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

Supreme Court briefFeb 23, 2023

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Text

No. 22-148

In the

Supreme Court of the United States

JACK DANIEL’S PROPERTIES, INC.,

Petitioner,

VIP PRODUCTS LLC,

Respondent.

On Writ of Certiorari to the

United States Court of A ppeals for the Ninth Circuit

BRIEF OF AMICUS CURIAE ELECTRONIC

FRONTIER FOUNDATION IN SUPPORT

OF RESPONDENT

Corynne McSherry

Counsel of Record

Cara Gagliano

David Greene

Electronic Frontier Foundation

815 Eddy Street

San Francisco, California 94109

(415) 436-9333

corynne@eff.org

Attorneys for Amicus Curiae

Electronic Frontier Foundation

318360

(800) 274-3321 • (800) 359-6859

TABLE OF CONTENTS

Page

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

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii

STATEMENT OF IDENTITY AND INTEREST

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

I N T RODUC T ION A N D SU M M A RY OF

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

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

Rogers and Its Progeny Help Ensure

Trademark Law Does Not Unduly Intrude

on Protected Speech . . . . . . . . . . . . . . . . . . . . . . . 3

A. The Lanham Act Is Subject to First

Amendment Scrutiny . . . . . . . . . . . . . . . . . . . 3

B. T he Fi rst A mendment P rot ects

Fa cet iou s Sp e e ch, I nclud i ng

Parodies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

C. T he Fi rst A mendment P rot ects

Fa cet ious Speech Involv i ng

Trademarks . . . . . . . . . . . . . . . . . . . . . . . . . . 5

II. The Rogers Test Is a Vital Safeguard for

Political Expression . . . . . . . . . . . . . . . . . . . . . . . . 7

Table of Contents

Page

A. Trademarks Are a Key Element in

Modern Political Activism . . . . . . . . . . . . . . . 7

B. Rogers Strikes the Right Balance

Between Trademark Rights and

Constitutional Rights . . . . . . . . . . . . . . . . . . 16

C. The Rogers Test Offers Essential

Practical Protections . . . . . . . . . . . . . . . . . . 18

T he Roge r s Te st I nc r e a s e s

Predictability . . . . . . . . . . . . . . . . . . . . 19

2. T he Rogers Test Decrea ses

Litigation Costs . . . . . . . . . . . . . . . . . . . 22

D. The Rogers Test Should Not Have a

Non-Commerciality Requirement or

Hinge on the Expressive Medium . . . . . . . 26

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

iii

TABLE OF CITED AUTHORITIES

Page

CASES

AHP Subsidiary Holding Co. v. Stuart Hale Co.,

1 F.3d 611 (7th Cir. 1993) . . . . . . . . . . . . . . . . . . . . . . 23

Americans for Prosperity Found. v. Bonta,

___ U.S. ___, 141 S. Ct. 2373 (2021) . . . . . . . . . . . . . 17

Berger v. Battaglia,

779 F.2d 992 (4th Cir. 1985) . . . . . . . . . . . . . . . . . . . . . 5

Brown v. Elec. Arts, Inc.,

724 F.3d 1235 (9th Cir. 2013) . . . . . . . . . . . . . . . . 21, 24

Brown v. Entm’t Merchants Ass’n,

564 U.S. 786 (2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Campbell v. Acuff-Rose Music, Inc.,

510 U.S. 569 (1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

Cardtoons, L.C. v. Major League Baseball

Players Ass’n,

95 F.3d 959 (10th Cir. 1996) . . . . . . . . . . . . . . . . . . . . . 6

Cliffs Notes, Inc. v. Bantam Doubleday Dell

Pub. Grp., Inc.,

886 F.2d 490 (2d Cir. 1989) . . . . . . . . . . . . . . . . . . . . . 21

Cohen v. California,

403 U.S. 15 (1971) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

Cited Authorities

Page

Country Floors, Inc. v. P’ship Composed of

Gepner & Ford,

930 F.2d 1056 (3d Cir. 1991) . . . . . . . . . . . . . . . . . . . . 23

CPC Int’l, Inc. v. Skippy Inc.,

214 F.3d 456 (4th Cir. 2000) . . . . . . . . . . . . . . . . . . . . 16

ETW v. Jireh,

332 F.3d 915 (6th Cir. 2003) . . . . . . . . . . . . . . . . . . . . 18

Falwell v. Flynt,

805 F.2d 484 (4th Cir. 1986) . . . . . . . . . . . . . . . . . . . . . 4

Fisher v. Dees,

794 F.2d 432 (9th Cir. 1986) . . . . . . . . . . . . . . . . . . . . . 5

Hustler Magazine v. Falwell,

485 U.S. 46 (1988) . . . . . . . . . . . . . . . . . . . . . . 2, 4, 5, 18

Interstellar Starship Servs., Ltd. v. Epix Inc.,

184 F.3d 1107 (9th Cir. 1999) . . . . . . . . . . . . . . . . . . . 23

Koch Indus., Inc. v. Does,

No. 2:10-CV-1275, 2011 WL 1775765

(D. Utah May 9, 2011) . . . . . . . . . . . . . . . . . . . . . . . . . 19

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

811 F.2d 26 (1st Cir. 1987) . . . . . . . . . . . . . . . . . . . 6, 18

Levinsky’s Inc., v. Wal-mart Stores, Inc.,

127 F.3d 122 (1st Cir. 1997) . . . . . . . . . . . . . . . . . . . . . 5

Cited Authorities

Page

Louis Vuitton Malletier S.A. v.

Warner Bros. Ent. Inc.,

868 F. Supp. 2d 172 (S.D.N.Y. 2012) . . . . . . . . . . . . . 24

Matal v. Tam,

___ U.S. ___ , 137 S. Ct. 1744 (2017) . . . . . . . . . . . . . . 3

Mattel Inc. v. Walking Mountain Prods.,

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

Matter of Callaghan,

238 W. Va. 495 (2017) . . . . . . . . . . . . . . . . . . . . . . . . . . 4

McCullen v. Coakley,

573 U.S. 464 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Mink v. Knox,

613 F.3d 995 (10th Cir. 2010) . . . . . . . . . . . . . . . . . . . . 5

Nat’l Inst. of Family & Life Advocates v.

