On November 21, 2022 the U.S. Supreme Court agreed—after passing on the issue once before—to hear Jack Daniel’s (JDPI) challenge to the Ninth Circuit’s ruling in VIP Prods. LLC v. Jack Daniel’s Props, where the Ninth Circuit affirmed without opinion the district court’s grant of summary judgment to VIP and the dismissal of JDPI’s trademark infringement claim,[1] on the grounds that JDPI could not satisfy either prong of the Rogers test. The Rogers test balances free expression under the First Amendment against the trademark protections of the Lanham Act. The Supreme Court granted certiorari on the questions of whether parody uses of another’s mark receive First Amendment protection from liability under the Lanham Act and whether parody is exempt from claims of dilution by tarnishment under 15 U.S.C. § 1125(c)(3)(C). The decision could clarify the balance between trademark and the First Amendment, an issue that has long-confounded practitioners.
First Amendment
To Label Or Not To Label? Companies May Have No Choice
By Thomas Means, Daniel W. Wolff & Jesse Kirchner on
Most everyone knows that the First Amendment restricts the government’s ability to limit commercial speech. Similarly, most everyone would probably think the First Amendment also restricts the government’s ability to compel commercial speech. But are there times when the government may compel commercial speech? Indeed it can in some circumstances, and the D.C. Circuit recently expanded those circumstances in American Meat Institute v. U.S. Department of Agriculture (AMI). AMI involved a trade association’s challenge to regulations requiring meat producers to include country-of-origin labels on their products. This decision is important to almost any company that is, or could be, subject to a regulatory mandate to disclose what the court calls “purely factual and uncontroversial information.”
Rehearing en banc a case decided in the government’s favor by a three-judge panel, the D.C. Circuit in AMI upheld the regulations, applying the test from the U.S. Supreme Court’s decision in Zauderer v. Office of Disciplinary Counsel. Zauderer upheld, against a First Amendment challenge, a state’s disciplinary action against an attorney whose advertisements had the potential to deceive consumers by failing to comply with state regulations mandating certain cost disclosures to prospective clients. Although the regulations concerning meat origins in AMI had nothing to do with countering consumer deception, the D.C. Circuit nonetheless applied Zauderer and thus extended its application beyond protection against consumer deception to the advancement of consumer edification.…
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What Do Actress Lindsay Lohan and Former Panamanian Strongman Manuel Noriega Have in Common?
By Dickerson M. Downing & Scott L. Bittman on
Posted in IP/Brand Protection, Privacy & Data Protection
Both have recently brought legal actions against video game makers alleging that their rights of privacy or publicity have been violated by characters in video games. The lawsuits are the latest in a series of high profile disputes that pit an individual’s personality rights against a game maker’s First Amendment rights.
Various states have enacted statutes that protect an individual’s right to “publicity” or “privacy.” The statutes differ from state-to-state but the basic idea is that an individual should have some right to prevent unauthorized commercial use of his or her name, likeness and identity by a third party. This is sometimes referred to as “personality rights.”
The expressive content of video games, on the other hand, is subject to protection under the First Amendment. The extent to which the First Amendment rights of a video game manufacturer may permit the use of real people as characters in video games without violating the individual’s personality rights has been the subject of much interest and discussion in the recent past.
The discussion resumed in earnest in early July when Ms. Lohan brought an action in New York state court alleging that the maker of the video game Grand Theft Auto V had violated her right of privacy under New York state law by the use of her image, likeness, “screen persona” and details from her personal life in depicting a character in the game named Lacey Jonas. A few weeks later, Mr. Noriega brought an action in California state court alleging that the maker of the video game Call of Duty: Black Ops II violated his right of publicity under California state law by illegally using his image and likeness in connection with a character described “as a kidnapper, murderer and enemy of the state.” The lawsuits have been treated by some in the media and by some commentators with a certain degree of amusement and in Mr. Noriega’s case – whose colorful resume includes convictions for drug trafficking, racketeering and money laundering as well as a lengthy stint as a U.S. Prisoner of War – outright disbelief, but they raise serious issues regarding the interplay between the First Amendment and the rights of privacy and publicity.…