Hanson Bridgett Files Amici Curiae Brief In Case Regarding Trademark Protection and First Amendment Rights

February 10, 2023 (San Francisco, CA) – Hanson Bridgett LLP has filed an amici curiae brief before the U.S. Supreme Court in the case Jack Daniel’s v. VIP Products, on behalf of a group of intellectual property scholars, former judges, and former government officials supporting reversal of the Ninth Circuit’s decision in favor of VIP Products.

The case asks whether the ostensibly humorous use of another’s trademark on a commercial product should receive heightened First Amendment protection. The Ninth Circuit answered this in the affirmative, finding that VIP Product’s “Bad Spaniels” dog toy, resembling the iconic Jack Daniel’s bottle but making dog poop jokes, conveys a humorous message that is entitled essentially to a total exemption from liability for trademark infringement or dilution based upon the First Amendment despite significant evidence of actual consumer confusion.

The amici curiae brief argues that, in considering the balance between trademark protections and freedom of expression, the Ninth Circuit failed to consider an important right and interest—the rights that trademark owners hold in their indicators of source and associated goodwill. The brief urges the Supreme Court to reaffirm the long-standing view that trademarks and trade dress are the property of their owners, and that those rights cannot be simply ignored by infringers who claim to be making an expressive use. The Ninth Circuit failed to recognize a fundamental and long-held precedent of trademark law—that, in addition to protecting consumers, the law secures the valuable goodwill generated by commercial enterprises like Jack Daniel’s through their productive labors in creating, manufacturing, and marketing products that achieve commercial success. Since the Ninth Circuit disregarded the property-side of the equation, the brief asks the Supreme Court to properly consider and weigh in that interest.

The brief was filed on behalf of former USPTO Director Andrei Iancu; retired Federal Circuit judges Hon. Paul Michel (Ret.), Hon. Kathleen M. O’Malley (Ret.), and Hon. Randall R. Rader (Ret.); law professors Adam Mossoff, Richard A. Epstein, Hugh Hansen, Lateef Mtima, Kristen J. Osenga, Susan Scafidi, Ted M. Sichelman, Zvi S. Rosen, Bowman Heiden, and Geoffrey Manne; and Devlin Hartline, legal fellow at the Hudson Institute.

The Hanson Bridgett team was led by Raffi Zerounian, Garner Weng, Adam Hofmann, Rosanna Gan, and Kristine Craig.

About Hanson Bridgett

Hanson Bridgett LLP is a full service AmLaw 200 law firm with more than 200 attorneys across California. Creating a diverse workforce by fostering an atmosphere of belonging and intentional support has been a priority at Hanson Bridgett since its founding in 1958. We are dedicated to creating an environment that provides opportunities for people with varied backgrounds, both for attorneys and administrative professionals. We are also committed to the communities where our employees live and work and consider it part of our professional obligation to serve justice by encouraging and supporting pro bono and social impact work.

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