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 APPEALS

FOR THE NINTH CIRCUIT

——————————

BRIEF OF THE CHAMBER OF COMMERCE

OF THE UNITED STATES OF AMERICA

AND THE NATIONAL ASSOCIATION OF

MANUFACTURERS AS AMICI CURIAE IN

SUPPORT OF PETITIONER

——————————

TARA S. MORRISSEY

JORDAN L. VON BOKERN

U.S. CHAMBER

LITIGATION CENTER

1615 H Street, NW

Washington, DC 20062

ERICA KLENICKI

MICHAEL A. TILGHMAN II

THE NAM LEGAL CENTER

733 Tenth Street, NW

Suite 700

Washington, DC 20001

GREGORY G. GARRE

Counsel of Record

BLAKE E. STAFFORD

JORDAN R. GOLDBERG

LATHAM & WATKINS LLP

555 Eleventh Street, NW

Suite 1000

Washington, DC 20004

(202) 637-2207

gregory.garre@lw.com

Counsel for Amici Curiae

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ...................................... ii

INTEREST OF AMICI CURIAE ................................1

INTRODUCTION AND SUMMARY OF

ARGUMENT .........................................................2

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

I.

TRADEMARK PROTECTIONS SERVE

VITAL

INTERESTS

IN

THE

MARKETPLACE ..................................................4

A. Trademarks

Have

Become

A

Cornerstone Of The Modern Economy,

For Both Trademark Owners And

Consumers .......................................................5

B. Trademark Law Has Long Recognized

And Protected These Interests ........................8

II. THE NINTH CIRCUIT’S REFUSAL TO

APPLY THE LANHAM ACT TO

ORDINARY

COMMERCIAL

INFRINGEMENT BASED ON FIRST

AMENDMENT

CONCERNS

IS

MISGUIDED.......................................................12

A. The First Amendment Does Not

Protect Speech That Confuses And

Misleads Consumers .....................................13

B. The Ninth Circuit’s Sweeping First

Amendment Exception Is Misguided ...........16

III. THE NINTH CIRCUIT’S TRADEMARKDILUTION ANALYSIS IS EQUALLY

FLAWED .............................................................21

CONCLUSION ..........................................................24

ii

TABLE OF AUTHORITIES

Page(s)

CASES

Anheuser-Busch, Inc. v. Balducci

Publications,

28 F.3d 769 (8th Cir. 1994)..................................19

Bad Frog Brewery, Inc. v. New York State

Liquor Authority,

134 F.3d 87 (2d Cir. 1998) ...................................22

Board of Trustees of the State University of

New York v. Fox,

492 U.S. 469 (1989) ..............................................23

Boardman v. Meriden Brittania Co.,

35 Conn. 402 (1868) ...............................................9

Bolger v. Young Drug Products Corp.,

463 U.S. 60 (1983) ................................................22

Cardtoons, L.C. v. Major League Baseball

Players Ass’n,

95 F.3d 959 (10th Cir. 1996)................................13

Coca-Cola Co. v. Koke Co. of America,

254 U.S. 143 (1920) ................................................6

Dastar Corp. v. Twentieth Century Fox Film

Corp.,

539 U.S. 23 (2003) ..................................................8

Donaldson v. Read Magazine,

333 U.S. 178 (1948) ..............................................13

Friedman v. Rogers,

440 U.S. 1 (1979) ............................................14, 18

Gordon v. Drape Creative, Inc.,

909 F.3d 257 (9th Cir. 2018)..........................17, 19

iii

TABLE OF AUTHORITIES—Continued

Page(s)

Harley Davidson, Inc. v. Grottanelli,

164 F.3d 806 (2d Cir. 1999) ...........................17, 19

Iancu v. Brunetti,

139 S. Ct. 2294 (2019)..........................................17

Louie Vuitton Malletier S.A. v. Haute Diggity

Dog, LLC,

507 F.3d 252 (4th Cir. 2007)................................19

Matal v. Tam,

137 S. Ct. 1744 (2017)..................................6, 8, 15

Mattel, Inc. v. MCA Records, Inc.,

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

Panavision International, L.P. v. Toeppen,

141 F.3d 1316 (9th Cir. 1998)..............................11

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

469 U.S. 189 (1985) ............................................5, 9

Parker Drilling Management Services, Ltd. v.

Newton,

139 S. Ct. 1881 (2019)..........................................21

Qualitex Co. v. Jacobson Products Co.,

514 U.S. 159 (1995) ..............................................11

In re R.M.J.,

455 U.S. 191 (1982) ........................................13, 18

Rogers v. Grimaldi,

875 F.2d 994 (2d Cir. 1989) ................. 4, 16, 17, 18

Ross v. Blake,

578 U.S. 632 (2016) ..............................................12

iv

TABLE OF AUTHORITIES—Continued

Page(s)

San Francisco Arts & Athletics, Inc. v. United

States Olympic Commission,

483 U.S. 522 (1987) ............................ 13, 14, 18, 19

Singleton v. Bolton,

99 Eng. Rep. 661 (K.B. 1783) ................................9

Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763 (1992) ..............................................10

United States v. Alvarez,

567 U.S. 709 (2012) ........................................13, 15

United We Stand America, Inc. v. United We

Stand, America New York, Inc.,

128 F.3d 86 (2d Cir. 1997) ...................................22

Virginia State Board of Pharmacy v. Virginia

Citizens Consumer Council, Inc.,

425 U.S. 748 (1976) ..............................................14

STATUTES

15 U.S.C. § 1114(1)(a) .........................................10, 12

15 U.S.C. § 1125(a)(1) ...............................................10

15 U.S.C. § 1125(a)(1)(A) ..........................................12

15 U.S.C. § 1125(c) ....................................................10

15 U.S.C. § 1125(c)(2)(B) ...........................................11

15 U.S.C. § 1125(c)(2)(C) ...........................................11

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

15 U.S.C. § 1125(c)(3)(A)(ii) ................................21, 22

15 U.S.C. § 1125(c)(3)(C) ................................. 3, 21, 22

v

TABLE OF AUTHORITIES—Continued

Page(s)

