 (4th Cir. 2015)................................. 11
Riley v. Nat’l Fed’n of the Blind of N.C., Inc.,
487 U.S. 781 (1988) ......................................... 25, 26
RJR Foods, Inc. v. White Rock Corp.,
603 F.2d 1058 (2d Cir. 1979) .................................. 8
Rogers v. Grimaldi,
875 F.2d 994 (2d Cir. 1989) ..... 11, 29, 30, 32, 33, 40
RXD Media, LLC v. IP Application Dev., LLC,
986 F.3d 361 (4th Cir. 2021)................................... 8
Schieffelin & Co. v. Jack Co. of Boca, Inc.,
850 F. Supp. 232 (S.D.N.Y. 1994)............... 5, 42, 45
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,
588 F.3d 97 (2d Cir. 2009) ........................ 28, 43, 45
Stern Elecs., Inc. v. Kaufman,
669 F.2d 852 (2d Cir. 1982) .................................. 22
Stouffer v. Nat’l Geographic Partners, LLC,
460 F. Supp. 3d 1133 (D. Colo. 2020) ................... 41
Streamline Prod. Systems, Inc. v. Streamline Mfg.,
Inc., 851 F.3d 440 (5th Cir. 2017) .......................... 7
vii
Tinker v. Des Moines Indep. Cmty. Sch. Dist.,
393 U.S. 503 (1969) ............................................... 21
Tommy Hilfiger Licensing v. Nature Labs, LLC,
221 F. Supp. 2d 410 (S.D.N.Y. 2002).......... 5, 42, 45
Twentieth Century Fox Television v. Empire Distrib.,
Inc., 875 F.3d 1192 (9th Cir. 2017) .......... 30, 34, 40
Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd.,
996 F.2d 1366 (2d Cir. 1993) ................................ 34
Univ. of Ala. Bd. of Trs. v. New Life Art, Inc.,
683 F.3d 1266 (11th Cir. 2012)....................... 30, 39
VIP Prod., LLC v. Jack Daniel’s Properties, Inc.,
291 F.Supp.3d 891 (D. Ariz. 2018) ....................... 15
VIP Prods. LLC v. Jack Daniel’s Props., Inc.,
953 F.3d 1170 (9th Cir. 2020)............................... 30
Ward v. Rock Against Racism,
491 U.S. 781 (1989) ............................................... 25
World Wrestling Fed’n Ent. Inc. v. Big Dog Holdings,
Inc., 280 F. Supp. 2d 413 (W.D. Pa. 2003) ........... 24
Yankee Pub’g Inc. v. News Am. Pub. Inc.,
809 F. Supp. 267 (S.D.N.Y. 1992)............. 15, 17, 27
Other Authorities
4 McCarthy on Trademarks and Unfair Competition
(5th ed.) ......................................................... 8, 9, 13
H.R. Rep. No. 116-645 (2020) .................................. 30
Pierre N. Leval, Trademark: Champion of Free
Speech, 27 Colum. J.L. & Arts 187 (2003–04) ..... 12
viii
INTEREST OF AMICI CURIAE
This brief1 is filed on behalf of the undersigned
intellectual property law professors and adjunct
professors identified in Appendix A.2 Amici are
professors whose research, teaching, and, in the case
of the adjunct professors, legal practice focus on
trademark law and/or the intersection of intellectual
property law and constitutional law. Amici have no
direct interest in the outcome of this litigation. They
share a professional and academic interest in
ensuring an appropriate balance between trademark
law and First Amendment law.
SUMMARY OF ARGUMENT
The First Amendment is under attack by brand
owners that lack a sense of humor, want to
monopolize discussion about their brands, and
exaggerate the harm expressive references cause to
their trademarks. Contrary to their Chicken-Little
cries, their brands will not be eviscerated by humor,
commentary, criticism, or reference. For that reason,
absent explicitly misleading speech or pretextual
uses that are clearly gratuitous and not really about
expression at all, respect for the First Amendment
1 No counsel for a party authored this brief in whole or in part,
and no counsel or party made a monetary contribution intended
to fund the preparation or submission of the brief. No person
or entity, other than amici and their counsel, made a monetary
contribution to the preparation or submission of this brief.
2 Amici’s institutional affiliations are provided only for
purposes of identification.
1
requires that their trademark rights yield to the
right to free expression.
The traditional likelihood-of-confusion analysis is
generally sufficient to determine whether a
defendant using a mark in a commercial manner
infringes another party’s trademark, but it is illsuited to protect First Amendment interests when a
claim of trademark infringement is brought against
a work of artistic, political, critical, or other
noncommercial expression. In such cases, and in
order to appropriately balance the public interest in
free expression with the public interest in avoiding
consumer confusion, this Court should adopt a
heightened standard of analysis to decide whether
the First Amendment precludes trademark
infringement claims against expressive works,
regardless of whether those works are sold for a
profit. Based on our decades of legal research and
teaching (and, in the case of the adjunct professors,
practicing), our study of how courts have addressed
this balance, and our observation of how both brands
and expression have fared in the wake of those cases,
we believe that the Rogers test is a good start
towards striking the right balance, but some
modifications are in order.
Consistent with this Court’s general approach to
adjudicating civil disputes that implicate First
Amendment interests, the test should be:
a categorical test rather than a fact-intensive,
multi-factor balancing test;
2
focused on the content of the protected
expression and the purported infringer’s
conduct, rather than on the perception of a
narrow segment of the consuming public, as
the likelihood-of-confusion test is; and
medium-neutral, such that it would apply to
authentic expression in any medium, whether
traditional media such as films, paintings,
music, and books, or nontraditional mediums
of expression such as clothing, sneakers,
videogames, and toys.
To achieve these goals, we propose modifying
Rogers. When a defendant makes a prima facie
showing that the work accused of trademark
infringement is a work of expression subject to First
Amendment protection, courts should presume that
Lanham Act liability is precluded. A plaintiff can
rebut that presumption through a showing that the
defendant’s use of the plaintiff’s mark is either
explicitly misleading or clearly gratuitous
(these two concepts are fleshed out below). If the
plaintiff carries that burden, the court should apply
the standard Lanham Act doctrine to determine
whether the work is subject to liability, while still
balancing the public’s interest in free expression
with the public’s interest in avoiding consumer
confusion.
In considering whether a defendant’s use of
another party’s trademark is “explicitly
misleading,” courts should consider whether the
3
defendant made a false statement as to the source of
the work (which is the test used in the Ninth Circuit)
rather than merely considering whether the use is
implicitly or likely misleading (which has been done
in other circuits that require only a “particularly
compelling” likelihood of confusion to satisfy the
second Rogers prong).
