15.19A EXPRESSIVE WORKS

The defendant's work, [insert name of allegedly infringing work], is an expressive work that is protected by the First Amendment.

Therefore, you may find for the plaintiff on [his] [her] [its] trademark infringement claim only if the plaintiff proves by a preponderance of the evidence that:

1.	the defendant's use of the plaintiff's mark is explicitly misleading as to the source or content of [insert name of allegedly infringing work]; and

2.	the defendant's use of the plaintiff's mark is likely to cause confusion about the source of the plaintiff's or the defendant's goods.

The defendant's use of the mark is explicitly misleading only if it explicitly misleads consumers into believing that the plaintiff sponsored or is somehow associated with [insert name of allegedly infringing work].

Comment

In general, courts apply a "likelihood-of-confusion test" to claims brought under the Lanham Act. The likelihood-of-confusion test requires the plaintiff to prove two elements: (1) that "it has a valid, protectable trademark" and (2) that "the defendant's use of the mark is likely to cause confusion." Gordon v. Drape Creative, Inc. 909 F.3d 257, 264 (9th Cir. 2018).

Where artistic expression is at issue, however, the courts are concerned that "the traditional test fails to account for the full weight of the public's interest in free expression." Id. The Ninth Circuit therefore uses the Second Circuit's Rogers test. See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under that test, the court applies the Lanham Act to an expressive work "only if the defendant's use of the mark is (1) not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work." Gordon, 909 F.3d at 264. The court in Gordon explained the application of that test as follows:

The Rogers test requires the defendant to make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment. If the defendant successfully makes that threshold showing, then the plaintiff claiming trademark infringement bears a heightened burden—the plaintiff must satisfy not only the likelihood-of-confusion test but also at least one of Rogers's two prongs . . . . That is, when the defendant demonstrates that First Amendment interests are at stake, the plaintiff claiming infringement must show (1) that it has a valid, protectable trademark, and (2) that the mark is either not artistically relevant to the underlying work or explicitly misleading as to the source or content of the work. If the plaintiff satisfies both elements, it still must prove that its trademark has been infringed by showing that the defendant's use of the mark is likely to cause confusion.

Id. at 264-65.

This instruction assumes that the "artistically relevant" prong of the Rogers test will have been decided by the trial court. See Gordon, 909 F.3d at 269 (noting that "the slightest artistic relevance" will suffice to prove first prong of Rogers test).

No case has explicitly decided whether the question of First Amendment protection is to be decided by the court in all instances or whether it is a mixed question of fact and law. This instruction assumes that the court has already determined that the allegedly infringing work is

protected by the First Amendment, as was the case in Gordon. In a case in which the court

concludes there are factual findings a jury must make before deciding the threshold question of

First Amendment protection, this instruction should be modified accordingly.

Added June 2019