In April 2022, INTA filed an amicus brief (pdf here) supporting Jack Daniel's petition for en banc rehearing of the BAD SPANIELS decision in VIP Products LLC v. Jack Daniel's Properties, Inc. INTA argued that the Ninth Circuit, by allowing minimal "expression" to qualify for a Rogers analysis, has significantly and erroneously expanded what constitutes an "expressive work." According to INTA, the Rogers test is more properly limited to inherently expressive works, not those ordinary consumer products that have some expression on the face of the product. The petition was denied, but the brief is worth reading.
Authors Vijay Toke, Martin Schwimmer, and Jennifer Gregor summarized the argument as follows:
In granting summary judgment of non-infringement to VIP Products, LLC . . . , the District Court observed that this Circuit's decisions applying Rogers have led to a place where virtually no trademark holder can prevail on trademark infringement claims against an ordinary consumer product that has even a modicum of expression in it. This Circuit's significant expansion of what constitutes an "expressive work" under Rogers also departs from the law of all other Circuits. Only in the Ninth Circuit does a commercial or consumer product with minimal "expression" receive a Rogers analysis, a test that was specifically designed to address-and only makes sense in the context of-truly artistic and creative works (e.g., films). In fact, when confronted with products that defendants have claimed are expressive, this Circuit has never declined to apply Rogers, bolstering the District Court's conclusion that this Circuit's Rogers precedents preclude trademark enforcement except perhaps in the most egregious of circumstances.
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