Pub. L. No. 79-489, 60 Stat. 427 (1946)

(codified at 15 U.S.C. § 1127) ................................9

OTHER AUTHORITIES

Brad Adgate, Agencies Agree; 2021 Was a

Record Year for Ad Spending, With More

Growth Expected in 2022, Forbes (Dec. 8,

2021), https://www.forbes.com/sites/

bradadgate/2021/12/08/agencies-agree2021-was-a-record-year-for-ad-spendingwith-more-growth-expected-in-2022 .....................7

Marisa Dellatto, The 13 Best and Funniest

Superbowl Commercials of All Time, N.Y.

Post (Feb. 14, 2022), https://nypost.com/

article/the-10-best-and-funniest-superbowl-commercials-of-all-time/ .............................22

H.R. Rep. No. 104-374 (1995) .............................10, 11

Neal A. Hoopes, Reclaiming the Primary

Significance Test: Dictionaries, Corpus

Linguistics, and Trademark Genericide, 54

Tulsa L. Rev. 407 (2019) ........................................7

Robert N. Klieger, Trademark Dilution: The

Whittling Away of the Rational Basis for

Trademark Protection, 58 U. Pitt. L. Rev.

789 (1997) ...............................................................6

Leading Advertisers Worldwide in 2021, By

Ad Spending, Statista (Sept. 29, 2022),

https://www.statista.com/statistics/275446/

ad-spending-of-leading-advertisers-in-theus/ ...........................................................................7

vi

TABLE OF AUTHORITIES—Continued

Page(s)

Mark A. Lemley & Eugene Volokh, Freedom

of Speech and Injunctions in Intellectual

Property Cases, 48 Duke L.J. 147 (1998) ............15

J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition

(5th ed. Dec. 2022 update) ................... 5, 6, 8, 9, 13

Press Release, Interbrand Launches Best

Global Brands 2022, Interbrand (Nov. 3,

2022), https://interbrand.com/newsroom/

interbrand-launches-best-global-brands2022/. ......................................................................7

Restatement (Third) of Unfair Competition

(1995) ............................................................5, 6, 10

Franklin D. Roosevelt, Address Delivered at

Savannah, Georgia: “The American

March of Progress” (Nov. 18, 1933), in 2

The Public Papers and Addresses of

Franklin D. Roosevelt 489 (Samuel I.

Rosenman ed., 1938) ..............................................4

S. Rep. No. 79-1333 (1946) .............................. 9, 10, 12

INTEREST OF AMICI CURIAE1

The Chamber of Commerce of the United States of

America is the world’s largest business federation. It

represents 300,000 direct members and indirectly

represents the interests of more than three million

companies and professional organizations of every

size, in every industry, from every region of the

country. An important function of the Chamber is to

represent the interests of its members in matters

before Congress, the Executive Branch, and the

courts. To that end, the Chamber regularly files

amicus curiae briefs in cases raising issues of concern

to the Nation’s business community.

The National Association of Manufacturers (NAM)

is the largest manufacturing association in the United

States, representing small and large manufacturers

in every industrial sector and in all 50 states.

Manufacturing employs more than 12.9 million men

and women, contributes over $2.8 trillion to the U.S.

economy annually, has the largest economic impact of

any major sector, and accounts for more than half of

all private sector research and development in the

Nation. The NAM is the voice of the manufacturing

community and the leading advocate for a policy

agenda that helps manufacturers compete in the

global economy and create jobs across the United

States.

Many of amici’s members are trademark owners

who have devoted substantial resources to building—

1

No counsel for a party authored this brief in whole or in

part. No party, counsel for a party, or person or entity other than

amici curiae, their members, and their counsel made a monetary

contribution intended to fund the preparation or submission of

this brief.

2

and protecting—the goodwill and reputation

associated with their products and trademarks. In

doing so, they have long relied on the strong federal

protections for those marks, which have historically

secured to these owners, and not their imitating

competitors, the ability to reap the rewards of their

investment in high-quality, desirable products and

services. Amici file this brief to highlight the

destabilizing effect of the Ninth Circuit’s refusal to

apply the Lanham Act’s statutory text to ordinary

commercial trademark infringement in these

circumstances, and to explain why the Ninth Circuit’s

First Amendment concerns do not justify rewriting

the Act to create the pro-infringer rule that the court

adopted.

The destabilizing effects of the Ninth Circuit’s

decision are no laughing matter.

INTRODUCTION AND

SUMMARY OF ARGUMENT

The Ninth Circuit’s decision in this case distorts

two separate statutory schemes—the Lanham Act

and the Federal Trademark Dilution Act (FTDA)—

that are critical to protecting both trademark owners

and consumers from abusive and misleading market

conduct, and to promoting economic stability and

growth. The court did so, moreover, based on an

atextual analysis that rests on a severe

misunderstanding of the First Amendment interests

and doctrine the court purported to advance. This

Court should reverse.

Trademark owners and customers alike depend on

the ability of trustworthy trademarks to identify the

source of products and services in the market.

Owners invest vast resources in developing and

3

protecting their trademarks, so that consumers can

identify and buy their products or services—confident

that they are getting what they want, and not the

work of an imitating competitor. Federal trademark

law has long recognized and supported these

important functions, giving trademark owners tools

to protect against the infringement and dilution of the

marks on which they and their customers rely.

The Ninth Circuit’s decision in this case upends

those critical protections.

The Lanham Act’s

infringement prohibitions are explicitly confined to

confusing, misleading, and deceptive commercial

uses—a rule that steers the Act clear of any First

Amendment concerns.

