Diece-Lisa Industries, Inc. v. Disney Store USA, LLC

NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS JUN 9 2022 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT

DIECE-LISA INDUSTRIES, INC., No. 21-55816

Plaintiff-Appellant, D.C. No. 2:20-cv-09147-TJH-JC v.

DISNEY STORE USA, LLC; et al., MEMORANDUM*

Defendants-Appellees.

Appeal from the United States District Court for the Central District of California Terry J. Hatter, Jr., District Judge, Presiding

Submitted June 7, 2022** Pasadena, California

Before: M. SMITH, BADE, and VANDYKE, Circuit Judges.

Plaintiff Diece-Lisa Industries, Inc. (DLI) appeals from the district court’s grant of summary judgment in favor of defendant Disney.1 We have jurisdiction

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. ** The panel unanimously concludes this case is suitable for decision without oral argument. See Fed. R. App. P. 34(a)(2). 1 The complaint names Disney Store USA, LLC and numerous related entities as defendants. We refer to them collectively in our disposition as “Disney.”

pursuant to 28 U.S.C. § 1291, and affirm.

The parties’ familiarity with the record is assumed. DLI does not meaningfully contest that its claims are barred by our existing precedents adopting and applying Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), see, e.g., VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174-75 (9th Cir. 2020), arguing instead that we should overturn or modify those decisions. DLI requests that we hear this case initially en banc so that our court can reconsider its use of the Rogers test wholesale. In a concurrently filed order, we deny this request. We also decline DLI’s invitation to “modify” the Rogers test. At bottom, we are constrained by existing circuit precedent. See, e.g., Silva v. Garland, 993 F.3d 705, 717 (9th Cir. 2021). DLI identifies no apposite authority that would permit us to add a significant, novel wrinkle to our Rogers jurisprudence. Cf. Twentieth Century Fox Television v. Empire Distrib., Inc., 875 F.3d 1192, 1198 (9th Cir. 2017) (rejecting effort to invent new legal requirement that did “not appear in the text of the Rogers test”).

Because DLI’s briefing is directed almost entirely to arguing that we should change existing precedent, it has likely waived any assertion that our existing Rogers case law allows its claims to go forward. See, e.g., Paladin Assocs., Inc. v. Mont. Power Co., 328 F.3d 1145, 1164 (9th Cir. 2003). In any event, we agree with the district court that Disney’s alleged use of DLI’s trademark was protected by the First Amendment pursuant to the Rogers test. Rogers allows the application of federal *3 trademark protection “to an expressive work only if the defendant’s use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work.” Gordon v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018). There is no genuine dispute that Disney’s use of the LOTS OF HUGS mark was relevant to the plot of a work of artistic expression, Toy Story 3, or that Disney’s use of the mark was not explicitly misleading within the meaning of the Rogers test. See id. at 264 (“[T]he level of artistic relevance under Rogers’s first prong need only exceed zero.”); Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443, 462 (9th Cir. 2020) (to satisfy Rogers’s second prong, there generally must be “an explicit indication, overt claim, or explicit misstatement about the source of the work,” which is a “high bar” (citation and internal quotation marks omitted)).

Consequently, Rogers bars DLI’s claims. Because we affirm based on the Rogers test, we do not address Disney’s argument that alternative grounds for affirmance exist.

AFFIRMED.