Jack Daniel's, Ginger Rogers and a Dog Toy

a Tennessee whiskey. Any wonder that Jack Daniels Properties would take offense at a chewable dog toy mimicking its signature whiskey bottle and bearing the label bad Spaniels the old number you on your Tennessee carpet. Jack Daniels says it's trademarks are being infringed, but the Ninth Circuit rule that the toy maker v. I. P. Products was entitled to First Amendment protection because the dog toy was an expressive work.

Now the Supreme Court has agreed to review that decision in a case that will test the reach of trademark rights in the face of First Amendment claims. My guest is intellectual property litigator Terence Ross, a partner at Captain Uchen Rosamond, So Terry tell us about the basic legal

fight here and the history of litigation. June number of years ago, a company called v I P Products, which puts out novelty toys especially for dogs, came out with a dog toy called Bad Spaniels that mimicked the classic

Jack Daniels whiskey bottle for its old number seven. Jack Daniel's parent company, Brown Foreman, not surprisingly sent out these and desist letters to v I P Products, and v I P Products brought declaratory judgment action in Arizona seeking to a pain from the Court of ruling that what they were doing was not a violation the trademark lass. The district court had a bench trial, which is a trial without a jury, and ruled that it was trademark infringement.

V I P Products took that case up to the Ninth Circuit, and the Ninth Circuit reversed, saying that the dog toy is a quote expressive work and it's protected by the First Amendment. Jack Daniels took that decision from the Ninth Circuit up to the Supreme Court, which refused except the game. So the case was sent back to the District Court, which entered a judgment on behalf of

the dog toy maker v IP Products. Brown Foreman's Jack Daniels company appealed that decision the Ninth Circuit, which affirmed it without even writing anything and in sort of a Hail Mary, the company took the case back to the Supreme Court second time, and to everybody's surprise, on November twenty one this year, the Supreme Court granite surgery or on the case and has accepted it's for review, which was quite surprised. In the trademark law field, this involves

the Rogers test, named after Ginger Rogers. Explain a little bit about that test for us. The Rogers test is judge created rule that comes from case called Rodgers versus Grimaldi. It involved the Frederico Felini film called Ginger and Fred that was about two Italian cabaret dancers and the reference in the title to Ginger Fred was to Ginger Rogers and Fred Stair. Obviously, everybody understood it to be that,

and that's what Frederica Felini intended it to me. So Ginger Rogers brought a lawsuit against the producer of the movie, alleging that they weren't allowed to market the movie using her name. And the case went up on appeal to the Second Circuit, which is the federal pellate Court for

the New York area. And the court said no if this was okay here, And they said specifically, it was okay to use a celebrity's name in an expressive work if it's artistically relevant to the work and not iplicitly misleading. And that rule became the Rogers test and expanded beyond merely the use of celebrity names, which was the nearer holding in the case, to more broadly to the use of trademarks in expressive works such as movies, books, songs,

that sort of thing. So is that the test that the Ninth Circuit used in ruling for the toy company. Here it is, and it represents one of the very first times that an appellate court has ever applied the Rogers test to commercial product. The Rogers test was expressly directed at so called expressive works and was not intended to apply to commercial products such as the dog Chewy toy here at issue and so that was a bit

of a surprise in and of itself. And now we have to assume that the Supreme Court has accepted this case in order to consider whether the Ninth Circuit was right in applying the Rogers test, because if the Rogers test is applied, that's sort of a low bar. It's a threshold issue. You don't have to then go into whether there's consumer confusion in the marketplace. That's correct. The Rogers test is intended to protect the legitimate First Amendment

interests that creators of expressive works have. And indeed, you think about this in terms of something as simple as a film review. If you need to do a review for the newspaper, magazine, television of a new film that's been released, you have to mention the name of the film. So there has to be some realm of protection emanating out the First Amendment even though you're using trademark names.

The question is how far does that expand so this is the very first time that the Supreme Court will consider in the trademark context, as supposed to copyright context, what sort of First Amendment protections there are that limit the applicability of trademark law. The toy company here also sells parodies of other popular alcoholic bottles, including Stella r Paw, which mimics designs from beer maker Stella Artois, and heine Sniffin, which resembles Heineken. So are there any other suits like

this one? Indeed, this same company put out of chew toy for dogs that was in the shape of a beer bottle that had the title on a Budweiser and looked very much like a bud Wiser beer bottle, and Budweiser did not want its beer being associated with people's bottoms and went to court suit and one, and that product is no longer on the market. Similarly, there's a case in the Fourth Circuit that's so similar to the case here that it's almos shocking. It was a lawsuit

in two thousand seventh. The caption was Louis Vutan versus Pote Digitty Dog, and it was about a chewy Vton dog toy that was put out as a parody of Louis Vatan's trademarks. And the Fourth Circuit in that case did not even deign to consider the Rogers test. It simply said, look, the way you approach case like this is to consider whether or not consumers are likely to be confused that somehow this Chewy Vaton dog toy is put out by Louis Vaton, the fashion house, and that's

the way you approach this. Indeed, it just went back this morning. Look, the Rogers test is not even mentioned by the Fourth Circuit, So in a very real sense, the Ninth Circuit is the first federal pellet court to consider and to apply the Rogers test in the context of a commercial product such as a dog toy, as opposed to applying it only with respect to express of works like songs, movies, and books. So do you have any idea why the Court decided to take this case

the second time around? This is exactly the problem that many of my friends in academia have discussed with me. We don't really know why all of the Supreme Court wants to look at this, and you know that raises fears.