Becerra,

___ U.S. ___, 138 S. Ct. 2361 (2018) . . . . . . . . . . . . 17

New Times, Inc. v. Isaacks,

146 S.W.3d 144 (Tex. 2004) . . . . . . . . . . . . . . . . . . . . . . 4

New York Times v. Sullivan,

376 U.S. 254 (1964) . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Nike, Inc. v. “Just Did It” Enter.,

6 F.3d 1225 (7th Cir. 1993) . . . . . . . . . . . . . . . . . . . 6, 18

Cited Authorities

Page

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

786 F.3d 316 (4th Cir. 2015) . . . . . . . . . . . . . . . . . . . . 20

Rebellion Devs. Ltd. v. Stardock Ent., Inc.,

No. 12-12805, 2013 WL 1944888

(E.D. Mich. May 9, 2013) . . . . . . . . . . . . . . . . . . . . . . 24

Reed v. Town of Gilbert,

576 U.S. 155 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Smith v. Wal-Mart Stores, Inc.,

537 F. Supp. 2d 1302 (N.D. Ga. 2008) . . . . . . . . . 25, 26

Stewart Surfboards, Inc. v.

Disney Book Grp., LLC,

No. CV 10–2982, 2011 WL 12877019

(C.D. Cal. May 11, 2011) . . . . . . . . . . . . . . . . . . . . . . . 25

Texas v. Johnson,

491 U.S. 397 (1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Tinker v. Des Moines Indep. Community

Sch. Dist.,

393 U.S. 503 (1969) . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

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

683 F.3d 1266 (11th Cir. 2012) . . . . . . . . . . . . . . . . . . 18

Utah Lighthouse Ministry v. Found. for

Apologetic Info. & Research,

527 F.3d 1045 (10th Cir. 2008) . . . . . . . . . . . . . . . . . . 18

vii

Cited Authorities

Page

W. Va. State Bd. of Educ. v. Barnette,

319 U.S. 624 (1943) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Walker v. Tex. Div., Sons of Confederate

Veterans, Inc.,

576 U.S. 200 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

OTHER AUTHORITIES

U.S. Const. Amend. I . . . . . . . . . . . . 2, 3, 4, 5, 6, 17, 24-25

Alan Sokal, A Physicist Experiments with

Cultural Studies, Lingua Franca 62 (1996) . . . . . . . 22

Alan Sokal, Transgressing the Boundaries: Towards

a Transformative Hermeneutics of Quantum

Gravity, 46/47 Social Text 217 (1996) . . . . . . . . . . . . 21

Am. I.P. Law Ass’n, Report of the Economic

Survey 2015 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Br uce St erl i ng, Mo re Mayh em f r o m th e

Yes-Men, Wired (Jul. 18, 2009) . . . . . . . . . . . . . . . . . 27

Complaint, Chamber of Commerce v. Servin,

No. 1:09-cv-2014 (D.D.C. Oct. 26, 2009) . . . . . . . . . . 19

Corynne McSherry, More Silly Trademark Claims:

Peabody Energy Threatens “Clean Coal” Spoof

Site, Elec. Frontier Found. (Jan. 12, 2010) . . . . . . . . 11

viii

Cited Authorities

Page

Cor y n ne Mc Sher r y, Mr. Pea body’s Coa l

Train Tries To Run Down Free Speech,

Elec. Frontier Found. (May 13, 2011) . . . . . . . . . . 1, 25

Culture Jamming, Beautiful Trouble . . . . . . . . . . . . . . . 7

Elec. Frontier Found., EFF to Represent Yes

Men in Cour t Battle Over Chamber of

Commerce Action (Nov. 11, 2009) . . . . . . . . . . . . . . . . 1

Elec. Frontier Found., Religious Group Shows

Little Tolerance for Parody (July 17, 2013) . . . . . . . . 1

Ellen Huet, Google Nest Spoof by German

Activists Promises Eer ie, Data-Dr iven

Future, Forbes (May 7, 2014) . . . . . . . . . . . . . . . . . . . 14

Fed. R. Civ. P. 12(b)(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

Hannibal Travis, The Battle for Mindshare:

The Em ergin g Co nsensus Th at the

First Am en dm ent Pr ot ec t s Co r po r at e

Cr iticism and Parody on the Inter net,

10 Va. J.L. & Tech. 3 (2005) . . . . . . . . . . . . . . . . . 23-24

Identity Correction, Beautiful Trouble . . . . . . . . . . . . . . 9

Identity Correction, Peace Action New York

State . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

Cited Authorities

Page

J. Thomas McCarthy, McCarthy on Trademarks

a n d Unf a i r C o m p e ti ti o n § 31:13 9

(5th ed. Dec. 2022 Update) . . . . . . . . . . . . . . . . . . 18, 19

Jaikumar Vijayaran, De Beers Tries to Force

Spoof News Web Site Offline Over Fake Ad,

Computerworld (Dec. 4, 2008) . . . . . . . . . . . . . . . . . . . 9

Jonathan Swift, A Modest Proposal: For Preventing

the Children of Poor People in Ireland, from

Being a Burden on Their Parents or Country,

and for Making Them Beneficial to the

Publick . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

Kit Walsh, Washington Post Tries to Take Down

Parody Site Announcing Trump’s Resignation,

Elec. Frontier Found. (Jan. 22, 2019) . . . . . . . . . . . . 15

Letter from Cara Gagliano, Staff Attorney,

Elec. Frontier Found., to Jeffrey Moreira,

Rico Management (Mar. 18, 2021) . . . . . . . . . . . . . . . 1

Lisa Lerer and Michael Calderone, CNBC,

R e u t e r s Fa l l f o r C l i m a t e Ho a x ,

Politico (Oct. 19, 2009) . . . . . . . . . . . . . . . . . . . . . . . . . 11

Lynn M. Jordan & David M. Kelly, Another

Decade of Rogers v. Grimaldi: Continuing

to Balance the Lanham Act with the First

Amendment Rights of Creators of Artistic

Works, 109 Trademark Rptr. 833 (2019) . . . . . . . . . 18

Cited Authorities

Page

M a r k L e m l e y, T h e M o d e r n L a n h a m

Act an d th e Death of Co mm o n Sense,

108 Yale L.J. 1687 (1999) . . . . . . . . . . . . . . . . . . . . . . 16

Matthew VanTryon, Fake Eli Lilly Twitter

A c c o u n t Fa l s e l y C l a i m e d In s u l i n

‘Free’, IndyStar. (Nov. 11, 2022) . . . . . . . . . . . . . . . . 15

Noam Cohen, A Conglomerate’s Tack to Quash a

Parody Site, N.Y. Times (Feb. 13, 2011) . . . . . . . . . . 12

P r at he ep a n G u l a s e k a r a m , Po li c i n g t h e

Border Between Trademarks and

Free Speech: Protecting Unauthor ized

Tra d em ark Use in Exp ressive Wo rks,

80 Washington L. Rev. 887 (2005) . . . . . . . . . . . . . . .16

Rober t Denicola , Tra demarks as Speech:

Constitutional Implications of the Emerging

Rationales for the Protection of Trade

Symbols, 1982 Wis. L. Rev. 158 (1982) . . . . . . . . . . 5-6

Sydney Brownstone, Q&A: How Anti-Shell

Activists Punk’d the Internet (and Big Oil),

Mother Jones (June 15, 2012) . . . . . . . . . . . . . . . . . . . 12

Watch the Yes Men Impersonate Shell, Make

‘Last Iceberg’ Snow Cones, Rolling Stone

(June 12, 2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

William McGeveran, Rethinking Trademark

Fair Use, 94 Iowa L. Rev. 49 (2008) . . . . . . . . . . . . . 26

Cited Authorities

Page

W i l l i a m T. G a l l a g h e r, T r a d e m a r k a n d

IP Law, 2 8 Sa nt a Cla r a Comput er &

High Tech. L.J. 453 (2012) . . . . . . . . . . . . . . . . . . . . . 20

STATEMENT OF IDENTITY AND INTEREST OF

AMICUS CURIAE1

Amicus curiae Electronic Frontier Foundation

(“EFF”) is a nonprofit civil liberties organization that has

worked for more than 30 years to protect free expression,

innovation, and civil liberties in the digital world. As

part of its mission, EFF regularly represents activists

and cultural critics who use trademarks for parody and

satire and, as a result, find themselves the target of legal

threats. 2 EFF, its clients, and its more than 35,000 active

donors have a strong interest in ensuring that trademark

law adequately protects these types of uses and avoids

chilling future speech by individuals and groups with

limited resources to defend themselves in court.

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

part, and no such counsel or party made a monetary contribution

intended to fund the preparation or submission of this brief. No

person other than amicus curiae, or its counsel, made a monetary

contribution intended to fund its preparation or submission.

2. See, e.g., Elec. Frontier Found., EFF to Represent Yes

Men in Court Battle Over Chamber of Commerce Action (Nov. 11,

2009), https://www.eff.org/press/archives/2009/11/11; Letter from

Cara Gagliano, Staff Attorney, Elec. Frontier Found., to Jeffrey

Moreira, Rico Management (Mar. 18, 2021), https://www.eff.org/

document/eff-letter-re-virtual-coachella-video; Elec. Frontier

Found., Religious Group Shows Little Tolerance for Parody

(July 17, 2013), https://www.eff.org/takedowns/religious-groupshows-little-tolerance-parody; Corynne McSherry, Mr. Peabody’s

Coal Train Tries To Run Down Free Speech, Elec. Frontier

Found. (May 13, 2011), https://www.eff.org/deeplinks/2011/05/

mr-peabodys-coal-train-tries-run-dow n-free-speech.

INTRODUCTION AND SUMMARY OF

ARGUMENT

This Court has long recognized the importance of

protecting facetious speech in its First Amendment

jurisprudence. See Hustler v. Falwell, 485 U.S. 46 (1988).

This speech is no less worthy of protection when it

incorporates trademarks to achieve its goals; the statutory

rights granted by the Lanham Act do not vitiate the First

Amendment’s guarantees. Recognizing this, circuit courts

around the nation have reached broad consensus on a

sensible approach that balances trademark rights with

constitutional rights: the Rogers test.

Discarding the Rogers test would be a mistake. The

speech at risk goes far beyond the novelty dog toy at issue

in this case. Trademarks are ubiquitous in the modern

world, and the same attributes that make them useful

for identifying the source of goods or services also make

them a powerful expressive tool for commenting on their

owners and society. Strategies that are now staples of

political activism rely on trademarks in just this way.

The Rogers test is a key shield against the mark

owner’s sword. And trademark owners do not hesitate to

respond with legal threats based on those uses of their

brand. Its importance lies not only in the substantive

standard it sets but also in its procedural application.

The complexity and fact-intensive nature of traditional

infringement tests translate to prolonged, expensive, and

unpredictable litigation. Rather than shoulder that burden

to defend their rights, many speakers will capitulate to

unreasonable demands or choose not to speak in the first

place. The Rogers test, by contrast, offers a simple test

that is easy to apply and well suited for resolution on early

dispositive motions.

Eliminating the Rogers test would upend decades of

nationwide precedent and make it significantly easier for

trademark owners to chill critical and comedic expression.

Amicus urges the Court to reject Petitioner’s call to

eviscerate or narrow the Rogers test’s application. Political

expression can come in many forms, and expression in a

non-traditional communicative medium deserves the same

First Amendment protection as a protest sign or a song.

ARGUMENT

Rogers and Its Progeny Help Ensure Trademark

Law Does Not Unduly Intrude on Protected Speech

The Lanham Act Is Subject to First Amendment

Scrutiny

Contrary to Jack Daniels’s suggestion, the Lanham

Act, like every other law that regulates speech, is subject

to First Amendment scrutiny. See, e.g., Matal v. Tam,

___ U.S. ___ , 137 S. Ct. 1744, 1757 (2017) (subjecting the

Lanham Act’s disparagement clause to First Amendment

scrutiny). Congress’s own efforts to accommodate free

speech concerns notwithstanding, statutory rights never

trump Constitutional rights.

B. The First Amendment Protects Facetious

Speech, Including Parodies

Whether frivolously funny, sharply political, or

something in between, facetious speech is fully protected

by the First Amendment. Parodic, satirical, joking, and

other non-serious speech is not impenetrably immune

from regulation—no protected speech is. But any

such regulation, whether statutory or judicial, must

accommodate the First Amendment and its protections.

Such speech may be entertainment or political

commentary, and often is both. The United States, in

particular, has a “long and storied tradition of satiric

comment” that has “enhanced political debate.” New

Times, Inc. v. Isaacks, 146 S.W.3d 144, 151 (Tex. 2004).

“Satire is particularly relevant to political debate because

it tears down facades, deflates stuffed shirts, and unmasks

hypocrisy. By cutting through the constraints imposed

by pomp and ceremony, it is a form of irreverence as

welcome as fresh air.” Falwell v. Flynt, 805 F.2d 484, 487

(4th Cir.1986) (Wilkinson, J., dissenting), rev’d sub nom.

Hustler Magazine v. Falwell, 485 U.S. 46 (1988). Indeed,

“[n]othing is more thoroughly democratic than to have the

high-and-mighty lampooned and spoofed.” Id.

