[00:00:02] Speaker 00:
Good morning Heather blaze on behalf of the plaintiff and an appellant and I would like to reserve three minutes for rebuttal, please May it please the court Your honor This is a case that involves the likeness of plaintiff Lance Hara and the character she created her drag persona known as Vicky box that Netflix and in the related and fringing parties misappropriated and the television series Q force and

[00:00:26] Speaker 00:
its related advertisements and the advertisements and promotional materials wholly unrelated to the goods and services embodied in Q4s.

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Think of the Vox character as you would any other established character, for instance, Austin Powers.

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Consider for a moment if Netflix had put an animated likeness of Austin Powers in a scene of a spy TV series in a non-speaking role and then prominently featured Austin Powers in its advertisements

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for the very series and for wholly unrelated goods and services.

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Would Mike Myers, who created and portrayed Austin Powers, not have a claim under the Lanham Act when consumers expressed actual confusion over whether Mike Myers had endorsed, appeared in, or was affiliated with the spy TV show?

[00:01:09] Speaker 00:
The answer is clear that he would under Jack Daniels.

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The same is true for Ricky Box.

[00:01:14] Speaker 04:
Let me put to what I think is a more dramatic case, at least for somebody of my age, Jim Brown.

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Maybe the greatest running back in NFL history.

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And you know how that case turned out.

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How is this case different?

[00:01:29] Speaker 00:
So in that case, Brown, is one of the cases that the Supreme Court cautions and says the Ninth Circuit has taken Rogers to apply too far.

[00:01:39] Speaker 04:
Does the majority say that?

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or that, I mean, Justice Gorsuch raised questions in his concurrence as to whether there's vitality to the, or should be vitality to Rogers.

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But I think the majority was very clear, we're not talking about anything but the narrow problem we've raised in the Jack Daniels case.

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And our court subsequently, in Punchbowl, says Rogers survives.

[00:02:04] Speaker 00:
So first is a unanimous decision.

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And yes, there was a concurrence where Gorich.

[00:02:09] Speaker 04:
So where in the unanimous decision does the Supreme Court majority cast doubt on the continued fatality of Rogers, which, as I say, our court's already decided survives?

[00:02:21] Speaker 00:
The Adams case, I'm sorry.

[00:02:22] Speaker 00:
You said?

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Punchbowl.

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And punchbowl.

[00:02:25] Speaker 04:
Our case is punchbowl.

[00:02:26] Speaker 00:
Yes, punchbowl.

[00:02:27] Speaker 00:
But I'm talking about the Supreme Court case that said that.

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And where in the majority does it cast the aspersion that you suggest that it does?

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It says this is where we depart in the majority opinion, which is a unanimous decision.

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This is where we depart most sharply from the Ninth Circuit.

[00:02:46] Speaker 00:
Right.

[00:02:46] Speaker 01:
So the question is whether defendants are using

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The mark is a mark, right?

[00:02:53] Speaker 01:
That's the distinction that the Supreme Court drew in Jack Daniel's.

[00:03:00] Speaker 01:
So here, and there's a difference between, I think, a claim of appropriation of likeness from the Lanham Act claim here, which is using the mark

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as a mark is the threshold question that we have.

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I think you can have appropriation of likeness without using a mark as a mark.

[00:03:24] Speaker 01:
Is that correct?

[00:03:25] Speaker 00:
So I don't think so.

[00:03:27] Speaker 01:
I think the distinction... So you think any appropriation of likeness would mean that they're using the mark as a mark?

[00:03:34] Speaker 00:
Well, not necessarily, but the distinction between false designation of source, which is really the mark as a mark and source identifying, and false endorsement, association or affiliation, it's immaterial because they both trigger likelihood of confusion analysis.

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They both occur under a single section of the Lanham Act.

[00:03:49] Speaker 03:
But using the mark as a mark is using the mark as the source or origin of a trademark.

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And the question is whether Rogers applies in the context of when it's being used for expressive purposes.

[00:04:04] Speaker 03:
So your argument is no matter how fleeting or momentary that someone uses a likeness of someone else, it necessarily is examined at the Landermark.

[00:04:16] Speaker 03:
There's no Rogers test.

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No, my argument is that if it's used to actually confuse consumers that there is a false association, a false affiliation, or a false endorsement,

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then the Rogers case cannot be used to eviscerate those claims.

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But Rogers is about using Marx in an expressive way, title, and it's been extended to other Marx.

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And it contemplates that there might be some confusion.

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In the Rogers test itself, it's about whether that confusion is very misleading to someone at that point.

[00:04:54] Speaker 03:
So it can't simply be just the possibility of a mark being used in an expressive work that might cause some confusion, can it?

[00:05:04] Speaker 00:
Correct, a mark being used, but in this case, this is a person's likeness, their celebrity likeness, and the character that they created being used both in a so-called expressive work, but then prominently being featured in all the advertisements

[00:05:21] Speaker 00:
and in advertisements relating to wholly unrelated goods and services.