In considering whether a defendant’s use of
another’s mark is “clearly gratuitous,” courts
should consider evidence regarding whether the use
has or lacks an apparent good-faith nexus to the
defendant’s purported protected expression. Such a
nexus may be found in works of parody and satire
(which may directly comment on or critique the
mark owner or something symbolized by the mark),
informational or representational uses of a plaintiff’s
mark (as with a still-life painting that depicts
branded objects or with a film that accurately
depicts brands as they appear in real life), or titles of
expressive works that relate directly to the subject
matter of the works themselves (as with the title of
Fellini’s Ginger and Fred film at issue in Rogers
itself).
4
Where, on the other hand, the claimed expression is
a gratuitous reference to a brand that merely trades
on the good will or recognizability of a trademark
without any apparent good-faith rationale for such
use—as with the DOM POPIGNON popcorn at issue
in Schieffelin & Co. v. Jack Co. of Boca, Inc., 850 F.
Supp. 232 (S.D.N.Y. 1994) or the TIMMY
HOLEDIGGER dog fragrance at issue in Tommy
Hilfiger Licensing v. Nature Labs, LLC, 221 F. Supp.
2d 410 (S.D.N.Y. 2002)—courts should deny the
defendant’s First Amendment defense and conduct a
standard trademark infringement analysis.
5
ARGUMENT
I.
When considering Lanham Act claims
against expressive works, courts should apply
heightened scrutiny, because the likelihood-ofconfusion test is ill-suited to protect the public
interest in free expression.
A. Protecting First Amendment interests
requires courts to tolerate some likelihood of
consumer confusion resulting from works of
noncommercial expression.3
3 As explained further below in Section III.B, the threshold
question for whether a work accused of trademark
infringement is subject to heightened scrutiny should be
6
The multi-factor likelihood-of-confusion test is illsuited to protect First Amendment interests. The
test requires a fact-intensive inquiry that does not
account for the nature of a purported infringer’s
expression and instead focuses on factors extrinsic to
the expression. Among the factors courts routinely
consider are the strength of the senior user’s
trademark, the quality of the alleged infringer’s
goods or services, the sophistication of purchasers,
any evidence of actual confusion, and the likelihood
that the senior trademark user will “bridge the gap”
to offer goods or services of the type offered by the
junior user. See Pignons S.A. de Macanique de
Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st
Cir. 1981); Polaroid Corp v. Polarad Elecs. Corp., 287
F.2d 492, 495 (2nd Cir. 1961); Interpace Corp. v.
Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983);
Streamline Prod. Systems, Inc. v. Streamline Mfg.,
Inc., 851 F.3d 440, 453 (5th Cir. 2017); Helene Curtis
Indus., Inc. v. Church & Dwight Co., 560 F.2d 1325,
1330 (7th Cir. 1977); AMF, Inc. v. Sleekcraft Boats,
599 F.2d 341, 348–49 (9th Cir. 1979). Such factors
do not account for the expressiveness of a use of
another’s trademark, nor are they intended to.
Requiring artists and political commentators to
concern themselves with whether their expression
whether a reasonable person would perceive either (a) that a
work is inherently a form of noncommercial expression or (b)
that the work contains noncommercial expression that is
inextricably intertwined with any other functional or
commercial elements of the work, even if a reasonable person
could not discern the precise meaning of the expression.
7
would likely result in consumer confusion—as
determined by a fact-intensive balancing test—
would chill artistic, political, and other
noncommercial expression. Chilling of expression is
particularly likely because of the way courts
adjudicate trademark infringement claims. For
examples:
In order to prevail on a claim for trademark
infringement, a plaintiff need only show
likelihood of consumer confusion, regardless of
whether any consumers are actually confused.
4 McCarthy on Trademarks and Unfair
Competition § 23:12 (5th ed.) (“McCarthy”)
(“The test of infringement is the likelihood of
confusion, not the proof of actual confusion. To
prove liability, the plaintiff is not required to
prove any instances of actual confusion.”).
Courts regularly grant relief on trademark
infringement claims when only a small
minority of consumers (even as few as 1 in 10
people in a narrow class of consumers) are
confused. See, e.g., RXD Media, LLC v. IP
Application Dev., LLC, 986 F.3d 361, 373 (4th
Cir. 2021) (10% confusion supports finding of
likelihood of confusion, and 17% confusion is
“clear evidence”); RJR Foods, Inc. v. White
Rock Corp., 603 F.2d 1058, 1061 (2d Cir. 1979)
(15–20% confusion corroborates likelihood of
confusion); Mut. of Omaha Ins. Co. v. Novak,
836 F.2d 397, 400–01 (8th Cir. 1987) (10%
8
association can be given “significant weight”
in determining likelihood of confusion).
Unlike with a defamation claim, proving a
defendant’s intent is not necessary to prevail
on a trademark infringement claim, and
courts regularly disregard a defendant’s
showing of innocent intent. McCarthy
§ 23:107 (“The courts have unanimously held
that to prove infringement, plaintiff does not
bear the burden of pleading or proving an
intent” to deceive or confuse, and “[t]he
asserted subjective good faith of the defendant
is no defense” to trademark infringement).
This combination of features is appropriate in the
typical trademark case, because trademark law is
designed to protect the public against confusion. But
in the absence of limiting First Amendment
principles, applying these doctrines to all claims of
trademark infringement, including claims against
expressive works, risks unconstitutionally
suppressing works of commentary and artistic
expression in the name of protecting trademarks.
See, e.g., Anheuser-Busch, Inc. v. Balducci Pubs., 28
F.3d 769, 776 (8th Cir. 1994) (reversing district
court’s dismissal of trademark infringement claim
relating to “Michelob Oily” parody advertisement in
humor magazine because, although the ad
implicated First Amendment interests, the
defendant could have reduced the likelihood of
consumer confusion by “using an obvious disclaimer,
positioning the parody in a less-confusing location,
9
[or] altering the protected marks in a meaningful
way”);
Am. Dairy Queen Corp. v. New Line Prods., Inc., 35
F. Supp. 2d 727, 734 (D. Minn. 1998) (granting
preliminary injunction against “Dairy Queens”
mockumentary satirizing beauty contests in “dairy
country,” because “alternative avenues are available
for expressing [producer’s] ideas” that do not
arguably incorporate Dairy Queen’s trademark);
Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200, 206 (2d Cir. 1979)
(affirming preliminary injunction against Debbie
Does Dallas film depicting cheerleaders wearing
uniforms resembling those of the Dallas Cowboys
Cheerleaders “[b]ecause there are numerous ways in
10
which defendants may comment on ‘sexuality in
athletics’ without” referencing plaintiff’s marks).
