In a look at some of the most notable trademark decisions so far this year, Bracewell partner Jonathon Hance helped Law360 break down the Diece-Lisa Industries Inc. v. Disney Enterprises Inc. et al. case, which shows how the Rogers test has evolved and how it may continue to evolve.
Hance, who expects the case to eventually return to the Ninth Circuit on appeal, said the ruling is important because it shows how the Central District of California is trying to figure out after the Jack Daniel’s holding where the dividing line is when “you have a use of a mark that is creative and products-driven.”
Hance said it was interesting that Disney tried to characterize the Jack Daniel’s ruling as “extraordinarily narrow,” applicable when an allegedly infringing mark is used as a source identifier rather than for a purely expressive purpose.
“That’s exactly where the district court seemed to disagree with Disney and said, ‘Look, you all aren’t using this thing for purely expressive purposes. You actually have a branded product in a film’” that is then sold in stores, Hance said.
Hance added that the case “really opens the door for challenges to uses of branded products in created works.”
Disney has been embroiled in ongoing litigation with Diece-Lisa Industries, the manufacturer of “Lots of Hugs” stuffed animal toys, over a “Toy Story 3” character named Lots-o’-Huggin’ Bear. Disney has previously relied on the Rogers test to fend off the trademark infringement suit with the manufacturer.