Accordingly, and in a wide variety of contexts, courts

throughout the country have repeatedly found that various

forms of facetious speech are fully protected by the First

Amendment. The New Times case, cited above, was a

defamation case. Hustler v. Falwell applied the same

principles to intentional infliction of emotional distress.

In Matter of Callaghan, 238 W. Va. 495, 522 (2017), the

court applied the same principles in deciding whether

to discipline a judge for parodic statements made in a

campaign flyer.

Facetious speech need not be political to enjoy First

Amendment protections. Speech intended to be “sheer

entertainment—presumably neutral as to any political or

even social views” qualifies as well. Berger v. Battaglia,

779 F.2d 992, 998 (4th Cir. 1985). It also need not pertain to

either a public figure or a matter of public concern. Mink

v. Knox, 613 F.3d 995, 1006 (10th Cir. 2010). “The First

Amendment’s shielding of figurative language reflects the

reality that exaggeration and non-literal commentary have

become an integral part of social discourse. . . . Hyperbole

is very much the coin of the modern realm.” Levinsky’s

Inc., v. Wal-mart Stores, Inc., 127 F.3d 122, 126 (1st Cir.

1997).

Nor must it be inoffensive. See Hustler, 485 U.S. at 54.

In the copyright context, the Supreme Court has made

clear that whether “parody is in good taste or bad does not

and should not matter to fair use.” Campbell v. Acuff-Rose

Music, Inc., 510 U.S. 569, 582 (1994). The Ninth Circuit has

similarly recognized that even “‘[d]estructive’ parodies

play an important role in social and literary criticism.”

Fisher v. Dees, 794 F.2d 432, 437–38 (9th Cir. 1986).

The First Amendment Protects Facetious

Speech Involving Trademarks

Online and off, trademarks—words, symbols, images,

and colors—are also essential components of everyday

language, used by companies, consumers, and citizens

to share information. Famous trademarks “become an

important, perhaps at times indispensable, part of the

public vocabulary. Rules restricting the use of well-known

trademarks may therefore restrict the communication

of ideas.” Robert Denicola, Trademarks as Speech:

Constitutional Implications of the Emerging Rationales

for the Protection of Trade Symbols, 1982 Wis. L. Rev.

158, 195–96 (1982). See also W. Va. State Bd. of Educ.

v. Barnette, 319 U.S. 624, 632 (1943) (“Symbolism is a

primitive but effective way of communicating ideas. The

use of an emblem or flag to symbolize some system, idea,

institution, or personality, is a short cut from mind to

mind.”). Accordingly, First Amendment protections are

no less important in the context of trademark law than

they are in defamation law or any other area.

That is why in the trademark context, as in every other,

courts have recognized that “because parody is a form of

social and literary criticism, it has socially significant

value as free speech under the First Amendment,” Mattel

Inc. v. Walking Mountain Prods., 353 F.3d 792, 800 (9th

Cir. 2003) (internal quotation marks and citation omitted),

implicating the First Amendment’s “core concerns,”

Cardtoons, L.C. v. Major League Baseball Players Ass’n,

95 F.3d 959, 972 (10th Cir. 1996). See also L.L. Bean,

Inc. v. Drake Publishers, Inc., 811 F.2d 26, 27, 34 (1st

Cir. 1987) (First Amendment protected a pornographic

magazine’s parody of the wholesome and outdoorsy L.L.

Bean catalog against infringement, dilution, and unfair

competition claims). “When businesses seek the national

spotlight, part of the territory includes accepting a certain

amount of ridicule”—including ridicule that employs their

trademarks. Nike, Inc. v. “Just Did It” Enter., 6 F.3d

1225, 1226 (7th Cir. 1993) (reversing summary judgment

for Nike where defendant sold T-shirts with “MIKE” and

Nike swoosh).

II. The Rogers Test Is a Vital Safeguard for Political

Expression

Eliminating or narrowing the Rogers test risks

particular harm to one form of political expression: satires

that specifically incorporate trademarks as part of a

critique of the mark owner.

Trademarks Are a Key Element in Modern

Political Activism

For many decades, activists in the U.S. and around

the world have used parodies of well-known trademarks

to comment on or raise awareness about the mark owners’

activities and positions. This practice, also known as

culture jamming, is a powerful expressive tool for political

activists:

Culture jamming works because humans are

creatures of habit who think in images, feel our

way through life, and often rely on familiarity

and comfort as the final arbiters of truth . . . .

Rational arguments and earnest appeals

to morality may prove less effective than a

carefully planned culture jam that bypasses the

audience’s mental filters by mimicking familiar

cultural symbols, then disrupting them. 3

3. Culture Jamming, Beautiful Trouble, https://beautifultrouble.

org/toolbox/tool/culture-jamming (last accessed Feb. 19, 2023).

To take one recent example, in 2022, Adbusters created

the following advertisement as part of a critique of Coca

Cola’s contribution to global pollution:

x y

•

JI,

ecocideym

open

In recent years, some activists have embraced a

subspecies of culture jamming called “identity correction.”4

In their own words,

identity correctors “take on the persona of

an organization/government with power, and

talk like their PR department developed a

conscience. It’s a way to speak truth to power—

you speak as a group in power, and say a small

lie that reveals a greater truth.”5

By necessity, these parodies use trademarks, but the

purpose is purely expressive. For example:

• In 2008, a collection of anonymous satirists

created a fake New York Times website, with

numerous false stories and headlines (e.g., “United

Nations Passes Weapons Ban”).6 They created

physical copies as well, which were handed out in

several U.S. cities. The paper included a satirical

advertisement for the diamond conglomerate De

Beers, which read in part: “Your purchase of a

diamond will enable us to donate a prosthetic for an

4 . Id e n ti ty Co r r ec ti o n, Be aut i f u l T r ouble , ht t p s: //

beautifultrouble.org/toolbox/tool/identity-correction/ (last accessed

Feb. 19, 2023).

5. Identity Correction, Peace Action New York State, https://

www.panys.org/student-network/organizing-toolbox/student-toolbox-identity-correction/ (last accessed Feb. 19, 2023).

6. Jaikumar Vijayaran, De Beers Tries to Force Spoof News

Web Site Offline Over Fake Ad, Computerworld (Dec. 4, 2008), https://

www.computerworld.com/article/2529597/de-beers-tries-to-forcespoof-news-web-site-offline-over-fake-ad.html.

African whose hand was lost in diamond conflicts.

De Beers[:] From her fingers, to his.”

