Bloomberg Law
March 17, 2023, 9:05 AM

Dog Toys, Drugs Lead Supreme Court’s High-Stakes IP Arguments

Kelcee Griffis
Kelcee Griffis
Kyle Jahner
Kyle Jahner
IP Reporter

The US Supreme Court is set to weigh three high-profile intellectual property cases in a seven-day stretch testing the bounds of branded parodies, broad drug patent claims, and international application of trademark law.

The arguments could result in rulings with wide-ranging impacts on areas including First Amendment expression, pharmaceutical research and development, and damages calculations. The US solicitor general will argue in all three cases, signaling the government’s strong interest in their outcomes.

Here’s what to expect during the high court’s blockbuster IP week.

Key Trademark Test

The justices will leave the first clues on March 22 about how they might weigh the nexus of the First Amendment, trademark law, and a pun-laden dog toy shaped like a bottle of Jack Daniel’s.

Jack Daniel’s Properties Inc. wants the high court to eliminate a test for trademark use in expressive works that the Ninth Circuit used to find that VIP Products LLC’s Bad Spaniels dog toy is permissible. VIP Products and its supporters argue that would chill free speech by allowing brand owners to force creators to litigate expensive “likelihood of consumer confusion” analyses.

The case carries massive implications for what authors of art, music, television shows, and movies can do to reference brands, as well as for designers of humorous products aping aspects of brands. As with other areas of IP, trademark law doesn’t neatly fit the broader ideological divide, so the justices’ questions may offer clues as to how they lean.

“This is a recurring fact pattern in various circuits that we’re just seeing more and more,” said intellectual property attorney Vijay Toke of Rimon PC, who authored a friend-of-the-court brief for the International Trademark Association. “It will be very good to have the Supreme Court weigh in.”

Illustration by Jonathan Hurtarte/Bloomberg Law

The US Court of Appeals for the Ninth Circuit’s reversal of Jack Daniel’s district court victory hinged on the Second Circuit’s “Rogers test” for balancing free speech and trademark rights. It allows unlicensed use of a trademark in an “expressive work” that is “artistically relevant” so long as it doesn’t “explicitly mislead” consumers into thinking the brand owner sanctioned it.

Jack Daniel’s and the US government argue the test was mistaken from the start, then overextended as other circuits adopted and expanded it. They argue a confusion analysis sufficiently incorporates First Amendment consideration. Trademark groups like INTA and some academics merely want the test cabined to “traditional” expressive works.

But VIP Products, public interest groups, and other academics say that fact-intensive confusion analyses could be weaponized by brand owners against non-infringing uses they don’t like. Some also rejected the notion of distinguishing “traditional works” from “commercial products.”

The case is Jack Daniel’s Properties Inc. v. VIP Products LLC, U.S., No. 22-148, oral argument 3/22/23.

Broad Patent Claims

On March 27, the justices will hear a case over competing cholesterol drugs that will give them the chance to define the scope of a statutory requirement that patents must contain enough information to enable someone with expertise in the field to make and use the invention.

An eventual decision on whether drug patents have to specify all potential antibodies that could have the same effect—or only spell out some of them to protect an entire category—will impact patent strategies and drug research and development.

“This is probably the most important, substantive patent case to come before the court in many years,” said Robin Feldman, director of the Center for Innovation at the University of California College of the Law, San Francisco.

Amgen Inc. is set to tell the justices that patents needn’t spell out every aspect of an invention to be eligible for protection, and that the practice of laying claim to a whole area of research—what are known as functional genus claims—should be allowed.

Amgen hopes to revive two patents covering its Repatha cholesterol drug that it asserted against Sanofi and Regeneron Pharmaceuticals Inc.’s rival Praluent medicine. The Federal Circuit previously found that Amgen’s patents covered too broad a swath of possible antibodies with their functional genus claims.

Sanofi, on the other hand, plans to argue that companies like Amgen must be prevented from monopolizing a promising area of development with broad patent claims that don’t tell people how to make the full scope of what the patent covers without “undue experimentation.” Similarly, the government will argue that Amgen’s patents did not contain enough information to be protected.

“In the pharmaceutical and chemical industries, there may be hundreds, thousands, or in this case ‘millions’ of candidates potentially within the genus,” said Ashley N. Moore, managing partner at Michelman & Robinson LLP, in an email. She said the justices will be tasked with weighing “how ‘undue’ must the experimentation be before the genus is not enabled.”

The case is Amgen Inc. vs. Sanofi, U.S., No. 21-757, oral argument 3/27/23.

Cross-Border Trademark Law

Before either of those arguments, the justices on March 21 will probe the reach of the Lanham Act and the conditions under which US courts can award trademark damages based on foreign actions.

Hetronic International Inc. will likely face skepticism in a case where attorneys expect the high court to reign in a $90 million trademark award based almost entirely on foreign sales of infringing radio remote controls. The US government will join Abitron Germany GmbH in its bid to slash that part of a jury’s $114 million award, which was affirmed by the Tenth Circuit.

The US said the Tenth Circuit’s logic risks globalizing US trademark law, as it would allow US courts to serve as a springboard for regulating foreign conduct with no effect on US consumers. Abitron stressed that trademark laws are fundamentally territorial, and that just 3% of the $90 million in offending sales ever touched the US in any way, with only $240,000 in relevant sales directly to US buyers.

“Trademark law varies from country to country. What might be infringement in the US might not be in some other country,” said intellectual property law professor Tim Holbrook of Emory University, whose research was cited in Abitron’s briefing. “Other circuits have been hesitant to apply it in extraterritorial fashion, because they want to have respect for foreign laws and foreign autonomy.”

The Tenth Circuit’s opinion affirming the verdict noted there were at least some US sales, and also held that purely foreign infringement revenue nevertheless would have flowed to Hetronic and into the US economy.

Attorneys have said the case widens a circuit split over how to apply the high court’s guidance in the 70-year-old Steele v. Bulova Watch Co. decision. There the Supreme Court said a US court could hear a watchmaker’s case because the defendant was a US resident and citizen who bought the components to make counterfeits in the US, and the watches made in Mexico made it back into the US. That case didn’t address damages.

Courts generally apply similar factors such as whether the defendant is a US citizen, the conduct’s effect on US commerce, and whether extending the Lanham Act to it would conflict with trademark rights under foreign law. But the manner in which they’re applied and the results have varied widely, attorneys say.

The case is Abitron Austria GmbH v. Hetronic Int’l Inc., U.S., No. 21-1043, oral argument 3/21/23.

To contact the reporter on this story: Kelcee Griffis in Washington at

To contact the editors responsible for this story: Adam M. Taylor at; Jay-Anne B. Casuga at