No.

22-148

In the
Supreme Court of the United States

JACK DANIEL’S PROPERTIES, INC.,

Petitioner,

v.

VIP PRODUCTS LLC,

Respondent.

On Petition for a Writ of Certiorari to the United

States Court of A ppeals for the Ninth Circuit

BRIEF IN OPPOSITION

Bennett Evan Cooper

Counsel of Record
David G. Bray
Dickinson Wright PLLC
1850 North Central Avenue,
Suite 1400
Phoenix, Arizona 85004
(602) 285-5000
[email protected]

Counsel for Respondent

315623

A
(800) 274-3321 • (800) 359-6859
 i

QUESTIONS PRESENTED

1. Does the Rogers test apply to an artistic parody

of the famous Jack Daniel’s whiskey bottle to determine
trademark infringement?

2. Does the Trademark Dilution Revision Act’s

statutory exception for “noncommercial use” apply to an
artistic parody of the famous Jack Daniel’s whiskey bottle?
 ii

CORPORATE DISCLOSURE STATEMENT

Respondent VIP Products LLC is an Arizona limited

liability company, and no publicly traded company owns
10% or more of the interest in Respondent.
 iii

TABLE OF CONTENTS
Page
QUESTIONS PRESENTED . . . . . . . . . . . . . . . . . . . . . . . i

CORPORATE DISCLOSURE STATEMENT . . . . . . . ii

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . iii

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . . v

INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

STATEMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

REASONS FOR DENYING THE PETITION . . . . . . 8

I. There Is No Circuit Conflict or Split on

the Application of the Rogers Test to
Expressive Works . . . . . . . . . . . . . . . . . . . . . . . . . .8

A. The Ninth Circuit correctly held that

the Bad Spaniels parody dog toy
is protected expression . . . . . . . . . . . . . . . . . 9

B. E ve r y c i r c u i t t o c on s i d e r t h e
issue has adopted or endorsed the
Rogers test . . . . . . . . . . . . . . . . . . . . . . . . . . 13

C. JDPI’s cases do not represent a circuit

split . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
 iv

Table of Contents
Page
D. The Ninth Circuit correctly held that
Rogers applies . . . . . . . . . . . . . . . . . . . . . . . . 22

II. The Ninth Circuit Correctly Interpreted

and Applied the TDRA as Required by
the First Amendment, and Consistently
with Existing Law . . . . . . . . . . . . . . . . . . . . . . . . 25

A. T he T DR A may not reg u lat e a

work of creative expression, which
is fully protected, noncommercial
speech . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

B. The Bad Spaniels parody dog toy

is fully protected, noncommercial
speech . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

C. T h e T D R A’s n o n c o m m e r c i a l -
use exception is an independent
st at ut or y b a s i s for pr ot e c t i n g
expression . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

D. JDPI’s cases do not represent a circuit

split. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34
 v

TABLE OF CITED AUTHORITIES

Page
CASES

Am. Acad. of Pain Mgmt. v. Joseph,

353 F.3d 1099 (9th Cir. 2004) . . . . . . . . . . . . . . . . . . . 29

AMF Inc v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979) . . . . . . . . . . . . . . . . . . . . 23

Bigelow v. Virginia,
421 U.S. 809 (1975) . . . . . . . . . . . . . . . . . . . . . . . . . . . 30

Bolger v. Youngs Drug Prods. Corp.,

463 U.S. 60 (1983) . . . . . . . . . . . . . . . . . . . 26, 28, 29, 30

Brown v. Ent. Merchs. Ass’n,

564 U.S. 786 (2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Campbell v. Acuff-Rose Music, Inc.,

510 U.S. 569 (1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

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

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

Chooseco LLC v. Netflix, Inc.,

439 F. Supp. 3d 308 (D. Vt. 2020) . . . . . . . . . . . . . . . 27

City of Lakewood v. Plain Dealer Publ’g Co.,

486 U.S. 750 (1988) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
 vi

Cited Authorities
Page
Cliff Notes, Inc. v. Bantam Doubleday Dell
Publ’g Grp., Inc.,
886 F.2d 490 (2d Cir. 1989) . . . . . . . . . . . . 12, 21, 24, 31

Dex Media W., Inc. v. City of Seattle,

696 F.3d 952 (9th Cir. 2012) . . . . . . . . . . . . . . . . . 28, 29

Dr. Seuss Enters. v. Penguin Books USA, Inc.,

109 F.3d 1394 (9th Cir. 1997) . . . . . . . . . . . . . . . . . . . 31

Elvis Presley Enters. v. Capece,

141 F.3d 188 (5th Cir. 1998) . . . . . . . . . . . . . . . . . . . . 21

ETW Corp. v. Jireh Publ’g, Inc.,

332 F.3d 915 (6th Cir. 2003) . . . . . . . . . . . . . . . . . . . . 16

Facenda v. N.F.L. Films, Inc.,

542 F.3d 1007 (3d Cir. 2008) . . . . . . . . . . . . . . . . . . . . 15

Farah v. Esquire Mag.,

736 F.3d 528 (D.C. Cir. 2013) . . . . . . . . . . . . . . . . . . . . 9

Fed. Election Comm’n v. Wis. Right to Life, Inc.,

551 U.S. 449 (2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

Fortres Grand Corp. v. Warner Bros. Ent. Inc.,

947 F. Supp. 2d 922 (N.D. Ind. 2013), aff’d on
other grounds, 763 F.3d 696 (7th Cir. 2014) . . . . . . . 17

Gold v. Att’y Gen. of N.Y.,

870 F.3d 89 (2d Cir. 2017) . . . . . . . . . . . . . . . . . . . . . . 10
 vii

Cited Authorities
Page
Gordon v. Drape Creative, Inc.,
909 F.3d 257 (9th Cir. 2018) . . . . . . . . . . . . . . 13, 22, 24

Harley-Davidson, Inc. v. Grottanelli,

164 F.3d 806 (2d Cir. 1999) . . . . . . . . . . . . . . . . . . 19, 20

Hidden City Phila. v. ABC, Inc.,

2019 WL 1003637 (E.D. Pa. Mar. 1, 2019) . . . . . . . . 15

Hilton v. Hallmark Cards,

599 F.3d 894 (9th Cir. 2010) . . . . . . . . . . . . . . . . . . . . 29

Hunt v. City of Los Angeles,

638 F.3d 703 (9th Cir. 2011) . . . . . . . . . . . . . . . . . . . . 28

Hurley v. Irish-Am. Gay, Lesbian

& Bisexual Grp. of Bos.,
515 U.S. 557 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

Jordache Enters. v. Hogg Wyld, Ltd.,

828 F.2d 1482 (10th Cir. 1987) . . . . . . . . . . . . . . . . . . 21

Jordan v. Jewel Food Stores, Inc.,

743 F.3d 509 (7th Cir. 2014) . . . . . . . . . . . . . . . . . . . . 26

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

811 F.2d 26 (1st Cir. 1987) . . . . . . . . . . . . . . . 6, 7, 9, 31
 viii

Cited Authorities
Page
Liberty Counsel, Inc. v. Guidestar USA, Inc.,
2018 WL 1032372 (E.D. Va. Jan. 23, 2018), aff’d,
737 F. App’x 171 (4th Cir. 2018) . . . . . . . . . . . . . . . . . 28

Louis Vuitton Malletier S.A. v.

Haute Diggity Dog, LLC,
507 F.3d 252 (4th Cir. 2007) . . . . . . . . . . . . . . . . . . . . . 7

Louis Vuitton Malletier, S.A. v.