The only difference in the law between when the Court rejected this case the first time and November two, when the Court decided to accept it on second go round, is that the composition of the Supreme Court has changed, and it only takes four votes amongst the justices to hear case, and we've had at least my account, if I've got it right, two new justices seed it since then, So one can't help but wonder if that is the driving force here, is that the new justices have a

different view of how trademark laws should have plot. But the fear amongst academics and practitioners who followed this very closely is that the Supreme Court might start with a much bigger picture and ask does the Rogers test even exist? The important thing to remember here is that there is no Rogers test in the Lantam Act, the trademark law. It was created by Judge Newman out a whole cloth

in Rogers v. Grimaldi. It's judge made law. And there's also this fear that there's a number of justices on the Court now who are anesthetical to judicial lawmaking, who believe that that's the province of Congress, and they arguably have some support in that thinking, and they may be wanting to revisit this. Remember, in the Copyright Act, this would be handled by the fair use doctrine. Fair use

doctrine is statutory. It's actually in the Copyright Act. There is no equivalent here in the trademark last, So one fear is that the Rogers test may not be accepted by the court. This will be the first time spcour its ever considered does the Rogers test even exist? The second question that I think if they agree that there is some sort of Rogers test, what is the makeup of that test? I mean, he's necessarily simple testing, you know,

with respect expressive works. Is the use of trademarks artistically relevant to that work and not explicitly intended to mislead? And then if we get past that, the third question, which I think is the one that they absolutely will consider, is does the Rogers test apply to commercial products? Because in its classic iteration it's limited to expressive works and a dog jewey toy does not constitute in my box as an expressive work. Does this then have the potential

to be a landmark case? Oh, this is going to be a landmark case almost no matter what the court does. If they say there is no Rogers test at all, that it was just made up by judge and that isn't the way we governed in the United States, then that's a landmark issue. If they say that there is Rogers test and then lay out what the test exactly

is that's a landmark decision. If they go so far as to say applies across the board to trademark us in all commercial products, not just expressive works, that's a landmark decision. So, I mean, this is going to be a really big case coming out of Supreme Court. One of the most significant trademark cases in quite a few years, for sure, and it's the second IP case the Court has taken this term. We've of course discussed the suit again the Andy Warhol Foundation over his Prince series. Thanks

so much, Terry. That's intellectual property litigator Terence Ross. Senate majority leader Chuck Schumer was among the Democrats who condemned former President Donald Trump for calling for the termination of the Constitution over his disproved claims that the election was stolen. Now he's calling for an end to America's constitutional democracy. Donald Trump is out of control and a danger to our democracy. Schumer asked his Republican colleagues to speak out

against the Trump comments, but their reaction was muted. My guest is Kenneth Gross, senior political law counsel and consultant at Achon Gump. He wrote on Truth Social a massive fraud of this type and magnitude allows for the termination of all rules, regulations, and articles, even those found in the Constitution. Do you think these kinds of comments are planned at all or just reactive on his part? It's hard to say. It doesn't sound like a lot of

thought goes into it, because it blew up. You know. It's one thing too, they ignore rules, but once you start touching the Constitution, you're at the third rail, and that is not a good place to go. The response was kind of weak from Republicans. Republican senators focused on the remarks themselves and the importance of the Constitution. I didn't hear anyone say, oh, this means I won't vote

for Trump when he runs for election. It seems like they're getting closer and closer to saying that because there the criticism is becoming more directed at him than at just the remarks, or it's more difficult to separate the two. So I am hearing more and more senators really in the last hours, Senator Tune and others are becoming more vocal in their unhappiness with statements like this and connecting

them to the speaker of the statements. In this case, Mr. Trump, So, you know, I think maybe it's moving like the like the lava from Mauna Loa and Hawaii, but it seems to be going in that direction. House Minority Leader Kevin McCarthy has yet to comment on the post, but in what may be a case of bad timing, on November, McCarthy tweeted that on the very first day of the new Republican led Congress, we will read every single word of the Constitution allowed from the floor of the House,

something that hasn't been done in years. And yet do we expect to hear anything negative from him on this now? I think McConnell, you know, there is some speculation that he may say something. McCarthy. I have not heard anything from him or any statements that he plans to be making, so it would be speculative to say that he would come out and say anything other than you know, what he has said historically, which of course doesn't relate to

these comments directly. The controversy intensified, so the former President Trump returned to his platform. Basically he insisted that he didn't write what he had written. The fake news is actually trying to convince the American people that I said I wanted to terminate the Constitution. This is simply more disinformation and laws, just like Russia, Russia Russia and all of their other hoaxes and scams with a lot of