DIAMOND S

Your purchase of

diamond will enable us

to donate aprosthetic for an African

whose hand was lost in diamond conflicts.

e Beers

l'inne lrri rrt•/•tri, fa l•rrl.

• In 2009, activists created and carried out an

elaborate parody designed to poke fun at the

Chamber of Commerce and spark debate over its

position on climate change. The action included

a press conference during which an activist,

pretending to be a Chamber spokesperson,

announced that the Chamber would shift its

position dramatically, recognizing climate change

and supporting associated legislation.7 The

Chamber’s logo and service marks appeared on

the podium at the press conference, as well as on

a press release, prepared comments, and a website

designed to look like the Chamber’s website. A

real Chamber representative interrupted the

press conference after thirteen minutes, declaring

it to be a hoax. As intended, the action received

substantial media coverage that highlighted the

Chamber of Commerce’s policy position.

• In 2010, an activist created a spoof of the official

website for the Consortium for Clean Coal

Utilization (CCCU), a group formed by several coal

companies and a university, ostensibly to research

“clean coal” methods—much to the consternation

of students and environmental activists who view

“clean coal” as an oxymoron. 8 The spoof website

7. Lisa Lerer and Michael Calderone, CNBC, Reuters Fall

for Climate Hoax, Politico (Oct. 19, 2009), https://www.politico.com/

story/2009/10/cnbc-reuters-fall-for-climate-hoax-028456.

8. Corynne McSherry, More Silly Trademark Claims:

Peabody Energy Threatens “Clean Coal” Spoof Site, Elec. Frontier

Found. (Jan. 12, 2010), https://www.eff.org/deeplinks/2010/01/

a nd - a not he r - one - t a ke dow n - h a l l - s h a me - p e ab o dy- ene r g y.

declared that CCCU’s goal was to “be a public

relations tool for industry for the advancement of

misinformation intended to manipulate the public

to believe that clean utilization of coal is possible by

hijacking the credibility of universities, industries,

foundations, and government organizations.” The

spoof site also identified consortium members

by name and, reasonably enough, included the

members’ corporate logos.

• In 2011, members of Youth for Climate Truth

issued a press release, purportedly from Koch

Industries, in which the company promised to stop

funding organizations that deny climate change.9

The release was also briefly posted on a website

(www.koch-inc.com) that partially imitated Koch

Industries’ own website.

• In 2012, as part of an effort to discourage Shell

Oil from drilling in the Arctic, activists launched

a campaign, ostensibly on Shell’s behalf, that

included billboards, a launch party in Seattle’s

Space Needle, and a spoof website that celebrated

expanded access to Arctic resources as a result of

global warming.10 The campaign was sparked by

Shell’s own series of promotional ads (responding

9. Noam Cohen, A Conglomerate’s Tack to Quash a Parody Site,

N.Y. Times (Feb. 13, 2011), https://www.nytimes.com/2011/02/14/

business/media/14link.html.

10. Sydney Brownstone, Q&A: How Anti-Shell Activists

Punk’d the Internet (and Big Oil), Mother Jones (June 15, 2012),

https://www.motherjones.com/politics/2012/06/qa-how-activistspunkd-internet-and-big-oil/.

to the 2010 BP oil spill) touting Shell’s commitment

to the environment and using the catchphrase

“Let’s go.” The spoof ads placed text such as “Your

SUV won’t run on ‘cute.’ Let’s go” and “He’ll be

fine. Promise. Let’s go,” along with Shell’s logo,

on top of images of polar bears and arctic foxes

in the wild. Initially believed to be true, the spoof

campaign was widely covered, as was the “reveal.”

In a 2015 follow-up action, activists posed as a Shell

“street team” giving out free Shell-branded snow

cones on the streets of New York City and telling

people the treats were actually made from the last

icebergs of the melting Arctic.11

DON'T WORRY ABOUT HIM. HE'LL BE FINE.

PROMISE,

LET'S GO.

fly)

11. Watch the Yes Men Impersonate Shell, Make ‘Last Iceberg’

Snow Cones, Rolling Stone (June 12, 2015), https://www.rollingstone.

com/tv-movies/tv-movie-news/watch-the-yes-men-impersonateshell-make-last-iceberg-snow-cones-39641/.

THE FUTURE NEVER TASTED SO SWEET.

LET'S GO.

• In 2014, German activists created a website

touting four new Google products—Google Trust

(data “insurance”), Google Bee (personal drones),

Google Hug (location-based, crowdsourced hug

matching) and Google Bye (an online profile for

the afterlife)—to raise awareness about Google’s

privacy policies. 12 The spoof was a great success,

prompting a wave of commentary and coverage

that recognized it for the satire that it was.

• In 2019, activists created and distributed a

parody newspaper, accompanied by a website,

spoofing the Washington Post and crowing

about the “Unpresidented” f light of Donald

Trump from the Oval Office as he abandoned

12. Ellen Huet, Google Nest Spoof by German Activists

Promises Eerie, Data-Driven Future, Forbes (May 7, 2014), https://

www.forbes.com/sites/ellenhuet/2014/05/07/google-nest-spoof-bygerman-activists-promises-eerie-data-driven-future/.

the presidency.13 The spoof, created by activist

group the Yes Men, was also visible on the website

democracyawakensinaction.org.

• In 2022, amid growing public concern over rising

drug prices, a Twitter account impersonating

pharmaceutical giant Eli Lilly posted, “We are

excited to announce that insulin is free now.”14

The fake account used the handle @EliLillyandCo

and had the company’s logo as its profile picture.

Within hours, the tweet had received over

1,500 retweets and 11,000 likes. That attention

forced a quick public response from Eli Lilly:

“We apologize to those who have been served a

misleading message from a fake Lilly account.

Our official Twitter account is @LillyPad.” That

response, which conspicuously failed to address

the substance of the parody tweet, garnered its

own obvious parody the next day, when another

fake Eli Lilly account—also using the company’s

trademarks—tweeted, “We apologize to those

who were have been [sic] served a misleading

message from a fake Lilly account about the cost

of diabetic care. Humalog is now $400. We can do

this whenever we want and there’s nothing you can

do about it. Suck it. Our official Twitter account is

@LiIlyPadCo.”

13. Kit Walsh, Washington Post Tries to Take Down Parody

Site Announcing Trump’s Resignation, Elec. Frontier Found. (Jan.

22, 2019), https://www.eff.org/deeplinks/2019/01/washington-posttries-take-down-parody-site-announcing-trumps-resignation-0.