[00:05:24] Speaker 04:
I think you're kind of exaggerating the prominence, but you're getting away from the question, which is that the Supreme Court in Jack Daniels was pretty clear talking about a source, identification of a source.

[00:05:37] Speaker 04:
And you're trying to turn that into inference or implied endorsement.

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I mean, nobody really thinks that your client was the source of the material you're objecting to, do they?

[00:05:51] Speaker 00:
Well, I would disagree, because the consumer confusion is that there's a collaboration, that there's an endorsement, that there's- So you're trying to move from source to endorsement, and I'm not sure that Jack Daniels helps you on that.

[00:06:05] Speaker 00:
Well, 1125A1A, USC 1125A1A, it's the same statutory section that applies to- Where in Rogers do they talk about something other than source identifier?

[00:06:17] Speaker 04:
Or not Rogers, in Jack Daniels?

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I'm talking about source identification.

[00:06:21] Speaker 00:
I'm saying that when you're talking about an endorsement.

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Are you arguing that under the statute, source identification includes endorsement?

[00:06:28] Speaker 00:
Yes.

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Is that your argument?

[00:06:29] Speaker 00:
Yes.

[00:06:30] Speaker 01:
OK.

[00:06:31] Speaker 00:
Yes, indeed.

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Source identification, when you're talking about the use that's protected in a celebrity image and likeness, and it's been interpreted on several courts,

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There are synonymous terms, first of all, whether source identification and the use of the mark, those are synonymous.

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But when you add it into the- Well, I wouldn't jump to the conclusion that we're going to agree with you that they're anonymous.

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And Jack Daniels is very explicit in speaking about source and identification.

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It says, every trademark's primary function is to identify the origin or ownership of the article to which it is affixed.

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And I don't think anybody thinks your client owns

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Q Force.

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But they think that she's affiliated with Q Force.

[00:07:21] Speaker 04:
Well, see, affiliated ownership, you're making a leap that Jack Daniels on its face doesn't support.

[00:07:31] Speaker 04:
So what is it that we think that you offer up to tell us why that leap should be made?

[00:07:38] Speaker 00:
Well, I don't think it's a leap.

[00:07:39] Speaker 00:
The court and Jack Daniels did not rely on Brown, did not rely on any of the expansions.

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The court and Jack Daniels cited to the Barbie case.

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which is very different from the case here, and even Rogers itself as a title case.

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It's not involving the actual fact.

[00:07:55] Speaker 03:
But, I mean, I was actually about to bring up the Barbie case because the court did refer to the Mattel case and said that it was part of Rogers and not part of a Lanham Act analysis because no one thought that the song, you know, Barbie Girl was something that Mattel had created.

[00:08:15] Speaker 03:
So Jack Daniels is anchoring that analysis in the trademark used as a source or origin.

[00:08:23] Speaker 00:
Well, the issue with Barbie, too, is also that they used the analysis that there's marks that transcend their identifying purpose, and they enter the public discourse and become an integral part of our vocabulary.

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And that's when the First Amendment protection comes into play.

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The same is not true with Vicki Vox.

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The same was true with Vicky Vox.

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Everyone in this courtroom would already know who she was and it would be part of our everyday vernacular like Barbie has become.

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That's one of the underpinnings of the Barbie case.

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And the Supreme Court cited to that Barbie case and the case of Louis Vuitton in the hangover film, Louis Vuitton versus the production company.

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And in that case,

[00:09:07] Speaker 00:
same thing, they said because the consumer confusion was so slight because the character in that show used a Louis Vuitton bag and mispronounced it as Louis Vuitton and no consumer would think that Louis Vuitton was actually then

[00:09:25] Speaker 01:
support of that council I just want to give you an opportunity so you're citing the statute 1125 a 1a is there actual text in the statute that says source includes endorsement or affiliation or can you point to a case that equates endorsement or affiliation with source that

[00:09:46] Speaker 00:
Designation of source and false endorsement, they both, I can read the actual statutory language.

[00:09:52] Speaker 00:
Any person who or in connection with any goods or services or any container for goods uses in commerce any word, term, name, symbol or device or any combination thereof or any false designation of origin, false or misleading description of fact or false or misleading representation of fact which A,

[00:10:14] Speaker 00:
likely to confuse or to cause mistake or to deceive as to the affiliation connection or association of such person with another person or as to the origin sponsorship or approval of his or her goods services or commercial activities by another person that is is where both both

[00:10:34] Speaker 00:
using mark as a mark and source identification and false endorsement, that's the statutory provision that comes into play for both of them.

[00:10:43] Speaker 00:
It does not dissect it down to source identification.

[00:10:45] Speaker 03:
But I think we're overlapping different things because the Lanham Act, yes, can create claims

[00:10:54] Speaker 03:
for trademark infringement based on different bases.

