Supreme Court Update: SCOTUS Denies Review of Two Highly Watched IP Cases
January 22 2021
The Supreme Court recently denied petitions for certiorari in two of the most highly watched intellectual property cases before the Court. Those cases were Jack Daniel’s Properties Inc. v. VIP Products LLC and The Moodsters Company v. Walt Disney Company. Both cases were on petition from the Ninth Circuit and are summarized below for your convenience.
I. Jack Daniel’s Properties, Inc. v. VIP Products LLC
In Jack Daniel’s Properties, Jack Daniel’s sued the maker of a dog toy, known as the Bad Spaniels Silly Squeaker, that was comedically modeled after the Jack Daniel’s Old. No. 7 bottle. The toy was a clear parody, but Jack Daniel’s alleged that the toy infringed its intellectual-property rights. VIP Products argued that their use wasn’t infringement because the toy was an expressive work entitled to First Amendment protection under Rogers v. Grimaldi. The district court rejected the argument and found VIP Products had infringed Jack Daniel’s trademark/trade dress.
On appeal, the Ninth Circuit reversed that portion of the district court’s ruling and held that the Rogers test required the plaintiff to show that defendant’s use was either (1) not artistically relevant to the underlying work or (2) explicitly misled consumers as to the source or content of the work. The Ninth Circuit held that the district court had erred by not requiring plaintiff to satisfy at least one of the two prongs of the Rogers test, and it reversed the judgment and remanded the matter for further proceedings.
The primary question presented in Jack Daniel’s petition for certiorari was whether a commercial product using humor is subject to the same likelihood-of-confusion analysis applicable to other products, or whether such a product is entitled to heightened First Amendment protection that requires the brand owner to prove that the use is either not artistically relevant or explicitly misleads consumers. Although it would have been interesting to see this matter litigated further, the Supreme Court seemingly disagreed and denied the petition.
II. The Moodsters Company v. The Walt Disney Company
In The Moodsters Company, the creator of The Moodsters—a set of characters designed to help children navigate their emotional intelligence—sued the Walt Disney Company over the Pixar movie Inside Out. According to The Moodsters Company, Disney infringed its copyrighted material when Disney utilized color-coded characters associated with specific emotions in the film.
The district court made quick work of the action by granting Disney’s motion to dismiss, which alleged that The Moodsters Company failed to meet the legal standard for copyright in a character. In other words, the district court ruled that The Moodsters are not protectable by copyright.
On appeal, the Ninth Circuit affirmed the district court’s decision. The Ninth Circuit panel held that “The Moodsters, lightly sketched anthropomorphized characters representing human emotions, did not qualify for copyright protection because they lacked consistent, identifiable character traits and attributes and were not especially distinctive.” The Ninth Circuit also held that The Moodsters “did not qualify for copyright protection under the alternative ‘story being told’ test.”
Of course, The Moodsters Company wasn’t happy with the Ninth Circuit’s ruling, and it petitioned the Supreme Court for review. The questions presented in the petition were (1) whether originality is the proper standard to determine character copyrightability; and (2) whether copyrightability—for a character or any work—is a question of fact, or involves questions of fact, ill-suited for resolution on a Rule 12 motion. But again, the Supreme Court didn’t believe this matter warranted review, and the petition was denied.
Unfortunately, the Supreme Court is not required to specify its rationale for denying review. I would be as interested to hear the Court’s rationale on why these matters didn’t require the Court’s review as I would be to see the Court’s analysis and decision on these issues. For what it’s worth, I believe that the Ninth Circuit reached the appropriate conclusion in both matters. So, in my humble opinion, perhaps the Court’s resources are more appropriately utilized elsewhere.