But the Ninth Circuit

disregarded those textual limits and held that the

First Amendment establishes an effectively

insurmountable privilege for ordinary commercial

infringement, so long as the infringing use is

“humorous” or contains some bit of “expression.” This

rule has no basis in the Lanham Act or First

Amendment, and would destabilize the trademark

system critical to the nation’s economic fabric.

The Ninth Circuit’s analysis of the dilution claim

in this case is equally flawed. To protect First

Amendment freedoms, the FTDA, as modified by the

Trademark Dilution Revision Act (TDRA), contains

several express exemptions for dilutive uses. See, e.g.,

15 U.S.C. § 1125(c)(3)(A), (C) (protecting “fair use”

and “noncommercial use” from liability). But the

Ninth Circuit made a hash of these express provisions

by holding that any “humorous” use automatically

qualifies as “noncommercial,” and is therefore

immune from federal trademark dilution claims.

Because that reading of the statute departs from the

4

statutory text without any basis in the First

Amendment, the Court should reject it as well.

Federal trademark law’s existing protections leave

ample room for whimsical products, humor, and

creativity. But “[p]oetic license is not without limits.”

Rogers v. Grimaldi, 875 F.2d 994, 997 (2d Cir. 1989).

When whimsy is weaponized through imitation to

exploit the goodwill and reputation associated with

another’s trademark—here, by VIP’s supposedly

“humorous” imitation of Jack Daniel’s iconic, centuryold mark to market poop-themed dog toys—neither

federal law nor the Constitution requires a thumb on

the scale favoring those abusive tactics.

Americans are known for their sense of humor.2

And businesses, like individuals, would do well to

take a joke. But giving businesses a free pass to

capitalize on hard-earned trademarks—at the

expense of both the marks’ owners and the customers

who trust those marks and related products—merely

by introducing some element of humor into spinoff

goods not only would contravene the express terms of

the statutes at issue, but would deeply destabilize an

economic system that is rightly the envy of the world.

ARGUMENT

I. TRADEMARK PROTECTIONS SERVE VITAL

INTERESTS IN THE MARKETPLACE

Trademark protections have long served two

complementary and important aims: They foster

2

See, e.g., Franklin D. Roosevelt, Address Delivered at

Savannah, Georgia: “The American March of Progress” (Nov. 18,

1933), in 2 The Public Papers and Addresses of Franklin D.

Roosevelt 489, 491 (Samuel I. Rosenman ed., 1938) (“[T]he

overwhelming majority of Americans are possessed of two great

qualities—a sense of humor and a sense of proportion.”).

5

competition by “secur[ing] to the owner of the mark

the goodwill of his business,” and they “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). Trademark law has

long furthered these “dual goals” through its focus on

conduct that is likely to confuse, mislead, or deceive

consumers.

See, e.g., 1 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition

§ 2:2 (5th ed. Dec. 2022 update) (McCarthy). And

trademark owners, in turn, have relied on that law by

devoting increasingly vast resources to developing,

strengthening, and protecting the marks that have

come to define their businesses.

A. Trademarks Have Become A Cornerstone

Of The Modern Economy, For Both

Trademark Owners And Consumers

Originally, trademarks served as a “very personal

symbol of a single workman,” the main function of

which was to “trace defective merchandise back to the

workman.”

1 McCarthy § 5:1; see Restatement

(Third) of Unfair Competition § 9 cmt. b (1995)

(Restatement) (discussing first widespread use of

trademarks in medieval guild systems).

But as geographic markets expanded and

economies grew larger and more complex, “a new

function” for trademarks emerged: they “came to

function as an important instrument of advertising.”

Restatement § 9 cmts. b, c. With face-to-face dealings

between artisans and their customers waning and

distant transactions between faraway producers and

buyers rising, trademarks became a primary “means

of communication between otherwise unknown or

anonymous producers and their prospective

6

customers.”

Id. cmt. c; see Robert N. Klieger,

Trademark Dilution: The Whittling Away of the

Rational Basis for Trademark Protection, 58 U. Pitt.

L. Rev. 789, 790 (1997) (“Where . . . consumers do not

know or even care to know the exact origin of goods or

services bearing a particular trademark, trademarks

serve as markers of consistent source and quality.”).

Trustworthy trademarks allow such customers to

make informed purchasing decisions based not only

on the reputation of the “immediate vendor,” but also

of the original producer whose product bears that

mark. Restatement § 9 cmt. b.

Trademarks have thus become “indispensable,”

“essential business assets” in the modern economy.

Klieger, supra, at 790.

They help consumers

“distinguish a particular [producer’s] goods from

those of others.” Matal v. Tam, 137 S. Ct. 1744, 1751

(2017) (citation omitted). They “‘designate[] the goods

as the product of a particular trader’ and ‘protect[] his

good will against the sale of another’s products as

his.’”

Id. (citation omitted).

And they “help[]

consumers identify goods and services that they wish

to purchase, as well as those they want to avoid.” Id.;

see also 1 McCarthy § 3:2 (summarizing functions

that trademarks serve, including source designation,

advertising, and visually representing the “good will

and reputation that a business has built up in a

product or service”).

As a result, for many of America’s most wellknown businesses, trademarks are among the most—

if not the most—valuable assets they own, frequently

more valuable than “physical assets and other forms

of intellectual property.” Klieger, supra, at 790-91 &

n.6. As this Court said of the Coca-Cola mark a

century ago, “[i]t hardly would be too much to say that

7

the drink characterizes the name as much as the

name the drink.” Coca-Cola Co. v. Koke Co. of Am.,

254 U.S. 143, 146 (1920). Indeed, the numbers bear

all this out: A leading source recently estimated that

the value of Apple’s brand alone was nearly half a

trillion dollars ($482 billion), followed by Microsoft’s

(at $278 billion) and Amazon’s (at almost $275

billion). See Press Release, Interbrand Launches Best

Global Brands 2022, Interbrand (Nov. 3, 2022),

https://interbrand.com/newsroom/interbrand-launchesbest-global-brands-2022/. The Jack Daniel’s brand is

worth more than $7 billion. See id. And even for

lesser-known brands, trademarks are often among

the most valuable company assets. For big and small

owners alike, trademarks are core to doing business

in modern commerce.

