Protecting Creativity with a Bottle of Jack on the Floribama Shore (and tiny JDI oral argument observations)

Media Law Resource Center conference, Southwestern Law

Kevin Vick, Jassy Vick Carolan LLP (Moderator)

Just a few panel notes since I’m not going to recap Rogers or
MFGB v. Viacom.

Evynne Grover, Vice President, Media Liability Claims
Practice Leader, QBE North America: Rogers is incredibly important for
clearance. It gives us confidence in insuring productions. It can be applied on
a MTD, which costs $50-$75,000 but that’s much less expensive than going to
summary judgment. It allows us to clear more productions, support more speech,
and charge lower premiums. W/Rogers, 85% of threat letters go nowhere, and the
rest go away quickly. If we take away Rogers, we’re facing lengthy litigation,
losing settlement leverage, lose MTD opportunities, which would substantially
increase the costs of defense that are now low. Would have to be factored in to
premiums and retentions, and could make insurance cost-prohibitive for some

Susan Kohlmann, Jenner & Block, counsel for Viacom/MTV
in MFGB Properties v. Viacom: emphasizes the cost and burden of discovery in
having to go through all the depositions etc. Rogers would have counseled early

Lynn Jordan, Kelly IP, amicus counsel for the Motion Picture
Association in MFGB Properties v. Viacom: MFGB is a case that couldn’t have
been litigated by an independent filmmaker because of the highly burdensome
discovery/costs of defense.

Guilio Yaquinto, Pirkey Barber PLLC, amicus counsel for the
American Intellectual Property Law Association in Jack Daniel’s: wants to
distinguish commercial products from speech.

Rebecca Tushnet, Professor of Law, Harvard Law School

A test that deems this toy confusing with Jack Daniels is a
bad test. And it’s a bad test for the toy for the same reason that the
multifactor test is bad for movies and books: because that’s not how people
interact with products that are purchased for expressive purposes; people buy
this dog toy because it’s funny, because of its expression.

Cohen v. California: Paul Cohen was arrested for wearing a
jacket that said fuck the draft. The Supreme Court understood that because he
was arrested for his expression, the fact that it was on a jacket was not relevant.
[I admit that the Court seemed to think that T-shirts were different from dog

I want to drill down on the (oft-heard) statement “Most
reasonable people won’t think the TM owner is making fun of itself.” Where’s
your evidence of that? Walmart’s WalQaeda survey said otherwise, finding 59%
confusion over WalQaeda and Walocaust T-shirts with plenty of other criticism
of Walmart on them, using the same questions asked in the VIP case. The jurisprudence
on confusion over affiliation means that the claim about successful parodies being
nonconfusing is not going to survive actual ligitation. Alito showed some
interest in treating the reasonable consumer test as an objective standard, which
it often is in other First Amendment areas, which could handle both the dumb
surveys and the larger problem of circularity (if consumers think that the law
is that parody or any reference to a TM owner requires permission, then the law
will require that permission if Jack Daniels has its way).

Q: on as applied challenges? RT: That seemed unappealing; if
you have hundreds of as applied challenges eventually you get a rule, which would
likely be something like Rogers.

Kohlmann: Registration is different from infringement, which
made the references to PTO practice sort of mysterious.

[While I’m here, other stuff I particularly noted about the Jack Daniels oral argument:

Sotomayor’s point that Polaroid isn’t in the statute either!
And that’s important because Polaroid works really badly for expressive uses; Rogers
can be a substitute test for finding when material confusion is likely, and when it’s not, given
the special characteristics of noncommercial speech.

Use as a mark: Justice Jackson seemed interested in an intuitive
concept of use as a trademark, but most lower court cases (with the partial
exception of the 6th Circuit) don’t accept that as a question
different from whether confusion is likely: They reason that, if confusion is
likely, then there is use as a trademark. More generally, I think it is easy to
get entangled in lay ideas of what trademark infringement means (something like
counterfeiting), which trademark claimants have exploited to expand rights far
beyond passing off.

The faux amis of use in commerce, commercial use, and
commercial speech showed up a bit; the Court seemingly well understood that
selling T-shirts could be protected speech if the regulation was imposed on the
shirts because of the expression printed on them, but no one seemed confident
of where the line was. Perhaps that’s the thing that should be done on a case
by case basis.

Small points about JDI’s claims:

Gone with the Wind isn’t a trademark? Has anyone told
Turner Entertainment Corp. which holds a registration for, inter alia,
“books”?  So too with the claim in
rebuttal that TikTok videos aren’t use in commerce—they very much are, even though
many are not commercial speech; this is the faux amis problem.]

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Another digital “buy” button case survives motion to dismiss

McTyere v. Apple, Inc, 2023 WL 2585888, No. 21-CV-1133-LJV
(W.D.N.Y. Mar. 21, 2023)

Plaintiffs alleged that Apple made false representations
when it “sold” them digital content on the iTunes Store only to later remove
their access to that same digital content. They claimed violation of sections
349 and 350 of the New York General Business Law, as well as unjust enrichment.
Consumers can “rent” movies from Apple on the iTunes Store for about $5.99, but
the “buy” option costs much more. “Regardless of which device is used to access
digital content, or which ‘iTunes’ app is used to buy or rent the digital
content, the app provides a tab or folder labeled ‘purchased.’ ” But when third
parties terminate their licensing agreements with Apple, Apple “must revoke [a]
consumer[’s] access” to purchased digital content “without warning.” Plaintiffs
alleged that if they had known about the possibility that Apple might later
revoke access to already-purchased content, “they would not have bought [ ]
digital content from [Apple] or would have paid substantially less for it.”

Apple was not collaterally estopped from raising arguments against
liability that were rejected in Andino v. Apple, Inc., 2021 WL 1549667 (E.D.
Cal. Apr. 20, 2021), given that the claims arose under “completely different
state laws.”