14. Matthew VanTryon, Fake Eli Lilly Twitter Account Falsely

Claimed Insulin ‘Free’, IndyStar. (Nov. 11, 2022), https://www.

indystar.com/story/news/2022/11/10/twitter-elon-musk-insulin-elililly-fake-tweet/69639067007/.

As these examples suggest, identity correction and

culture jamming have become common and effective

forms of political critique. Some initial degree of confusion

is often integral to that effectiveness: forcing a public

denial by the target company shines a spotlight on the

company’s actual actions and positions. At the same time,

the confusion is not meant to last: without some form of

reveal, the action’s goal of highlighting contradictions

between marketing and reality will not be realized.

B. Rogers Strikes the Right Balance Between

Trademark Rights and Constitutional Rights

In a world where trademarks are part of common

political discourse, “trademarks [must] not be transformed

from rights against unfair competition to rights to control

language.” CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456,

462 (4th Cir. 2000) (internal quotation marks and citation

omitted) (quoting Mark Lemley, The Modern Lanham

Act and the Death of Common Sense, 108 Yale L.J. 1687,

1710–11 (1999)).

Rogers and its progeny help prevent that transformation,

while simultaneously protecting consumers and the

legitimate business interests of mark owners. See

generally Pratheepan Gulasekaram, Policing the Border

Between Trademarks and Free Speech: Protecting

Unauthorized Trademark Use in Expressive Works, 80

Washington L. Rev. 887, 903 (2005) (“The balancing test

articulated by the Rogers court is compelling because it

is the only approach attuned to the primary purpose of

trademark laws: protecting the public against confusion

and fraud.”)

The Rogers test is a relatively non-demanding

test for plaintiffs to meet as compared to other First

Amendment standards for common law or statutory

claims. For example, the Rogers test falls far short of the

strict scrutiny analysis applied to practically every other

content-based restriction on speech. See Reed v. Town of

Gilbert, 576 U.S. 155, 169 (2015). Under that test, the law

is presumptively unconstitutional and is upheld only if the

restriction is actually necessary to advancing a compelling

state interest. Id. at 171; Brown v. Entm’t Merchants

Ass’n, 564 U.S. 786, 799 (2011). The Rogers test is also

less demanding than the intermediate scrutiny test courts

apply to content-neutral restrictions on speech, see Nat’l

Inst. of Family & Life Advocates v. Becerra, ___ U.S.

___, 138 S. Ct. 2361, 2375 (2018) (finding a state law failed

intermediate scrutiny when it was not sufficiently drawn

to achieve a substantial state interest); the time, place,

and manner test applied to content-neutral restrictions

on speech in public forums, McCullen v. Coakley, 573 U.S.

464, 477 (2014); or the “exacting scrutiny” test applied

to compelled associational disclosures, Americans for

Prosperity Found. v. Bonta, ___ U.S. ___, 141 S. Ct. 2373,

2383 (2021) (requiring “a substantial relation between

the disclosure requirement and a sufficiently important

governmental interest”).

Because it is largely objective, the Rogers test is also

less demanding than the subjective actual malice standard

this Court imposed upon a centuries-old body of common

law defamation law, requiring public figures to prove by

clear and convincing evidence that the speaker knew a

statement was false or seriously doubted its truth. See

New York Times v. Sullivan, 376 U.S. 254, 280-81 (1964).

This Court later imposed a similar rigorous standard on

the tort of intentional infliction of emotional distress when

the predicate conduct is the making of a false statement,

requiring the public figure plaintiff to prove that the

defendant subjectively intended for others to believe a

false statement to be true. Hustler Magazine, Inc. v.

Falwell, 485 U.S. 46, 56 (1988).

In addition to its relatively low burden, Rogers

offers legal certainty to trademark owners, competitors,

consumers, and activists alike. The test has been adopted

in multiple circuits, creating almost uniform rules across

the nation. See, e.g., L.L. Bean, Inc. v. Drake Publishers,

Inc., 811 F.2d 26, 27, 34 (1st Cir. 1987); Nike, Inc. v. “Just

Did It” Enter., 6 F.3d 1225, 1226 (7th Cir. 1993); ETW v.

Jireh, 332 F.3d 915, 928 (6th Cir. 2003); Utah Lighthouse

Ministry v. Found. for Apologetic Info. & Research,

527 F.3d 1045, 1052 (10th Cir. 2008); Univ. of Ala. Bd. of

Trustees v. New Life Art, 683 F.3d 1266, 1277 (11th Cir.

2012); see generally McCarthy at § 31:139 (describing

Rogers rule of analysis as a “judicial consensus”); Lynn

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

v. Grimaldi: Continuing to Balance the Lanham Act

with the First Amendment Rights of Creators of Artistic

Works, 109 Trademark Rptr. 833, 834 (2019) (the Rogers

test has “clearly become the standard in disputes involving

trademarks”).

The Rogers Test Offers Essential Practical

Protections

Thanks to its simplicity and influence, the Rogers test

offers not just abstract but very practical protections for

political speech. Activists who use trademarks as part of

their critique are regularly subject to legal threats they

cannot afford to litigate. For example, nearly all of the

actions described above provoked legal challenges in the

form of cease and desist letters—to the activists or their

webhosts—and/or lawsuits, accusing them of trademark

infringement and/or dilution. See, e.g., Complaint, Chamber

of Commerce v. Servin, No. 1:09-cv-2014 (D.D.C. Oct. 26,

2009), https://www.eff.org/document/complaint-42; Koch

Indus., Inc. v. Does, No. 2:10-CV-1275, 2011 WL 1775765

(D. Utah May 9, 2011).

EFF and other public interest organizations were able

to assist most of those activists, and others too numerous

to list here, but pro bono trademark counsel is not easy to

find. And even the most committed public interest counsel

will hesitate to sign up to defend a lawsuit that relies on

the standard likelihood of confusion test, which usually

will require lengthy discovery, including expert discovery,

and potentially a trial. “Faced with hugely expensive and

lengthy litigation over vague standards, the recipient of

a cease and desist letter will most often capitulate.” J.

Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 31:139 (5th ed. Dec. 2022 Update).

The Rogers test helps activists and others fight back

by increasing predictability and reducing litigation costs.

