In his most recent annual report on the state of the federal judiciary,1 Chief Justice John Roberts noted a consistent decline in the number of civil filings in federal courts beginning in fiscal year 2020.2 Whether because of the COVID pandemic or for other reasons, much the same decline was visited on litigation under the Lanham Act, related state statutes, and the common law of unfair competition during the Act's Diamond Anniversary. The reported opinions addressed by this Review therefore are conspicuously less numerous than those covered in past years, especially those originating in the federal courts and state courts of general jurisdiction.
Nevertheless, the past year was not without notable developments, including, most notably, those arising from the intersection of trademark law, on the one hand, and speech protected by the First Amendment to the federal Constitution,3 on the other.4 For years, courts entertaining infringement-based challenges to deliberate imitations of plaintiffs' marks for allegedly expressive purposes have had two frameworks available to them: (1) the standard multifactored test for likely confusion, typically applied to evaluate the lawfulness of alleged parodies;5 and (2) the test found in Rogers v. Grimaldi,6 which requires the plaintiff to demonstrate that the imitation of its mark in the title or content of an expressive work either has no artistic relevance to that work, or, if it does have artistic relevance, it is explicitly misleading.7 A plaintiff before a court that has adopted Rogers must also demonstrate that confusion is likely, whether as a standalone showing, as in the Ninth Circuit, or as an inherent part of the inquiry into whether the defendant's use is explicitly misleading, as in the Second Circuit.8
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Footnotes
1. John G. Roberts, Jr., 2022 Year-End Report on the Federal Judiciary 5 (Dec. 31, 2022), 2022year-endreport.pdf (supremecourt.gov).
2. The federal judiciary's fiscal year runs from October 1 to September 30 of each year, while the Lanham Act year for purposes of this Review runs from July 1 to June 30; there consequently is not a direct overlap between the two.
3. U.S. Const. amend. I.
4. That intersection has been addressed in numerous pieces appearing in the pages of this journal. See, e.g., Taylar E. Green, The Rogers Test Dances Between Trademark Protection Under the Lanham Act and Freedom of Speech Under the First Amendment, 112 TMR 843 (2022); Kathleen E. McCarthy, Free Ride or Free Speech? Predicting Results and Providing Advice for Trademark Disputes Involving Parody, 109 TMR 691 (2019); 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 TMR 833, 835 (2019); Stacey L. Dogan & Mark A. Lemley, Parody as Brand, 105 TMR 1177 (2015); Anthony L. Fletcher, The Product with the Parody Trademark: What's Wrong with Chewy Vuiton?, 100 TMR 1091 (2010); David M. Kelly & Lynn M. Jordan, Twenty Years of Rogers v. Grimaldi: Balancing the Lanham Act with the First Amendment Rights of Creators of Artistic Works, 99 TMR 1360 (2009); Jonathan Moskin, Frankenlaw: The Supreme Court's Fair and Balanced Look at Fair Use, 95 TMR 848, 859 (2005); Margreth Barrett, Domain Names, Trademarks and the First Amendment: Searching for Meaningful Boundaries, 97 TMR 848 (2007); Kerry L. Timbers & Julia Huston, The "Artistic Relevance Test" Just Became Relevant: The Increasing Strength of the First Amendment as a Defense to Trademark Infringement and Dilution, 93 TMR 1278 (2003); Richard B. Biagi, The Intersection of First Amendment Commercial Speech Analysis and the Federal Dilution Act: A Jurisprudential Roadmap, 91 TMR 867, 868 (2001); Michael K. Cantwell, Confusion, Dilution, and Speech: First Amendment Limitations on the Trademark Estate, 87 TMR 48, 61 (1997); Arlen W. Langvardt, Trademark Rights and First Amendment Wrongs: Protecting the Former Without Committing the Latter, 83 TMR 633 (1993).
5. See, e.g., Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 261 (4th Cir. 2007) ("[A] finding of a successful parody only influences the way in which the [likelihood-of-confusion] factors are applied. Indeed, it becomes apparent that an effective parody will actually diminish the likelihood of confusion, while an ineffective parody does not." (citation omitted)).
6. 875 F.2d 994 (2d Cir. 1989).
7. Id. at 999.
8. Compare Gordon v. Drape Creative, Inc., 909 F.3d 257, 265 (9th Cir. 2018) ("If the plaintiff satisfies both elements, [i.e., a lack of artistic relevance or the existence of explicitly misleading conduct] it still must prove that its trademark has been infringed by showing that the defendant's use of the mark is likely to cause confusion.") with Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993) ("This determination [of explicitly misleading conduct] must be made, in the first instance, by application of the venerable Polaroid [likelihood-of-confusion] factors.").
Originally Published by International Trademark Association
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