[00:10:57] Speaker 03:
And now you have the Rogers Test that steps in and says, well, wait a minute, we have to do something different when there's solely expressive conduct happening here.

[00:11:06] Speaker 03:
And what Jack Daniels is saying is, narrowly, Rogers Test does not apply in this one context where the trademark is being used as a mark.

[00:11:15] Speaker 03:
That has to fall under a Lanham Act analysis.

[00:11:18] Speaker 03:
So, our threshold question, to echo my colleagues, is does Rogers Test apply here or not?

[00:11:25] Speaker 03:
You know, is the Vox likeness being used in a source-identifying way?

[00:11:30] Speaker 03:
Not whether it would otherwise be eligible for a trademark infringement claim.

[00:11:36] Speaker 03:
And none of us have heard yet how Vox is being used in a source-identifying way to take it out of the Rogers context.

[00:11:44] Speaker 00:
In yes, so the source identifying way in this context of a celebrity endorsement, the mark as a mark that has been that has been interpreted to say as a symbol to attract public attention.

[00:11:57] Speaker 00:
That's the use.

[00:11:59] Speaker 00:
That's the source identification.

[00:12:01] Speaker 03:
So in your view, Jack Daniels has implicitly overruled Brown, our case in Brown.

[00:12:07] Speaker 00:
Yes, I do.

[00:12:07] Speaker 00:
And in fact, if you look at the companion case that was decided at the same time as Jack Daniels, the DisLisa versus Disney case, in the appellate briefing of that case before the Supreme Court, Disney attempted to rely on Brown

[00:12:25] Speaker 00:
as the reason for why they could use the character in the Pixar film, Toy Story, and in the related merchandise that they did.

[00:12:34] Speaker 00:
And the Supreme Court, although they didn't give us an instruction saying, you know, we hold that Brown doesn't apply, they reversed and remanded it and said that

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this case should be considered under like or follow the instruction.

[00:12:50] Speaker 03:
So any film or television where someone uses a likeness of a public figure maybe in a parody way can't happen anymore because now there might be confusion over whether there's some endorsement by that celebrity.

[00:13:07] Speaker 03:
That's a pretty sweeping argument you're making.

[00:13:10] Speaker 00:
No, I disagree.

[00:13:10] Speaker 00:
I'm not making that argument.

[00:13:11] Speaker 00:
I disagree.

[00:13:12] Speaker 00:
Parity exists.

[00:13:13] Speaker 03:
Where's the dividing line then?

[00:13:15] Speaker 00:
Well, it certainly doesn't happen on a 12b6 motion to dismiss after one amendment.

[00:13:19] Speaker 00:
There's significant factual determinations that were made here.

[00:13:22] Speaker 00:
In the Dislisa case, the Supreme Court reversed, and that was after a fully developed record, after a motion for submarine judgment.

[00:13:31] Speaker 00:
And the Supreme Court said,

[00:13:33] Speaker 00:
look at our instructions on Jack Daniels.

[00:13:36] Speaker 01:
I understand your argument to be relying in part at least on the fact that defendants used your client's image in the advertisements.

[00:13:46] Speaker 01:
right, not just in the content, but in the advertisements.

[00:13:51] Speaker 01:
If there's a question about whether that constitutes, well, let's assume we agree for the sake of argument that the source identification that the Supreme Court was referring to in Jack Daniels would include the endorsement based on the statutory definition or provision that you're referring to.

[00:14:14] Speaker 01:
If there was a question about whether defendants were using your client's mark as a source of endorsement or even partial source, I think the Supreme Court does allow for partial source, would

[00:14:31] Speaker 01:
If there's a question, is that a question of law or a question of fact or mixed?

[00:14:36] Speaker 00:
It's a question of fact as to whether or not it, and I have a citation on that.

[00:14:42] Speaker 00:
It's a question of fact as to whether or not the mark was being used as a mark or source identifying.

[00:14:50] Speaker 00:
Okay, what is your site for that?

[00:14:51] Speaker 00:
Several considerations go into the fact extensive analysis that's coming out of Kelly hyphen Brown.

[00:14:57] Speaker 00:
717F3 at 310-311.

[00:15:02] Speaker 00:
That's a second district case.

[00:15:04] Speaker 00:
And it goes into an entire investigation about whether or not the challenged mark appeared on the product itself, its packaging, or any other advertising or promotional materials related to the product.

[00:15:17] Speaker 03:
But in Kelly Brown, that was the Oprah Winfrey phrase, right?

[00:15:21] Speaker 03:
What was it?

[00:15:22] Speaker 03:
Own your power.

[00:15:24] Speaker 03:
Rogers did not come up in that case.

[00:15:27] Speaker 03:
So there was no claim, I believe, that there was some sort of expressive conduct involved in this, in this mark that was being challenged.

[00:15:35] Speaker 03:
So why, why is Kelly Brown applicable here?