Apple argued that it wasn’t misleading to say “buy,” because
to “buy” something means to “acquire possession, ownership, or rights to the
use or services of by payment especially of money.” Apple argued that
plaintiffs in fact received the “right to the use of” the digital content at
issue here, so its advertising was not misleading regardless of whether their
ability to access that digital content later disappeared.

But that “right to use” argument
cannot carry the water that Apple asks it to carry. The right to use something
may last but a moment or forever. And by ignoring that issue, Apple’s argument
begs the question.

Take, for example, two consumers
who each pay $19.99 to “buy” two different movies on the iTunes Store, each
planning to watch the movie the next night. The following night, the first
streams his movie purchase without a hitch. But when the second sits down on
the couch and opens the iTunes Store, she finds that the movie has disappeared
from her “purchased” folder. As it turns out, Apple lost the rights to that
movie minutes before. Both consumers had the “right to the use of” their movie
purchases for the twenty-some hours between the time they purchased them and
the time they sat down to watch them. But the second would-be movie watcher
understandably might feel a little miffed if she were told that she received
exactly what she paid for.

In a footnote, the court noted that Apple’s argument would
mean that both the consumer who “rented” the movie and the one who “bought” it
would receive the “right to the use of” that digital movie. Someone who plans
to rewatch a movie might not pay the enhanced price to “buy,” and just rent
instead, if they know that “buying” is no guarantee of continued access.

Thus, “reasonable consumers might have been misled when they
purchased digital content with the mistaken impression that the content could
not later be removed from their libraries.”

Apple also argued that its iTunes Store terms and conditions
alerted the plaintiffs (and other consumers) to the possibility that they might
lose access to purchased digital content and should download digital content to
prevent that possibility. The parties disputed whether Apple’s terms and
conditions were equivalent to front-of-package clarifications, which was a
factual issue. Also, it wasn’t clear that the T&C were sufficient. The
earliest applicable terms and conditions that Apple has submitted warn
consumers only that “Apple and its licensors reserve the right to change,
suspend, remove, or disable access to any iTunes products, content, or other
materials comprising a part of the iTunes service at any time without notice.” A
reasonable consumer “might read those terms and conditions and nevertheless
believe that once he or she has ‘purchased’ digital content and that content is
saved to his or her ‘purchased’ folder, Apple cannot at that point suspend or
terminate access to it, notwithstanding whether it otherwise could do so to
other material in the iTunes Store before purchase.”

Apple argued that the plaintiffs were warned to download
digital content “to ensure continued access to it”; once consumers download
content, Apple said, they can in fact continue to stream that content even if
Apple terminates its licensing agreement with another party. But the plaintiffs
argued that not all content can be downloaded and that the “right to download”
does not fully protect against the possibility that a consumer will lose access
to digital content. This couldn’t be resolved on a motion to dismiss.

Although the unjust enrichment claim could ultimately be
deemed duplicative of the other theories of recovery, the court also declined
to dismiss it at this stage.

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Supplement guide was plausibly an agent of supplement company; direct and secondary liability available

Ariix LLC v. Usana Health Sci., Inc., 2023 WL 2574319, No.
2:22-cv-00313-JNP-DAO (D. Utah Mar. 20, 2023)

The parties compete in the supplement market using direct
marketing, so compete in both consumer supplement sales and in sales
representative recruitment. “Nutritional supplements are largely unregulated,
and there have been several recent scandals regarding supplement quality. To
empower consumers and sales representatives to make informed decisions, NutriSearch
… publishes the NutriSearch Comparative Guide to Nutritional Supplements …,
which is the leading source regarding nutritional supplement quality.” It’s
written by Lyle MacWilliam and purports to provide independent and unbiased
supplement reviews.

Ariix sued NutriSearch and MacWilliam with similar
claims to those raised here
about Nutrisearch’s alleged lack of
independence from and bias towards Usana, resulting in false advertising. Ariix
alleged that Usana paid MacWilliam to give Usana’s supplements the top rating
in the Guide. As a result, “[t]he misstatements directly reduced Ariix’s
revenues by causing both consumers and professionals to select Usana over
Ariix.” The Guide, and promotions for it, contained several statements
depicting itself as an independent, unbiased source of information, e.g., “This
guide was not commissioned by any … company whose products may be represented
herein. The … findings are the sole creative effort of the author and
NutriSearch Corporation, neither of whom is associated with any manufacturer or
product represented in this guide.”

Usana has also taken advantage of these neutrality claims. “For
example, when Usana receives a new award from the Guide, it contextualizes the
award by quoting language from the Guide claiming that it provides independent
and objective evaluations. Usana’s website includes pictures of MacWilliam and
the Guide next to quotes made by MacWilliam about his confidence in the quality
of Usana’s supplements.”

However, plaintiff alleged, “Usana has directly paid
NutriSearch and MacWilliam hundreds of thousands of dollars per year in fixed
stipends, speaking fees, promotion fees, and promotion costs.” MacWilliam
allegedly concocted the Guide as a sales tool while working as a Usana sales
representative. Then he informed Usana executives that “I should not be on the
board or a representative anymore because it looks like I’m biased. I am going
to create more of a third-party appearance, but I’d like you to use me for
speaking and support me.” Usana responded, “Yes, if you give us the number-one

Usana withdrew its support after NutriSearch awarded several
other supplement companies, alongside Usana, with a Gold Medal rating in the
Guide. This caused a sharp decline in book sales and speaking opportunities;
Usana “told him that it preferred being the only company that received the
Guide’s highest accolade.” MacWilliam asked “would it help if Usana is number
one in some way?” Usana said yes, and MacWilliam added a new “Editor’s Choice”
award to the Guide, which was solely bestowed upon Usana; the payments resumed.

The next year, plaintiff alleged,

MacWilliam informed Usana that, as
calculated by the Guide’s publicly disclosed criteria, Usana would not receive
the Guide’s top ranking. Usana reminded MacWilliam that “we pay you to make us
number one.” MacWilliam stated that he would either need to alter the Guide’s
ranking algorithm or Usana would need to reformulate its supplements. Usana and
MacWilliam then collaborated to ensure that Usana maintained the top position.