The Rogers Test Increases Predictability

The standard likelihood of confusion analysis is both

complex and subjective. The test varies from circuit to

circuit, but each version requires consideration of between

six and ten individual factors, to be balanced against one

another with little guidance as to how strongly each factor

will be weighed. Speakers facing such a test will be hard-

pressed to confidently evaluate their risk of infringement

liability ex ante. That evaluation may even be more

difficult in cases involving expressive works, where the

traditional likelihood of confusion factors can be a poor fit

and awkward to apply. For instance, in parody cases the

similarity of marks and strength of mark factors would

seem to lean more heavily towards an infringement finding

the more effective the parody is. Radiance Found., Inc.

v. N.A.A.C.P., 786 F.3d 316, 324–25 (4th Cir. 2015). The

resulting uncertainty from trying to apply an already

unpredictable test to a context it was not developed for

will inevitably chill lawful speech.

Trademark owners and attorneys are well aware of

the coercive power of dubious trademark claims. In one

survey of fifty attorneys who practice trademark and

to enforcing trademark claims they believed were weak

through demand letters—because it works. See William

T. Gallagher, Trademark and Copyright Enforcement in

the Shadow of IP Law, 28 Santa Clara Computer & High

Tech. L.J. 453, 478, 485–88 (2012). Survey participants

also admitted to being more likely to take enforcement

action against small-scale actors who would be unlikely to

have the resources to resist even a weak claim. Id. at 478.

See also id. at 496 (citing “the costs and uncertainties”

of trademark litigation as the likely reason for the

effectiveness of aggressive enforcement).

The Rogers test helps mitigate these chilling effects.

First, the test is simpler on its face. Rogers replaces

multifactor free-form balancing with two relatively

straightforward questions: Is the use artistically relevant

to the expressive work, and is it explicitly misleading?

Second, the Rogers test also increases predictability by

focusing on the nature of the user’s behavior, “not the

impact of the use.” Brown v. Elec. Arts, Inc., 724 F.3d 1235,

1246 (9th Cir. 2013). Under this framework, a speaker

should always have all the information they need to assess

their liability risk.

Importantly, the Rogers test also recognizes that a

modicum of confusion need not change the analysis. Cliffs

Notes, Inc. v. Bantam Doubleday Dell Pub. Grp., Inc.,

886 F.2d 490, 495 (2d Cir. 1989). Effective parodies often

involve some confusion. In 1729, for example, Jonathan

Swift published A Modest Proposal: For Preventing the

Children of Poor People in Ireland, from Being a Burden

on Their Parents or Country, and for Making Them

Beneficial to the Publick.15 The “proposal” advocated for

the consumption of Irish babies; Swift’s intent was to call

attention to the extreme poverty of the Irish people under

English rule. The point was initially lost on some shocked

readers, but it stands as one of the most influential political

writings in Anglo-American history. In 1996, the spring

issue of a leading journal of cultural and scientific studies,

Social Text, included an article by Alan Sokal, a physics

professor at New York University, arguing that gravity, as

normally construed, was a “capitalist fiction” and should be

replaced by a new theory, “quantum gravity,” that would

better reflect post-modern political thinking, if not actual

physical reality.16 That same day, Sokal published a piece in

another academic publication, Lingua Franca, explaining

15. Available at https://www.gutenberg.org/cache/epub/1080/

pg1080-images.html.

16. Alan Sokal, Transgressing the Boundaries: Towards a

Transformative Hermeneutics of Quantum Gravity, 46/47 Social

Text 217 (1996), available at https://physics.nyu.edu/faculty/sokal/

transgress_v2/transgress_v2_singlefile.html.

that the first piece was a hoax and that any competent

mathematician or physicist would have known it.17 As

Sokal intended, the article and its aftermath sparked a

widespread debate about postmodern science studies.

These successful satires, like the identity corrections

discussed above, relied on two elements: (1) presenting a

surprising or disturbing proposition that would provoke

an immediate reaction from an audience; and (2) some sort

of “reveal,” without which the satire would be ineffective.

Swift’s “Proposal” would not accomplish its purpose if the

reader did not come to understand his true point about

the desperate circumstances of the Irish. Sokal’s hoax

would not have accomplished its purpose if he had not

published the accompanying piece in Lingua Franca.

Both are effective precisely because they involve, in part,

some initial confusion.

The Rogers Test Decreases Litigation

Costs

The complexity of the standard multifactor test

also translates into significant litigation costs, even

for a defendant who is ultimately vindicated. A survey

conducted by the American Intellectual Property Law

Association found that in 2015, the median total cost

of litigating a trademark claim was between $325,000

and $1,600,000 per party, depending on the amount in

controversy. Am. I.P. Law Ass’n, Report of the Economic

Survey 2015, at 38–39 (2015), https://perma.cc/8UUL17. Alan Sokal, A Physicist Experiments with Cultural

Studies, Lingua Franca 62 (1996), available at https://physics.nyu.

edu/faculty/sokal/lingua_franca_v4/lingua_franca_v4.html.

BNE8. The median cost of a trademark case through the

end of discovery ranged from $150,000 to $900,000.

The threat of high litigation costs is exacerbated

by courts’ reluctance to decide likelihood of confusion

before discovery or even on post-discovery summary

judgment motions. Indeed, courts around the country have

instructed district judges that summary dismissals based

on likelihood of confusion are “generally disfavored” due to

the test’s “intensely factual nature.” Interstellar Starship

Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1109 (9th Cir.

1999); see also Country Floors, Inc. v. P’ship Composed

of Gepner & Ford, 930 F.2d 1056, 1062–63 (3d Cir. 1991)

(characterizing summary judgment as “the exception” in

trademark cases); AHP Subsidiary Holding Co. v. Stuart

Hale Co., 1 F.3d 611, 616 (7th Cir. 1993) (“[A] motion for

summary judgment in trademark infringement cases must

be approached with great caution.”).

For many activists, those costs alone act as an effective

bar to defending their rights:

Many non-competitive users of trademarks

in artistic, cultural, and political speech have

finally prevailed in court only after incurring

massive costs. Such costs, including attorney’s

fees, the costs of expert witnesses, lost time,

and uncertainty can deter both lawful and

unlawful conduct—indeed, the “specter of such

expenses” is part of traditional deterrence

analysis.

Hannibal Travis, The Battle for Mindshare: The

Emerging Consensus That the First Amendment Protects

Corporate Criticism and Parody on the Internet, 10 Va.

J.L. & Tech. 3, 14 (2005).

The Rogers test helps lower that bar by allowing

courts to resolve appropriate cases early, with limited or

no need for discovery. See, e.g., Brown, 724 F.3d at 1239

(affirming Rule 12 dismissal under Rogers); Louis Vuitton

Malletier S.A. v. Warner Bros. Ent. Inc., 868 F. Supp. 2d

172, 183 (S.D.N.Y. 2012) (rejecting argument that Rogers

cases cannot be decided on the pleadings and granting

dismissal); Rebellion Devs. Ltd. v. Stardock Ent., Inc.,

No. 12-12805, 2013 WL 1944888 at *4, *6 (E.D. Mich.