For those reasons, courts in recent decades have
correctly recognized that, in order to balance First
Amendment interests against the interests protected
by trademark law, they must tolerate some degree of
consumer confusion in determining whether an
expressive work can be subject to liability under the
Lanham Act. See, e.g., Rogers v. Grimaldi, 875 F.2d
994, 1001 (2d Cir. 1989) (holding Lanham Act
liability against Ginger and Fred film to be
precluded by the First Amendment, despite survey
evidence of consumer confusion); Radiance
Foundation, Inc. v. NAACP, 786 F.3d 316, 325 (4th
Cir. 2015) (billboard using “NAACP” mark protected
by the First Amendment, despite the district court’s
finding that consumers were confused as to NAACP’s
sponsorship of the billboard).
This approach aligns with this Court’s precedents,
which protect even false expression so that artistic
and political expression can flourish. See, e.g., Gertz
11
v. Robert Welch, Inc., 418 U.S. 323, 341 (1974) (“The
First Amendment requires that we protect some
falsehood in order to protect speech that matters.”).
The same principle—that courts must accommodate
some degree of misleading speech in order to protect
expressive freedoms—should apply even more
strongly in the case of expression that is merely
confusing, not false. Cf. KP Permanent Make-Up,
Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 121–
22 (2004) (descriptive fair use doctrine tolerates
some level of confusion in order to prevent brand
owners from monopolizing the dictionary meaning of
words).
B. Courts need engage in a First Amendment
analysis only when an expressive work is likely to
result in some likelihood of consumer confusion,
as in the case of an “unsuccessful parody.”
Where a defendant’s use of another’s trademark
is not likely to give rise to any consumer confusion, a
court need not analyze the First Amendment
because principles of trademark law are sufficient to
adjudicate the case. See Bond v. United States, 572
U.S. 844, 855 (2014) (it is prudent for a court “not
[to] decide a constitutional question if there is some
other ground upon which to dispose of the case”);
Pierre N. Leval, Trademark: Champion of Free
Speech, 27 Colum. J.L. & Arts 187, 189 (2003–04)
(“Where the trademark law, by its own terms,
protects the unauthorized use of another’s
trademark, there is no need to turn to the
Constitution to justify a judgment in the alleged
12
infringer’s favor.”). But when such an expressive use
is likely to confuse consumers, appeal to the First
Amendment is necessary to consider whether the
expression can give rise to liability.
Accommodating expressive interests is
particularly important in the context of parody
because “[p]arody needs to mimic an original to
make its point,” Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569, 580–81 (1994), which leaves parodists
vulnerable under trademark law. Under prevailing
lower-court precedent, parodists have two distinct
defenses to a claim of trademark infringement: a
trademark parody defense and a First Amendment
parody defense.
A “parody defense” under trademark law is
simply a variation of a no-likelihood-of-confusion
defense. See McCarthy § 31:153 (a trademark
parody defense “is not an affirmative defense to a
charge of trademark infringement. . . . Rather,
‘parody’ is a way of arguing that there will be no
trademark infringement because there will be no
likelihood of confusion. The parodist argues that the
ordinary viewer will not be deceived or confused.”);
Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188,
199–200 (5th Cir. 1998) (“In the case of the standard
likelihood-of-confusion analysis, a successful parody
of the original mark weighs against a likelihood of
confusion because, even though it portrays the
original, it also sends the message that it is not the
original and is a parody, thereby lessening any
potential confusion.”). Accordingly, in line with
13
principles of constitutional avoidance, courts
regularly dismiss infringement claims against
trademark parodies where there is no likelihood of
consumer confusion, without reaching the
constitutional issue. See, e.g., Louis Vuitton
Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp.
3d 425, 443 (S.D.N.Y. 2016) (granting summary
judgment for defendant on trademark infringement
claim against parodic bag because “there is no
triable issue of fact on the likelihood of confusion”);
Louis Vuitton Malletier S.A. v. Haute Diggity Dog,
LLC, 507 F.3d 252, 263 (4th Cir. 2007) (affirming
grant of summary judgment for defendant on
trademark infringement claim against dog toy
because “[Louis Vuitton] has failed to demonstrate
any likelihood of confusion”).
14
But where a parody is vulnerable under
trademark law because some consumer confusion is
likely—as the district court found in this case, see
VIP Prod., LLC v. Jack Daniel’s Properties, Inc., 291
F.Supp.3d 891, 911 (D. Ariz. 2018)—a parodist must
resort to a First Amendment parody defense to
protect its parodic expression. Such a defense
requires a court to balance the defendant’s
expressive interests against the public’s interest in
avoiding confusion. See Yankee Pub’g Inc. v. News
Am. Pub. Inc., 809 F. Supp. 267, 272–82 (S.D.N.Y.
1992) (separately analyzing trademark parody
defense and First Amendment defense regarding
New York magazine cover resembling trade dress of
The Old Farmer’s Almanac);
15
Burck v. Mars, Inc., 571 F. Supp. 2d 446, 455
(S.D.N.Y. 2008) (“[E]ven if a parody is not so obvious
to negate any likelihood of confusion, it may still be
raised as an affirmative defense. . . . The First
Amendment protects parodies because they are valid
forms of artistic expression and criticism. . . .
Whether the parody defense is used in the likelihood
of confusion analysis or as an affirmative defense,
the end result is the same if the defendant
successfully asserts it: the plaintiff may not recover
for the defendant’s use of his trademark.”).
Analyzing parodies strictly under a likelihood-ofconfusion analysis rather than a framework that
accounts for the parodist’s expressive interests
would protect only “successful” parodies, where
reasonable consumers would not likely be confused
as to the source of the parody. But such an approach
would render the First Amendment powerless in this
context—and it would also conflict with this Court’s
precedents, which recognize that “First Amendment
16
protections do not apply only to those who speak
clearly, whose jokes are funny, and whose parodies
succeed.” Campbell, 510 U.S. at 583 (quoting
Yankee Publ’g, 809 F. Supp. at 280)).
Because a court need resort to heightened
scrutiny only when a work accused of trademark
infringement both incorporates noncommercial
expression and is likely to cause consumer confusion,
application of this heightened scrutiny (such as
through the Rogers test) is relatively rare and does
not substantially disrupt parties’ trademark rights.
Indeed, in the more than three decades since the
Second Circuit first created the Rogers test,
trademark law has not come crashing down but has
instead made space for good-faith expressive works
that incorporate trademarks into their expression.