Given the importance of trademarks, it is no

surprise that companies typically devote extensive

resources to protecting them.

Indeed, “some

companies spend billions of dollars a year promoting

and protecting their brand names.” Neal A. Hoopes,

Reclaiming

the

Primary

Significance

Test:

Dictionaries, Corpus Linguistics, and Trademark

Genericide, 54 Tulsa L. Rev. 407, 408 (2019). Total

U.S. ad spending reached $285 billion in 2021, and

likely continued to rise after that.

See Brad

Adgate, Agencies Agree; 2021 Was a Record Year

for Ad Spending, With More Growth Expected in 2022,

Forbes (Dec. 8, 2021), https://www.forbes.com/sites/

bradadgate/2021/12/08/agencies-agree-2021-was-a-recordyear-for-ad-spending-with-more-growth-expected-in2022. Individual companies alone spent billions

building the strength of the trademarks that have

come to define their products.

See Leading

Advertisers Worldwide in 2021, By Ad Spending,

8

Statista (Sept. 29, 2022), https://www.statista.com/

statistics/275446/ad-spending-of-leading-advertisersin-the-us/ (showing $4.8 billion in ad spending by

Amazon, $3 billion by Disney, and $2.7 billion by

Apple). Both in theory and in practice, therefore,

strong trademarks—resulting from hard work, skill,

and substantial resources—are a critical feature of

modern American enterprise.

B. Trademark Law Has Long Recognized And

Protected These Interests

For centuries, trademark law has ensured that the

mark owners investing these resources—rather than

imitating competitors—receive the fruits of their

labor. See Dastar Corp. v. Twentieth Century Fox

Film Corp., 539 U.S. 23, 34 (2003); 1 McCarthy § 5:2.

But it is not only trademark owners who benefit from

these protections; trademark law also rests “on a

policy of protection of customers from mistake and

deception.” 4 McCarthy § 24:72. Indeed, these aims

are both related and complementary: Trademark law

protects customers as well as trademark owners by

ensuring that products bearing a given mark, in fact,

come from the owner of that mark—not someone else

seeking to turn a profit based on the owner’s goodwill

and reputation. By focusing on commercial conduct

that is likely to confuse, mislead, or deceive,

trademark law ensures both that consumers know

what they are getting, and that trademark owners—

not infringers—get what they deserve.

For much of its history, trademark law was the

province of state and common law. See Matal, 137 S.

Ct. at 1751. Early common law courts described

trademark actions as sounding in fraud against the

trademark owner, whose potential customers were

9

diverted by misuse of its mark. “By 1783, Lord

Mansfield could state that ‘if the defendant had sold

a medicine of his own under the plaintiff’s name or

mark, that would be a fraud for which an action would

lie.’” 1 McCarthy § 5:2 (quoting Singleton v. Bolton,

99 Eng. Rep. 661 (K.B. 1783)).

By the late-nineteenth and early-twentieth

centuries, “‘fraud’ in the strict sense was no longer

required,” and the focus became “the likely confusion

of buyers.” Id. Even then, courts emphasized the

dual function of these legal protections:

The object or purpose of the law in protecting

trade-marks as property, is two fold: first, to

secure to him who has been instrumental in

bringing into market a superior article of

merchandise, the fruit of his industry and skill;

second, to protect the community from

imposition, and furnish some guaranty that an

article, purchased as the manufacture of one

who has appropriated to his own use a certain

name, symbol or device as a trademark is

genuine.

Boardman v. Meriden Brittania Co., 35 Conn. 402,

413-14 (1868).

With the Lanham Act—passed in 1946—Congress

codified these aims based on its judgment that “a

sound public policy requires that trademarks should

receive nationally the greatest protection that can be

given them.” Park ’N Fly, 469 U.S. at 193 (quoting S.

Rep. No. 79-1333, at 6 (1946)). Since then, the Act has

done so “by making actionable the deceptive and

misleading use of marks” and “prevent[ing] fraud and

deception” in “commerce.” Lanham Act, Pub. L. No.

79-489, § 45, 60 Stat. 427, 444 (1946) (codified at 15

10

U.S.C. § 1127) (emphasis added). To that end, the Act

prohibits any (1) use of a registered trademark; (2) “in

commerce”; (3) that is “likely to cause confusion, or to

cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a);

see id. § 1125(a)(1) (similar for unregistered marks).

As a result, liability under the Act is always limited

to commercial uses of a mark that are likely to

confuse, mislead, or deceive.

Consistent with the background principles of

trademark law described above, the Act was designed

with the “twofold” nature of trademark protection in

mind: “One is to protect the public so it may be

confident that, in purchasing a product bearing a

particular trade-mark which it favorably knows, it

will get the product which it asks for and wants to

get.” S. Rep. No. 79-1333, at 3. “Secondly, where the

owner of a trade-mark has spent energy, time, and

money in presenting to the public the product, he is

protected in his investment from its misappropriation

by pirates and cheats.” Id. Together, these purposes

embody “the well-established rule of law protecting

both the public and the trade-mark owner.” Id.; see

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,

781-84 & n.15 (1992) (Stevens, J., concurring in the

judgment).

