Jared Kagan is counsel with Debevoise & Plimpton’s Intellectual Property Group. His practice includes litigation and counseling on trademark, false advertising, copyright, and defamation matters, and has litigated cases in both state and federal court, before the Trademark Trial and Appeal Board and before the National Advertising Division of the Better Business Bureau. The Legal 500 US (2021) recognizes Mr. Kagan for his trademark litigation work, describing him as “outstanding.” Since 2012, Mr. Kagan has been a member of the Trademarks and Unfair Competition Committee of the New York City Bar Association.
This year saw an increased focus on the extraterritorial application of the Lanham Act, setting up a showdown at the Supreme Court in 2023. The last year also saw cases pressing the intersection of the Lanham Act with the First Amendment and artistic expression—both in the physical world and in the metaverse—and some rulings that will help clarify the likelihood of confusion analysis in various circuits.
As 2022 comes to an end, we look forward to what 2023 has in store.
The past year has seen the implementation of brand-new trademark legislation, significant analysis of trademark liability for new technologies, renewed focus on the doctrine of initial interest confusion, the transformation of Nikes into “Satan Shoes,” the functionality of chocolate dipped cookies, and the end to a long-running case involving two multi-million dollar jury awards for willful infringement. As 2021 comes to an end, we look forward to what 2022 has in store.
This year saw its fair share of high profile trademark cases: the Second Circuit vacated Tiffany & Co.’s $25 million summary judgment win against Costco Wholesale Corp. in a dispute over Costco’s use of the word “Tiffany” to identify a specific type of six-prong diamond ring setting in Tiffany and Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020);* the District Court for the Southern District of New York held that the First Amendment protects the use of Humvees in the acclaimed video game Call of Duty from claims of trademark infringement and dilution, and unfair competition in AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020).; and the District Court for the Western District of Texas refused to grant a “Brizzy” hard seltzer brand a preliminary injunction against Molson Coors over a competing “Vizzy” product because both names were based on the common descriptive term fizzy in Future Proof Brands, LLC v. Molson Coors Beverage, 2020 WL 3578327 (W.D. Tex. Mar. 24, 2020), aff’d, 2020 WL 7064607 (5th Cir. Dec. 3, 2020). But among all of the cases, a select few stand out as ones that have shaped trademark law and are already having an impact that may last for years to come.
Sometimes a dog toy is just a dog toy. Maybe that’s how Sigmund Freud would have put it; certainly, that’s the message from our client, the International Trademark Association (INTA), to the U.S. Supreme Court. At issue is a Ninth Circuit decision that extends First Amendment protection to ordinary commercial goods like dog toys, at the expense of trademark rights. INTA, Jack Daniel’s competitors, alcohol beverage industry associations, and other trademark advocates this week asked SCOTUS to step in and reverse.
The U.S. Court of Appeals for the Ninth Circuit held that a squeaking dog toy resembling a bottle of Jack Daniel’s whiskey is an expressive work entitled to First Amendment protection. VIP Prods. LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. Mar. 31, 2020). The court reversed a bench trial verdict that the toy infringed and diluted the JACK DANIEL’S trade dress and remanded for further reconsideration by the district court. Before the district court may find that the toy infringed Jack Daniel’s famous trade dress, the Ninth Circuit held that the district court must first apply the Second Circuit’s Rogers test, which will require it to consider whether VIP’s use of the trade dress was artistically relevant to the toy’s expressive character, and whether VIP’s use of the trade dress explicitly misleads consumers as to the source of the toy. The Rogerstest, though, has only been applied to expressive works such as books, songs, video games and movies; it has never been applied to consumer products like handbags and perfume, even if those products were intended as parodies. The Ninth Circuit’s decision expands the scope of First Amendment protection far beyond traditionally expressive works, and risks exposing a wide variety of brand owners to infringements based on alleged parody.
On February 20, the Supreme Court will hear oral argument in Mission Product Holdings Inc. v. Tempnology, LLC on appeal from the Court of Appeals for the First Circuit. The case presents the question of whether a debtor-licensor’s rejection of an executory trademark license agreement in bankruptcy, pursuant to 11 U.S.C. § 365, results in the agreement’s complete termination, including loss of the licensee’s right to use the licensed trademark. Given that trademarks are the most widely used form of registered intellectual property, and trademark rights often are among a debtor’s key assets, the treatment of the debtor’s licenses of those rights is an issue that arises frequently in the bankruptcy context. For this reason, among others, the issue presented by this case has been hailed by the International Trademark Association (INTA) as “the most significant unresolved legal issue in trademark licensing.”