For all of these reasons, in order to protect the
public’s interest in free expression, courts should
apply a heightened standard when expressive works
face claims of trademark infringement. See Cliffs
Notes, Inc. v. Bantam Doubleday Dell Pub. Grp., Inc., 886
F.2d 490, 494 (2d Cir. 1989) (where the defendant’s
work is a “poor parody,” it is “vulnerable under
trademark law, since the customer will be confused”;
Rogers provides the appropriate test in such cases to
balance trademark and First Amendment interests).
17
II.
Balancing the public interest in free
expression against the public interest in
avoiding confusion requires a categorical test
that focuses on the nature of the expression
and on the alleged infringer’s conduct.
In civil disputes implicating First Amendment
interests, this Court has historically favored
categorical rules rather than multi-factor balancing
tests. For example, in NAACP v. Claiborne
Hardware, this Court extended First Amendment
protections to conspiracy-based torts, holding that,
“[f]or [tort] liability to be imposed by reason of
association alone, it is necessary to establish that the
group itself possessed unlawful goals and that the
individual held a specific intent to further those
illegal aims.” 458 U.S. 886, 920 (1982). Such a
bright-line rule is necessary because “impos[ing]
liability without a finding that the [defendant]
18
authorized – either actually or apparently – or
ratified unlawful conduct would impermissibly
burden the rights of political association that are
protected by the First Amendment.” Id. at 931.
This Court has taken a similar categorical
approach to defamation and other tort claims. See
Hustler Mag., Inc. v. Falwell, 485 U.S. 46 (1988)
(holding that the First and Fourteenth Amendments
bar a public figure from recovering damages on a
claim of intentional infliction of emotional distress
without a showing of falsity and actual malice); New
York Times Co. v. Sullivan, 376 U.S. 254 (1964)
(holding that, if a defamation plaintiff is a public
official or public figure, the plaintiff must prove that
the defendant acted with actual knowledge of a
statement’s falsity or with reckless disregard to the
statement’s truth); Gertz, 418 U.S. at 347 (rejecting
“strict liability” or “liability without fault” for
defamation claims by a private individual against a
publisher or broadcaster).
Such categorical rules permit courts to dispose of
cases at early stages of litigation, as appropriate,
which is necessary to prevent lawsuits that chill
protected expression. As this Court has repeatedly
recognized, “the fear of damage awards . . . may be
markedly more inhibiting [on expression] than the
fear of prosecution under a criminal statute.” BMW
of N. Am., Inc. v. Gore, 517 U.S. 559, 583 n.38 (1996)
(quoting Sullivan, 376 U.S. at 277). On the other
hand, fact-intensive balancing tests like the
likelihood-of-confusion test are generally unsuitable
19
for disposition at a motion to dismiss stage, and are
often unsuitable for disposition at a summary
judgment stage. Applying such a test to trademark
infringement claims against expressive works would
severely burden artists’ and others’ First
Amendment rights by requiring them to proceed to
trial in order to vindicate their rights, and thereby
incur significant litigation costs. The threat of
incurring such costs compounds the risk of facing a
damages award, even further chilling protected
expression.
Another major flaw in applying the likelihood-ofconfusion test to expressive works is that the test
focuses primarily on the perception of a minority of
the consuming public as to the source of the work
(whether or not those perceptions are reasonable),
rather than on the way a reasonable person would
perceive the work’s expression and the conduct of the
purported infringer. By focusing on a small
subgroup’s perception of the source of goods or
services, without regard for the nature or context of
the expression itself, the test fails to account for the
purported infringer’s First Amendment interests.
See Campbell, 510 U.S. at 589 (“In parody, as in
news reporting, context is everything.” (internal
citation omitted)).
20
III.
In determining whether the First
Amendment precludes Lanham Act liability
against a work, courts should focus on the
context and content of the work’s expression,
not its medium.
A. Distinguishing between a “consumer good” or
“commercial product” and an expressive good is
untenable and is contrary to this Court’s
precedents.
This Court has traditionally applied a mediumneutral analysis to decide whether expression is
protected by the First Amendment. See Brown v.
Ent. Merchants Ass’n, 564 U.S. 786, 790 (2011)
(“[W]hatever the challenges of applying the
Constitution to ever-advancing technology, ‘the basic
principles of freedom of speech and the press, like
the First Amendment’s command, do not vary’ when
a new and different medium for communication
appears.”) (quoting Joseph Burstyn, Inc. v. Wilson,
343 U.S. 495, 503 (1952)). This Court’s First
Amendment jurisprudence would treat a political
slogan emblazoned on a t-shirt that is sold in stores
across the United States as no less expressive than
the same slogan printed on the front of a pamphlet
handed out at a local rally, and the shirt would
receive no less protection under the First
Amendment. See, e.g., Tinker v. Des Moines Indep.
Cmty. Sch. Dist., 393 U.S. 503 (1969) (wearing black
armbands fully protected by the First Amendment);
Cohen v. California, 403 U.S. 15 (1971) (jacket fully
protected by the First Amendment); Minn. Voters
21
Alliance v. Mansky, 138 S. Ct. 1876 (2018) (state ban
on political apparel at polling places violated First
Amendment).
As new mediums of expression have been
developed, this Court has adapted First Amendment
jurisprudence accordingly. For example, the Court
has extended First Amendment protection to video
games, despite decades of lower court precedent
holding that video games were a mere entertainment
good. Compare Brown, 564 U.S. at 790, with Am.’s
Best Fam. Showplace Corp. v. N.Y.C., Dep’t of Bldgs.,
536 F. Supp. 170, 174 (E.D.N.Y. 1982) (video games
are “pure entertainment” that “contain so little in
the way of particularized form of expression that
video games cannot be fairly characterized as a form
of speech protected by the First Amendment”)
(quoting Stern Elecs., Inc. v. Kaufman, 669 F.2d 852,
857 (2d Cir. 1982)).
The lower courts have likewise taken a mediumneutral approach to the First Amendment,
recognizing the capacity of tangible goods to embody
or convey protected expression. See, e.g.,
Mastrovincenzo v. N.Y.C., 435 F.3d 78, 97 (2d Cir.
2006) (graffiti’d shirts and hats subject to full First
Amendment protection);
22
C.B.C. Distr. and Mktg., Inc. v. Major League
Baseball Advanced Media, L.P., 505 F.3d 818 (8th
Cir. 2007) (fantasy baseball games protected); In re
Elster, 26 F.4th 1328 (Fed. Cir. 2022) (t-shirts
emblazoned with the words “TRUMP TOO SMALL”
protected);
23
Hilton v. Hallmark Cards, 599 F.3d 894 (9th Cir.
2010) (greeting card featuring the image of Paris
Hilton protected); World Wrestling Fed’n Ent. Inc. v.
Big Dog Holdings, Inc., 280 F. Supp. 2d 413 (W.D. Pa.
