MARTY SCHWIMMER CO-AUTHORS INTA AMICUS BRIEF

Jack Daniels has filed a petition for en banc reconsideration by the Ninth Circuit in JDPI v VIP Products – the so-called “Bad Spaniels” case.  The International Trademark Association subsequently filed a brief in support of reconsideration co-authored by our own Marty Schwimmer.  Rather than speaking to the Ninth Circuit’s application of the two prongs of the test from Rogers v. Grimaldi (artistic relevance and whether the work is explicitly misleading), the focus of INTA’s brief, instead, was on the threshold question: what constitutes an expressive work?  The significance of the definition of expressive work is that the heightened Rogers standard is such that, in the words of the District Court judge in JDPI, it “appears nearly impossible for any trademark holder to prevail under the Rogers test.”  INTA argues that the question as to the “quality” of the expression (and whether the expression is entitled to First Amendment protection at all), is not the proper Rogers test gating question.  Instead, the court should be guided by the underlying premise of the Rogers test, which is that the physical context in which the consumers encounter the mark is a factor in determining how consumers will interpret that material.