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Lisa Tittemore Co-Authors AIPLA U.S. Supreme Court Amicus Brief Supporting Review of Jack Daniel’s Trademark Case (the “Bad Spaniels” Case)

Lisa M. Tittemore, chair of the firm’s Litigation Practice, co-authored an amicus brief on behalf of the American Intellectual Property Association (AIPLA). The brief is in support of grant of a Petition for Certiorari before the U.S. Supreme Court in the matter Jack Daniel’s Properties, Inc., v. VIP Products LLC, which was granted by the Supreme Court this week.

The petition relates to a Ninth Circuit decision involving claims relating to the unauthorized use of trademarks and trade dress owned by Jack Daniel’s in connection with a dog toy product that purportedly parodied the Jack Daniel’s brand. Jack Daniel’s claimed that the products infringed its rights under the Lanham Act and federal dilution statute, but the Ninth Circuit held, among other things, that the First Amendment protects such humorous or parodic uses of others’ trademarks regardless of the nature of the underlying product.

This decision made the Ninth Circuit the first federal appellate court to apply such protections outside of Lanham Act disputes involving artistic works, and conflicts directly with decisions from other Courts of Appeals. If allowed to stand, the Ninth Circuit’s decision could have significant ramifications for trademark litigants and signal to alleged infringers that trademark liability may be escaped by utilizing minimal “humorous” elements.

The full brief, available for download here, calls for further review from the Supreme Court in this case, as the Ninth Circuit’s expansion of First Amendment protection, previously applicable only to artistic works, improperly and potentially dangerously curtails trademark owners’ ability to enforce their protection against likelihood of consumer confusion in the marketplace.

Lisa is a member of the AIPLA’s Amicus Committee and recently was reappointed to her second consecutive three-year term by the President of AIPLA. The AIPLA’s Amicus Committee works to identify cases having significant issues that may impact IP law or practice, considers requests for amicus participation from others pursuant to the committee's rules of procedure, and recommends to the AIPLA board that the organization file amicus briefs in appropriate situations.

A member of Sunstein’s management committee and chair of its litigation group, Lisa serves as lead counsel in patent, trademark and copyright litigation in federal courts throughout the United States. She provides strategic counsel to clients on domestic and international issues and helps to guide the firm’s efforts in protecting and enforcing clients’ valuable brands and ideas.

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