Further recognizing trademarks’ immense value

to their owners, Congress has separately enacted

distinct protections against trademark “dilution.” 15

U.S.C. § 1125(c). These protections, codified by the

FTDA and TDRA, respond to the problem that, even

without likely consumer confusion, the unauthorized

use of a famous trademark still risks “whittling away”

the mark’s “commercial value.” Restatement § 25

cmt. b (citation omitted); see H.R. Rep. No. 104-374,

at 3 (1995) (dilution “reduces the public’s perception

11

that the mark signifies something unique, singular or

particular”).

Protections against dilution thus “recognize[] the

substantial investment the owner has made in the

mark and the commercial value and aura of the mark

itself,” and therefore protect “both from those who

would appropriate the mark for their own gain.” H.R.

Rep. No. 104-374, at 3. As relevant here, trademark

dilution can occur by “tarnishment,” which involves a

use that “harms the reputation of the famous mark,”

15 U.S.C. § 1125(c)(2)(C), usually by “improperly

associat[ing it] with an inferior or offensive product or

service,” Panavision Int’l, L.P. v. Toeppen, 141 F.3d

1316, 1326 n.7 (9th Cir. 1998).3

In sum, Congress has carefully crafted a

trademark regime that simultaneously protects

consumers’ interests in truthful commercial

information, on one hand, and trademark owners’

interest in securing the benefits of their hard-earned

goodwill, on the other. See Qualitex Co. v. Jacobson

Prods. Co., 514 U.S. 159, 163-64 (1995). The Lanham

Act does so by prohibiting the commercial use of

confusing, misleading, and deceptive marks. And

anti-dilution law more broadly protects mark owners’

investment in their products, services, and reputation

against erosion by imitators seeking to free-ride on

those efforts.

In all cases, “[t]o protect trademarks . . . is to protect the public from deceit, to foster

3

Dilution can also occur through “blurring,” which involves a

use that “impairs the distinctiveness of the famous mark.” 15

U.S.C. § 1125(c)(2)(B). For instance, “Tylenol snowboards” or

“Harry Potter” dry cleaners would “weaken the ‘commercial

magnetism’ of these marks and diminish their ability to evoke

their original associations.” Mattel, Inc. v. MCA Recs., Inc., 296

F.3d 894, 903 (9th Cir. 2002) (citation omitted).

12

fair competition, and to secure to the business

community the advantages of reputation and good

will by preventing their diversion from those who

have created them to those who have not.” S. Rep. No.

79-1333, at 4.

II. THE NINTH CIRCUIT’S REFUSAL TO

APPLY THE LANHAM ACT TO ORDINARY

COMMERCIAL INFRINGEMENT BASED ON

FIRST

AMENDMENT

CONCERNS

IS

MISGUIDED

The Ninth Circuit’s decision in this case bulldozes

Congress’s reticulated statutory regime for

trademarks, starting with the Lanham Act. The

Lanham Act imposes liability for conduct that

infringes a trademark by using that mark in a way

that is “likely to cause confusion, or to cause mistake,

or to deceive.” 15 U.S.C. §§ 1114(1)(a), 1125(a)(1)(A).

The Ninth Circuit, however, departed from that

unambiguous text and created its own, narrower test

for liability—which insulates infringers from liability

even in cases of certain customer confusion involving

ordinary consumer products—after vaguely gesturing

at the First Amendment. Pet. App. 29a-33a.

Of course, a major flaw in that approach is that the

Ninth Circuit “made no attempt to ground its analysis

in the [statutory] language.” Ross v. Blake, 578 U.S.

632, 638 (2016); see Pet. Br. 22-28. But its analysis

also lacks any firm grounding in the First

Amendment. And it provides would-be infringers

with a roadmap for infringing trademarks with

impunity simply by claiming that their infringing

uses are designed to be humorous takes on existing

marks. The Ninth Circuit’s erroneous analysis risks

destabilizing the trademark system on which owners

13

have come to rely and, for trademark owners at least,

epitomizes Will Rogers’s saying: “Everything is funny,

as long as it’s happening to someone else.”

A. The First Amendment Does Not Protect

Speech That Confuses And Misleads

Consumers

As discussed, the Lanham Act’s dual goals—

protecting consumers and mark owners—come

together in its focus on prohibiting confusing and

misleading marketplace conduct. This core limitation

operates as a “built-in mechanism[]” for ensuring that

the enforcement of trademark rights under the Act

remains consistent with the First Amendment.

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

Ass’n, 95 F.3d 959, 970 (10th Cir. 1996).

This Court has long made clear that the First

Amendment does not insulate “[f]alse, deceptive, or

misleading advertising” from regulation.

In re

R.M.J., 455 U.S. 191, 200 (1982).

Indeed,

“[m]isleading advertising may be prohibited entirely”

without running afoul of the First Amendment. Id.

at 203. Like the prohibitions on fraud from which

trademark law emerged, see 1 McCarthy § 5:2, “[t]his

governmental power” to regulate misleading

commercial speech has “always been recognized in

this country and is firmly established,” Donaldson v.

Read Magazine, 333 U.S. 178, 190 (1948); see United

States v. Alvarez, 567 U.S. 709, 717 (2012) (plurality

opinion) (noting that the First Amendment has long

permitted the regulation of “fraud”).

And, indeed, the Court has applied these

principles directly to trademark-like protections. In

San Francisco Arts & Athletics, Inc. v. United States

Olympic Commission, 483 U.S. 522 (1987) (SFAA), for

14

example, the plaintiff challenged, under the First

Amendment, certain restrictions on its ability to use

the word “Olympic” in its corporate title, mailings,

and advertisements. Id. at 525-26. The Court

explained that “[t]o the extent that [the law at issue]

regulates confusing uses, it is within normal

trademark bounds. The government constitutionally

may regulate ‘deceptive or misleading’ commercial

speech.” Id. at 535 n.12 (quoting Virginia State Bd.

of Pharmacy v. Virginia Citizens Consumer Council,

Inc., 425 U.S. 748, 771 (1976)).4 Similarly, the Court

has roundly rejected a First Amendment challenge to

state laws protecting trade names—precisely because

“there [wa]s a significant possibility that trade names

w[ould] be used to mislead the public.” Friedman v.