[00:15:38] Speaker 00:
Because of whether or not it's being used in a commercial context and whether or not it's being used as a mark, as a mark in an identifying content and in a source identifying manner that it goes into that it is

[00:15:53] Speaker 00:
whether or not it's being designated as a mark period is a fact-intensive analysis.

[00:15:58] Speaker 03:
If it's a Lanham Act claim, sure.

[00:16:00] Speaker 03:
But in the context of an expressive work, that doesn't change things?

[00:16:07] Speaker 00:
Well, these are all Lanham Act claims.

[00:16:09] Speaker 03:
The question is, can... But I guess the question, just the interplay with Rogers, is that issue here.

[00:16:17] Speaker 00:
In order to get to Rogers, at all, you first need to determine under Jack Daniels whether or not there was any source identifying or mark as a mark function.

[00:16:28] Speaker 00:
You have to determine that first.

[00:16:30] Speaker 00:
And so regardless of whether or not this case specifically involved Rogers, you still have to answer that factual question.

[00:16:36] Speaker 00:
And on a 12b6, all facts should be construed in favor of the plaintiff.

[00:16:43] Speaker 00:
It's respectfully reserved.

[00:16:46] Speaker 01:
Yes, we can give you two minutes.

[00:16:48] Speaker 00:
Thank you.

[00:16:55] Speaker 02:
Good morning.

[00:16:55] Speaker 02:
Diana Palacios on behalf of the defendants, the police.

[00:16:58] Speaker 04:
You pull the microphone a little closer to you.

[00:17:00] Speaker 02:
I'm a little short.

[00:17:01] Speaker 02:
Sorry about that.

[00:17:02] Speaker 04:
That's the problem.

[00:17:03] Speaker 04:
We understand.

[00:17:03] Speaker 04:
We're not able to hear what you have to say.

[00:17:06] Speaker 02:
All right.

[00:17:06] Speaker 02:
There are a few things that I'd like to clarify in response to counsel's statements

[00:17:11] Speaker 02:
The first is that Rogers is binding president in this circuit in cases such as this one where a mark is not being used as a source identifying use, as it's been already pointed out, but it's worth repeating.

[00:17:24] Speaker 02:
This court already decided that in Punchbowl versus AJ Press.

[00:17:27] Speaker 02:
I'll read the quote now.

[00:17:29] Speaker 02:
This court said that Jack Daniels was, quote, confined to a narrow point of law.

[00:17:34] Speaker 02:
end quote, end quote, pre-existing Ninth Circuit precedent adopting and applying Rogers otherwise remains intact and binding on three judge panels.

[00:17:43] Speaker 02:
And that's end quote, that's at 1031.

[00:17:46] Speaker 02:
So in these cases, which largely are court

[00:17:49] Speaker 02:
cases where the mark is used in music and television shows and video games and film, those remain intact because they're being used for a non-mark purpose.

[00:18:01] Speaker 02:
They're being used for storytelling.

[00:18:02] Speaker 02:
They're being used to advance a story, to set the scene, to enhance realism.

[00:18:08] Speaker 02:
Those are all things that are permitted under the First Amendment, thus permitted under the law.

[00:18:13] Speaker 04:
I don't hear your colleague disputing what you're talking about.

[00:18:17] Speaker 04:
Most of our discussion has been

[00:18:20] Speaker 04:
whether Jack Daniels rolls back perhaps a little more, and we know about Punchville and talked about that, but why is it that you identify Jack Daniels as limited to the source indicator or the origin indicator and not as expansive as plaintiff has argued?

[00:18:40] Speaker 02:
Well, the first thing is plaintiff is trying to distinguish false endorsement cases, right?

[00:18:47] Speaker 02:
The key here is that Rogers is a false endorsement case.

[00:18:50] Speaker 02:
Rogers at the court dissects in Jack Daniels, backward and forward is a false endorsement case.

[00:18:56] Speaker 02:
And yet it makes no distinction there as to anything else but source identifying use.

[00:19:03] Speaker 02:
And that's the key here.

[00:19:04] Speaker 02:
This is also a false endorsement case, so is Brown.

[00:19:08] Speaker 02:
There's no reason to kind of part ways from the Supreme Court on that issue.

[00:19:12] Speaker 03:
But would you agree that Jack Daniels did seem to scale back the Rogers test?

[00:19:19] Speaker 03:
I mean, throughout the opinion, it talks about it being when it's solely for expressive conduct.

[00:19:27] Speaker 03:
It repeats that several times.

[00:19:30] Speaker 03:
Should we take that into account in thinking about whether source can be considered in a broader way toward false endorsement?

[00:19:38] Speaker 02:
You're right.

[00:19:40] Speaker 02:
The Supreme Court did obviously scale back Rogers.

[00:19:44] Speaker 02:
In Punchbowl, this court distinguishes between a line of cases that's permitted and a line of cases that's not, right?