My Other Bag, Inc.,
674 F. App’x 16 (2d Cir. 2016) . . . . . . . . . . . . . . 9, 20, 27

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

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

Mattel, Inc. v. Walking Mountain Prods.,

353 F.3d 792 (9th Cir. 2003) . . . . . . . . . . . . . . . . . . . . 16

Mut. of Omaha Ins. Co. v. Novak,

836 F.2d 397 (8th Cir. 1987) . . . . . . . . . . . . . . 19, 21, 22

Nike, Inc. v. “Just Did It” Enterprises,

6 F.3d 1225 (7th Cir. 1993) . . . . . . . . . . . . . . . . . . 19, 20

Novalogic, Inc. v. Activision Blizzard,

41 F. Supp. 3d 885 (C.D. Cal. 2013) . . . . . . . . . . . . . . 24

Parks v. LaFace Records,

329 F.3d 437 (6th Cir. 2003) . . . . . . . . . . . . . . . . . . . . 21
 ix

Cited Authorities
Page
Polaroid Corp. v. Polarad Elecs. Corp.,
287 F.2d 492 (2d Cir. 1961) . . . . . . . . . . . . . . . . . . . . . 23

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

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

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

Seale v. Gramercy Pictures,

949 F. Supp. 331, 339 (E.D. Pa. 1996), aff’d mem.,
156 F.3d 1225 (3d Cir. 1998) . . . . . . . . . . . . . . . . . . . . 15

Sporting Times, LLC v. Orion Pictures Corp.,

291 F. Supp. 3d 817 (W.D. Ky. 2017) . . . . . . . . . . . . . 27

Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,

588 F.3d 97 (2d Cir. 2009) . . . . . . . . . . . . . . . . . . . . . . 33

Twentieth Century Fox Television v.

Empire Distrib. Inc.,
875 F.3d 1192 (9th Cir. 2017) . . . . . . . . . . . . . . . . . . . 14

Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd.,

996 F.2d 1366 (2d Cir. 1993) . . . . . . . . . . . . . . . . . . . . 15

Univ. of Ala. Bd. of Trs. v. New Life Art, Inc.,

683 F.3d 1266 (11th Cir. 2012) . . . . . . . . . . . . . . . . . . 17

VIP Prods. LLC v. Jack Daniel’s Props., Inc.,

953 F.3d 1170 (9th Cir. 2020) . . . . . . . . . . . . . . . . . . . . 5
 x

Cited Authorities
Page
Westchester Media v. PRL USA Holdings, Inc.,
214 F.3d 658 (5th Cir. 2000) . . . . . . . . . . . . . . 15, 21, 22

White v. Samsung Elecs. Am., Inc.,

989 F.2d 1512 (9th Cir. 1993) . . . . . . . . . . . . . . . . . . . 13

STATUTES & RULES

15 U.S.C. § 1125(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

15 U.S.C. § 1125(a)(1)(A) . . . . . . . . . . . . . . . . . . . . . . . . . 23

15 U.S.C. § 1125(c)(3)(A) . . . . . . . . . . . . . . . . . . . . . . 31, 32

15 U.S.C. § 1125(c)(3)(B) . . . . . . . . . . . . . . . . . . . . . . . . . .32

15 U.S.C. § 1125(c)(3)(C) . . . . . . . . . . . . . . . . . . 3, 31, 32, 33

Trademark Dilution Revision Act § 43(c)(3)(C)

(2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

Fed. R. Evid. 201 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

OTHER AUTHORITIES

Muireann Bolger, Applying the Rogers Test:

A Step Too Far?, World Intell. Prop. Rev.,
June 7, 2022 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
 xi

Cited Authorities
Page
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 Rep. 833 (2019). . . . . . . . . . . 15

Jared I. Kagan & Emily R. Hush, Parody Chew

Toys and the First Amendment, Landslide,
Jan./Feb. 2021 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18

Jared I. Kagan, Bad Spaniels Make Bad

Law: Ninth Circuit Says Dog Toy is an
Expressive Work Entitled to First Amendment
Protection, IPWatchdog (Apr. 3, 2020) . . . . . . . . . . 18

Hannah Knab, Note, Jack Daniel’s Highlights

the Second and Ninth Circuit’s Divide
on the Application of the Rogers Test,
10 Am. Bus. L. Rev. 517 (2022) . . . . . . . . . . . . . . . . . 18

J. Thomas McCarthy, McCarthy on Trademarks

and Unfair Competition (5th ed. 2020) . . . . . . passim

Zachary Shufro, Based on a True Story: The

Ever-Expanding Progeny of Rogers v.
Grimaldi, 32 Fordham Intell. Prop. Media
& Ent. L.J. 391 (2022) . . . . . . . . . . . . . . . . . . . . . . . . . 18

Wacky Packages Alphabetized Crosslist, https://

wackypacks.com/‌stickers/‌a lphabetical.html
(last visited Oct. 14, 2022) . . . . . . . . . . . . . . . . . . . . . 12
 xii

Cited Authorities
Page
Wa c k y P a c k a g e s , W i k i p e di a , h t t p s : / /
en.w ik ipedia.org /w ik i / Wacky _‌P ackages
(last visited Oct. 14, 2022) . . . . . . . . . . . . . . . . . . . . . 12
 1

INTRODUCTION

It is ironic that America’s leading distiller of whiskey

both lacks a sense of humor and does not recognize when
it—and everyone else—has had enough.
Petitioner Jack Daniel’s Properties Inc.
(“JDPI”) has waged war against Respondent
VIP Products LLC for having the temerity
to produce a pun-filled parody of JDPI’s
iconic bottle —the Bad Spaniels Silly
Squeaker dog toy. In the playful parodic
tradition that has ranged over a half century
from Topps’s Wacky Packages trading cards
through ‘Weird Al’ Yankovic, VIP put out
a chewable dog toy. VIP has never sold
whiskey or other comestibles, nor has it used
“Jack Daniel’s” in any way (humorously or
not). It merely mimicked enough of the iconic bottle that
people would get the joke.

JDPI is now back before this Court for the second time.
In 2021, this Court denied JDPI’s petition challenging the
Ninth Circuit’s order to the district court to apply the
Rogers test (named after Rogers v. Grimaldi, 875 F.2d
994, 998 (2d Cir. 1989)) to JDPI’s trademark-infringement
claim, and to enter judg ment for VIP on JDPI’s
trademark-dilution claim. To obtain the Ninth Circuit’s
summary affirmance of the district court’s judgment for
VIP on both claims, JDPI waived any “challenge [to] the
district court’s post-remand ruling on appeal.” Doc. 14-1
at 15. So what this Court has now before it is exactly the
same as what it had before. JDPI has deliberately forgone
appellate review of the only potentially distinguishing
element, i.e., the district court’s determination that the
 2

Rogers test favors VIP—a result that JDPI once told this
Court was a sure bet.1

Another thing that has not changed is JDPI’s failure

to demonstrate an intercircuit conflict. Every circuit that
has addressed the issue has adopted the Rogers test to
reconcile trademark rights with First Amendment rights.
No other circuit has held that the Rogers test does not apply
to products like VIP’s parody dog toy. The Ninth Circuit
did not perceive that it was creating or perpetuating a
circuit conflict, and no other circuit has recognized a
conflict or criticized the Ninth Circuit’s ruling. In fact, to
find even critical nonjudicial commentary, JDPI had to
resort to citing articles written by counsel for its amici.
JDPI is left arguing that other circuits have not yet
applied the Rogers test to similar goods, or that they have
rejected claims like JDPI’s on other grounds. Neither is
surprising, given the small number of cases that have
addressed the infrequently raised issues presented here.
But neither reflects a circuit conflict warranting this
Court’s review at this time.

The unanimous Ninth Circuit panel decided this case

correctly, and not one of the nearly thirty Ninth Circuit
active judges even called for a vote each time JDPI sought
rehearing en banc. There is no dispute by any party or any
court in this case that the Bad Spaniels parody dog toy
is an expressive work. The Ninth Circuit correctly held
that the Rogers test applies to the facts here. The Ninth
Circuit also correctly held that the Bad Spaniels parody

1.  JDPI assured this Court in its prior petition that the
Ninth Circuit’s holding that the Rogers test applied was “outcome-
determinative” and “dispose[s] of the case,” Pet. 30, No. 20-365,
and reiterated in its reply that the issue was “case-dispositive,”
Reply Br. 8, No. 20-365.
 3

was noncommercial speech under this Court’s commercial-

speech doctrine and therefore was exempted from liability
under the statutory “noncommercial use” exception of the
Trademark Dilution Revision Act of 2006 (“TDRA”), 15
U.S.C. § 1125(c)(3)(C).