May 9, 2013) (same). Rogers requires a court to answer

just two questions, both of which will often be readily

determinable based only on a review of the defendant’s

use and the plaintiff’s mark. Even where a Rogers case

cannot be resolved before discovery, the test’s relative

simplicity and its focus on user conduct rather than

consumer perception reduce litigation costs by narrowing

the issues and avoiding the need for costly survey experts.

For defendants with limited resources, the ability

to dispose of a claim before discovery can make the

difference in whether they can afford to vindicate their

rights. In addition to making litigation less costly, the

Rogers test’s greater suitability to early resolution

and lesser discovery needs increase the availability of

pro bono counsel to those who need it. To give another

identity correction example, when activists created a

parody website, coalcares.org, to draw attention to the

dangers coal plants pose to surrounding communities (the

website purportedly offered free inhalers to children who

had developed asthma), they promptly received a legal

threat from Peabody Energy. Relying in part on the First

Amendment balancing test described by Rogers and its

progeny, EFF was able to stave off that threat.18 EFF

is proud to defend this form of criticism, but as a small

nonprofit we do not have unlimited resources to fund

discovery or retain survey experts, nor do the private law

firms who may serve as pro bono co-counsel. We, and our

clients, depend on streamlined tests like Rogers to help

avoid or swiftly resolve litigation over expressive uses.

One final pair of cases highlights the difference that

the Rogers test can make in the burden of litigating

expressive uses. Stewart Surfboards v. Disney is an

example of how the Rogers test should work. In that

case, a well-known surfboard maker sued Disney for the

inclusion of its trademark on a depiction of a surfboard

on the back cover of a fictional surfing-themed book.

Stewart Surfboards, Inc. v. Disney Book Grp., LLC, No.

CV 10–2982, 2011 WL 12877019, at *1 (C.D. Cal. May 11,

2011). The court applied Rogers and decided in Disney’s

favor on the pleadings under Rule 12(b)(6)—no discovery

or experts required. Id. at *4, *8. In its decision, the court

observed that “if the court must consider the likelihood-ofconfusion factors in assessing Rogers’ second prong, ruling

on a motion to dismiss would usually not be appropriate.”

Id. at *6.

On the other end of the spectrum is Smith v. WalMart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga.

2008). In Smith, Wal-Mart claimed that a critic of the

company had infringed and diluted its trademarks by

18. See Corynne McSherry, Mr. Peabody’s Coal Train Tries

To Run Down Free Speech, Elec. Frontier Found. (May 13, 2011),

https://www.eff.org/deeplinks/2011/05/mr-peabodys-coal-traintries-run-down-free-speech.

selling merchandise bearing the words “Walocaust” and

“Walqaeda,” along with other anti-Wal-Mart slogans. Id.

at 1309–13. Under Rogers, Wal-Mart’s claims could easily

be resolved on early motions. That did not happen in

Smith. While the court ultimately found in Smith’s favor

by applying the Eleventh Circuit’s standard likelihood

of confusion factors, id. at 1338–39, it did so in a 41-page

summary judgment opinion after more than two years

of litigation, including a full course of discovery and

dueling survey experts, see id. at 1311 (action filed Mar.

6, 2006); id. at 1317, 1329. Smith was fortunate to have

pro bono legal counsel from the nonprofit organization

Public Citizen, which allowed him to persevere through

the litigation process and vindicate his rights. See William

McGeveran, Rethinking Trademark Fair Use, 94 Iowa L.

Rev. 49, 70–71 (2008). Otherwise, the likely result would

have been the silencing of lawful speech by one of the

world’s largest companies.

The Rogers Test Should Not Have a NonCommerciality Requirement or Hinge on the

Expressive Medium

To adequately protect critical political expression,

the Rogers test should apply not only to traditional

expressive mediums—films, books, visual art, etc.—but

also to expressive uses in contexts that seem more akin to

everyday consumer goods. In other words, the applicability

of the Rogers test should hinge on the message, not the

medium.

Political expression can come in many forms. See,

e.g., Tinker v. Des Moines Indep. Community Sch. Dist.,

393 U.S. 503, 505–06 (1969) (black armbands); Cohen v.

California, 403 U.S. 15, 18 (1971) (jacket reading “Fuck

the Draft”); Texas v. Johnson, 491 U.S. 397 (1989) (flag

burning); Walker v. Tex. Div., Sons of Confederate

Veterans, Inc., 576 U.S. 200, 219 (2015) (specialty

license plates). Modes of political expression that rely

on trademarks, such as culture jamming, are by their

nature particularly likely to use nontraditional mediums

to communicate a message. In 2009, for example, the Yes

Men collaborated with the Bhopal Medical Appeal (BMA)

to make limited-edition bottles of water “bottled at the

source of the world’s largest industrial accident”—a 1984

toxic-gas leak in Bhopal, India.19 The water was bottled

under the name “B’eau Pal” and featured a label design

based on the Dow Chemical logo:

19. Bruce Sterling, More Mayhem from the Yes-Men, Wired

(Jul. 18, 2009), https://www.wired.com/2009/07/more-mayhem-fromthe-yes-men/

the-yes-men/.

The activists sold the water to increase awareness of

the disaster and its continuing effects, and to raise money

for the BMA, which advocates for the victims of the Bhopal

Catastrophe whose drinking water is still contaminated.

With too narrow a construction of the Rogers test,

a court might well find that the B’eau Pal water bottles

fall outside of the test’s reach: the medium seems to be

a regular consumer good, the Dow logo is used in a way

that appears to be a source identifier, and the bottles

were sold for money. Yet this is exactly the kind of core

political speech the Rogers test should help protect—a

biting critique of a powerful corporation, not an attempt

to profit off of Dow’s goodwill or mislead consumers.

CONCLUSION

Amicus EFF respectfully requests that the Court

endorse the Rogers test as the standard for evaluating

Lanham Act claims based on expressive uses of

trademarks.

February 23, 2023

Respectfully submitted,

ELECTRONIC FRONTIER FOUNDATION

By:

Corynne McSherry

Counsel of Record

Cara Gagliano

David Greene

Electronic Frontier Foundation

815 Eddy Street

San Francisco, California 94109

(415) 436-9333

corynne@eff.org

Attorneys for Amicus Curiae

Electronic Frontier Foundation

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.