Usana allegedly benefited financially from the Guide. It
arranged the initial publishing agreement between NutriSearch, MacWilliam, and the
publisher. “As a result of arranging the initial publication agreement, Usana
receives a portion of the profits derived from the Guide’s sales.” [So it’s
literally NutriSearch’s literary agent?]

Usana incorporates the Guide into
its marketing training. Sales representatives are told to purchase the guide,
“learn it, refer to it in making sales, and … pitch the guide to end
consumers.” Usana characterizes payments to NutriSearch and MacWilliam as
marketing expenses. Usana reposts testimonial statements made by MacWilliam on
its website and social media pages, and issues press releases announcing the
awards it receives from the Guide.

Usana is also allegedly involved in editorial changes to the
Guide and “orders” MacWilliam to meet with Usana’s chief product officer every

In 2013, Usana increased the
Vitamin D and Iodine content in its supplements and rebranded to focus on these
additions. The Fifth Edition of the Guide was then “rewritten from cover to
cover” to highlight “the most recent and exciting scientific findings on two
super-nutrients: Vitamin D and Iodine.” Prior to the Sixth Edition of the
Guide, Usana reprinted its supplement labels to emphasize the potency of its
products with regards to “cell signaling.” The Sixth Edition noted that the
Guide had been “completely rewritten” to account for “groundbreaking
discoveries” in cell-signaling. Usana ordered NutriSearch to add a new platinum
tier of achievement to the Sixth Edition and Usana was the only company awarded
with a platinum level rating in the Sixth Edition.

Usana has also allegedly used its relationship to harm
competitors, as when, based on information from Usana,  NutriSearch initially awarded Ariix a
three-and-a-half stars rating for a new product, later revised to five stars. “Usana
instructed NutriSearch to print a new version of the Guide displaying Ariix
Optimal’s three-and-a-half stars rating prior to Ariix’s product launch.” Ariix
also had various difficulties obtaining the Guide’s Gold Medal of Achievement;
while Usana was grandfathered in using old verification methods, NutriSearch rejected
the same type of evidence from Ariix; after Ariix invested significant
financial resources working with NutriSearch to develop new testing protocols, NutriSearch
again rejected it because it “could no longer confidently assure the consumer
that what is on the label is what is in the bottle.” “At the same time that
NutriSearch claimed that its concerns regarding testing accuracy precluded it
from awarding Ariix a Gold Medal certification, NutriSearch and MacWilliam
represented to consumers that they were confident in the Guide’s verification

MacWilliam declined Ariix’s offer to speak on behalf of
Ariix, saying that he no longer wanted to travel, but he continued to travel
and promote Usana. When Ariix confronted him, MacWilliam responded by admitting
that Usana would “cut [him] off the second I … [speak for Ariix.]”

This case is proceeding separately from the case against
NutriSearch because of personal jurisdiction issues.

Timeliness: Utah has a three-year statute of limitations for
fraud, and Ariix sued NutriSearch nearly five years before suing Usana with
very similar allegations. Because the Lanham Act has no limitations period, the
court used laches as the framework. To prove the affirmative defense of laches
on a motion to dismiss, the complaint must clearly establish that “there has
been an unreasonable delay in asserting the claim, and that the defendant was
materially prejudiced by the delay.” This complaint didn’t do that.

Usana’s claim of prejudice from “fading memories, lost
evidence, and the other difficulties associated with defending against stale
claims” was conclusory and there was nothing in the complaint to suggest that
Usana has lost relevant evidence. “On the contrary, the complaint alleges that
Usana was either in a principal-agent relationship with MacWilliam and
NutriSearch or that Usana conspired with them. Under these theories, Usana
would have been aware of the ongoing litigation between MacWilliam,
NutriSearch, and Ariix.”

As for economic prejudice, a defendant

must demonstrate that it continued
to invest in the allegedly challenged behavior to its own detriment, in
reliance that plaintiff would not bring a suit. But the mere fact that Ariix
alleges damages does not establish that Usana continued to invest in the Guide
or otherwise took actions in reliance on Ariix’s delay in filing suit….  Indeed, Usana vehemently denies any suggestion
that it invested in or controlled the Guide.

Failure to state a claim: Ariix argued that Usana could be
either directly liable for the Guide’s false statements or secondarily liable
under a principal-agent theory. The court agreed that the compliant
sufficiently alleged both.

Direct: Usana used MacWilliam and NutriSearch’s alleged
misrepresentations in its own marketing. Usana argued that it couldn’t be
liable for false statements made by third parties. But the cited cases all
protected retailers, including digital retailers, who sold allegedly falsely
labeled products: “[A] retailer is not liable if the retailer played no role in
making the products or in formulating or disseminating the alleged false
statements ….” This rule creates “a limited exception to liability when the
defendant is a retailer who had no knowledge or role in the third party’s
misrepresentation.” [I’ve never found this particularly convincing, and the
knowledge part is particularly unjustified, but ok.]

Usana didn’t qualify for a retailer exception. “MacWilliam
and NutriSearch’s misrepresentations directly promote Usana’s supplements and
Usana did not inadvertently display third-party products with misleading
labels.” As courts have held, quoting someone else counts for 43(a)(1)(B)
purposes: “[T]o fall within the text of the Lanham Act, a defendant does not
need to make a statement but only needs to use a statement or other form of
conduct specified in the Act.” And the facts here supported a claim of “use.”
The complaint alleged that “Usana was both aware of and encouraged MacWilliam and
NutriSearch’s misrepresentations.” [That sounds like contributory liability—I think
the liability is direct, without any agency issues, when they quoted MacWilliam
and NutriSearch; the court notes facts recited above that go both to Usana’s
encouragement and Usana’s own republications of their statements.] “Every time
Usana won a medal of achievement, it issued a press release quoting the Guide’s
statements that the Guide employed an independent and objective ranking
mechanism, despite Usana knowing and actively encouraging the contrary. Although
Usana itself did not state that the Guide was independent, Usana directly used
MacWilliam and NutriSearch’s misrepresentations to promote Usana’s supplements.”
[Knowledge is not an element of direct liability!]