Rogers, 440 U.S. 1, 12-15 (1979).

Members of the Court have returned to these core

principles in later cases. In Matal, for example, the

Court held that a Lanham Act provision prohibiting

the registration of any “disparag[ing]” marks

4

In fact, the law at issue was not limited to “confusing uses.”

See SFAA, 483 U.S. at 535. As a result, unlike in this case, the

Court’s analysis could not end there. Instead, it went on to hold

that, even though the law also applied to non-confusing uses, it

restricted only “[c]ommercial speech,” which “receives a limited

form of First Amendment protection.” Id. (citation omitted).

And because the law, “as with other trademarks,” ensured that

the U.S. Olympic Committee “receive[d] the benefit of its own

efforts so that [it] will have an incentive to continue to produce

a ‘quality product,’ that, in turn, benefits the public,” id. at 537,

it satisfied the “limited” First Amendment protections at issue,

id. at 536 (citation omitted). Here, of course, the Court need not

rely solely on the commercial nature of VIP’s conduct to allay

any First Amendment concerns, as this case involves a

commercial use of Jack Daniel’s trademark that has already

been found confusing to the public. See Pet. App. 69a, 74a.

15

impermissibly discriminated based on viewpoint. See

137 S. Ct. at 1763-65. Four Justices emphasized the

narrowness of that holding, explaining that it

remained “well settled, for instance, that to the extent

a trademark is confusing or misleading the law can

protect consumers and trademark owners.” Id. at

1768 (Kennedy, J., joined by Ginsburg, Sotomayor &

Kagan, JJ., concurring in part and concurring in the

judgment) (emphasis added).

Several Justices

expressed a similar view in Alvarez, which held that

the Stolen Valor Act violated the First Amendment.

Both the concurrence and the dissent in that case

emphasized (as a point of comparison) the easy fit

between the First Amendment and trademark laws,

which “are focused upon commercial and promotional

activities” and “typically require a showing of likely

confusion.” 567 U.S. at 735-36 (Breyer, J., joined by

Kagan, J., concurring in the judgment); see id. at 74344 (Alito, J., joined by Scalia & Thomas, JJ.,

dissenting).

Scholars, too, have concluded that “[t]he strongest

constitutional justification for trademark laws is that,

properly construed, they prevent only commercial

speech that is likely to cause consumer confusion, and

that false or misleading commercial speech can be

restricted.” Mark A. Lemley & Eugene Volokh,

Freedom of Speech and Injunctions in Intellectual

Property Cases, 48 Duke L.J. 147, 221 & n.325 (1998).

As noted above, they highlight, this Court already

“took this view in Friedman v. Rogers.” Id. at 221-22.

Because the Lanham Act’s infringement

provisions reach only misleading commercial speech,

they are generally consistent, and fit comfortably,

with the First Amendment’s protections. In this way,

the Lanham Act itself ensures that trademark

16

protection steers clear of First Amendment concerns.

Thus, in this case, the finding that VIP’s ordinary

commercial use of Jack Daniel’s mark was likely to

confuse consumers, see Pet. App. 62a-74a, should

have been the beginning and the end of the matter.

B. The Ninth Circuit’s Sweeping First

Amendment Exception Is Misguided

Rather than heeding the Lanham Act’s

unambiguous text, the Ninth Circuit relied on an

unnecessarily expansive application of the Second

Circuit’s decision in Rogers v. Grimaldi, 875 F.2d 994

(1989), to hold that the First Amendment insulates

infringers from Lanham Act liability in all but the

most extreme cases, so long as the use of the mark—

however utilitarian or commercial—involves some

bare modicum of expression or humor. See Pet.

App. 29a-33a. That extreme application of Rogers

ignores the Lanham Act’s plain text, and it has no

basis in the First Amendment.

1. Rogers involved a trademark action by the

actress Ginger Rogers, regarding the use of her first

name in the Federico Fellini film Ginger and Fred.

See 875 F.2d at 996-97. As the decision below noted,

Rogers addressed only cases where “artistic

expression is at issue,” Pet. App. 30a (citation

omitted), and further limited its holding to actions

involving the “titles of artistic works,” Rogers, 875

F.2d at 998; see also id. (explaining that “the

expressive element of titles requires more protection

than the labeling of ordinary commercial products”).

In such cases, the Second Circuit opined,

“overextension of Lanham Act restrictions in the area

of titles might intrude on First Amendment values.”

Id. (emphasis added). Based on that possibility, the

17

court believed it was necessary to “construe the Act

narrowly to avoid such a conflict” and balance “the

public interest in avoiding consumer confusion” with

“the public interest in free expression.” Id. at 998-99.

To do so, the court created a two-prong test: The

Lanham Act does not apply to “allegedly misleading

titles using a celebrity’s name” unless (1) “the title has

no artistic relevance to the underlying work

whatsoever”; or (2) “the title explicitly misleads as to

the source or the content of the work.” Id. at 999

(emphasis added).5

Since Rogers, the Second Circuit has limited its

reach, holding that it does not provide special

insulation from liability for “claimed parodic” speech

that is deployed merely to “market competing

services.” Harley Davidson, Inc. v. Grottanelli, 164

F.3d 806, 812-13 (2d Cir. 1999). And while the Ninth

Circuit has taken a more expansive view of Rogers, it

had (until this case) generally limited its application

to cases involving artistically expressive works. See,

e.g., Gordon v. Drape Creative, Inc., 909 F.3d 257, 26569 (9th Cir. 2018) (reviewing the Ninth Circuit’s

development of the Rogers test).