2003) (goods including t-shirts, mugs, sports bottles,
stickers, and beanie dolls protected); Cardtoons, L.C.
v. Major League Baseball Players Ass’n, 95 F.3d 959,
969 (10th Cir. 1996) (parody baseball trading cards
entitled to full First Amendment protection because
“even if the trading cards are not a traditional
medium of expression, they nonetheless contain
protected speech”).
Nor does it matter for First Amendment purposes
whether a good is sold for a profit. Indeed, this
Court has recognized that the distribution and sale
of films, music, television shows, and video games to
mass audiences—often for a very large profit—does
not diminish their First Amendment protection. See
Burstyn, 343 U.S. at 501–02 (“It is urged that
motion pictures do not fall within the First
24
Amendment’s aegis because their production,
distribution, and exhibition is a large-scale business
conducted for private profit. We cannot agree. That
books, newspapers, and magazines are published
and sold for profit does not prevent them from being
a form of expression whose liberty is safeguarded by
the First Amendment. We fail to see why operation
for profit should have any different effect in the case
of motion pictures.”). See also Ward v. Rock Against
Racism, 491 U.S. 781, 790 (1989) (“Music, as a form
of expression and communication, is protected under
the First Amendment.”); Brown, 564 U.S. 786 (video
games protected); Bantam Books, Inc v. Sullivan,
372 U.S. 58, 64 n.10 (1963) (“The constitutional
guarantee of freedom of press embraces the
circulation of books as well as their publication.”)
(citing Lovell v. City of Griffin, 303 U.S. 444, 452
(1938)).
This profit-neutral principle follows from this
Court’s general First Amendment jurisprudence,
which makes clear that selling speech does not
deprive it of full First Amendment protection. It is
“well-settled” that First Amendment rights “are not
lost merely because compensation is received.” Riley
v. Nat’l Fed’n of the Blind of N.C., Inc., 487 U.S. 781,
801 (1988); see also City of Lakewood v. Plain Dealer
Pub’g Co., 486 U.S. 750, 756 n.5 (1988) (“[T]he
degree of First Amendment protection is not
diminished merely because the . . . speech is sold
rather than given away.”); City of Cincinnati v.
Discovery Network, Inc., 507 U.S. 410, 418–23 (1993)
(speech does not lose protection because it arises
25
from a speaker’s economic interest); Bd. of Trs. of
State Univ. of N.Y. v. Fox, 492 U.S. 469, 482 (1989)
(“Some of our most valued forms of fully protected
speech are uttered for a profit.”).
B. The threshold question for whether a work
that incorporates another party’s trademark is
subject to heightened scrutiny should be whether
a reasonable person would understand the work
inherently to convey noncommercial expression
or to convey such expression in a manner
inextricable from the functional or commercial
elements of the work.
For the reasons explained above, “commercial
good” is not a cognizable First Amendment category.
Rather than distinguishing between commercial and
noncommercial goods, this Court’s cases distinguish
between commercial expression (such as pure
advertising) and noncommercial expression (such as
political, artistic, or religious speech, regardless of
whether that speech is sold). Whenever the
commercial aspects of a work are intertwined with
artistic content, the First Amendment dictates that
the trademark-using speech must be considered
“noncommercial” (i.e., speech that does more than
propose a commercial transaction, as pure
advertising does) and thus subject to full First
Amendment protection. See Riley, 487 U.S. at 796
(“[W]e do not believe that . . . speech retains its
commercial character when it is inextricably
intertwined with otherwise fully protected speech”);
44 Liquormart, Inc. v. Rhode Island, 517 U.S. 484,
26
499 (1996) (“[T]he State retains less regulatory
authority when its commercial speech restrictions
strike at the substance of the information
communicated rather than the commercial aspect of
it”).
Accordingly, the threshold question for whether a
work accused of trademark infringement is subject
to heightened scrutiny should be whether a
reasonable person would perceive either (a) that a
work is inherently a form of noncommercial
expression (such as a novel or painting) or (b) that
the work (whether a t-shirt, dog toy, or sneaker)
contains noncommercial expression that is
inextricably intertwined with the functional or
commercial elements of the work, even if a
reasonable person could not discern the precise
meaning of the expression. Cf. Campbell, 510 U.S.
at 583 (“First Amendment protections do not apply
only to those who speak clearly” (quoting Yankee
Publ’g, 809 F. Supp. at 280)).
Where a First Amendment claim is pretextual or
lacking in merit—such as where a defendant uses a
mark strictly to advertise or sell its own products,
not to convey noncommercial expression—courts
have generally proven themselves adept at
recognizing that the First Amendment does not
apply. See, e.g., Harley Davidson, Inc. v. Grottanelli,
164 F.3d 806, 812–13 (2d Cir. 1999) (rejecting First
Amendment defense because the defendant “ma[de]
no comment on Harley’s mark” and instead “simply
use[d] it somewhat humorously to promote his own
27
products and services,” in contrast to “parodists
whose expressive works aim[ed] their parodic
commentary at a trademark or a trademarked
product”); Starbucks Corp. v. Wolfe’s Borough Coffee,
Inc., 588 F.3d 97, 113 (2d Cir. 2009) (CHARBUCKS
mark used only “as a beacon to identify Charbucks
as a coffee that competes at the same level and
quality as Starbucks in producing dark-roasted
coffees,” not as part of defendant’s non-commercial
expression).
Because such uses contain no discernible
noncommercial expression, they would not pass the
threshold question to receiving heightened scrutiny.
28
IV.
A modified version of the Rogers v.
Grimaldi test can properly balance the
interests protected by the First Amendment
and trademark law.
A. Rogers has served as a useful tool for courts to
balance First Amendment and Lanham Act
interests.
Over the past few decades, the lower courts have
generally balanced the public interest in expression
and the interest in avoiding consumer confusion in
accordance with the principles explained above. The
prevailing approach in the lower courts was first laid
out by the Second Circuit in 1989 in Rogers v.
Grimaldi, which set a bright-line rule that correctly
focuses on the nature of a purported infringer’s
expression and the nature of its conduct. The Rogers
test precludes Lanham Act liability against works of
noncommercial expression, even if those works are
likely to result in some consumer confusion, unless
the use of the plaintiff’s trademark is either (a) not
artistically relevant or (b) explicitly misleading. 875
F.2d at 1000. If a work does not incorporate
noncommercial expression or fails the Rogers test, it
is subject to the traditional likelihood-of-confusion
analysis to determine whether it is subject to
Lanham Act liability.