In reality, JDPI’s (and its amici’s) quarrel is not with

the Ninth Circuit’s manifestly correct rulings below, but
with the balance Congress and the courts have struck
between trademark rights and First Amendment rights,
and with the principle that the First Amendment does
not permit “the trademark owner … to control public
discourse” about its trademark. Mattel, Inc. v. MCA
Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002). If JDPI
and its amici are concerned about competitors’ marketing
alcoholic beverages or marijuana-laced cookies to children,
see, e.g., Pet. 7, 28–29, 31, they should sue those parties.
VIP sells a dog toy called “Bad Spaniels Silly Squeaker”
with a picture of a dog and no reference to alcohol, and
the only people who would understand what was being
parodied are people already familiar with whiskey. No
one—not a child, not a dog—is going to be harmed by
VIP’s parody. If there is some grand principle at stake,
this is simply not the right case to be raising it. The
petition for certiorari should be denied.

STATEMENT

1. VIP designs, manufactures, markets, and sells dog

toys. Pet App. 26a, 46a. Among its product offerings is a
parody line branded “Silly Squeakers®.” Id. VIP’s Silly
Squeakers line includes a variety of toys in the shapes of
beer, wine, soda, and liquor bottles. Pet. App. 47a–48a.
Among them is the Bad Spaniels Silly Squeaker. Pet.
App. 48a.
 4

VIP designed the Bad Spaniels Silly Squeaker to

be a comical parody of the Jack Daniel’s black-label
whiskey. Pet. App. 69a. As the Ninth Circuit stated,
“VIP’s purported goal in creating Silly Squeakers was to
‘reflect’ ‘on the humanization of the dog in our lives,’ and
to comment on ‘corporations [that] take themselves very
seriously.’” Pet. App. 26a. The district court acknowledged
that VIP owner Stephen Sacra’s “intent behind producing
the Silly Squeakers line of toys was to develop a creative
parody on existing products.” Pet. App. 47a.

To accomplish the parodic effect, the Bad Spaniels

Silly Squeaker invokes elements of the Jack Daniel’s
black-label whiskey bottle and artistically transforms
those elements in order to communicate the parody.
“Jack Daniel’s” becomes “Bad Spaniels,” “Old No. 7”
becomes “Old No. 2,” and “Tennessee whiskey” becomes
“Tennessee carpet.” References to alcohol content
are transformed into “43% POO BY VOL.” and “100%
SMELLY”. Pet. App. 48a. Bad Spaniels approximates
the shape and size of a Jack Daniel’s black-label whiskey
bottle but features the picture of, in the district court’s
words, a “wide-eyed spaniel.” Pet. App. 48a.

2. In September 2014, JDPI “demand[ed] that VIP

cease all further sales of the Bad Spaniels toy.” Pet. App.
26a. VIP promptly filed the present action for a declaratory
judgment that its parody of the Jack Daniel’s whiskey
bottle “does not infringe or dilute any claimed trademark
rights” of JDPI. Pet. App. 26a. JDPI counterclaimed for
an injunction and generally asserted that the Bad Spaniels
Silly Squeaker infringed and diluted JDPI’s trademarks.
Pet. App. 26a–27a.
 5

3. In September 2016, the district court denied VIP’s

motion for summary judgment, rejecting VIP’s First
Amendment defenses, including its noncommercial-use
and fair-use defenses, e.g., the fair-use defense based on
parody. Pet. App. 49a–50a. Although the district court
found that Bad Spaniels was an expressive work, the
court refused to apply the Rogers test and the TDRA’s
noncommercial-use exception, leaving for a bench trial
all of JDPI’s counterclaims. Pet. App. 50a.

The district court found that VIP used an “adaptation”

of JDPI’s trademark and trade dress “for the dual purpose
of making expressive comment as well as the commercial
selling of a non-competing product.” Pet. App. 89a. It found
Bad Spaniels to be a predominantly expressive work—the
court said that it was only “somewhat non-expressive,”
Pet. App. 90a— developed by a creative artist whose intent
“was to develop a creative parody,” Pet. App. 46a–47a.
Yet the court rejected VIP’s First Amendment defenses
because VIP sold the parody as “a commercial product,
its novelty dog toy.” Pet App. 90a.

In May 2018, following a four-day bench trial, the

district court permanently banned the parody, enjoining
VIP “from sourcing, manufacturing, advertising,
promoting, displaying, shipping, importing, offering for
sale, selling or distributing the Bad Spaniels dog toy.”
Pet. App. 27a, 42a.

4. The Ninth Circuit, in a unanimous panel decision,

reversed the district court’s judgment and remanded
“because the Bad Spaniels dog toy is an expressive work
entitled to First Amendment protection.” Pet. App. 25a;
VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d
 6

1170, 1172 (9th Cir. 2020). The court of appeals reversed

and vacated the district court’s permanent injunction; held
that the parody dog toy constituted a noncommercial use
such that it did not dilute JDPI’s mark by tarnishment
as a matter of law; held that the parody dog toy was an
expressive work to which the Rogers test applied; and
remanded for application of that test in the first instance.
Id.

In determining whether the Bad Spaniels parody was

an expressive work, the Ninth Circuit analyzed “whether
the work is ‘communicating ideas or expressing points of
view.’” Pet App. 30a–31a (indirectly quoting L.L. Bean,
Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir.
1987)). The court noted that the “work need not be the
expressive equal of Anna Karenina or Citizen Kane
to satisfy this requirement, and is not rendered non-
expressive simply because it is sold commercially.” Pet.
App. 31a (cleaned up).

Applying these settled standards, the Ninth Circuit

held “the Bad Spaniels dog toy, although surely not the
equivalent of the Mona Lisa, is an expressive work.”
Pet App. 31a. As the court explained, Bad Spaniels is a
humorous parody of the original:

The toy communicates a “humorous message,”

using word play to alter the serious phrase that
appears on a Jack Daniel’s bottle—“Old No. 7
Brand”—with a silly message—“The Old No.
2.” The effect is “a simple” message conveyed by
“juxtaposing the irreverent representation of
the trademark with the idealized image created
by the mark’s owner.”
 7

Id. (citations omitted). The Ninth Circuit quoted the First

Circuit’s decision in L.L. Bean, which afforded First
Amendment protection to a message “that business and
product images need not always be taken too seriously.”
Id. (quoting L.L. Bean, 811 F.2d at 34).

The Ninth Circuit noted that “[t]he fact that VIP

chose to convey this humorous message through a dog
toy is irrelevant.” Pet App. 32a (citing Hurley v. Irish-
Am. Gay, Lesbian & Bisexual Grp. of Bos., 515 U.S. 557,
569 (1995)). The Ninth Circuit also observed that it was
not the first court to find that dog toys can be “successful
parodies” of well-known brands, pointing to the Fourth
Circuit’s conclusion that a parody dog toy did not infringe
as a matter of law. Id. (discussing Louis Vuitton Malletier
S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir.
2007) (affirming summary judgment for dog-toy maker)).

JDPI sought rehearing en banc. Pet. App. 21a. The

Ninth Circuit denied rehearing, with not a single judge
even requesting a vote. Id.

5. JDPI then filed a petition for certiorari raising

the precise issues raised here: whether the Rogers test
should be applied to VIP’s Bad Spaniels Silly Squeaker,
and whether the dilution claim was barred under the
noncommercial-use exception. As now, that petition was
supported by numerous amicus briefs submitted by
trademark owners and their organizations. This Court
denied the petition. Pet. App. 20a.

6. On remand, the district court followed the

Ninth Circuit’s mandate. It entered judgment for VIP
on the dilution claim, and it entertained briefing on
 8

the consequences of applying the Rogers test to the

infringement claim. The district court concluded what
JDPI had predicted: the Rogers test required judgment
for VIP. Pet. App. 11a–18a. It then entered judgment for
VIP. Pet. App. 3a.

7. On appeal, JDPI requested summary affirmance

so that it could bring yet another petition for rehearing
en banc and yet another petition for certiorari. Pet. App.
2a. To accomplish that it, JDPI waived any challenge to
the district court’s application of the Rogers test. Doc.
14-1 at 15. Granting that wish, the Ninth Circuit panel
summarily affirmed. Pet. App. 2a. Yet again, not a single
Ninth Circuit judge called for a vote on JDPI’s petition
for rehearing en banc. Pet. App. 1a.

This successive, repetitive petition followed.

REASONS FOR DENYING THE PETITION

I. There Is No Circuit Conf lict or Split on the

Application of the Rogers Test to Expressive Works.