Secondary liability: The complaint plausibly alleged that MacWilliam
and NutriSearch were acting as Usana’s agents in making the misrepresentations.
At common law, principals are vicariously liable for torts committed by their
agents within the scope of the agency relationship. “To establish agency, a
party must show (1) the principal manifested its intent that the agent act on
its behalf, (2) the agent’s consent to act on the principal’s behalf, and (3)
that both the principal and the agent understood that the agent is subject to
the principal’s control.”  A plaintiff does
not need to show an actual written agreement or plead specific details
regarding the terms of the agency agreement. The court rejected Usana’s
argument that there was no plausible allegation of an agreement because the
complaint does not provide “the terms of performance, when it was entered, or
other basic terms.” But the complaint did include the time and (some) terms of
the agreement, which was enough. “A principal’s manifestation of assent to an
agency relationship may be informal, implicit, and nonspecific.” Five years
after the agreement had allegedly been entered into, one of Usana’s executives
told MacWilliam that “we pay you to make us number one”; Usana receives a
portion of the profits generated from sales of the Guide; Usana encourages its
representatives to “get the Guide, learn it, refer to it in making sales, and
even pitch the Guide to end consumers”; at Usana’s annual conference,
MacWilliam is the only independent speaker who is allowed to sell his own
product; Usana displays the Guide on its social media pages and issues press
releases quoting the Guide’s claims of independent objectivity when Usana wins
an award; Usana characterizes payments to MacWilliam and NutriSearch as
marketing expenses. That was (possibly more than) sufficient.

Likewise, telling Usana executives that “I should not be on
the board or a representative of the company anymore because it looks like I’m
biased. I am going to create more of a third-party appearance, but I’d like you
to use me for speaking and support me,” manifested MacWilliam’s consent and
objective understanding that he was acting for Usana’s benefit, as did the
instances in which he allegedly tried to not be so tilted in Usana’s direction
and got financially punished for it, then got rewarded when he reversed course.

As for control, there are multiple nondispositive factors; fundamentally,
the court asks whether “both [parties] understood that [the principal] was to
be in charge of the undertaking.”  The
complaint was sufficient there too, given the allegations above, e.g., that
Usana conditioned speaking gigs and book sales on MacWilliam meeting this
requirement and had MacWilliam rewrite the Guide to focus on Usana’s marketing

And it was plausible that the agents had actual authority to
make the misrepresentations, including that the Guide was independent and

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“GoodBelly” and “GoodHealth” plus label plausibly communicate net digestive health benefits

Andrade-Heymsfield v. Nextfoods, Inc., No. 3:21-cv-1446-BTM-MSB,
2023 WL 2576770 (S.D. Cal. Mar. 20, 2023)

Plaintiff brought the usual
California claims
against a line of fruit juices — GoodBelly Probiotic
JuiceDrinks — “that expressly or implicitly convey the message that the
JuiceDrinks are healthy” with these package statements:

… Drink one 8 oz. glass of delicious GoodBelly a day for 12 days;

(2) Reboot your belly, then make
GoodBelly your daily drink to keep your GoodHealth going. Because when your
belly smiles the rest of you does too;

naturally occurring in the human gut. It has been studied more than 2 decades
and has numerous research trials to show that it may help promote healthy
digestion and overall wellness; and

(4) GoodBelly Probiotics is a
delicious blend of fruit juices and a daily dose of probiotic cultures created
to naturally renew your digestive health, right where your overall health gets
started – in your belly.

Plaintiff alleged that, in fact, JuiceDrinks are unhealthy for
digestive health because they contain “excessive amounts of free sugar.” The
complaint pled facts indicating that juice consumption leads to numerous
negative health consequences.

Plaintiff has plausibly alleged
that a reasonable consumer would read JuiceDrinks’ label as claiming to promote
digestive health. The product itself is called “GoodBelly,” which can be read
by the reasonable consumer as a claim that the product is good for digestive
health. The label, moreover, can be read by the reasonable consumer as claiming
that the product is good for “rebooting” digestive health and making the belly
“smile,” i.e., as improving digestive health. The label uses the conjunction “GoodHealth”
in such a way that the reasonable consumer would likely view the label as
claiming to promote good health.

Although the label could be read as claiming only that
probiotics are good, “Defendant is selling a juice beverage, and the label may
be read by the reasonable consumer as promoting the health benefits of the
beverage, not merely one ingredient in it.” Thus, it was plausible that consumers
would read “GoodBelly” and “GoodHealth” as claims that the drinks are good for
digestive and overall health.

Disclosing the sugar content in the nutrition label was not
sufficient. That wouldn’t suffice to cure the message of good digestive and
overall health as a matter of law.

Although statements (1) and (2) alone would be puffery, “when
read together and in context, the Court cannot determine that the reasonable
consumer would not rely on the label as promoting good digestive and overall

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Call for papers: Trademark and Unfair Competition Scholarship Roundtable 2023

 Trademark and Unfair Competition Scholarship Roundtable 2023

The Trademark and Unfair Competition Scholarship Roundtable co-hosted by Harvard, NYU, and the University of Pennsylvania will take place in person hosted this year at NYU. The Roundtable is designed to be a forum for the discussion of current trademark and right of publicity scholarship, covering a range of methodologies, topics, and perspectives. Five to six papers will be chosen for discussion over the course of the Roundtable, with each paper allocated an entire hour for discussion and assigned a commentator. 


The Roundtable will be held on Friday, October 6, 2023. Participation at the Roundtable will be limited and invitation-only and we expect all participants to have read the papers in advance. The Roundtable will cover the travel and lodging expenses for invited authors.