The Rogers test thus calls for a categorical
analysis rather than fact-intensive, multi-factor
balancing, which aligns with this Court’s precedents
for civil disputes implicating First Amendment
interests. The House Judiciary Committee
29
recognized this in the legislative history of the
Lanham Act’s latest amendment, which states that
the Rogers test “appropriately recognizes the
primacy of constitutional protections for free
expression.” H.R. Rep. No. 116-645, at 20 (2020).
The Rogers test also correctly focuses on the
content and context of a work’s expression,
regardless of the medium of expression. By its own
terms, Rogers applies to “hybrid” works that
“combin[e] artistic expression and commercial
promotion,” where the artistic and commercial
aspects are “inextricably intertwined.” 875 F.2d at
998. Courts (including the lower courts in this case)
have appropriately applied Rogers to tangible goods
that incorporate noncommercial expression, in line
with this Court’s medium-neutral approach to the
First Amendment. See, e.g., VIP Prods. LLC v. Jack
Daniel’s Props., Inc., 953 F.3d 1170, 1174–76 (9th
Cir. 2020) (dog toy); Twentieth Century Fox
Television v. Empire Distrib., Inc., 875 F.3d 1192,
1195, 1196–97 (9th Cir. 2017) (shirts, champagne
glasses); N.Y. Racing Ass’n, Inc. v. Perlmutter Publ’g,
Inc., No. 95-CV-994, 1996 WL 465298, at *1, 4
(N.D.N.Y. July 19, 1996) (shirts, note cards, greeting
cards); Univ. of Ala. Bd. of Trs. v. New Life Art, Inc.,
683 F.3d 1266, 1278 (11th Cir. 2012) (calendars).
30
B. The Rogers test should be modified so that it
is administrable and so that it appropriately
balances First Amendment and Lanham Act
interests.
Although the Rogers test generally provides an
effective way to balance expressive interests with
interests in avoiding consumer confusion, the test
has been unevenly applied by the lower courts—for
example, in their interpretation of the “explicitly
misleading” standard, as discussed below—largely
due to ambiguities inherent in the test. There are
numerous ways Rogers could be revised, and
numerous alternatives to Rogers have been proposed
over the decades. This brief proposes a new test that
aims to retain the valuable features of Rogers while
enhancing its administrability for the courts,
predictability for prospective litigants, and
congruence with this Court’s precedents.
1.
The new test
When a defendant raises a First Amendment
defense and makes a prima facie showing that the
work accused of trademark infringement is a work of
expression subject to full First Amendment
protection (as defined in Section III.B, above), courts
should presume that Lanham Act liability is
precluded. Such a presumption lends appropriate
deference to constitutionally protected expression,
limited only when overridden by narrow but
nonetheless important countervailing interests.
31
Upon a defendant’s showing that the accused
work is sufficiently expressive, the burden would
shift to the plaintiff to rebut that presumption
through a showing that the defendant’s use of the
plaintiff’s mark is either explicitly misleading or
clearly gratuitous. If the use falls into either
exception, the court should deny the defendant’s
First Amendment defense and apply standard
Lanham Act doctrine to determine whether the work
is subject to liability. Where neither exception
applies, the Lanham Act claim should be dismissed
as barred by the First Amendment.
2.
Explicit misleadingness
The second prong of the Rogers test, which
considers whether a use of another party’s
trademark is explicitly misleading, appropriately
dictates that a defendant’s affirmative deception
overrides the application of heightened scrutiny.
When establishing the Rogers test, the Second
Circuit explained that “explicitly misleading” means
that a use “explicitly denote[s] authorship,
sponsorship, or endorsement” and is not merely
“ambiguous or only implicitly misleading.” 875 F.2d
at 999–1000, 1005. Thus, under Rogers, confusion
surrounding an expressive work cannot contribute to
liability under the Lanham Act unless the defendant
made an “explicit indication,” “overt claim,” or
“explicit misstatement” that caused the confusion.
Id. at 1001. The Second Circuit provided illustrative
examples of the types of misleading statements that
32
this second prong targets for exclusion from
heightened scrutiny:
[S]ome titles—such as “Nimmer on Copyright”
and “Jane Fonda’s Workout Book”—explicitly
state the author of the work or at least the name
of the person the publisher is entitled to associate
with the preparation of the work. Other titles
contain words explicitly signifying endorsement,
such as the phrase in a subtitle “an authorized
biography.” If such explicit references were used
in a title and were false as applied to the
underlying work, the consumer’s interest in
avoiding deception would warrant application of
the Lanham Act, even if the title had some
relevance to the work.
Id. at 999. Focusing on a defendant’s explicit
statements in this way allows courts to consider
objective indicia of a defendant’s intent to free-ride
on a plaintiff’s good will, if appropriate, without
burdening the defendant’s expression by considering
“ambiguous” or “only implicit” statements, or by
engaging in a fact-intensive analysis of the
defendant’s subjective intent.
The Ninth Circuit has followed the Second
Circuit’s original vision, explaining that “[w]e must
ask not only about the likelihood of consumer
confusion but also whether there was an ‘explicit
indication,’ ‘overt claim,’ or ‘explicit misstatement’
that caused such consumer confusion,” or else courts
will “conflate[] the second prong of the Rogers test
with the general [] likelihood-of-confusion test, which
33
applies outside the Rogers context of expressive
works.” Twentieth Century Fox, 875 F.3d at 1199.
This approach correctly focuses on the conduct of the
alleged infringer, requiring a showing of some
affirmative conduct that deceives consumers in order
to find explicit misleadingness. See Brown v. Elec.
Arts, Inc., 724 F.3d 1235, 1246 (9th Cir. 2013) (“[T]o
be relevant [to the explicitly misleading prong of
Rogers], evidence must relate to the nature of the
behavior of the [defendant], not the impact of the use”
on consumers); see also E.S.S. Ent. 2000, Inc. v. Rock
Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008)
(“[T]he mere use of a trademark alone cannot suffice
to make such use explicitly misleading” under
Rogers.).
In contrast, courts in the Second Circuit have
departed from Rogers and generally assessed explicit
misleadingness through a modified version of the
standard likelihood-of-confusion factors, requiring
that a finding of likelihood of confusion must be
“particularly compelling” to qualify as explicitly
misleading. See Twin Peaks Prods., Inc. v. Publ’ns
Int’l, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993).
Analyzing the likelihood-of-confusion factors as a
proxy for explicit misleadingness renders the Rogers
test insufficiently protective of First Amendment
interests for the same reasons the likelihood-ofconfusion test is ill-suited to balance interests under
the First Amendment and trademark law, as
explained in Section I. Indeed, “the [likelihood-ofconfusion] test is at best awkward in the context of”
34
certain expressive works, Cliffs Notes, 886 F.2d at
495 n.3, and “fails to account for the full weight of
the public’s interest in free expression.” Mattel, Inc.
v. MCA Recs., Inc., 296 F.3d 894, 900 (9th Cir. 2002).