In this case, however, the Ninth Circuit extended

Rogers beyond the context of artistic works, holding

that commercial products containing any “expression”

are immune from Lanham Act liability unless one of

the two Rogers prongs is met. Pet. App. 30a-33a. This

5

Rogers suggested its rule was rooted in constitutional

avoidance. See 875 F.2d at 998-99. But it did not identify any

ambiguity in the Lanham Act that it interpreted to avoid the

constitutional issue it identified. Cf., e.g., Iancu v. Brunetti, 139

S. Ct. 2294, 2301 (2019) (constitutional-avoidance canon “applies

only when ambiguity exists”).

18

decision has no basis in the Lanham Act or the First

Amendment principles the court purported to

advance. In cases like this one—involving obviously

misleading, ordinary commercial products—nothing

like the Rogers rule has any role to play given the

First Amendment guardrails built into the Lanham

Act itself.

First, the Ninth Circuit’s approach here flips the

above First Amendment principles on their head. It

forbids courts from asking whether an allegedly

infringing use is likely to mislead consumers, except

in the narrow cases in which the use does so either

with no relevance to the product or does so explicitly.

Pet. App. 30a-31a.

That gets things exactly

backwards:

The degree of First Amendment

protection to which speech is entitled turns precisely

on the extent to which the speech confuses, misleads,

or deceives. See, e.g., SFAA, 483 U.S. at 535 n.12;

R.M.J., 455 U.S. at 203; Friedman, 440 U.S. at 12-15.6

Second, the Ninth Circuit’s rule has little to do

with the First Amendment concerns that animated

Rogers itself. Rogers acknowledged that it would be

inappropriate to extend its heightened protections for

core artistic expression to “the labeling of ordinary

commercial products.” 875 F.2d at 998. As noted, the

Second Circuit—like others that apply the likelihoodof-confusion test to such products—has abided by that

distinction. See, e.g., Harley Davidson, 164 F.3d at

6

Although the second Rogers prong asks whether use of a

mark is “explicitly misleading,” 875 F.2d at 999, the court did

not point to anything in the Lanham Act or in established First

Amendment doctrine to support its distinction between “explicit”

and “implicit” deceit. Rather, Rogers made it up, based on the

court’s own “balanc[ing]” of “consumer and artistic interests.”

Id. at 999-1000; see Pet. Br. 23-24.

19

812-13; see also, e.g., Louie Vuitton Malletier S.A. v.

Haute Diggity Dog, LLC, 507 F.3d 252, 259-60 (4th

Cir. 2007); Anheuser-Busch, Inc. v. Balducci Publ’ns,

28 F.3d 769, 773 (8th Cir. 1994).

The Ninth Circuit, by contrast, insulates from

liability any misleading product that is in some sense

“expressive,” or that “communicates a ‘humorous

message.’” Pet. App. 31a (citation omitted). But none

of that gives such a product’s seller carte blanche to

rip off another’s product, mislead the public, or

otherwise violate the law. To the contrary, the

Constitution has never given infringers “a First

Amendment right to ‘appropriate[e] to [themselves]

the harvest of those who have sown,’” or to mislead

the public, just because they claim “an expressive, as

opposed to purely commercial, purpose.” SFAA, 483

U.S. at 541 (first alteration in original) (citation

omitted).

2. In the case of core artistic works, like the

Fellini film in Rogers, a mechanical application of the

Lanham Act’s likelihood-of-confusion test in theory

might “fail[] to account for the full weight of the

public’s interest in free expression.” Gordon, 909 F.3d

at 264 (citation omitted). In such a case, an accused

infringer could potentially raise as-applied First

Amendment defenses to enforcement of the Act, and

courts would carefully consider whether the alleged

infringement involves constitutionally protected free

expression beyond the bare appropriation of another’s

trademark. But here, the Court can simply hold that,

where an ordinary consumer product like VIP’s dog

toy is likely to mislead consumers, the Lanham Act

already accords it all the protection to which it is

entitled. See SFAA, 483 U.S. at 535 n.12, 541.

20

To be sure, everyone likes a good joke. But

capitalizing on another’s hard-earned trademark is no

laughing matter. The Ninth Circuit’s new rule

provides a blueprint for avoiding infringement

liability for uses that courts have long held unlawful.

See, e.g., Pet. Br. 25-26, 44-46. But funny or not, such

uses can have a dramatic effect on the buying public—

confusing consumers as to whether a good is produced

by the trademark holder and alienating consumers

who may believe that certain uses are in poor taste.

The Ninth Circuit’s new rule thus destabilizes the

trademark system on which much of modern

commerce relies. See supra at 5-8. If any infringer

can exploit the First Amendment’s fullest protections

simply by invoking parody or humor, it is unclear

what misconduct could not be justified with a bit of

creative lawyering. The very act of infringement

could be refashioned as a commentary on

consumerism, or a critique of intellectual-property

law itself. That approach, as the district court noted

here, shields all but the worst—or at least clumsiest—

infringers from liability. See Pet. App. 18a.

The Ninth Circuit’s decision below places an

unnecessary, leaden thumb on the scale favoring

infringers whose consumer goods attempt to say

something funny (or, perhaps, say anything at all)

while copying an established trademark. Because

nothing in the Lanham Act or First Amendment

requires this privilege against trademark liability,

the Court should reject the Ninth Circuit’s rule. It

should instead hold that, in cases like this one, courts

should merely apply the Lanham Act as written.

21

III. THE NINTH CIRCUIT’S TRADEMARKDILUTION

ANALYSIS

IS

EQUALLY

FLAWED

The Ninth Circuit also held VIP immune from

liability for trademark dilution under Section 1125(c)

because its product “convey[ed] a humorous

message.” See Pet. App. 33a-34a. The court invoked

an exclusion from the trademark dilution statute for

“[a]ny noncommercial use of a mark,” 15 U.S.C.

