DTO Law Featured in Law360’s “The Biggest Trademark Rulings of 2024: A Midyear Report”
DTO Law has been prominently featured in Law360’s “The Biggest Trademark Rulings Of 2024: A Midyear Report” for its pivotal role in a landmark trademark case. The report spotlights the ongoing litigation between DTO’s client, Diece-Lisa Industries Inc., and Disney Enterprises Inc.
This high-stakes case, spanning over a decade, centers on the alleged infringement of Diece-Lisa’s “Lots of Hugs” stuffed animal toys by Disney’s “Toy Story 3” character, Lots-o’-Huggin’ Bear (Lotso). Initially filed in Texas federal court and subsequently transferred to California in 2020, the litigation has emerged as a touchstone for the evolving application of the Rogers test in trademark law. Disney’s initially successful strategy of invoking the Rogers test to defend against Diece-Lisa’s trademark infringement claims has been upended by recent rulings, dramatically altering the legal framework.
Following the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, DLI’s case—itself pending before the Supreme Court—was remanded to the Ninth Circuit and then back to the district court. Thereafter, U.S. District Judge Terry J. Hatter Jr. delivered a ruling denying Disney’s motion for summary judgment and declaring that the Rogers test could no longer shield the company from potential liability.
This decision represents a crucial turning point in the interpretation of trademark use in creative works, particularly when such works also serve commercial purposes. It signals a potential narrowing of the Rogers test’s applicability, especially in cases where a mark functions both as creative expression and product identifier.
DTO’s involvement in this case underscores its commitment to advocating for the protection of all trademark owners, regardless of their size, against infringement of their marks.
To read the full article on Law360 click here.
Diece-Lisa Industries Inc. v. Disney Enterprises Inc. et al., Case No. 2:20-cv-09147, U.S. District Court for the Central District of California