The Second Circuit’s standard is also difficult—if not
impossible—to administer, because the “particularly
compelling” standard is unworkably vague and
inherently subjective. How could a court—much less
an artist or a political commentator—know whether
application of the likelihood-of-confusion factors
would render confusion “particularly compelling”?
Rather than requiring courts to analyze a multifactored standard (which would often preclude a
motion to dismiss or for summary judgment), courts
should instead simply consider whether there is a
false statement of affiliation, endorsement, or
sponsorship. Anything less would elevate the
Lanham Act’s confusion analysis above the First
Amendment’s protection of expression.
Furthermore, nesting a likelihood-of-confusion
analysis within a First Amendment analysis
overdetermines the conclusion and necessarily
burdens First Amendment interests, because a test
accounting for a purported infringer’s free speech
interests need be applied only when there is some
likelihood of consumer confusion, or else trademark
law would be sufficient to resolve the case. See
Section I.B, supra. Requiring that the plaintiff
merely show a heightened degree of consumer
confusion would render both the First Amendment
and artists’ rights to comment on our commercial
culture a nullity.
35
For all of these reasons, courts should apply
Rogers’s explicit misleadingness prong independent
of the likelihood-of-confusion analysis.
3.
Clear gratuitousness
Although the purpose of Rogers’s “artistic
relevance” prong is laudable—to ensure there is
some nexus between the use and the expression,
affording courts the ability to weed out works where
the use is unrelated to the defendant’s protected
expression and thus gratuitous—the prong is flawed
in a number of ways. For example, it fails to provide
district courts sufficient guidance on how relevant a
use needs to be and the appropriate method for
determining whether a use is relevant. Furthermore,
by asking courts to assess whether a purported
infringer’s use of a trademark is “artistically
relevant,” the Rogers test arguably requires courts to
serve as art critics, considering a work’s artistic
merit or probing its hidden meaning—which is a role
courts are ill-suited to perform. As Justice Holmes
explained in Bleistein v. Donaldson Lithographing
Co., “it would be a dangerous undertaking for
persons trained only to the law to constitute
themselves final judges of the worth of pictorial
illustrations.” 188 U.S. 239, 251 (1903); see also
Pope v. Illinois, 481 U.S. 497, 505 (1987) (Scalia, J.,
concurring) (“For the law courts to decide ‘What is
Beauty’ is a novelty even by today’s standards.”).
Furthermore, even if courts were capable of acting as
adept art critics, they would not be able to reach
predictable or uniform conclusions regarding the
36
“artistic relevance” of any particular use of a mark.
The first Rogers prong, as currently formulated, thus
inherently results in inconsistency.
This brief proposes that instead of considering
whether a defendant’s use of a trademark is
artistically relevant, courts instead probe the nexus
between a defendant’s use of another party’s mark
and its expression by asking whether the use is
“clearly gratuitous.” Where a work “can stand on its
own two feet” without use of the plaintiff’s mark
because the use is unnecessary to convey a certain
message, the defendant “requires justification for the
very act of borrowing.” Campbell, 510 U.S. at 581.
If there is clearly no such justification for a use—
such as where a defendant merely promotes a
product through lighthearted association with
another brand—the work would fail our proposed
test, and courts would then apply standard
principles of trademark law.
In considering whether a defendant’s use of
another party’s mark is clearly gratuitous, courts
should consider evidence regarding whether the use
has or lacks an apparent good-faith nexus to the
defendant’s purported protected expression, or
whether the brand’s use serves merely to promote a
product through association with another brand.
Such a nexus could be found in many different types
of works. For examples:
Works of parody and satire, which directly
comment on or critique the mark or mark
37
owner or something symbolized by the mark
or mark owner, respectively. See, e.g., Cliffs
Notes, 886 F.2d 490 (Spy Notes parody of
Cliffs Notes book); My Other Bag, 156 F. Supp.
3d 425 (“My Other Bag” parody of Louis
Vuitton bag); Mattel, Inc. v. Walking
Mountain Prods., 353 F.3d 792, 807 (9th Cir.
2003) (“Food Chain Barbie” photograph series).
Informational or representational uses of a
plaintiff’s mark, as with a still-life painting
that depicts a bottle of Coca Cola, or a film
that depicts the Disney Store in Times Square.
See, e.g., Dickinson v. Ryan Seacrest Enters.,
Inc., No. 18-CV-2544, 2019 WL 3035090 (C.D.
38
Cal. Mar. 26, 2019), aff’d, 839 F. App’x 110
(9th Cir. 2020), cert. denied, 141 S. Ct. 2861
(2021) (TV program showing video of plaintiff
backstage at a fashion show); ETW Corp. v.
Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003)
(paintings of the golfer Tiger Woods contained
in envelopes bearing Woods’s name);
Elec. Arts, Inc. v. Textron Inc., No. 12-CV-118,
2012 WL 3042668 (N.D. Cal. July 25, 2012)
(depiction of war helicopters in realistic war
video game); Univ. of Ala. Bd. of Trs., 683 F.3d
1266 (paintings, prints, and calendars
depicting famous scenes in University of
Alabama football history, with players
wearing team uniforms).
39
Titles of expressive works that relate directly
to the subject matter of the works themselves.
Rogers, 875 F.2d at 994 (Federico Fellini’s film
titled Ginger and Fred, which depicted two
characters impersonating the famous acting
and dancing duo Ginger Rogers and Fred
Astaire); Twentieth Century Fox, 875 F.3d
1192 (TV show called Empire about a music
mogul running a music “empire” at a company
called “Empire Entertainment”);
40
Stouffer v. Nat’l Geographic Partners, LLC,
460 F. Supp. 3d 1133 (D. Colo. 2020) (nature
documentaries titled “Untamed Americas,”
“America the Wild,” “Surviving Wild America,”
and “America’s Wild Frontier”); Jackson v.
Netflix, Inc., 506 F. Supp. 3d 1007 (C.D. Cal.
2020) (TV show called Tiger King about a man
operating a tiger sanctuary).
Had the Eighth Circuit applied this standard to
the “Michelob Oily” parody ad at issue in in
Anheuser-Busch, 28 F.3d 769, the court would have
found a clear good-faith nexus between the
defendant’s use of the MICHELOB marks and the
defendant’s humorous commentary on the plaintiff’s
production of Michelob beer with water from a river
contaminated by an oil spill. Similarly, the
defendant’s use of the title “Dairy Queens” at issue
41
in American Dairy Queen Corp., 35 F. Supp. 2d 727,
was not clearly gratuitous, as the mockumentary
satirized beauty queens in “dairy country.”
