Tag Archives: #firstamendment

New York Passes Anti-SLAPP Legislation to Protect Speech Rights

On November 10, 2020, Governor Cuomo signed into law a robust expansion to New York’s existing anti-SLAPP legislation, in a significant effort to curb lawsuits filed with the goal of intimidating and suppressing free speech. Amending New York’s current statute—Sections 70-a and 76-a of the New York Civil Rights Law—the law addresses the problem of “strategic lawsuits against public participation,” which threaten burdensome, costly, and time-consuming litigation in order to chill defendants’ speech.

Although New York has had anti-SLAPP legislation on the books since 1992, its provisions were narrow, protecting only against lawsuits brought by a “public applicant or permittee” against defendants who had spoken out against an application or permit, such as a real estate developer that sued a citizen who opposed a project. Under the prior enactment, free speech in a broader context was unprotected, leaving defendants who work within the media or entertainment fields without much recourse against speech intimidation suits, a particularly troubling oversight for the nation’s media capital.

However, the signing of the new legislation, which passed the New York legislature in July, broadens New York’s approach considerably, bringing it into line with a growing number of states, including California, Nevada, Georgia, Colorado, Oregon, Louisiana, Tennessee, and Oklahoma, as well as Washington D.C., that have also worked to enact or strengthen anti-SLAPP laws. New York’s law now covers any speech or other lawful First Amendment conduct that relates to an issue of public interest. The law specifically applies to “any communication in a place open to the public or a public forum in connection with an issue of public interest” or “any other lawful conduct in furtherance of the exercise of the constitutional right of free speech in connection with an issue of public interest, or in furtherance of the exercise of the constitutional right of petition.” The law commits to broad speech protection, providing that “public interest” should be broadly construed to mean any subject other than a purely private matter.

In practice, the New York law provides defendants an effective, powerful tool by allowing them to file an anti-SLAPP motion to dismiss. Upon such a motion, the court must stay discovery, as well as pending hearings and motions while it makes its determination, although a court may order limited discovery to allow a plaintiff to respond to the motion. During this time, a court must also consider supporting and opposing affidavits—meaning that a defendant need not solely base his or her motion to dismiss on the pleadings or items for judicial notice—and a court must grant preference in the hearing of the anti-SLAPP motion. A judge must dismiss a case where a defendant has shown that the claim surrounding his or her speech or conduct lacks “a substantial basis in law or is [not] supported by a substantial argument for an extension, modification or reversal of existing law.” In such cases, the plaintiff must cover the defendant’s legal fees. These provisions undercut the luster of SLAPP lawsuits in the first instance, as defendants can potentially stop a case early in its tracks—filing a motion to dismiss prior to discovery, in fact—and saddle plaintiffs with mandatory fees, should the motion be successful.

Although it remains to be seen how the law will be interpreted and carried out by New York courts in practice, other states with similar anti-SLAPP laws provide some guidance. For instance, other states to consider the meaning of “public forum” under their legislation have extended the designation to websites accessible to the public, as well as blogs and email listservs. California courts have held that determining whether a communication has been made in connection with an issue of public interest requires a consideration of the context of the statement, as well as its content. Litigants in other states have invoked anti-SLAPP statutes in a wide variety of cases, from business disparagement and tortious interference with contract or business relations to false light, false advertising, malicious prosecution, intentional and negligent infliction of emotional distress, and breach of contract.

One of the bill’s drafters commented that it was indeed President Trump who had provided an impetus for the bill, considering his history of filing frivolous lawsuits against critics, in order to harass, intimidate, and bankrupt them. With the law’s signing this November, New York is poised to curb such meritless litigation and may serve as a model for other states, as it ascends the ranks to have one of the strongest anti-SLAPP laws nationwide.

Ninth Circuit Holds First Amendment Tolerates Whiskey-Inspired Parody Dog Toys in Trade Dress Spat

By Scott J. Sholder

A legal decision that simultaneously upholds the foundational tenets of free speech while quoting a dog toy’s claim to be “43% Poo by Vol” and “100% Smelly” is a welcome spot of levity in these trying and stressful times. The Ninth Circuit offered both in VIP Products v. Jack Daniel’s Properties, Inc., a recent decision holding that the First Amendment shields parodic uses of trademarks and trade dress in consumer products.

Background

Between 2007 and 2017, VIP Products LLC (“VIP”) sold dog toys called “Silly Squeakers,” which were designed to look like bottles of well-known beverages “but with dog-related twists” – in this case, “Bad Spaniels” as a play on Jack Daniel’s. The Bad Spaniels toy, introduced in 2013, resembles a Jack Daniel’s bottle, features a picture of a dog, and sports the phrase “the Old No. 2, on your Tennessee Carpet” and the above-mentioned “alcohol” content description. (A bottle of Jack Daniel’s bears the phrases “Old No. 7 Brand Tennessee Sour Mash Whiskey.”) VIP claimed that the purpose of its toys’ design was to comment on “the humanization of the dog in our lives” and “corporations [that] take themselves very seriously.”

