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-$175,000 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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