As to JDPI’s infringement claim, the only issue the

Ninth Circuit decided was whether the Bad Spaniels
parody was an expressive work to be evaluated under
the Rogers test. The unanimous panel answered in the
affirmative and remanded the case to the district court
for application of the test. Particularly in light of JDPI’s
express waiver of any appeal of the district court’s
application of the Rogers test, the only issue presented
by the petition whether there is a current disagreement
among the circuits on the standard that should govern
application of the Lanham Act to expressive works. There
is not.
 9

A. The Ninth Circuit correctly held that the

Bad Spaniels parody dog toy is protected
expression.

The Bad Spaniels Silly Squeaker is quintessential

parody, that is, “a simple form of entertainment conveyed
by juxtaposing the irreverent representation of the
trademark with the idealized image created by the mark’s
owner.” L.L. Bean, 811 F.2d at 34.

“Parody is a form of artistic expression covered by

the First Amendment.” 6 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 31:153 (5th
ed. 2022). Parody is a form of satire, which “is a long-
established artistic form that uses means such as ridicule,
derision, burlesque, irony, parody, or caricature to censure
the vices, follies, abuses, or shortcomings of an individual
or society.” Farah v. Esquire Mag., 736 F.3d 528, 536 (D.C.
Cir. 2013) (cleaned up). “Although satire has been employed
since the time of Ancient Greece, it remains one of the
most imprecise of all literary designations—a notoriously
broad and complex genre whose forms are as varied as
its victims.” Id. (cleaned up). The D.C. Circuit explained,
“Sometimes satire is funny. Othertimes it may seem cruel
and mocking, attacking the core beliefs of its target. And
sometimes it is absurd ….” Id. (citations omitted). Thus,
it is well established that “[t]he fact that the joke on [the
plaintiff’s] luxury image is gentle, and possibly even
complimentary [to the plaintiff], does not preclude it from
being a parody.” Louis Vuitton Malletier, S.A. v. My Other
Bag, Inc., 674 F. App’x 16, 18 (2d Cir. 2016).

Because VIP’s Bad Spaniels Silly Squeaker is a

classic parody, it had to borrow enough from JDPI’s
iconic bottle to make the parody work. The D.C. Circuit
 10

recognized that, as with other forms of satire, in parody

“the style of an individual or work is closely imitated for
comic effect or in ridicule.” Id. As this Court held, “Parody
needs to mimic an original to make its point, and so has
some claim to use the creation of its victim’s (or collective
victims’) imagination ….” Campbell v. Acuff-Rose Music,
Inc., 510 U.S. 569, 580–81 (1994). Whether the “parody
is in good taste or bad does not and should not matter,”
and even though the Court “might not assign a high rank
to the parodic element here,” the standard is whether
the defendant’s work “reasonably could be perceived
as commenting on the original or criticizing it, to some
degree.” Id. at 583. “[A] parody enjoys First Amendment
protection notwithstanding that not everybody will get
the joke.” Gold v. Att’y Gen. of N.Y., 870 F.3d 89, 102 (2d
Cir. 2017).

JDPI has always admitted that VIP’s Bad Spaniels

Silly Squeaker is a parody: it acknowledged to this Court
that Bad Spaniels constitutes a “humorous use of another’s
trademark” and “imitates a Jack Daniel’s whiskey bottle,
while adding poop humor.” Pet. 4–5. Indeed, because
owning dogs is meant to be fun, parody products are
ubiquitous in the dog-merchandise industry. “The pet
owner who sees a line of products for pet dogs under
names that parody elegant and high-fashion marks, such
as CHEWNEL #5, DOG PERIGNON, SNIFFANY &
CO. and CHEWY VUITON, is not likely to mistakenly
think that those famous high-fashion houses are making
or authorizing the dog accessories.” 6 McCarthy on
Trademarks, supra, § 31:154.

As the Ninth Circuit appreciated, that the parody is

in the form of a dog toy that is sold to the public does not
 11

render “non-expressive” for First Amendment purposes.

Pet. App. 31a–32a; see also Brown v. Ent. Merchs. Ass’n,
564 U.S. 786, 790 (2011) (“[T]he basic principles of freedom
of speech … do not vary when a new and different medium
for communication appears.” (quotation omitted)); City
of Lakewood v. Plain Dealer Publ’g Co., 486 U.S. 750,
756 (1988) (“Of course, the degree of First Amendment
protection is not diminished merely because the … speech
is sold rather than given away.”). Indeed, a dog toy is a
fairly plastic medium for expression, including parody.
A dog toy is defined by its function, and its successful
performance turns on whether a dog could or would chomp
on it without choking on stray pieces. The dog toy could
come in any shape or color a canine might safely enjoy,
from a bone to the Venus de Milo.

JDPI and its amici belittle dog toys as “utilitarian” or

“ordinary commercial products,” but the line between dog
toys and greeting cards, parody study guides, calendars,
and video games–to which the Rogers test has been
applied–becomes indefensible when the parodic element
is entirely independent of the underlying tangible vehicle
of expression in artistic and functional dimensions. See,
e.g., 6 McCarthy on Trademarks, supra, § 31:144.50 (“The
Rogers test is used if the mark is used in any expressive
context.”) (collecting cases).

Here, VIP used its dog toys as a canvas for parodying,

among others, an iconic (and, from its petition, self-
obsessed) whiskey brand. It did what ‘Weird Al’ Yankovic
did when he parodied Coolio’s Gangsta’s Paradise with
Amish Paradise, or what Topps has done to hundreds
of similarly iconic brands since 1967, through its Wacky
Packages trading cards and stickers that parody similarly
 12

iconic consumer products, from “Ratz Crackers,” “Jolly

Mean Giant,” “Gulp Oil,” “Lame O Lakes,” and “Miracle
Weep” to “Battletime Beer,” “Blast Blew Ribbon Beer,”
“Muller Beer,” “Jim Mean Kentucky Sharp Broken
Whiskey,” “Old Grand-Mom Whiskey,” and “South
Beached Whale Diet.” At the height of their popularity,
Wacky Packages outsold Topps baseball cards, when they
were by far the most-sold trading card items in the United
States. 2 Yet the world did not end.

JDPI complains that VIP’s Bad Spaniels Silly

Squeaker bore on its hang tag a disclaimer of affiliation in
too small a font, Pet. 12, but that is irrelevant. “There is no
requirement that the cover of a parody carry a disclaimer
that it is not produced by the subject of the parody, and
we ought not to find such a requirement ….” Cliff Notes,
Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d
490, 496 (2d Cir. 1989). This is not a case where someone
claimed a parody just by using the claimant’s mark on
an inapt product—VIP did not put “Jack Daniel’s” on a
dog toy as the sum total of the would-be parody. That
Bad Spaniels Silly Squeaker is a parody is obvious from
“Bad Spaniels,” the cartoon dog, and the other humorous
transformations of the original.

This case is not really about confusion. It is about

trademark owners who do not like being parodied—
however gently—and do not enjoy that their brands’ iconic

2.  This Court may take judicial notice of such generally known
background facts under Fed. R. Evid. 201. See, e.g., Wacky Packages,
Wikipedia , https://en.wikipedia.org/wiki/Wacky_‌Packages (last
visited Oct. 14, 2022); Wacky Packages Alphabetized Crosslist,
https://wackypacks.com/‌stickers/‌a lphabetical.html (last visited
Oct. 14, 2022).
 13

character makes them subject to parody that they cannot

control. But “‘the last thing we need, the last thing the
First Amendment will tolerate, is a law that lets public
figures keep people from mocking them.’” Cardtoons, L.C.
v. Major League Players Ass’n, 95 F.3d 959, 972–73 (10th
Cir. 1996) (quoting White v. Samsung Elecs. Am., Inc., 989
F.2d 1512, 1519 (9th Cir. 1993) (Kozinski, J., dissenting)).

B. Every circuit to consider the issue has adopted

or endorsed the Rogers test.

Given that Bad Spaniels Silly Squeaker is an

expressive work, there is no cert-worthy conflict presented
here because every circuit that has addressed the issue
has adopted the Second Circuit’s Rogers test to resolve
infringement claims that target expressive works. “[W]
here artistic expression is at issue, [courts] have expressed
concern that the traditional [likelihood-of-confusion] test
fails to account for the full weight of the public’s interest
in free expression.” Gordon v. Drape Creative, Inc., 909
F.3d 257, 264 (9th Cir. 2018) (cleaned up). When a mark
is used in an expressive work, courts assess likelihood of
confusion in a different way because “First Amendment
concerns” must “inform [a court’s] consideration of the
scope of the [Lanham] Act as applied to claims involving”
expressive works. Rogers, 875 F.2d at 998.