[00:19:51] Speaker 02:
But the cases that are permitted, the ones that it does cite, are cases like Mattel, Louis Vuitton.

[00:19:57] Speaker 02:
And then in Punchbowl, the Ninth Circuit also points to ESS versus

[00:20:02] Speaker 02:
rock band right those are all the cases that are permitted and the thing that kind of unifies all of those are the mark is being used in content solely for expressive purposes.

[00:20:13] Speaker 01:
I would like you to address that statutory argument because ultimately this is a statute that we have to interpret and imply and I understand that what the Supreme Court and Jack Daniels was saying is that you know the statute set

[00:20:26] Speaker 01:
carves out this claim for when you use a mark as a mark and when there's that quintessential statutory use of a mark as a mark, we don't apply the Rogers test.

[00:20:38] Speaker 01:
Now, I hear your opposing counsel arguing under the statute, essentially, false endorsement is the equivalent of using mark as a mark as a statutory textual matter.

[00:20:52] Speaker 01:
Can you address that?

[00:20:53] Speaker 02:
Well, it would be putting the cart before the horse, right?

[00:20:56] Speaker 02:
The reason Rogers exists is so we don't have to go down the Lanham Act path.

[00:21:00] Speaker 02:
It is a First Amendment threshold question.

[00:21:02] Speaker 02:
So to equate the threshold question to the Lanham Act would destroy Rogers.

[00:21:07] Speaker 01:
Well, I disagree.

[00:21:08] Speaker 01:
I mean, in my understanding of Jack Daniels as saying there's this threshold question, you're not going to reach Rogers if

[00:21:15] Speaker 01:
there is use of a mark as a mark because that is precisely what the Lanham Act prohibits.

[00:21:22] Speaker 01:
And then I hear a textual argument being made.

[00:21:25] Speaker 01:
The Lanham Act essentially, it creates a statutory equivalence between source and endorsement.

[00:21:33] Speaker 01:
Can you address that?

[00:21:34] Speaker 02:
Sure, there were situations where that may be the case, but even in this situation, nobody viewing the materials would say that plaintiffs... That's a different question.

[00:21:43] Speaker 01:
I mean, I think there's a threshold question of whether when the Supreme Court and Jack Daniels said,

[00:21:49] Speaker 01:
Rogers doesn't apply when there's use of a mark as a mark then there's a statutory question is use of a mark as to convey endorsement this Statutory equivalent of using a mark as a mark because if the answer was yes And I would say that under the reasoning of Jack Daniels, then we wouldn't reach the Rogers test

[00:22:10] Speaker 02:
Yes, I think there are situations where a source can, using mark as a mark or to source identifier can also be an endorsement, right?

[00:22:20] Speaker 02:
Because that is how it would work under a false endorsement claim, but it's still identifying a type of source.

[00:22:28] Speaker 02:
When you talk about endorsement as a type of source, it's a source that is endorsing, approving that material.

[00:22:33] Speaker 02:
Once you go and follow that path in our analysis for the materials before this court, we reach the same conclusion.

[00:22:39] Speaker 01:
So then I think there's, is there, is it a question of fact or a question of law of whether defendants are using the plaintiff's mark as a source of endorsement?

[00:22:51] Speaker 02:
can be both.

[00:22:52] Speaker 02:
The Supreme Court definitely said that this is a decision that could be made and a motion to dismiss it.

[00:22:57] Speaker 02:
That is the purpose of Rogers.

[00:22:59] Speaker 02:
Anyways, and I can give you the citation.

[00:23:02] Speaker 02:
The Supreme Court says,

[00:23:07] Speaker 02:
The Supreme Court in Jack Daniels stated that the Rogers test quote offers an escape from the likelihood of confusion inquiry and a shortcut to dismissal.

[00:23:17] Speaker 02:
And then in a footnote, footnote two explained that even in source identifying cases, if the plaintiff fails to plausibly allege, this is a quote, sorry.

[00:23:25] Speaker 02:
Quote, fails to plausibly allege a likelihood of confusion.

[00:23:28] Speaker 02:
The district court should dismiss the complaint under federal rules of civil procedure, 12b6, and that's Jack Daniels, 157.

[00:23:34] Speaker 02:
If the Supreme Court perceives a situation where Roger should be made at a dismissal stage, that even in some situations the likelihood of confusion decision should be made at motion to dismiss stage.

[00:23:44] Speaker 02:
then yes, there are situations where this question should be made at a motion to dismiss stage, especially here where the material is before the court.

[00:23:52] Speaker 02:
Louis Vuitton, which is the case that the Supreme Court cites approvingly, also kind of addresses this question.

[00:23:57] Speaker 02:
Not kind of, but it does.

[00:23:59] Speaker 01:
Why don't the pleadings here adequately allege that by using plaintiff's image in advertisements that that is conveying

[00:24:13] Speaker 01:
endorsement.