Where, on the other hand, a work clearly trades
on the good will or recognizability of a trademark
holder without any apparent good-faith rationale for
such use, courts should deny the defendant’s First
Amendment defense and conduct a standard
trademark infringement analysis. For example, the
DOM POPIGNON popcorn at issue in Schieffelin,
850 F. Supp. 232, made no discernible commentary
or critique of Dom Pérignon, its marks for
champagne, or anything represented by Dom
Pérignon. Nor did the defendant’s popcorn adopt the
Dom Pérignon trade dress and marks for any other
apparent purpose except to promote its popcorn
product. Mere wordplay does not justify use of
another’s mark. The same is true for the TIMMY
HOLEDIGGER pet perfume at issue in Tommy
Hilfiger, 221 F. Supp. 2d 410 (applying the
likelihood-of-confusion factors and ultimately finding
no Lanham Act violation because the joke was so
obvious that consumers would not reasonably be
confused as to source).
42
A brand promoting itself through lighthearted
association with another brand is not the type of
expression that warrants deference under the First
Amendment. See Harley Davidson, 164 F.3d at 812–
13 (rejecting First Amendment defense because the
defendant “simply use[d] [Harley Davidsons’ marks]
somewhat humorously to promote his own products
and services”); A.V.E.L.A. v. Est. of Marilyn Monroe,
364 F. Supp. 3d 291, 322 (S.D.N.Y. 2019) (finding tshirts bearing likeness of Marilyn Monroe not
subject to First Amendment protection in part
because shirts incorporated Monroe’s likeness
merely to “draw consumer attention,” not to
comment on Monroe or otherwise express noncommercial ideas); Starbucks, 588 F.3d at 113
(defendant used the CHARBUCKS brand merely to
associate its coffee with Starbucks’ coffee). Such
43
uses do not warrant heightened scrutiny and should
instead be assessed under the standard likelihood-ofconfusion analysis, as they lack any apparent
justification for their borrowing.
Inquiring whether a use is clearly gratuitous
would ensure protection for valuable commentary on
or criticism of a brand or brand owner, artistic
representations of the world, and titles that flow
naturally from a work’s subject matter, while
weighing toward protection of the public from
confusion where a defendant clearly uses a brand’s
trademark to free-ride on that brand’s good will.
There will undoubtedly be difficult cases where
the line between a gratuitous use and a genuine
commentary is not clear—but not every case is
difficult. Indeed, many cases could easily be
dismissed at the early stages of litigation because
the work is plainly expressive and the use is neither
explicitly misleading nor clearly gratuitous. See, e.g.,
Lemme v. Nat’l Broad. Co., Inc., 472 F. Supp. 2d 433
(E.D.N.Y. 2007) (TV show about the experiences of a
fictional family in the United States titled “American
Dreams”); Hidden City Philadelphia v. ABC, Inc., No.
18-cv-65, 2019 WL 1003637 (E.D. Pa. Mar. 1, 2019)
(“journalistic videos . . . about rare, historic locations
in Philadelphia, Pennsylvania” entitled “Hidden
Philadelphia”).
44
4.
Application of the test to Bad Spaniels
The facts of this case present a closer question
than the uses at issue in Harley Davidson,
Starbucks, Schieffelin, and Tommy Hilfiger. The
number and variety of Respondent’s jokes and puns,
coupled with Respondent’s drawing of a cartoon dog,
renders the Bad Spaniels toy more expressive—even
if only slightly so—than the Timmy Holedigger pet
perfume and the Dom Popignon popcorn.
Nevertheless, as explained above, a brand’s mere
wordplay and humorous association with another
brand to promote its products is clearly gratuitous.
Such uses do not warrant deference under the First
Amendment and instead can be addressed through
standard principles of trademark law. Accordingly,
the Court should remand, as necessary, so that the
lower courts can determine whether Respondent’s
use is clearly gratuitous based on the standard
outlined above.
45
CONCLUSION
In resolving this dispute, the Court should apply
the test proposed above. In any event, the Court
should apply a test that appropriately balances First
Amendment and Lanham Act interests, by adopting
a categorical test rather than a fact-intensive, multifactor balancing test, focusing on the nature of the
protected expression and the purported infringer’s
conduct, and applying it in a medium-neutral
manner.
Respectfully submitted,
Megan K. Bannigan
Counsel of Record
David H. Bernstein
Jared I. Kagan
Timothy Cuffman
DEBEVOISE & PLIMPTON LLP
66 Hudson Boulevard
New York, NY 10001
(212) 909-6000
mkbannigan@debevoise.com
January 18, 2023
46
APPENDIX
TABLE OF APPENDICES
APPENDIX A – SIGNATORIES……………………..1a
APPENDIX A – SIGNATORIES
Megan K. Bannigan, Adjunct Professor of Law,
New York University School of Law and Rutgers
School of Law
Jeffrey S. Becker, Adjunct Professor, DePaul
University College of Law
David H. Bernstein, Adjunct Professor of Law,
University of California Berkeley School of Law
Anthony J. Biller, Adjunct Professor, Campbell
University Norman Adrian Wiggins School of Law
Megan M. Carpenter, Dean and Professor of Law,
University of New Hampshire Franklin Pierce
School of Law
Shari Seidman Diamond, Howard J. Trienens
Professor of Law and Professor of Psychology,
Northwestern University Pritzker School of Law
Joseph M. Forgione, Adjunct Professor of Law,
New York Law School
Brian L. Frye, Spears-Gilbert Professor of Law,
University of Kentucky College of Law
Rebeccah Gan, Adjunct Professor, Trademark and
Unfair Competition Law, Antonin Scalia Law School,
George Mason University
Kevin J. Greene, John J. Schumacher Chair and
Professor of Law, Southwestern Law School
1a
Lisa Iverson, Adjunct Professor, Roosevelt
University and Harper College
John R. Kettle III, Clinical Professor of Law,
Rutgers Law School
Marc C. Levy, Adjunct Professor, University of
Colorado School of Law
William J. McNichol, Adjunct Professor, Rutgers
Law School
Susan Barbieri Montgomery, Professor Emerita,
Northeastern University School of Law
Lawrence K. Nodine, Adjunct Professor, Emory
University School of Law
Michael L. Rustad, Thomas F. Lambert Jr.
Professor of Law, Suffolk University Law School
Zahr K. Said, Charles I. Stone Professor of Law,
University of Washington School of Law
Roger Schechter, William Thomas Fryer Research
Professor Emeritus of Law, George Washington
University Law School
Jaime Rich Vining, Adjunct Professor, University
of Miami School of Law
2a
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.