In the seminal 1989 Rogers decision, the Second

Circuit articulated a two-part test for assessing whether
the use of a mark in an expressive work is “likely to
cause confusion” within the meaning of the Lanham Act.
Such a use, even if found to be likely confusing under the
traditional analysis, is not actionable unless (1) the use has
 14

“no artistic relevance to the underlying work whatsoever,”

or (2) the work “explicitly misleads as to the source or the
content of the work.” Rogers, 875 F.2d at 999. Applying
the Rogers test is straightforward: “the only threshold
requirement for the Rogers test is an attempt to apply the
Lanham Act to First Amendment expression.” Twentieth
Century Fox Television v. Empire Distrib. Inc., 875 F.3d
1192, 1198 (9th Cir. 2017). Contrary to JDPI’s repeated
assertion, the Rogers test does not abandon all reference
to likelihood of confusion, e.g., Pet. 33, but rather channels
that element through the standard of whether the work,
even if it has artistic relevance, “explicitly misleads as to
the source or content of the work.”

Rogers is illustrative. That case involved a Federico

Fellini film called Ginger and Fred about “two fictional
Italian cabaret performers … who, in their heyday,
imitated” Ginger Rogers and Fred Astaire and so
“became known in Italy as ‘Ginger and Fred.’” Rogers,
875 F.2d at 996–97. Ginger Rogers sued, alleging that
the film’s title violated the Lanham Act “by creating the
false impression that the film was about her or that she
sponsored, endorsed, or was otherwise involved in the
film.” Id. at 997. Despite survey evidence showing likely
confusion and evidence of actual confusion, id. at 1001,
the court found no infringement because the use was
artistically relevant to the work, and the work did not
“explicitly mislead[] as to the source or content of the
work,” id. at 999.

The Rogers test was a sea change in how courts treat

Lanham Act infringement claims involving expressive
works. When presented with the opportunity, every
circuit court has adopted or endorsed the Rogers test to
 15

determine infringement in cases involving expressive

works. “The Second Circuit’s Rogers balancing test is
now widely used by almost all courts.” 6 McCarthy on
Trademarks, supra, § 31:144.50 (collecting cases). “No
courts have rejected the Rogers test.” 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 Rep. 833, 834–35 (2019).

The Fifth Circuit adopted the Rogers test in

Westchester Media v. PRL USA Holdings, Inc., 214 F.3d
658 (5th Cir. 2000). In evaluating a claim for infringement
against the publisher of a lifestyle magazine, the Fifth
Circuit agreed with the Second Circuit that there is a
“tension between the protection afforded by the Lanham
Act to trademark owners and the protection afforded by
the First Amendment to expressive activity.” Id. at 664.
The court “adopted the Second Circuit’s approach” for
resolving that tension. Id. at 664–65 (quoting Twin Peaks
Prods., Inc. v. Publ’ns Int’l, Ltd., 996 F.2d 1366, 1379 (2d
Cir. 1993) (quoting Rogers, 875 F.2d at 999)).

The Rogers analysis was followed in Seale v. Gramercy

Pictures, 949 F. Supp. 331, 339 (E.D. Pa. 1996), which the
Third Circuit affirmed without opinion, 156 F.3d 1225
(3d Cir. 1998) (mem.); see also Hidden City Philadelphia
v. ABC, Inc., 2019 WL 1003637, at *3 (E.D. Pa. Mar.
1, 2019) (applying Rogers to dismiss state-law claim of
trademark infringement against expressive use of title
of video website). 3

3. In Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1018

(3d Cir. 2008), the Third Circuit decided not to apply the Rogers
 16

The Ninth Circuit first adopted the Rogers test in 2002

in Mattel, Inc. v. MCA Records, which involved trademark
dilution and infringement claims based on the music band
Aqua’s commercially successful parody song Barbie Girl.
Applying Rogers to the parody song, the Ninth Circuit
concluded “that MCA’s use of Barbie is not an infringement
of Mattel’s trademark.” 296 F.3d at 902. The Ninth Circuit
later applied the Rogers test to another parodic use of
Barbie in Mattel, Inc. v. Walking Mountain Products, 353
F.3d 792, 801 (9th Cir. 2003), which concerned postcards
sold for profit that bore parodic photographs depicting
the famous doll. The court affirmed summary judgment
for the parodist because his use was artistically relevant
to his “parodic message,” and the photographs did “not
explicitly mislead as to Mattel’s sponsorship of the works.”
Id. at 807.

The year after the Ninth Circuit adopted the Rogers

test, the Sixth Circuit followed suit. Parks v. LaFace
Records, 329 F.3d 437, 450 (6th Cir. 2003) (holding that
the likelihood-of-confusion and “alternative means”
tests do not give sufficient weight to the public interest
in freedom of expression). Then, in ETW Corp. v. Jireh
Publishing, Inc., 332 F.3d 915, 936–37 (6th Cir. 2003),
the Sixth Circuit applied the Rogers test to the use of
a Tiger Woods’s likeness in a painting of Woods at The
Masters golf tournament. The court held that even though
“[s]ixty-two percent” of survey respondents indicated
they thought Woods was affiliated or connected with,

test because it held the alleged infringement was not protected

expression. Nevertheless, the court ruled for the defendant,
overturning summary judgment for the plaintiff on the traditional
factors and remanding for trial. Id. at 1024–25.
 17

approved, or sponsored the painting, id. at 937 n.19, “[t]he

risk of misunderstanding, not engendered by any explicit
indication on the face of the print, is so outweighed by the
interest in artistic expression as to preclude application
of the [Lanham] Act,” id. at 937.

Although the Seventh Circuit has not expressly

adopted the Rogers test, it affirmed a district court
decision that dismissed a claim for infringement and
held that even if the plaintiff could demonstrate that the
use constituted “actionable trademark infringement, it is
protected by the First Amendment under Rogers.” Fortres
Grand Corp. v. Warner Bros. Ent. Inc., 947 F. Supp. 2d
922, 931–32 (N.D. Ind. 2013) (“The [Rogers test] is one of
the beacons used to navigate the murky boundary between
trademark law and the First Amendment.”), aff’d on other
grounds, 763 F.3d 696 (7th Cir. 2014).

The Eleventh Circuit adopted the Rogers test in

University of Alabama Board of Trustees v. New Life
Art, Inc., 683 F.3d 1266 (11th Cir. 2012), stating that
“we have no hesitation in joining our sister circuits by
holding that we should construe the Lanham Act narrowly
when deciding whether an artistically expressive work
infringes a trademark.” Id. at 1278. The court held that
the defendant’s painted depictions of the University’s
trademarked uniforms in unlicensed paintings, prints,
and calendars were protected expression under the Rogers
test. Id. at 1279.4

4.  Contrary to the misimpression left by one amicus, see

INTA Br. 13, the Eleventh Circuit did not apply the Rogers test
to mugs, towels, flags, or apparel solely because the defendant did
not argue on appeal for First Amendment protections for those
items and, given that waiver, “we need not address those issues
with respect to” those items. Id. at 1279, 1282–83.
 18

The uninterrupted trend in the circuit courts in favor

of Rogers continues. The Fourth Circuit recently endorsed
Rogers in Radiance Foundation, Inc. v. N.A.A.C.P.,
786 F.3d 316 (4th Cir. 2015). As noted above, that court
had previously used the traditional analysis to reject an
infringement claim based on a parody dog toy. Haute
Diggity Dog, 507 F.3d at 268–69.

In short, there is no circuit disagreement on the central

question at issue in this case: the standard that governs
analysis of Lanham Act infringement claims involving
expressive works. The Ninth Circuit did not perceive a
conflict, and no subsequent circuit has criticized the Ninth
Circuit’s decision below. Cases that do not even address
whether to apply the Rogers test, which JDPI and its amici
repeatedly cite, do not create a conflict based on what they
did not consider. Moreover, to find even critical nonjudicial
commentary on the Ninth Circuit’s decision, JDPI has
cited works that fall short of compelling authority: articles
written by counsel for JDPI’s own amici (without disclosure
of that association),5 law-student and new-graduate notes,6
and an apparently subscriber-only news “report” on the
“debate,” including amicus arguments.7 Pet. 32.