We invite submissions from academics working on any aspect of trademark, false advertising, marketing, right of publicity, or related areas of the law. Priority will be given to those who can attend the entire event and a dinner the night of the event. Submissions must be of full drafts in Microsoft word format. The deadline for submission is May 15, 2023, and decisions on participation will be made shortly thereafter, ideally, by June 1st. 


To submit a draft paper, please fill out the form here ( and upload an anonymized version of your draft.  Please note that the maximum file size that may be uploaded is 10MB.

For further information about the Roundtable, please email either: Barton Beebe (NYU):; Jennifer Rothman (Penn):, or Rebecca Tushnet (Harvard):

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Today at noon EST: free HLS webinar on developing professionalism in students

 Developing Professionalism in Students

Register here:

Noon EST, March 21

What is professionalism for a lawyer? How can we as teachers help students develop professional identities in ways that honor their diversity and commitments? Norms of professionalism can be exclusionary, even when our students adapt consciously and strategically to them. But the ideal of serving clients with specialized legal knowledge has value and meaning. Our panelists will discuss their strategies for working with developing lawyers to find professional identities that honor both themselves and the legal profession.

Kendra Albert is a technology lawyer and scholar of computing, gender, and society. They are a clinical instructor at the Cyberlaw Clinic at Harvard Law School, where they teach students to practice technology law. Kendra also serves as a lecturer in the Program on Studies of Women, Gender, and Sexuality at Harvard University. Kendra holds a JD cum laude from Harvard Law School and a BHA from Carnegie Mellon University. They serve as the Chair of the Board of Directors for the Tor Project, and as a member of the Board of Directors of the ACLU of Massachusetts.

Jack Lerner is Clinical Professor of Law at the University of California, Irvine School of Law and Director of the UCI Intellectual Property, Arts, & Technology Clinic. Professor Lerner works to find solutions to problems at the intersection of law and technology, particularly how technology law and policy affect creative expression and innovation.  He has written and spoken widely on copyright, privacy and other areas of technology law. In 2021, Professor Lerner authored the landmark Rap on Trial Legal Guide, the first-ever treatise on the use of rap lyrics in criminal trials (with Kubrin et al.). He is also Executive Editor of the award-winning treatise Internet Law and Practice in California (CEB). In 2015, he authored The Duty of Confidentiality in the Surveillance Age, 17 J. Internet L. 1 (2014) (with Lee et al.). See more of Professor Lerner’s publications at his UC Irvine profile.

Kim Thomas, HLS ’99, is a Clinical Professor of Law at the University of Michigan Law School, where she has taught since 2003.  She teaches in the area of criminal law, primarily in the Civil-Criminal Litigation Clinic and the Juvenile Justice Clinic, a clinic which she directs and co-founded. In 2021, Thomas was appointed as a member of the Governor’s task force on juvenile justice reform, which issued its recommendations for structural reform of Michigan’s youth justice system in 2022.  Thomas’ research focuses on youth who commit serious offenses and those who are serving long and life sentences, as well as adult sentencing and post-conviction proceedings. Her scholarly work has been published in the California Law Review, the Ohio State Journal of Criminal Law, the U.C. Davis Law Review, among others.  In 2017, Thomas received a Fulbright award to teach juvenile justice at the University College Cork, in Cork, Ireland. 

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Panel on Jack Daniels argument at AU-WCL, March 22

 IP at the Supreme Court Series: Jack Daniel’s Properties, Inc. v. VIP Products LLC

March 22 | 5:00 – 6:30pm EDT | Hybrid | NT01 | Reception to Follow
Registration Required

Moderated by Professor Christine Farley

American University Washington College of Law regularly invites counsel of record and counsel for selected amici to offer post-argument reflections in intellectual property (and related) cases heard by the Supreme Court. These events are held on the afternoon of oral argument before the Court. 


Issues: (1) Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, 15 U.S.C. § 1125(a)(1), or instead receives heightened First Amendment protection from trademark-infringement claims; and (2) whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C).


Bennett Evan Cooper
Dickinson Wright PLLC
Counsel For Respondent

Prof. Rebeccah Tushnet
Harvard Law School
Amicus Brief for Law Professors in Support of Respondent

Paul Levy
Public Citizen
Amicus brief for Dan McCall, Sky Shatz, & Don Stewart  in support of Respondent

Edward T. Colbert
Hunton Andrews Kurth LLP
Amicus brief for Constellation Brands, Inc. in support of Petitioner

Megan K. Bannigan
Debevoise & Plimpton LLP
Amicus Brief for IP Law Professors in Support of Neither Party

Vijay K. Toke
Rimon P.C.
Amicus brief for INTA in support of neither party

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two melatonin class actions alleging higher doses than needed survive

Mack v., 2023 WL 2538706, No. C22-1310-JCC (W.D.
Wash. Mar. 16, 2023)

Plaintiffs alleged they bought and used Solimo, a melatonin
supplement manufactured and sold by Amazon. Each product purports to provide a
specific dose of melatonin per serving (e.g., 3mg or 5mg). Melatonin is
commonly used as a sleep-aid. Plaintiffs alleged that Solimo falsely substantially
understates Solimo’s true melatonin dosage in each serving, exceeding what
would be a “reasonable excess” allowed by the FDA. Plaintiffs alleged that a
“reasonable excess” is any amount greater than that needed for a supplement to
meet “the amount specified on the label throughout the product’s shelf life.” They
alleged that, had they known Solimo’s true melatonin dosage, they would not
have purchased it at any price. They sued for violations of Washington’s
Consumer Protection Act, breach of contract, breach of express warranty, and
breach of implied warranty. The court denied Amazon’s motion to dismiss.

The court found standing, including for injunctive relief: Plaintiffs
alleged that, if not for the fact that they cannot confidently rely on Solimo’s
labeling, they would purchase the product again. 