Jack Daniel’s Properties, Inc. (“JDP”) was apparently one of those companies and did not take kindly to VIP’s canine-inspired take on its iconic brand of spirits. In 2014 JDP wrote to VIP demanding that it “cease all further sales of the Bad Spaniels toy.” In response, VIP filed an action seeking a declaratory judgment of non-infringement or dilution of JDP’s trademark rights, a ruling that the “Jack Daniel’s trade dress and bottle design are not entitled to trademark protection,” and cancellation of JDP’s registered bottle design. JDP counterclaimed for trademark and trade dress infringement as well as trademark dilution by tarnishment.

After dueling summary judgment motions, the district court, among other rulings, denied VIP’s First Amendment defenses and confirmed the protectability of JDP’s trade dress. A four-day bench trial on JDP’s dilution claim and likelihood of confusion resulted in a ruling in favor of JDP and a permanent injunction against sales of the Bad Spaniels toy. VIP appealed to the Ninth Circuit Court of Appeals, which issued a mixed ruling, affirming the protectability of JDP’s trade dress but reversing the lower court’s ruling on the First Amendment.

Ninth Circuit Decision

The appeals court, in addressing VIP’s First Amendment defense, explained that the Lanham Act’s “likelihood of confusion” standard generally “seeks to strike the appropriate balance between the First Amendment and trademark rights,” but in the context of artistic expression, a more stringent test in favor of free speech applies because likelihood of confusion “fails to account for the full weight of the public’s interest in free expression.” The Ninth Circuit explained that it had adopted, in Mattel, Inc. v. MCA Records, a test originally promulgated by the Second Circuit in the seminal case Rogers v. Grimaldi, which dealt with protectable names used in the titles of expressive works. That test requires a plaintiff to demonstrate that a defendant’s use of the plaintiff’s name/mark in an expressive work is either (1) “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.” The court’s analysis focused on the threshold issue of why a dog toy is considered an expressive work, the key question being whether the work “communicat[es] ideas or express[es] points of view.”

The panel explained that expressive works are “not rendered non-expressive simply because” they are sold commercially, yet do not need to be the “expressive equivalent of Anna Karenina or Citizen Kane.” The Bad Spaniels toys were expressive works because they communicated a “humorous message” through “word play to alter the serious phrase that appears on a Jack Daniel’s bottle – ‘Old No. 7 Brand’ – with a silly message – ‘The Old No. 2.'” The juxtaposition of an “irreverent representation of the trademark with the idealized image created by the mark’s owner” rendered the Bad Spaniels toy a First Amendment-protected work conveying the message that “business and product images need not always be taken too seriously.” This message was key; the vessel of the dog toy was effectively deemed irrelevant (and, the court noted, its conclusion was consistent with a 2007 Fourth Circuit decision protecting parodic dog toys based on Louis Vuitton hand bags).

As a procedural matter, the court did not address the substance of the two-prong Rogers test because the district court had not even found that Bad Spaniels was an expressive work. The court therefore vacated the lower court’s finding of infringement and remanded for an analysis of the Rogers test.

The Ninth Circuit panel went on to reverse the trial court’s ruling that VIP had diluted JDP’s trademark because noncommercial use of a mark is not dilutive, and VIP had not engaged in purely commercial speech. Specifically, VIP had done more than simply propose a commercial transaction by creating “protected expression” even though it was selling a product. Because VIP’s humorous message was protected by the First Amendment, its use of the JDP trade dress could not have diluted JDP’s brand.

The VIP case is the most recent example of the continued expansion of the Rogers test into a more encompassing First Amendment safeguard, at least in the Ninth Circuit. In 2008, the Ninth Circuit held in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., that, in the context of video games, the Rogers test applied not only to trademark use in titles of artistic works, but also to material in the body of the works. And just two years ago, in Twentieth Century Fox Television v. Empire Distribution, Inc., the court held that Fox’s use of the name “Empire” for its hit TV show was protected by the First Amendment against claims of trademark infringement by record label Empire Distribution, opening the Rogers umbrella to cover Fox’s promotional uses of the “Empire” mark for live musical performances, cast appearances, and on consumer goods like T-shirts and champagne glasses. The VIP decision represents a predictable next step of expansion of the Rogers doctrine out of the realm of creative media properties like television and video games (for which merchandising is ancillary) to consumer goods as a distinct category of creative expression.

VIP is a clear victory for creators of expressive works, reinforcing the importance of balancing trademark rights with artistic expression and the ability of creators of even garden-variety consumer products to make a living from the fruits of that expression. Brand owners, on the other hand, will likely see the decision as a weakening of trademark protections and a blank check for content creators to profit from uses of marks outside traditional artistic content. Of course, VIP is only binding in the Ninth Circuit, but it stands to reason that other like-minded courts such as the Second Circuit (originator of the Rogers test) and the Fourth Circuit (which addressed the Louis Vuitton dog toy case mentioned above) may follow suit. While creators of expressive products may take some more comfort in their First Amendment rights, trademark proprietors should carefully assess the facts of brewing disputes, especially in these circuits, before asserting claims. And, particularly with parody products, brand owners should consider whether litigation is the best solution or if there are other compromises like disclaimers or outside-the-box business solutions.

This article was published by the Media Law Resource Center (MLRC) on May 6, 2020