[00:24:15] Speaker 02:
Well, I think the first step is to clarify the use, right?

[00:24:18] Speaker 02:
So the use is plaintiffs likeness in a cartoon style.

[00:24:22] Speaker 02:
for five seconds in an episode of a 10-episode series.

[00:24:26] Speaker 02:
That scene, those five seconds are there.

[00:24:27] Speaker 01:
That's not the only allegation, because there's also allegations about use in advertisements and in the still image that was released to the press, correct?

[00:24:36] Speaker 02:
Correct, I was gonna point that out.

[00:24:37] Speaker 02:
So those five seconds, that scene is then used in a one-minute trailer, and then a still of that scene is used by an unrelated publication to discuss the series.

[00:24:46] Speaker 02:
In that scene, Plaintiff is one of five characters.

[00:24:49] Speaker 02:
uh, non-speaking role fleeting.

[00:24:52] Speaker 02:
Uh, so in this situation, Roger cases guide us and tell us that we have to look at the underlying use.

[00:24:59] Speaker 01:
And then if that is protected under Rogers, any related advertising, any adjunct advertising is also getting to Rogers because if, if the use, I guess there's a threshold question of whether we even apply Rogers because there's a threshold question of whether they're using Mark.

[00:25:16] Speaker 01:
As a source, which you seem to concede includes endorsement right so if there's.

[00:25:24] Speaker 01:
a question of fact as to whether the way in which defendants used her mark constitutes endorsement or, you know, isn't that having the pleadings done enough at least to survive a motion dismissed and perhaps as a question for the jury as to whether this use constituted a use of her mark as mark to convey endorsement.

[00:25:50] Speaker 02:
No.

[00:25:52] Speaker 02:
In fact, the trailer is before this court.

[00:25:54] Speaker 02:
The trailer was before the district court.

[00:25:55] Speaker 02:
Watched it.

[00:25:56] Speaker 02:
Yeah.

[00:25:56] Speaker 02:
It's all properly before the court.

[00:25:58] Speaker 02:
So even if we take this threshold question and analyze the trailer independently of the underlying source, which I don't think would be appropriate under Rogers and under the First Amendment, but putting that aside, it's not used as a mark.

[00:26:13] Speaker 02:
It's plainly

[00:26:14] Speaker 02:
used as a part of the content, right?

[00:26:18] Speaker 01:
What if we think that's a close question?

[00:26:20] Speaker 01:
Who decides?

[00:26:22] Speaker 01:
Judge or jury?

[00:26:24] Speaker 02:
In this situation, I think the judge would decide because the material is before the court and because otherwise it would be- You're saying it's a question of law.

[00:26:31] Speaker 02:
It is a question of law.

[00:26:32] Speaker 02:
The court determining- Do you have a citation for that?

[00:26:35] Speaker 02:
I do not, Your Honor.

[00:26:36] Speaker 03:
Counsel, can I- I may have missed something.

[00:26:39] Speaker 03:
Did you concede that using a mark as a mark can encompass a false endorsement claim as opposed to using the mark as a source or origin of the mark?

[00:26:49] Speaker 02:
Well, I think the source can be sometimes endorsement.

[00:26:54] Speaker 02:
Otherwise, that's how at least the Supreme Court saw it in Jack Daniels.

[00:26:59] Speaker 02:
When it's analyzing Rogers, it was equating the Rogers case, which is a false endorsement case, and talking about source identification.

[00:27:09] Speaker 03:
So as I understood it, Jack Daniels is talking about, yes, there are various claims under the Lanham Act for trademark infringement, but in the species of claim that is where the trademark is being used in a source identifying way, that puts it out of the Rogers test, even if it happens to be expressive or not.

[00:27:32] Speaker 03:
But I didn't understand that to mean that because of that,

[00:27:36] Speaker 03:
All Lanham Act claims, therefore, are outside of the Rogers test.

[00:27:43] Speaker 03:
That would seem to end the Rogers test, doesn't it?

[00:27:47] Speaker 02:
Well, absolutely.

[00:27:49] Speaker 03:
In other words, I think there's a distinction to be made between

[00:27:52] Speaker 03:
a trademark being used as a source of saying, yes, this is the origin or the source of that mark, Vicky Vox created Q-Force versus a claim for infringement based on endorsement of something.

[00:28:07] Speaker 03:
Vicky Vox did not create, is not the source of Q-Force, but may be endorsing it.

[00:28:13] Speaker 02:
Well, I think the distinction is that source can sometimes be a type of endorsement, right?

[00:28:18] Speaker 01:
Can I ask you a question?

[00:28:20] Speaker 01:
Yes.

[00:28:20] Speaker 01:
So using a mark as a mark, can a mark be used?

[00:28:24] Speaker 01:
I think it's very clear under Jack Daniels, you can use a mark to convey source.

