Functionality Finds its 1st Amendment Voice in the Ninth Circuit

Los Angeles Daily

Journal August 14, 2025

A threshold issue in many trade dress cases and in some trademark cases is whether the plaintiff’s mark is functional. There are several types of functionality that may prevent a plaintiff from succeeding with an infringement claim. The first type of functionality is utilitarian. Is the trademark or trade dress essential to the purpose of the article on which it is used? Or does it affect the cost or quality of the article?

A second type is aesthetic functionality: does granting the plaintiff exclusive right to the trademark or trade dress put others in the market at a competitive disadvantage? Blumenthal v. Herman Miller, 963 Fed. 3d 859 (9th Cir. 2020).

These two types of functionality focus on the nature and the scope of plaintiff’s rights. Recently, courts in the Ninth Circuit have allowed a functionality defense based on how the defendant uses the possibly infringing mark.

The first development was a new application of aesthetic functionality. In LTTB, LLC v. Redbubble, Inc., 385 F. Supp. 3d 916, 921 (ND CA 2019), aff’d LTTB LLC v. Redbubble, Inc., 840 Fed. Appx. 148 (9th Cir. 2021), plaintiff claimed trademark rights to the phrase “Lettuce Turnip the Beet”. It had multiple trademark registrations including one in class 25 for clothing. Defendant Redbubble used the phrase on clothing and other items it sold.

Under the usual application of aesthetic functionality, the court may have determined whether plaintiff’s mark was functional. Instead, the court focused on defendant’s use the mark. Defendant argued it used the phrase as a pun emblazoned on its goods, not as a designation of origin. The court agreed. “The issue is . . . whether LTTB may rely on trademark law to obtain an exclusive right to sell products such as apparel, phone cases, stickers, bags . . . . . .displaying the pun. The answer is no.” Id. at 920. Redbubble was not making trademark use of the phrase. Since there was no trademark use by defendant, there could not be trademark infringement. Summary judgment was granted for Redbubble under an aesthetic functionality analysis – that defendant’s use of a humorous phrase was not use of the phrase as a mark. In an unpublished opinion, the Ninth Circuit affirmed the case.

The Ninth Circuit just decided Hara v. Netflix (2025). In Hara it applied a different, but consistent, functionality test: expressive function. Plaintiff Lance Hara, professionally known as Vicky Vox, claimed that her image was used in a Netflix animated series, Q Force. Vox is a drag queen who has appeared in theater, films, television, and music videos. Vox relied on a ten-second animated version of her likeness. This animated version was also used in promotions for the series. Vox argued that this was a false designation of origin in violation of section 43(a) of the Lanham Act. These claims are evaluated under a likelihood of confusion analysis. However, when the alleged infringement involves an expressive work, the Rogers (v. Grimaldi, 875 Fed. 2d 994, 2d Cir. 1989) test is used to determine if the Lanham Act applies to the use. Applying the Rogers test, the district court dismissed the case. The Ninth Circuit affirmed.

The Rogers test cannot be used if a defendant has used the word, mark, image, title, or likeness to designate the source of its goods. This threshold test comes from the Supreme Court decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023). Netflix did not use the image to designate the source of its series. Once this threshold has been passed, two prongs of analysis are applied. First, the defendant must prove its use is expressive (or part of an expressive work). Expressive works are protected by the First Amendment. In Hara, the parties agreed that the Netflix animation series was expressive. Vox argued that the promotional uses were not expressive and not part of the series. The Ninth Circuit held that First Amendment rights cannot be parsed to forbid marketing of expressive works. As long as the use has some artistic relevance to the underlying work, it is protected.

Once a defendant has proved expressive use, the Lanham Act does not apply unless the defendant’s use is not artistically relevant to the work or explicitly misleads consumers as to the source of the work. It was readily established that Netflix’s use of the image was relevant to the series.

This left whether the use explicitly misleads consumers as to the origin of the work. This element requires an overt claim or express misstatement as to source. In Hara, there was no misstatement by Netflix.

This last piece of the Rogers test is redundant with the threshold test. Jack Daniel’s held that the Rogers test cannot be used if a defendant has used the word, mark, image, title, or likeness to designate the source of its goods. The consideration of whether there is an overt claim or express misstatement as to source is only a rephrasing of the same test. In other words, if a court has already determined that the defendant is not using the word, mark or image as a designation (under Jack Daniel’s), it does not later need to determine whether there is an overt claim as to source by the defendant. There is no need to perform this test twice.

The reason for the redundancy is that the Ninth Circuit grafted the Jack Daniel's threshold standard onto the older Rogers criteria. But it failed to consider whether this graft mandated any refinement of the Rogers criteria.

The Ninth Circuit summarized the expressive function defense to infringement: “we apply the guiding principle that when the challenged mark in an artistic work is used not to designate a work’s source, but solely to perform some other expressive function, the Rogers test applies.” It is important to consider when the expressive function defense might apply. “We have applied Rogers in contexts in which the allegedly infringing use of a trademark involved the title or body of a creative work.” Hara expanded this to include images of a person. Still, this is a narrow range.

Trademark practitioners may lean toward cabining this defense to the title of a creative work, the body of the work and images of known individuals. But the Ninth Circuit cautioned that “the bar for artistic relevance is low.” The reason is that the underpinning of the Rogers test is the First Amendment. Porter v. Martinez, 68 Fed. 4th 429, 438 (9th Cir. 2023), explained the wide reach of protection: “[t]he First Amendment literally forbids the abridgment only of speech, but its protections do not end at the spoken or written word. . . Non-verbal conduct implicates the First Amendment when it is intended to convey a particularized message and the likelihood is great that the message would be so understood.” (Cleaned.) This broad sweep may include graphics, symbols or images which are all or part of a plaintiff’s trademark registration but are used in an expressive function by a defendant. The Ninth Circuit has already held that tattoos, which often include graphics, symbols, and images, are protected under the First Amendment: “[t]he tattoo itself, the process of tattooing, and even the business of tattooing are . . . purely expressive activity fully protected by the First Amendment.” Anderson v. City of Hermosa Beach, 621 F. 3d 1051, 1060 (9th Cir. 2010). Hara is a significant expansion of the role of functionality as a defense in trademark cases.