§ 1125(c)(3)(C), which the court interpreted as

incorporating this Court’s “commercial speech”

doctrine under the First Amendment, Pet. App. 33a.

The court thus seemed to believe that anything

“humorous” qualified as “noncommercial.” Id.

That theory, however, makes a hash of both

Section 1125(c) and the First Amendment law that

the statute purportedly incorporates. As for the

statute, the court’s sweeping interpretation of the

“noncommercial use” exclusion renders other

statutory exclusions meaningless. See Pet. Br. 41-43.

For example, the statute separately excludes from

liability “[a]ny fair use” of a mark—including

“parody[]”—as long as it is not a “designation of source

for the person’s own goods or services.” 15 U.S.C.

§ 1125(c)(3)(A)(ii). Interpreting the exclusion for

“noncommercial use” to encompass anything that

conveys a “humorous message,” Pet. App. 33a, would

leave the separate fair-use parody exclusion with no

work to do. This alone should have given the Ninth

Circuit pause before adopting its expansive reading of

the “noncommercial use” exclusion, as it “violat[es]

the ‘cardinal principle’ of interpretation that courts

‘must give effect, if possible, to every clause and word

of a statute.’” Parker Drilling Mgmt. Servs., Ltd. v.

Newton, 139 S. Ct. 1881, 1890 (2019) (citation

22

omitted). Moreover, reading the “noncommercial”

exclusion to encompass all humor also reads

important limits on the fair-use defense out of the

statute. While fair use in the form of parody loses its

protection when used as a “designation of source for

the person’s own goods or services,” see 15 U.S.C.

§ 1125(c)(3)(A)(ii),7 there is no such limit on the

“noncommercial” exclusion, see id. § 1125(c)(3)(C).

Interpreting the latter to swallow the former

effectively nullifies that limitation.

Even assuming that Section 1125(c)(3)(C) protects

trademark dilution that is not “commercial speech”

under the First Amendment, see Pet. App. 33a,

it cannot be true as a First Amendment matter

that

anything

humorous

is

automatically

“noncommercial.” Advertisements are quintessential

commercial speech. See Bolger v. Young Drug Prods.

Corp., 463 U.S. 60, 66-67 (1983). Of course, they are

often funny, too.

See, e.g., Marisa Dellatto,

The 13 Best and Funniest Superbowl Commercials of

All

Time,

N.Y.

Post

(Feb.

14,

2022),

https://nypost.com/article/the-10-best-and-funniestsuper-bowl-commercials-of-all-time/. But courts still

routinely treat humorous speech as commercial. See,

e.g., Bad Frog Brewery, Inc. v. New York State Liquor

Auth., 134 F.3d 87, 94 (2d Cir. 1998) (rejecting claim

that label was “[n]oncommercial” because it

“communicate[d] only a ‘joke’”); United We Stand Am.,

Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86,

91 (2d Cir. 1997) (rejecting “that the use of a mark in

connection with humorous publication cannot be an

infringement,” and that “‘editorial or artistic’ and

7

Indeed, the district court in this case rejected VIP’s fair-use

parody defense on just this ground. See Pet. App. 104a-05a.

23

‘commercial’ are mutually exclusive categories”

(citation omitted)); cf. Board of Trs. of the State Univ.

of N.Y. v. Fox, 492 U.S. 469, 475 (1989) (Scalia, J.)

(explaining that speech can be “commercial speech

notwithstanding the fact that [it] contain[s]

discussions of important public issues,” and that

“advertising which ‘links a product to a current public

debate’” is not per se “entitled to the constitutional

protection afforded noncommercial speech” (citation

omitted)).

There is no reason to treat trademarks differently.

To the extent the First Amendment affords lesser

protection to speech that is deemed commercial

rather than noncommercial, the Court should reject a

dilution-specific rule, like the Ninth Circuit’s, that

would dramatically narrow what counts as

“commercial” in this context.

If government

regulation of advertisements is lawful because that

speech (however funny) remains commercial, the

same rule should apply evenhandedly to trademarks,

too: Slapping a joke on a dilutive consumer product

does not, by definition, make it “noncommercial” for

First Amendment purposes.

Ultimately, the Ninth Circuit’s truncated analysis

departs from both Section 1125(c)(3) and the First

Amendment principles it incorporates. And if allowed

to stand, the decision below will deal a significant

blow to companies that have invested enormous

resources in cultivating specific brand images.

Indeed, by tethering its analysis to whether the use is

“humorous,” the decision below will encourage the

worst

forms

of

trademark

tarnishment.

Offensiveness and crude humor can be two sides of

the same coin—the more offensive the use, the

funnier it may be to some. Insulating dilutive uses

24

because they are humorous will only encourage

dilutors to make their uses as offensive as possible in

hopes that someone will find them funny. See, e.g.,

Pet. Br. 44-46. Nothing in the statute or the First

Amendment supports that result. And, while Mark

Twain may be right that humor is “mankind’s

greatest blessing,” humor is no basis to vitiate

trademark protections that have long been critical to

the stability and growth of American enterprise.

CONCLUSION

The judgment of the court of appeals should be

reversed.

Respectfully submitted,

TARA S. MORRISSEY

JORDAN L. VON BOKERN

U.S. CHAMBER

LITIGATION CENTER

1615 H Street, NW

Washington, DC 20062

ERICA KLENICKI

MICHAEL A. TILGHMAN II

THE NAM LEGAL CENTER

733 Tenth Street, NW

Suite 700

Washington, DC 20001

GREGORY G. GARRE

Counsel of Record

BLAKE E. STAFFORD

JORDAN R. GOLDBERG

LATHAM & WATKINS LLP

555 Eleventh Street, NW

Suite 1000

Washington, DC 20004

(202) 637-2207

gregory.garre@lw.com

Counsel for Amici Curiae

January 18, 2023