capitals employed there as he likes to do. Deny what's been said has been something that has sort of work for him, hasn't it. Absolutely? You know, He's had many strikes at the plate and none of them have resulted in him being struck out. So um, it's something that we will hear probably over and over again, and if the heat gets really intense, it'll just direct the marks

of those who are criticizing him. So I think it's hard to even comment on it, you know, saying that somehow the Constitution should be set aside a patently is not going to work. So he says it and then the next day says, well, I didn't mean that. It's the media that's characterizing it that way. We've seen this show before. We've been living with Donald Trump politically since, and he's continued to amaze both in some of the things he said and done and also the fact that

nothing seems to stick. Do you think the Republicans fear of speaking out against him? Is because of this rapid magabase that no matter what I mean. Trump said early on that if you shot someone on Fifth Avenue, no one would do anything to him. That seems like it's becoming true almost so nothing he says will make any difference to them. It seems so that the Republican Party

is bound to him. There's no question about that. You know that those that are running for office or looking at their political standing within the party, they don't want to alienate that part of the base. And it's significant enough and continues to be significant enough where people are very careful in what they're saying. An economist you gov poll released last week showed Trump at thirty and Florida Governor RN De Santis at in a potential Republican primary field.

But does anyone have a chance against Trump with the base that supports him fervently? Well, if there's a number of candidates in the field that will certainly improve former President Trump's chances. You know, perhaps if it narrowed to a one on one, you know, the Santis Trump the base versus those others in the Republican Party, it would be closed. As that pole seems to indicate. But it's not going to be a head on contest between the

two of them. Most likely there will be others in the mix, and that certainly helps Trump the more of the ore than it's a replay of in the way that he won the nomination. There speaking of a replay, get another runoff in Georgia to determine the Senate and Senator Raphael Warnock one over challenger football star herschel Walker. Democrats already control the Senate, but the result in Georgia will have an impact. The impact on a fifty one

Senate is very significant. You know, I understand that right now the Vice President Harris can break ties and the majority is still in the democrats favor. But when you have a fifty one vote majority, you get a majority on every committee of Congress. You can move things out of committee on a partisan basis, whereas with a fifty fifty it's an equal number on each committee, and in order to move legislations, it slows the process found significantly and made and required to go to the full floor,

so the Vice president can participate. Also, the budgets for the committee are skewed in favor of the party and majority, so the Democrats will have more money and more staffing, you know, to handle their process, which is significant. Uh. And you know it also raises the question of the power of moderate Democrats such as Mansion and Cinema. Are

they in a position to hold a vote hostage? And the answer is no. Even if the two of them are together, you could, you know, they could create possible tie and those two you know own agreed, certainly difficult for the Democratic leadership and Schumer. But this gives enormous increased power to Schumer over a fifty Senate. And I think that even though this is being characterized what the outcome is not going to change who control the Senate.

It will be the Democrats either way. The difference between fifty one and fifty is very significant in all the processes, including moving judges through the process and other presidential appointments. There have been all kinds of scandals and questions surrounding herschel Walker, even whether he lives in Georgia or in Texas where he filed his taxes. So why do you

think this race was so tight? Well, herschel Walker, at least in his tv as, and I think in a lot of his sumph speeches has tied this election to Biden. Raphael Warnock not so much. He's talked about what he's done for Georgia voters and some of the other issues that are more local. And Biden still is not that popular in Georgia, even though he won the presidential election against Trump in Georgia, but his popularity has sunk since

then in Georgia. So, you know, Walker just says, you vote for me, and it's a vote against Biden and to stop the Liberal Democrats. And there's still a decent amount of people who that resonates with Georgia. I I still remain a member of the Georgia Bar and came to Washington back in the seventies from Georgia, going to

law school down there. And while the things changed down in Georgia, you know, there's still a very strong red representation in that state, and just aligning yourself with the Republican Party is enough to get you a large chunk of votes, even if you're not the most stellar candidate. You know you were from Georgia. Well, I'm not originally from Georgia, but I went to Emery Law School and I came to Washington with Jimmy carterback in nineteen. That

gives you those qualifications. The Walker campaign kept former President Trump away from this runoff except for one event to Zoom event, and Biden stayed out of the runoff as well. Former President Barack Obama went in to try to rally the voters. There is that good strategy on both sides. Yes, I think so. Actually, I think that both strategies were good. I think, you know, President Obama is very popular. He's a great in getting out the vote, which is what

the Democrats need more than anything in Georgia. And keeping Trump at a distance probably helps Walker. So I think a lot of good political strategizing on both sides. The aisle there came into play. It's not only exhausting for Georgia voters, but it must be exhausting for Warnock. He's had to run basically four times in two years five. He's been on the ballot five times for as he says it, for the same dog on job. That's so true. Thanks so much, Ken. That's Kenneth Grows, senior political law

council and consultant at Akin Gump. And that's it for this edition of The Bloomberg Law Show. Remember you can always get the latest legal news on our Bloomberg Law Podcast. You can find them on Apple Podcasts, Spotify, and at www dot bloomberg dot com, slash podcast slash Law, and remember to tune into The Bloomberg Law Show every week night at ten pm Wall Street Time. I'm June Grosso and you're listening to Bloomberg