[00:28:29] Speaker 01:
Can you use a mark to convey endorsement under the Lanham Act?

[00:28:34] Speaker 02:
Yes, absolutely.

[00:28:35] Speaker 02:
In fact, even in Louis Vuitton, one of the things that Louis Vuitton argues is that by being used, nobody thought that

[00:28:43] Speaker 02:
Hangover Part 2 was by Louboutin, but what Louboutin was arguing was that it endorsed Hangover.

[00:28:49] Speaker 02:
In fact, the quote that comes from the Louboutin case speaks to that.

[00:28:55] Speaker 01:
I guess my question, under the Lanham Act, would using another person's mark, another entity's mark, as a mark to convey endorsement be prohibited by the statute?

[00:29:13] Speaker 02:
You mean by Rogers by the statute.

[00:29:15] Speaker 02:
I can't speak to the statute, but it would if it falls within to within the situation if it's being used as endorsement.

[00:29:24] Speaker 02:
then it could be a situation where it doesn't fall within Rogers, or doesn't go down that path.

[00:29:29] Speaker 03:
But that's the separate... So then how do you... Judge Clifton's earlier question about Jim Brown, his likeness was being used in a video game, and the court there, under the Rogers test, found the video game to have expressive content and to be expression.

[00:29:47] Speaker 03:
and the Rogers test applies.

[00:29:50] Speaker 03:
But the court also said that that claim should be dismissed because there was no allegation that Brown was endorsing the video game itself.

[00:30:05] Speaker 03:
And so it seems to create a distinction between the notion of being used as a mark versus for endorsement purposes.

[00:30:12] Speaker 03:
You're saying is Brown no longer a good law under Jack Daniels?

[00:30:15] Speaker 02:
absolutely is good law.

[00:30:17] Speaker 02:
It's the same thing, right?

[00:30:19] Speaker 02:
As I mentioned, sourcing is a type of endorsement.

[00:30:22] Speaker 02:
That's the reason the Supreme Court was able to analyze Rodgers and make no distinctions.

[00:30:26] Speaker 01:
Can you explain what you mean by sourcing is a type of endorsement?

[00:30:28] Speaker 02:
Right.

[00:30:29] Speaker 02:
It's a type of source, right?

[00:30:30] Speaker 02:
It's a source of approval in that scenario.

[00:30:33] Speaker 02:
The Supreme Court made no distinction between endorsement and sourcing because it is a type of sourcing.

[00:30:38] Speaker 02:
When it was talking about a source, it looked at Rogers, which is a false endorsement case, and made no distinction.

[00:30:44] Speaker 01:
So it's not that is it being used as a... So the question is... Just to be honest, I'm confused by your argument because if sourcing includes endorsement, why wouldn't endorsement then be covered under Jack Daniels as a form of using Mark as a mark?

[00:30:59] Speaker 02:
because Rogers is a false endorsement case.

[00:31:03] Speaker 03:
So if the court looked at Rogers and said... But if Jack Daniels is saying, we don't look to Rogers if a mark is being used as a mark or in a source identifying way, and you're saying you're including endorsement claims within that, then we don't put Rogers... Rogers is out now.

[00:31:22] Speaker 03:
And now we only look at it as a Lanham Act violation and whether there's confusion in the marketplace.

[00:31:28] Speaker 03:
That seems to be the argument you're making right now.

[00:31:31] Speaker 02:
Well, Broder's case was cited approvingly by the Supreme Court, except in other cases where it had been expanded.

[00:31:37] Speaker 01:
That's the distinction.

[00:31:39] Speaker 01:
I think neither approved or disapproved of Rogers just said, we're not going to address whether Rogers survives at all.

[00:31:47] Speaker 01:
But they said, at least in cases where a mark is being used as a mark as a source.

[00:31:53] Speaker 01:
And then they say, if a mark is being used as a source identifier, that means it's being used as a mark.

[00:32:00] Speaker 01:
Then I hear essentially, mark, if it's used as a source identifier, is using as mark as a mark.

[00:32:06] Speaker 01:
And then I hear you saying, source identifier can include

[00:32:09] Speaker 01:
endorsement.

[00:32:11] Speaker 01:
So if that's true, then A equals B equals C. If endorsement equals source identifier equals using mark as a mark, then at least cases in which a mark is being used as an endorsement, then that would fall into the Jack Daniels side.

[00:32:26] Speaker 01:
And I think there would still be a category of cases in which Rogers might apply where it's not being used

[00:32:33] Speaker 01:
as a mark where it's being used for parody or for simply perhaps a prop and it's not being used to convey endorsement or creation rate that then Rogers would still apply.

[00:32:52] Speaker 02:
Yeah, I would agree with that.

[00:32:53] Speaker 02:
And I think the idea is that just having a person, a personality, is not endorsement, right?

[00:32:59] Speaker 02:
That's the distinction.

