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

Paid petition · United States Court of Appeals for the Ninth Circuit, No. 21-55816 · judgment June 9, 2022

GVR'd · June 20, 2023
Pre-decision estimate: 1% cert probability

Before the decision, well below the 4.1% base rate, with no standout signals pointing toward a grant.

Questions presented

Petitioner Diece-Lisa Industries, Inc. owns the federally registered trademark LOTS OF HUGS for toys, which includes stuffed animals like pink teddy bears. Respondent Disney Store USA, LLC sells a pink teddy bear called “Lots-O’-Huggin’” Bear. Despite evidence there is a likelihood of confusion, the appellate court found Disney’s sale of these bears to be permissible as a matter of law because respondent’s bear first appeared in a cartoon movie, Toy Story 3. The questions presented are:

  1. Does the First Amendment provide an infringer blanket immunity for trademark infringement across all categories of goods so long as they can claim their first use was in an “expressive work”?

  2. Assuming the First Amendment provides some level of immunity against forward trademark infringement, should courts apply the test specifically crafted for forward confusion cases in cases of reverse trademark infringement?

Counsel of record

For petitioner
William A. Delgado
DTO Law

For respondent
Robert N. Klieger
Hueston Hennigan LLP

Case

Conference history
Distributed for 3 conferences

Proceedings

  1. Jul 24 2023
    Judgment issued.
    Main Document
  2. Jun 20 2023
    Petition GRANTED. Judgment VACATED and case REMANDED for further consideration in light of Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U. S. ___ (2023).
  3. Jun 12 2023
    DISTRIBUTED for Conference of 6/15/2023.
  4. Feb 22 2023
    DISTRIBUTED for Conference of 3/17/2023.
  5. Feb 16 2023
    Reply of petitioner Diece-Lisa Industries, Inc. filed.
    Main DocumentProof of ServiceCertificate of Word Count
  6. Feb 02 2023
    Brief of respondents Disney Store USA, LLC, et al. in opposition filed.
    Main DocumentProof of ServiceCertificate of Word Count
  7. Dec 09 2022
    Motion to extend the time to file a response is granted and the time is extended to and including February 2, 2023.
  8. Dec 08 2022
    Motion to extend the time to file a response from January 3, 2023 to February 2, 2023, submitted to The Clerk.
    Main DocumentProof of Service
  9. Dec 02 2022
    Response Requested. (Due January 3, 2023)
  10. Nov 30 2022
    DISTRIBUTED for Conference of 1/6/2023.
  11. Nov 22 2022
    Supplemental brief of petitioner Diece-Lisa Industries, Inc. filed.
    Main DocumentProof of ServiceCertificate of Word Count
  12. Oct 11 2022
    Petition for a writ of certiorari filed. (Response due November 14, 2022)
    PetitionCertificate of Word CountProof of Service