5.  Jared I. Kagan, Bad Spaniels Make Bad Law: Ninth

Circuit Says Dog Toy is an Expressive Work Entitled to First
Amendment Protection, IPWatchdog (Apr. 3, 2020); Jared
I. Kagan & Emily R. Hush, Parody Chew Toys and the First
Amendment, Landslide, Jan./Feb. 2021.
6.  Hannah Knab, Note, Jack Daniel’s Highlights the Second
and Ninth Circuit’s Divide on the Application of the Rogers Test,
10 Am. Bus. L. Rev. 517 (2022); Zachary Shufro, Based on a True
Story: The Ever-Expanding Progeny of Rogers v. Grimaldi, 32
Fordham Intell. Prop. Media & Ent. L.J. 391 (2022).
7.  Muireann Bolger, Applying the Rogers Test: A Step Too
Far?, World Intell. Prop. Rev., June 7, 2022.
 19

C. JDPI’s cases do not represent a circuit split.

JDPI argues that the Ninth Circuit, by applying the

Rogers test to VIP’s Bad Spaniels Silly Squeaker, has
created a conflict with the Second, Seventh, and Eighth
Circuits. Pet. 6–7, 18–22. Specifically, JDPI relies on
those circuits’ decisions in Harley-Davidson, Inc. v.
Grottanelli, 164 F.3d 806 (2d Cir. 1999); Nike, Inc. v.
“Just Did It” Enterprises, 6 F.3d 1225, 1228 n.3 (7th Cir.
1993); and Mutual of Omaha Insurance Co. v. Novak,
836 F.2d 397 (8th Cir. 1987). None of them comes close
to a conflict. Certainly the Ninth Circuit did not perceive
a conflict, and for good reason: two of the courts did not
even acknowledge the Rogers test, and the third declined
to apply it because the facts were clearly distinguishable.

The Second Circuit in Harley-Davidson cited its prior

decision in Rogers, explaining that “[w]e have accorded
considerable leeway to parodists whose expressive works
aim their parodic commentary at a trademark or a
trademarked product.” 164 F.3d at 812, The court declined
to apply Rogers because there was humor but no parody:
defendant’s “mark makes no comment on Harley’s mark;
it simply uses it somewhat humorously to promote his own
products and services, which is not a permitted trademark
parody use.” Id. at 813. The defendant had directly used
Harley’s bar-and-shield logo in advertisements, first by
a “hand-drawn copy of the bar-and-shield logo, with the
name ‘Harley-Davidson’ displayed on the horizontal bar”;
then, after Harley’s complaints, with “Harley-Davidson”
replaced by “American-Made” and an added banner
“UNAUTHORIZED DEALER”; then with eagle’s wings
behind the shield, which “was apparently patterned after
Harley-Davidson’s bicentennial logo design mark”; and
 20

finally with a pig wearing sunglasses. Id. at 809. Harley-

Davidson would be more relevant if someone put out
a dog toy labeled “Jack Daniel’s,” without any parodic
transformation. That is not this case.

Indeed, more recently, the Second Circuit distinguished

its decision in Harley-Davidson in affirming summary
judgment for the alleged infringer in Louis Vuitton
Malletier, S.A. v. My Other Bag, Inc., 674 F. App’x 16 (2d
Cir. 2016). “At the same time that [the defendant’s tote
bags] mimic LV’s designs and handbags in a way that is
recognizable, they do so as a drawing on a product that is
such a conscious departure from LV’s image of luxury—
in combination with the slogan ‘My other bag’—as to
convey that MOB’s tote bags are not LV handbags.” Id.
at 18. Citing Harley-Davidson, the court noted, “That
distinguishes this case from ones … where a trademark
was used merely to ‘promote’ or ‘sell’ goods and services,
which is impermissible.” Id. at 18. Again, that is not this
case.

JDPI’s citations to the Seventh Circuit’s opinion in

Nike and the Eighth Circuit’s opinion in Mutual of Omaha
are even more perplexing, since those opinions did not
address whether to apply the Rogers test at all. Nike
involved a defendant who sold t-shirts and sweatshirts
“with a ‘swoosh’ design identical to Nike, Inc.’s, but with
the word Mike instead,” and marketed such shirts to
people named “Michael.” 6 F.3d at 1226. The defendant,
who was himself named “Michael,” “admitted that his
‘whole point’ was to give someone viewing from a distance
the impression that the shirt actually read NIKE.” Id. at
1227. The opinion mentions Rogers only as the object of
“citing” in a footnote reference, and the Seventh Circuit
 21

did not address whether Rogers should be applied. The

court observed only that Nike “assumes with neither
citation nor argument that parody is an affirmative
defense,” while the district court had cited Cliffs Notes,
which cited Rogers, as employing a balancing test. Id. at
1228 n.3. The court reversed summary judgment for Nike,
holding that whether MIKE was intended as a parody
rather than mere passing off was a question for the jury.
Id. at 1232. 8

Finally, the Eighth Circuit’s opinion in Mutual of

Omaha is even more easily disposed of. The opinion
concerned an obvious parody—the defendant used
“Mutant of Omaha” along with “a side view of a feather-
bonneted, emaciated human head” and the words “Nuclear
Holocaust Insurance.” 836 F.2d at 398. But the opinion
could not create a conflict as to whether to apply the
Rogers test because it antedated Rogers by two years.9
Moreover, the so-called “alternative means” test employed
by Mutual of Omaha has been discredited in favor of the
Rogers approach, and it was rejected by Rogers itself.
Rogers, 875 F.2d at 998; see also Parks, 329 F.3d at 448–49,
450 (6th Cir.) (“reject[ing] the alternative avenues test”
because it does not “accord[] adequate weight to the First

8.  Similarly, in Elvis Presley Enterprises v. Capece, 141 F.3d

188 (5th Cir. 1998), also cited by JDPI, the Fifth Circuit did not
consider application of Rogers or the defendants’ First Amendment
defense at all because it was not properly raised on appeal. Id. at
193 n.2. Two years later, the Fifth Circuit adopted the Rogers test
in Westchester Media. 214 F.3d at 664–65.
9.  The same is true of other pre-Rogers cases cited by JDPI.
See, e.g., Jordache Enters. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th
Cir. 1987).
 22

Amendment interests”); Westchester Media, 214 F.3d at

672 n.18 (5th Cir.) (explicitly rejecting Novak’s “alternative
means test”). Mutual of Omaha does not justify certiorari
here.

Simply put, there is no circuit split to resolve. Every

circuit court to consider the issue has either adopted or
endorsed Rogers and no circuit court has rejected it. JDPI
is left with cases that antedated Rogers or did not address
the test. That does not create a current circuit split.

D. The Ninth Circuit correctly held that Rogers

applies.

The unanimous Ninth Circuit panel scrupulously

followed settled precedent in holding that the Bad Spaniels
parody dog toy constitutes First Amendment expression
subject to the Rogers test. The courts are virtually
unanimous in holding that, in the expressive context,
Rogers must be applied “as a rule of construction to avoid
conflict between the Constitution and the Lanham Act.”
Gordon, 897 F.3d at 1190.

JDPI argues the opposite, contending that the

Lanham Act’s statutory language mandates using the
traditional likelihood-of-confusion test in every case of
infringement, even those involving expressive works: “No
language in the statute permits a court to require that
[Rogers] showing in every case of humorous infringement.”
Pet. 33. But JDPI’s focus on whether the defendant’s
message was merely “humorous” is a red herring. The
question, as the Ninth Circuit recognized, is not merely
whether the defendant’s use of a mark was “humorous,”
but whether the defendant produced a true parody, i.e.,
 23

“create[d] a transformative work with new expression,

meaning or message.” Pet. 32a (cleaned up). The Ninth
Circuit correctly concluded that VIP did so here.

What JDPI fails to acknowledge is that the Rogers

approach, like the traditional approach, is an interpretation
of when the use of a mark in an expressive work is “likely
to cause confusion.” 15 U.S.C. § 1125(a)(1)(A). The
Rogers approach is simply a recognition that different
considerations come into play when assessing likelihood
of confusion in the context of an expressive work. This is
also why JDPI’s characterization of the Rogers approach
as a judicial exception that “clashes with the Lanham Act’s
structure” also misses the mark. Pet. 33. Congress did
not need to make an exception to trademark infringement
liability under 15 U.S.C. § 1125(a) because the Rogers test
is simply an interpretation of subsection 1125(a) in the
context of expressive works.