[00:32:59] Speaker 01:
So then the question is, if you agree endorsement could go into the Jack Daniels box, but just mere use of image for some other expressive purpose, how do we know when it's trying to decide, does this case fall on which side of that line?

[00:33:22] Speaker 01:
Is it for us to decide?

[00:33:24] Speaker 01:
And when it's debatable, as a matter of fact, why doesn't Plano survive the motion to dismiss?

[00:33:30] Speaker 02:
You're right.

[00:33:31] Speaker 02:
It could survive a motion to dismiss.

[00:33:34] Speaker 02:
The Supreme Court did provide us guidance as to these issues.

[00:33:38] Speaker 02:
In Jack Daniels, it said, well, look at a couple of things.

[00:33:41] Speaker 02:
Look at how it's being used.

[00:33:43] Speaker 02:
Is it conceded?

[00:33:44] Speaker 02:
In Jack Daniels, it was conceded that the mark was being used as a mark, that it was trademarked.

[00:33:49] Speaker 02:
Look at the placing in Jack Daniels.

[00:33:52] Speaker 02:
Bad Spaniels was using the tag and with the same prominence, right?

[00:33:56] Speaker 01:
And you're saying as a matter of law, there is too little use here.

[00:33:59] Speaker 01:
We can say as a matter of law that the use of the image doesn't convey endorsement anyway.

[00:34:05] Speaker 02:
Well, two things.

[00:34:06] Speaker 02:
One, they're not alleged.

[00:34:08] Speaker 02:
Nowhere in the complaint, even though this case was filed and then amended after Jack Daniels, were any of these allegations in the complaint.

[00:34:15] Speaker 02:
And then separately, to your point, is that as a matter of law, those things don't exist.

[00:34:20] Speaker 02:
The series, the trailer, the still, are all before the court.

[00:34:24] Speaker 02:
And none of those things are visible.

[00:34:25] Speaker 02:
So a reasonable viewer in this situation would come to the determination that this is not a situation where a mark is being used as a mark.

[00:34:34] Speaker 03:
So, just to clarify for myself, if a plaintiff is alleging that a mark is being used for endorsement purposes, they may be able to survive a motion to dismiss if there are certain allegations that suggest that the image is being used in an endorsement kind of way, but it's not here because it's fleeting.

[00:34:57] Speaker 02:
Well, I think there are situations where a plaintiff can make those allegations with sufficient factual basis.

[00:35:04] Speaker 02:
And then in addition to that, especially in situations where everything is before the court, the court then can consider where those allegations are plausible by reviewing the material itself.

[00:35:14] Speaker 02:
And here we have neither the allegations and the materials before the court.

[00:35:19] Speaker 01:
OK.

[00:35:19] Speaker 01:
Do you have anything else?

[00:35:20] Speaker 01:
OK, thank you, Kance.

[00:35:33] Speaker 00:
We certainly dispute whether or not the allegations in the complaint, they certainly allege that there's been a false endorsement, false affiliation, everything that would be required from a notice pleading perspective.

[00:35:42] Speaker 00:
There's no additional pleading requirements that I'm aware of.

[00:35:45] Speaker 00:
And if there were, we could have certainly amended them on a second round if something was lacking from a pleading perspective.

[00:35:54] Speaker 00:
I do want to circle back with what we were discussing earlier about what the Supreme Court actually said, and this is a direct quote from the unanimous decision.

[00:36:10] Speaker 00:
The Ninth Circuit was mistaken to believe that the First Amendment demanded such a result, and what that's referring to is that

[00:36:18] Speaker 00:
The Rogers exception would become the general rule and conflict with longstanding trademark law.

[00:36:25] Speaker 00:
The Rogers, coming out of Jack Daniels, we know four things.

[00:36:31] Speaker 00:
We know Rogers application as a threshold bar to claim should be used rarely, if ever.

[00:36:38] Speaker 00:
We know that Rogers should be applied narrowly, not broadly.

[00:36:41] Speaker 00:
We know Rogers never applies when the use of the mark is at least in part as designated of source.

[00:36:47] Speaker 00:
We have a concession that designation of source and endorsement can be one and the same.

[00:36:54] Speaker 00:
And for Roger's use of another's mark is not immune from liability just because it could be considered expressive, even in part.

[00:37:03] Speaker 00:
And it's important to underscore in this case, we're not even just talking about a likeness.

[00:37:07] Speaker 00:
We're talking about a character that was created by a person.

[00:37:11] Speaker 00:
It's their expressive work that's been usurped and used to trade on the goodwill of that mark.

[00:37:18] Speaker 00:
And we ask that you remand with instruction that the defendants be required to answer, that this matter proceed to discovery, and that it proceed on a likelihood of confusion.

[00:37:28] Speaker 00:
Thank you.

[00:37:30] Speaker 01:
Thank you, Council, for your arguments.

[00:37:35] Speaker 00:
This matter is submitted.