Amazon argued preemption because (1) the FDA permits
melatonin overages and (2) Plaintiffs’ allegations are supported by a test that
deviates from the FDA’s 12-sample testing protocol. The court disagreed. It’s
true that, because supplements like melatonin degrade over time, the FDA allows
manufactures to formulate the supplement with some overages to ensure “that the
finished produced can meet the label declaration for that dietary ingredient
through the product’s shelf life.” But the FDA doesn’t “allow the manufacturer
to add excess dietary ingredients in unspecified amounts that would be in
excess of the amount actually needed to meet the label declaration.” Thus, if a
product’s label falsely states the dosage, relative to this permissible excess,
the product is mislabeled. Plaintiffs sufficiently alleged that this was the
case. The complaint recognized that some overage is allowed, but contended that
the amount in Solimo “increases the risk of adverse side effects” and puts at
issue its “long-term safety” and, for these reasons, it is an “unreasonable excess…prohibited
(not permitted) by FDA regulations.”

The FDA also requires that compliance with food labeling
requirements be determined through a 12-sample testing protocol. The complaint
didn’t allege that plaintiffs actually used this protocol when testing Solimo,
so Amazon argued that it was preempted. But “plaintiffs are generally not
expected to provide evidence in support of their claims at the pleading
stage…nor are they required to plead the ‘probability’ of their entitlement
to relief.” 

Murphy v. Olly Public Benefit Corporation, — F.Supp.3d
—-, 2023 WL 210838, No. 22-cv-03760-CRB (N.D. Cal. Jan. 17, 2023)

Plaintiffs alleged that Olly’s products include
significantly more melatonin than the label asserts, and therefore violate
state consumer protection laws. Plaintiffs’ usual California claims, plus
claims based on New York’s GBL and other consumer protection laws of various
states mostly survived.

Murphy allegedly selected a 3 mg dose “because she did not
want to take more than 3 mg of melatonin from the product, “due to increased
concerns about side effects and safety” and would not have purchased the
melatonin had she known that it “was inaccurately labeled and unreasonably
overdosed.” Plaintiffs’ liquid chromatograph-mass spectrometry analysis on four
non-expired bottles and four expired, or nearly expired, bottles and alleged
that the true amount of melatonin in the bottles was 165% to 274% of the amount
claimed. They alleged that this was “far more melatonin than the ‘reasonable
excess’ permitted by the FDA.”

There was no preemption. The complaint properly alleged
nothing different than what the FDA requires: “if a manufacturer includes
materially more melatonin than is actually needed to ensure that by the time
the shelf life ends, the product has approximately the amount of melatonin that
is declared on the label, this violates the FDA’s mandates.” They weren’t
trying to establish a percentage mandate, but alleged that “other U.S.
manufacturers” who sell melatonin supplements put their products on the shelf
with a 10–15% overage, which is “reasonable because, by the time the shelf life
ends, the product has approximately the amount of melatonin that is declared on
the label.”

Also, federal pleading standards don’t require plaintiffs to
allege that they complied with FDA’s sampling practices. As the court pointed
out, quoting a different case, it is “uncertain how a plaintiff, prior to
discovery, would have access to ‘randomly chosen shipping cases’ from which he
could have selected 12 consumer samples that he could be sure had come ‘from a
single lot.’ ” Plaintiffs would eventually have to prove that Olly failed to
comply with the FDA overage regulations, but not yet.

A state law claim also doesn’t exist if the state claim
wouldn’t exist if the FDCA didn’t exist. (In California, though, the state has
adopted the FDCA and its regs as its own law.) Olly argued that was exactly
what plaintiffs were arguing. “Plaintiffs are not bringing suit because Olly’s
conduct allegedly violates the FDCA; they are bringing suit because Olly’s
conduct allegedly violates state consumer protection laws in such a way that is
consistent with the FDCA.”

The primary jurisdiction doctrine also didn’t bar the claim;
the FDA has already provided helpful guidance that “the amount of overage
should be limited to the amount needed to meet the amounts listed.” Nor did
this require hyper-technical expertise to apply. 

Olly argued that reliance was implausible because plaintiffs
alleged they wanted the exact amount of melatonin listed on the label, but they
also alleged that they wouldn’t have purchased if they knew about the
unreasonable overdose. It further argued that customers do not care about
overages because they “do not possess technical and scientific knowledge
regarding melatonin, degradation, or what constitutes a ‘reasonable overage.’ ”
But the complaint plausibly alleged otherwise, e.g., “consumers don’t want to
unwittingly take excessive amounts of a neurohormone that alters brain
chemistry” and “consumers want to make their own, informed decision about the
dosage that is right for them…. This choice is reflected by their decision to
purchase 3 mg, instead of a higher dose.” Maybe consumers also care about form
(gummy, powder, soft gels) and flavors, ingredients and branding, but the
complaint plausibly alleged that the melatonin dosage is material to consumers
in selecting an Olly melatonin product.

The court declined to dismiss the requests for equitable
remedies at the pleading stage, even though plaintiffs were also seeking

Olly also argued that the plaintiffs failed to allege “why
they were economically injured when they got more melatonin than advertised and
they do not contend that the Products were not effective sleep aids.” “That is
a rather disingenuous take on Plaintiffs’ allegations. It is not as if
Plaintiffs got a box with 11 chocolates in it when they were expecting 10.
Plaintiffs allege that they wanted to take an accurate amount of a neurohormone
that affects their brains, that they trusted the label’s representation of how
much of that neurohormone they were getting, and that the inaccuracy of that
label was ‘alarming,’ such that the product was essentially worthless to them.”

However, plaintiffs didn’t plausibly allege that
non-purchased, non-tested Olly melatonin products were overdosed. Although the
fact that the products all contain the same ingredient can sometimes satisfy
the pleading standard, the issue here was not the presence of a particular
ingredient, but the quantity of that ingredient.

Plaintiffs also had standing to seek injunctive relief. The
complaint didn’t allege that plaintiffs “now know[ ] how to interpret” Olly’s
melatonin labels, “other than to assume that they are dangerously inaccurate,”
which was not enough to deprive them of standing. The continuing inability to
rely on the label provided standing.

