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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, July 25, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE webinar will guide IP counsel on trademark infringement in the context of parodies. The panel will discuss the Supreme Court's recent decision and the guidance it provides as to assertion of First Amendment rights and the tests that will be used to determine infringement. The panel will discuss the Rogers test and source-identifying uses and will offer best practices for enforcing trademarks or avoiding infringement.

Faculty

Stephen R. Baird
Shareholder
Greenberg Traurig LLP

Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on trademark usage and clearance, branding strategies, domestic and worldwide portfolio management, litigation and enforcement, internet domain name and trademark disputes, licensing, and prosecution. His trademark and brand protection work has gained notoriety for the protection and registration of nontraditional trademarks, product configuration trademarks, and trade dress and product packaging trademarks.

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Christine Haight Farley
Professor of Law
American University Washington College of Law

Professor Farley specializes in information law and teaches courses on contract law, intellectual property, advertising law, and art law. Her current research focuses on branding in the age of data-driven advertising and the over protection of design. Professor Farley serves as Co-Faculty Director of the Program on Information Justice and Intellectual Property and previously served as Associate Dean for Faculty and Academic Affairs. She has received the Excellence in Teaching Award and the Edwin A. Mooers Scholarship Award. She has been a visiting professor at the University of Paris West, the University of Puerto Rico, the University of Havana, Monash University, and the National Law University in Lucknow, India, and has given lectures on intellectual property in more than twenty-five countries. Professor Farley serves on the Board of Directors for the Center for Inter-American Legal Education, and has served on the Executive Committees of the Intellectual Property and the Art Law Sections of the American Association of Law Schools and as a member of a presidential task force of the International Trademark Association. She is the recipient of a Fulbright Senior Specialist grant to teach U.S. intellectual property law to foreign law students. Before teaching, Professor Farley was an associate specialized in trademark and copyright litigation with Rabinowitz, Boudin, Standard, Krinsky & Lieberman in New York. She holds a B.A. (Binghamton), J.D. (Buffalo), LL.M. (Columbia), and a J.S.D. (Columbia).

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Description

In a recent decision, Jack Daniel’s Props. Inc. v. VIP Prods. L.L.C. (June 8, 2023) the Supreme Court considered the balance between trademark rights and First Amendment interests. The Court vacated the Ninth Circuit's decision, concluding that VIP Products, who sells dog toys designed to look like Jack Daniel's whiskey bottles, could not avail itself of the Rogers test.

The Court rejected the Ninth Circuit's belief that because Bad Spaniels "communicates a humorous message," it automatically is entitled to Rogers First Amendment protection. The Court held that the use of the federally registered whiskey bottle along with a similar name functioned as a trademark for VIP and must therefore be analyzed under the likelihood of confusion test.

As a result of this decision, brand owners will be able to bypass the Rogers test when enforcing their trademark rights in certain contexts even where there are arguable First Amendment interests involved. Utilizing the Rogers test as a defense to short-circuit the need for a full likelihood of confusion analysis, as is typical in trademark cases, will now be less clear as an option, given this unanimous Supreme Court decision. More speech defenses in trademark infringement and dilution cases will now be tested directly under the likelihood of confusion and dilution tests. How and when the Rogers test will be applied going forward remains to be seen as well as when the challenged use will qualify as source-identifying. Brand owners will likely leverage the decision to aggressively enforce their trademark rights.

Listen as our authoritative panel of IP attorneys examines trademark protection, infringement, and dilution in the context of parodies. The panel will discuss the Supreme Court's recent decision in Jack Daniel's Properties Inc. v. VIP Products L.L.C. and the guidance it provides as to the assertion of First Amendment rights and the tests that will be used to determine liability. The panel will discuss the Rogers test, source-identifying uses, best practices for enforcing trademark rights, and strategies for avoiding successful trademark infringement and dilution claims.

Outline

  1. Background: balancing trademarks, parody, and the First Amendment
  2. Jack Daniel's Properties Inc. v. VIP Products L.L.C. (U.S. June 8, 2023)
  3. The Rogers test and implications of the Jack Daniel’s decision
  4. Best practices concerning issues of trademark use and registration
    1. From the plaintiff's and defendant's perspective
    2. Possible implications before the TTAB concerning the right to register

Benefits

The panel will review these and other critical issues:

  • What lessons can IP counsel draw from the Supreme Court's decision as to the application of the Rogers test?
  • When will a challenged use constitute a trademark use?
  • What does the decision mean for the First Amendment exception where parody or other expressive use is used as a trademark?