dismissal of ASU's claim against ASU_covid.parties Instagram upheld

Arizona Bd. of Regents v. Doe, 2022 WL 1514649, No. 21-16525 (9th Cir. May 13, 2022)

I wrote an amicus brief in this case. A post on the decision below. The court of appeals affirmed in a memorandum. The Board appealed denial of its motion for default judgment and dismissal of its complaint. It was ok to convert the motion for default judgment to dismissal because amendment would have been futile “given the implausibility of the allegations and of a finding of likelihood of confusion.” Although the Instagram account at issue was called ASU_covid.parties, “only one post included the use of [ASU’s] mark and trade dress. That one post contained profanity and a reasonable consumer would not think that a university would use such language when addressing the public. Reviewing the posts in their totality does not change the result, but rather reaffirms it.”

In addition, “amendment would have also been futile given the non-commercial nature of Doe’s activities.” In the Ninth Circuit, “infringement claims are subject to a commercial use requirement.” Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005). The complaint did not support the conclusion that Doe used ASU’s marks “for the sale of goods or services,” but rather “to criticize and mock [ASU] and [ASU’s] policies and administration.” To be sure, some posts did refer to a future party, but none had any particulars. The mere statement that Doe was a “party planner” was not enough, in the overall context, to allege commercial use.

In a footnote, the court noted that, even assuming Doe’s posts were commercial, Rogers and the First Amendment would protect the conduct. “Doe’s Instagram posts appear to constitute expressive work under Rogers as the posts communicated messages that mocked [ASU’s] policies and administration. To the extent [the Board’s] appeal attempts to improperly use trademark laws to block the expression of negative views about the university and its administration, such efforts fail.”

The district court thus did not abuse its discretion, even though it didn’t evaluate all the Sleekcraft likely confusion factors. Nor did it err by refusing to apply initial interest confusion, which requires likely confusion. Nor did it err in its false advertising analysis, which requires likely deception of reasonable consumers. And it was ok to reject the state law unfair competition claim but merely decide not to exercise supplemental jurisdiction over the state law dilution claim. [I hope and expect ASU will come to its senses and not refile in state court.]