Other states’ laws: In light of the minimal briefing, and
because the complaint only asserted claims based on the laws of   four additional states “(far outweighed by
the populations of California and New York),” the court would wait for a class
certification motion.

Express warranty and unjust enrichment claims also survived.

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claims to “take a beating,” “withstand,” and “increase durability” were puffery

Lowe v. ShieldMark, Inc., No. 1:19CV00748, 2023 WL 2540296
(N.D. Ohio Mar. 16, 2023)

Lowe sued ShieldMark for (as relevant here) false
advertising of its line floor tape. The court granted summary judgment because
the accused statements were not falsifiable:

1. Mighty Line Floor Tape’s
“[b]eveled edge tape can take a beating from industrial wheel traffic”;

2. “Mighty Line Floor Tape
withstands industrial brush scrubbers, forklifts, and heavy industrial wheel

3. Mighty Line Floor Tape’s
“[b]eveled edges increase durability for forklift traffic.”

Lowe argued literal falsity because ShieldMark admitted in
litigation that its tape was susceptible to being “unintentionally lifted [off
the floor] when a 2-by-4 block of wood is swept across the tape,” and that
“[i]f a 2-by-4 lifts up the tape, then a cleaning device, forklift or skid
would also do so.” But the ad statements were “too vague to be actionably
false.” The court didn’t think there was any way to determine when floor tape
was capable of “taking a beating” or “withstand[ing]” industrial machinery.
“[N]o reasonable consumer would expect the tape to last forever, perfectly
unaltered, in the face of any or every condition. Defendant’s statements make
no measurable promises other than that Mighty Line Floor Tape probably falls
somewhere between tape that disintegrates at the lightest touch and tape strong
enough to survive a nuclear bomb.” The statements didn’t directly describe a
tape’s ability to resist unintentional lifting; they could mean resisting
abrasion, discoloration, or deformation when forklifts and other machines pass
over it. Even if the statements were factual, they were at most ambiguous, and
there was no evidence of actual deception.

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trial court erred by presuming materiality of black box warning; $834 million penalty vacated

State ex rel. Shikada v. Bristol-Myers Squibb Co., 2023 WL
2519857, SCAP-21-0000363, — P.3d —- (Hawai’i Mar. 15, 2023)

The state sued two pharmaceutical companies for violating Hawai‘i’s
Unfair or Deceptive Acts or Practices law (UDAP) by misleading the public about
the safety and efficacy of their antiplatelet drug, Plavix. What makes someone
a Plavix poor responder is complicated, and knowledge has evolved over time. The
state alleged that Plavix was less effective in patients who had certain
liver-enzyme mutations, and that defendants knew this fact years before 2009,
when the FDA updated Plavix’s label with information about the issue. The state
argued that their failure to update warnings plus intentionally suppressing
information about/research into the issue violated the law.

The trial court found for the state:  defendants misled Hawai‘i consumers by failing
to warn them that Plavix was less effective for poor responders. This omission
injured consumers by “denying them the drug’s full promised antiplatelet
effect, hindering their ability to give informed consent, and preventing them
from taking an alternative drug or undergoing genetic testing to determine
whether they were poor responders.”

The court imposed an $834 million penalty, which the Supreme
Court vacated on materiality grounds: the trial court improperly granted
partial summary judgment on whether the label mattered to consumers. A new
trial is required for UDAP deception, but not for whether the acts were unfair.
Nor did preemption, safe harbor, or statute of limitations arguments protect

The trial court agreed that the information contained in
Plavix’s federally mandated black box warning was material as a matter of law.
In the alternative, as the finder of fact at a bench trial, the court found the
defendant companies’ evidence on immateriality “weak and unpersuasive.”

Thus, at trial, defendants weren’t allowed to present
evidence showing that Hawai‘i doctors and patients hadn’t changed how they
prescribed or consumed Plavix after information about the poor responder issue
was added in 2010 to the black box warning.

Key issues: (1) Did the defendants mislead anyone by
omitting the poor responder information from the Plavix label between 1998 and
May 2009, or were they doing “the best they could with incomplete and
conflicting scientific information about the causes of variability of response
to Plavix”? [For affirmative misrepresentations this wouldn’t matter, but for
omissions state of mind does matter.] (2) Did defendants suppress research into
variability of response for financial reasons? (3) Did omission of the poor responder
information from Plavix’s label hurt Hawai‘i consumers, including by hindering
their ability to give informed consent?

The court reviewed the evidence as it developed over the
years, both before and after FDA approval. In 2009, a BMS employee wrote:

[I]t looks like we are into
stalling some more. I have to tell you that I have had in depth 1:1’s with
about 6 senior [key opinion leaders] since I have been at [the American College
of Cardiology] and the mood is very negative towards us ([Experts] are all
saying that they have been telling us this for years and we chose to ignore
them and bury our head in the sand and so they feel no sympathy toward our
current situation!)

In 2010, the FDA decided to put information about diminished
effectiveness for poor responders, associated with a particular genetic
variant, in a black box warning, including language stating that poor
metabolizers taking Plavix are more likely to have adverse cardiac events on
the drug than non-poor responders. Research and debate continued about the
causes of poor response. In 2016, the FDA removed the statement about worse
clinical outcomes from the boxed warning and just warned about “diminished
antiplatelet effect.”

As to suppressing research, the state submitted internal
documents that suggested that defendants were worried about studying
variability of response given that it could lead to “restrictive positioning”
of drugs, which posed “[p]otential threats for future sales.” Another
researcher wrote that “[t]he problem is that, given the variability of the
test, we always run the risk to show a difference in a pharmacology study …
and then we really are in trouble.” Another scientist: “In my opinion,
[Sanofi]’s/our reluctance to go down the path toward documentation of clopidogrel
resistance is understandable, but it will catch up with us and perhaps be an
unpleasant and costly surprise when others document it without asking our
permission to do so.” The BMS Vice President for the “Sanofi Alliance” at the
time wrote: “Sanofi remains adverse [sic] to doing any further work on either
aspirin or clopidogrel resistance because of the potential negative marketing
implications.” Etc.