The Lanham Act does not furnish any particular

formula for evaluating whether the use of a mark is
“likely to cause confusion.” 15 U.S.C. § 1125(a)(1)(A). The
circuit courts have developed sets of factors to consider
in determining whether confusion is likely in a typical
case of related, purely commercial products. Compare
AMF Inc v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th
Cir. 1979) (listing Ninth Circuit factors), with Polaroid
Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.
1961) (listing Second Circuit factors). Even these various
“catalogue[s]” of factors do “not exhaust the possibilities—
the court may have to take still other variables into
account.” Polaroid, 287 F.2d at 495; see Sleekcraft,
599 F.2d at 348 n.11 (“The list is not exhaustive. Other
variables may come into play depending on the particular
facts presented.”).
 24

These “traditional” factors have their “origin in

cases of purely commercial exploitation.” Cliffs Notes,
886 F.2d at 495 n.3. In the purely commercial context,
there are no countervailing First Amendment interests
to consider. But “when a trademark owner claims that an
expressive work infringes on its trademark rights,” those
countervailing First Amendment interests must be taken
into account. Gordon, 909 F.3d at 260–61. Courts “use the
Rogers test to balance the competing interests at stake.”
Id. And they do so because, as the courts have repeatedly
explained, the traditional factors are “at best awkward
in the context of parody” and “artistic expression.” Cliff
Notes, 886 F.2d at 495 n.3.

JDPI and amici curiae disagree with the Rogers

because it does not make it easier for them to stifle
criticism either outright or through expensive, speech-
chilling litigation. See e.g., Novalogic, Inc. v. Activision
Blizzard, 41 F. Supp. 3d 885, 900 (C.D. Cal. 2013) (“The
Rogers test is relatively straightforward to apply and is
very protective of speech.”). But that is precisely what the
First Amendment requires in the context of protected
expression: clear rules regarding any boundaries on
protected speech, not the ad hoc, discretionary weighing
of factors fostered by the traditional approach. As this
Court explained in a different First Amendment context,
to avoid “chilling speech through the threat of burdensome
litigation,” First Amendment standards “must eschew
the open-ended rough-and-tumble of factors, which
invites complex argument in a trial court and a virtually
inevitable appeal. In short, it must give the benefit of any
doubt to protecting rather than stifling speech.” Fed.
Election Comm’n v. Wis. Right to Life, Inc., 551 U.S. 449,
469 (2007) (citations and quotations omitted).
 25

Congress and the courts have struck the proper

balance between trademark rights and First Amendment
rights. JDPI and its supporting amici are simply unhappy
with that balance because it does not permit them “to
control public discourse” about their trademarks. MCA
Records, 296 F.3d at 900.

II. The Ninth Circuit Correctly Interpreted and Applied

the TDRA as Required by the First Amendment,
and Consistently with Existing Law.

With respect to its dilution claim, this case is in

precisely the same posture as it was when this Court
denied JDPI’s prior petition for certiorari. The Ninth
Circuit held that VIP was entitled to judgment as a matter
of law, and it remanded for entry of judgment on mandate.
Despite the finality of the Ninth Circuit’s ruling, this
Court denied certiorari. It should do so again.

JDPI accuses the Ninth Circuit of “adopting” a broad

reading of the TDRA’s statutory noncommercial-use
exception, suggesting that no other circuit would find the
Bad Spaniels expressive parody a “noncommercial use.”
Pet. 25–26. That is at best the prediction of a future circuit
conflict, which militates against grant of certiorari at this
time. In any event, JDPI is incorrect. The Ninth Circuit
properly applied this Court’s commercial-speech doctrine
to the speech at issue and correctly held an obvious parody
to be fully protected, noncommercial speech such that the
TDRA’s noncommercial-use exception applied.
 26

A. The TDRA may not regulate a work of

creative expression, which is fully protected,
noncommercial speech.

The TDRA “provides three broad, overlapping

categories within which any use of a famous mark, even if
likely to cause harm or blurring, is not actionable: fair use;
news reporting and news commentary; and noncommercial
use.” Radiance, 786 F.3d at 330 (citing 15 U.S.C. § 1125(c)
(3) and holding that the noncommercial-use exemption
precluded the NAACP’s dilution-by-tarnishment claim
even though it made a prima facie showing of dilution).10

To determine whether the alleged dilutive use falls

within the noncommercial-use exemption, the courts,
including the Ninth Circuit, uniformly apply this Court’s
commercial-speech doctrine. See, e.g., Radiance, 786 F.3d
at 331 (“The term ‘noncommercial’ refers to the First
Amendment commercial speech doctrine.”). And contrary
to JDPI’s contention, the courts decide this legal issue as
a matter of law. See, e.g., Bolger v. Youngs Drug Prods.
Corp., 463 U.S. 60, 65 (1983) (“[W]e must first determine
the proper classification of the [speech] at issue here.”);
Jordan v. Jewel Food Stores, Inc., 743 F.3d 509, 515
(7th Cir. 2014) (“classifying [speech] as commercial or
noncommercial speech for constitutional purposes … is
a legal question”).

10.  The 2006 version of the TDRA defines in Lanham

Act § 43(c)(3)(C) a defense exempting from liability “[a]ny
noncommercial use of a mark.” This exemption is identical to an
exception in the 1996 Federal Trademark Dilution Act, but for the
inclusion in the 2006 version of the determiner “any.”
 27

In its seminal 2002 decision in Mattel, Inc. v. MCA

Records, 296 F.3d at 903, the Ninth Circuit took a deep
dive into the legislative history behind the noncommercial-
use exception and found that “ the exemption for
noncommercial speech is used as a somewhat inexact,
shorthand reference to ‘speech protected by the First
Amendment.’” Sporting Times, LLC v. Orion Pictures
Corp., 291 F. Supp. 3d 817, 826–27 (W.D. Ky. 2017) (quoting
and finding “the noncommercial use exemption reasoning
of Mattel persuasive,” and dismissing the “dilution claim
[as] meritless” under that rubric).

Stated somewhat differently, the “[l]egislative history

indicates that Congress intended the noncommercial
exemption to … incorporate the Supreme Court’s concept
of ‘commercial speech.’” 4 McCarthy on Trademarks,
supra, § 24:128. In MCA Records, the Ninth Circuit
held that “[t]o determine whether [the speech at issue]
falls within this exemption, we look to our definition of
commercial speech under our First Amendment caselaw.”
296 F.3d at 906.

Contrary to JDPI’s contention, this approach is not at

odds with the Fourth Circuit’s approach. See Radiance,
786 F.3d at 331 (“The term ‘noncommercial’ refers to
the First Amendment commercial speech doctrine.”).
Indeed, courts uniformly use this Court’s commercial-
speech doctrine to determine whether the speech at
issue falls within the TDRA’s statutory noncommercial-
use exemption. See Chooseco LLC v. Netflix, Inc., 439 F.
Supp. 3d 308, 324 (D. Vt. 2020) (“This [noncommercial-use]
‘exemption incorporates the concept of commercial speech
from the commercial speech doctrine.’”) (quoting MCA
Records); Liberty Counsel, Inc. v. Guidestar USA, Inc.,
 28

2018 WL 10323724, at *3 (E.D. Va. Jan. 23, 2018) (“The

term ‘noncommercial’ refers to the First Amendment
commercial speech doctrine.”) (quoting Radiance, 786
F.3d at 331), aff’d, 737 F. App’x 171 (4th Cir. 2018).

B. The Bad Spaniels parody dog toy is fully

protected, noncommercial speech.

There should be no question that the Bad Spaniels

parody dog toy constitutes noncommercial speech under
this Court’s commercial-speech doctrine. As this Court
has held, “[p]arody is a form of noncommercial expression
if it does more than propose a commercial transaction.”
Bolger, 463 U.S. at 66–67 (1983) (finding that speech does
not become “commercial” simply because the author had
economic motivation). Entirely consistent with this Court’s
definition, the Ninth Circuit held that the Bad Spaniels
Silly Squeaker does more than propose a commercial
transaction—it communicates a humorous parody—and
therefore is not commercial speech. 953 F.3d at 1176. That
holding is unassailable.

JDPI’s suggestion that Bad Spaniels would be deemed

commercial speech under the Fourth Circuit’s three-part
Bolger analysis (or that the Ninth Circuit does not use
that analysis to aid in determining the issue) is simply
incorrect. First, the Ninth Circuit does use the Bolger
analysis in cases that present “close questions,” Dex Media
W., Inc. v. City of Seattle, 696 F.3d 952, 958 (9th Cir. 2012)
(quoting Hunt v. City of Los Angeles, 638 F.3d 703, 715
(9th Cir. 2011)), which this case decidedly does not.

Second, the Bad Spaniels parody dog toy does not

qualify as commercial speech under the factors identified
 29

in Bolger. As the Ninth Circuit has applied this Court’s

decision, “[t]he factors identified in Bolger include
‘three characteristics which, in combination, support[]’
a conclusion that the document ‘at issue constitute[s]
commercial speech, including (i) their advertising format,
(ii) their reference to a specific product, and (iii) the
underlying economic motive of the speaker.’” Dex Media,
696 F.3d at 958 (quotation omitted).

The Bad Spaniels Silly Squeaker “is not advertising

the product; it is the product.” Hilton v. Hallmark
Cards, 599 F.3d 894, 905 n.7 (9th Cir. 2010); see also Am.
Acad. of Pain Mgmt. v. Joseph, 353 F.3d 1099, 1106 (9th
Cir. 2004) (first Bolger factor met only if “the speech
is admittedly advertising”). In short, “[e]ven the most
cursory examination of [Bad Spaniels] reveals that it is
not ‘concededly an advertisement’ and … it does not refer
to a specific product.” Dex Media, 696 F.3d at 959. VIP
is not offering or selling bottles of anything, much less
bottles of “Old No. 2” that contain “43% POO BY VOL.”

That leaves the final factor, economic motivation. VIP

did want to sell Bad Spaniels Silly Squeaker (as do most, if
not all, artists and parodists11), but “the fact that [VIP] has

11.  Cases applying Rogers to parody products routinely (if

not always) involve commercial products sold for a profit. See, e.g.,
MCA Records, 296 F.3d at 903 (finding “[t]hat is precisely what
MCA did with the Barbie mark: It created and sold to consumers
in the marketplace commercial products (the Barbie Girl single
and the Aquarium album) that bear the Barbie mark.”); Walking
Mountain, 353 F.3d at 797, 803 (finding that the “‘Food Chain
Barbie’ series earned [the parodist] income” and that the parodist
“had a commercial expectation and presumably hoped to find a
market for his art”).
 30

an economic motivation for [creating Bad Spaniels] would

clearly be insufficient by itself to turn [it] into commercial
speech.” Bolger, 463 U.S. at 67 (citing Bigelow v. Virginia,
421 U.S. 809, 818 (1975)).

There is no merit in JDPI’s contention that there is

a conflict in how courts determine whether the TDRA’s
noncommercial-use exemption applies, or that the issue
would have been decided differently under the Fourth
Circuit’s Bolger analysis. In fact, in the principal case
championed by JDPI on this issue, the Fourth Circuit
not only affirmed dismissal of the dilution claim, but
recognized more broadly that “[t]rademark law in
general and dilution in particular are not proper vehicles
for combatting speech with which one does not agree.
Trademarks do not give their holders under the rubric
of dilution the rights to stymie criticism.” Radiance, 786
F.3d at 332. The court continued:

Criticism of large and powerful entities in

particular is vital to the democratic function….
The article in this case was harsh. But that
did not forfeit its author’s First Amendment
liberties. The most scathing speech and the
most disputable commentary are also the ones
most likely to draw their intended targets’ ire
and thereby attract Lanham Act litigation. It
is for this reason that law does not leave such
speech without protection.

Id.

JDPI attempts to distinguish Radiance on the basis

that the speech there involved social criticism, but it fails
 31

to acknowledge that “[p]arody is regarded as a form of

social and literary criticism, having a socially significant
value as free speech under the First Amendment.” Dr.
Seuss Enters. v. Penguin Books USA, Inc., 109 F.3d
1394, 1400 (9th Cir. 1997); see also Cliffs Notes, 886 F.2d
at 493 (“parody and satire are deserving of substantial
freedom—both as entertainment and as a form of social
and literary criticism”). “Parody is a humorous form of
social commentary and literary criticism that dates back
as far as Greek antiquity.” L.L. Bean, 811 F.2d at 28. And
at least since the advent of Wacky Packages trading cards
in the 1960s, parodying famous brands has been part of
American culture.

Simply put, there is no reason to anticipate that any

other circuit would disagree with the Ninth Circuit’s
conclusion here.

C. The TDRA’s noncommercial-use exception is

an independent statutory basis for protecting
expression.

JDPI also contends that the Ninth Circuit erred and

created a circuit conflict by applying he TDRA’s statutory
noncommercial-use exception under 15 U.S.C. § 1125(c)
(3)(C) without also requiring satisfaction of the statutory
fair-use parody defense under 15 U.S.C. § 1125(c)(3)(A).
Pet. 25–26, 37. That argument misstates the law. The
Ninth Circuit explained in its detailed examination in
MCA Records of the TDRA’s legislative history that
the statute contains “three statutory exemptions [for]
uses that, though potentially dilutive, are nevertheless
permitted: comparative advertising; news reporting
and commentary; and noncommercial use.” 296 F.3d
 32

at 904. As the statute’s plain language and the cases

construing it make clear, these defenses can be asserted
in the alternative (as VIP did below), and the failure to
satisfy the requirements of one defense does not preclude
application of another. See, e.g., MCA Records, 296 F.3d
at 904 (holding “[t]he first two exemptions clearly do not
apply” but the noncommercial-use exemption did).

The Ninth Circuit explained in MCA Records that the

statutory noncommercial-use exception contained in 15
U.S.C. § 1125(c)(3)(C) allays First Amendment concerns
not addressed by the statutory defenses contained in 15
U.S.C. § 1125(c)(3)(A) and (B). 296 F.3d at 906 (“the bill’s
sponsors relied on the ‘noncommercial use’ exemption to
allay First Amendment concerns”). The three statutory
defenses overlap to ensure robust First Amendment
protection:

[T]he overlap of exemptions represents a sort of

overabundance of caution to statutorily provide
for free speech concerns that the federal
anti-dilution law would be used to silence
“noncommercial” critics who use the famous
marks of companies whose goods, services or
policies were being criticized or mocked.

4 McCarthy on Trademarks, supra, § 24:128; see also

Radiance, 786 F.3d at 330 (explaining that “[t]he law
provides three broad, overlapping categories within which
any use of a famous mark, even if likely to cause harm or
blurring, is not actionable,” and holding that the exemption
precluded the dilution claim despite evidence of dilution).
For example, McCarthy notes that though an allegedly
dilutive use does not fall within the statutory fair-use
 33

exception, “[e]ven if the accused use is a trademark use,

a parody can still be immune under free speech principles
from liability for dilution by tarnishment.” 4 McCarthy on
Trademarks, supra, § 24:90 (collecting cases).

D. JDPI’s cases do not represent a circuit split.

JDPI struggles to identify a circuit split under the

TDRA, and it ultimately cites a grand total of two circuit
cases that it argues reflect a conflict. Pet. 26–26. But
neither of those cases stand for the proposition that failure
to satisfy the fair-use parody defense under 15 U.S.C.
§ 1125(c)(3)(A) precludes the court from applying the
noncommercial-use exception in 15 U.S.C. § 1125(c)(3)(C).
In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d
97, 113 (2d Cir. 2009), the court considered only the fair-
use defense under subsection (A), and never addressed
whether the noncommercial-use exception in subsection
(C) applied in that case. The same thing happened in
Haute Diggity Dog—the Fourth Circuit never addressed
whether the noncommercial-use exception applied in that
case. 507 F.3d at 266.

There is no intercircuit conflict for this Court to

resolve on this or any of the issues presented for review.
 34

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted,
Bennett Evan Cooper
Counsel of Record
David G. Bray
Dickinson Wright PLLC
1850 North Central Avenue,
Suite 1400
Phoenix, Arizona 85004
(602) 285-5000
[email protected]

Counsel for Respondent