On consumer harm, the supreme court reviewed the evidence
about whether the relevant genotype was linked to adverse clinical outcomes
(unclear; it wasn’t actively harming them, but the state’s witnesses testified
that it was essentially a placebo for nonresponders, which defendants disputed)
and whether non-white (particularly Asian) patients on Plavix are more likely
to receive little or no benefit from the drug.

The trial court found deception by omission, focusing on
what defendants knew when Plavix launched, as well as suppression/avoidance of
clarifying research. And it found consumer harm, relying on the label’s

Safe harbor: UDAP’s “safe harbor” exempts “[c]onduct in
compliance with the orders or rules of, or a statute administered by, a
federal, state, or local governmental agency.” But the FDA “did not issue the
companies a special dispensation absolving them of any state-law duties they
may have (above and beyond their obligations under federal law) to update the
Plavix label as the relevant science evolves. The FDA’s approval of Plavix’s
label does not confer the agency’s imprimatur on the companies’ decision not to
add information about variability of response to its warnings before 2009.”  Moreover, there was no safe harbor for
suppressing research or failing to disclose the results of a meta-analysis to
the public.

Statute of limitations: In Hawai’i, the state is not subject
to any limitations periods unless it is “specifically designated in such a
statute as subject to the limitation period contained therein.” This one

Preemption: There was no preemption because the FDA allows
manufacturers to change labels to “add or strengthen a contraindication,
warning, precaution, or adverse reaction” or to “add or strengthen an
instruction about dosage and administration that is intended to increase the
safe use of the drug product,” upon filing a supplemental application with the
FDA; a manufacturer need not wait for FDA approval. Preemption only applies
when there is “clear evidence that the FDA would not have approved a change to
[the brand name drug’s] label” required by state law. Here, by contrast, the
FDA eventually put information about the poor responder issue in a black box
warning on Plavix’s label.

But the trial court erred on materiality. There were genuine
factual disputes, and the trial court shouldn’t have weighed evidence before

Under the UDAP law, a representation or omission is
considered material if it “involves information that is important to consumers
and, hence, likely to affect their choice of, or conduct regarding, a product.”
The test is objective, not subjective.

The State stressed that a black box warning is the most
serious warning the FDA can require and presented eight survey findings from
the defendant companies’ 40-doctor telephone survey on how the boxed warning
impacted the doctors’ prescribing behavior. But the defendants argued that a
decade of evidence disproved materiality in this specific case, even though
many Hawai’ian patients are of Asian or Pacific Island descent. [This seems
affected by path-dependence: if the warning had been added earlier, when
doctors were less comfortable/used to the drug, would that still have
happened?] The State’s public health journal also recommended that Hawai‘i
doctors not change their prescribing practice based on the boxed warning and
that genetic testing not be done.

The trial court reasoned that, when information relates to
safety and health, there’s a presumption that it’s material. Moreover, “materiality
is determined by an objective, patient-oriented test, [so] evidence about the
behavior of doctors could never create a genuine issue of material fact.”

This was an overstatement and a misinterpretation.
Overcoming the presumption of materiality is “not a high hurdle.” Defendants
may always counter the presumption with extrinsic evidence, including “expert
testimony, consumer research, and evidence of how the networks and other expert
bodies interpreted the advertisements.” Although there’s an intuition that “something
the FDA considers very important for consumers to see must be material to those
consumers … materiality is about what consumers do, not what the FDA thinks. Even
evidence that the defendants themselves considered the information important
isn’t dispositive, because the standard is materiality to a reasonable
consumer, not the defendants. And “while the prescribing decisions of doctors
are not synonymous with consumer behavior, they are certainly not irrelevant to
it…. Objectively reasonable patients may rely on their doctors to help them
make sense of drug labels.” There was a genuine factual dispute here.

As for the alternative holding, summary judgment evidence
was no substitute for trial, including cross-examination.

Thus the deceptive acts liability holding had to be thrown
out; the error on materiality also affected the question of whether the
omission in question was likely to mislead consumers. Defendants could make
their case that Plavix was not, for a large chunk of Hawai‘i’s population, a bad

Unfairness survived. A practice is unfair under the UDAP if
it (1) offended public policy, (2) was immoral, unethical, oppressive, or
unscrupulous, or (3) substantially injured Hawai‘i consumers.  The materiality ruling affected (3), but (1)
and (2) were independently sufficient. Unlike the FTCA, Hawai’i law allows
finding a UDAP violation on any of those bases. Rather, “[a] practice
may be unfair because of the degree to which it meets one of the criteria or
because to a lesser extent it meets all three.” This was consistent with
interpreting Hawai‘i’s consumer protection law “in a way that maximizes
consumer protection.”

Findings about the black box label relied on – and thus were
tainted by – the materiality finding. “But the second type of conduct –
suppressing research and inquiry into the drug for financial reasons – had no
connection to the court’s materiality ruling.” These acts offended public
policy given that pharmacos have a common law duty to warn consumers “when the
risks of a particular drug become apparent.” The trial court found that the defendantss
aimed to avoid their common law duty by: “suppressing research and continuously
and repeatedly failing to further investigate the risks of reduced platelet
inhibition in poor metabolizers.” And they knew – from the moment Plavix
launched – about the diminished effects of Plavix in non-white populations, but
didn’t volunteer this information to the FDA and avoided funding studies which
could draw more attention to the variability of response. This set back
research; “[p]reventing risks from becoming apparent for financial gain offends
Hawai‘i public policy,” even if a drug proves to be safe. The same conduct also
qualified as “immoral, unethical, oppressive, [or] unscrupulous.”

Nonetheless, the penalty calculation was impaired by the
materiality error, so that had to go back too. “That the court landed on a per-prescription
penalty reveals how crucial materiality was to the damage calculations.”

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