The Arizona Board of Regents’ (Arizona State) appeal of its trademark infringement suit involving an anonymous Instagram account with the handle @asu_covid.parties has been declined by the Ninth Circuit in an unpublished opinion on May 13, 2022 (Arizona Board of Regents v John Doe, Case No 21-16525 (9th Cir 2022)).

Arizona State brought the infringement action in August 2020 against Instagram’s parent company, Facebook, as well as the anonymous account holder, when it learned of the @asu_covid.parties account, which posted content discussing the covid-19 pandemic and urging students to attend parties and other events without masks. Facebook was later dropped from the suit when it removed @asu_covid.parties from its platform. The Arizona district court determined that there was no likelihood of confusion between Arizona State’s trademarks and the @asu_covid.parties posts and dismissed the suit.

Arizona State appealed to the Ninth Circuit, alleging that the district court did not allow it the opportunity to amend its complaint and did not provide sufficient notice prior to the dismissal. Arizona State maintained that additional evidence in the amended complaint would support a finding of likelihood of confusion, as it included evidence of actual confusion from some students and at least one alum and supported a finding of commercial use of Arizona State’s trademark and trade dress.

In its unpublished opinion, the Ninth Circuit ruled there was no error made by the district court when it dismissed Arizona State’s complaint without providing notice or an opportunity for it to amend or deny its motion for default judgment against John Doe. Arizona State’s proposed amendment to the complaint sought to introduce an additional 18 Instagram posts from the @asu_covid.parties account, one of which included Arizona State’s trademark and trade dress in connection with comments about future parties that might occur on the Arizona State campus, despite covid-19 restrictions in place at the university. However, the district court ruled, and the Ninth Circuit affirmed, that the post that included Arizona State’s trademark and trade dress also included profanity, which made it unlikely any consumer would believe the account was a university-sanctioned account. Further, the court found the @asu_covid.parties account was engaged in non-commercial activities rather than the commercial sale of goods and services, which would have been actionable under a Lanham Act claim. Instead, the John Doe account was using Arizona State’s trademark and trade dress to criticize and comment on the university’s administration and policies during the height of the pandemic.

In a footnote of this opinion, the Ninth Circuit also warned that Arizona State’s appeal potentially raised First Amendment concerns. As the Ninth Circuit follows the Rogers test, which allows for expressive uses of trademarks under the Lanham Act, even commercial use of a trademark may be permitted, so long as the use was found to be expressive. Here, the court mentioned that the @asu_covid.parties account “communicated messages that mocked Arizona Board of Regents’s policies and administration,” so the Rogers test would likely have been applied even if commercial use had been found.

This article originally appeared in World Trademark Review Weekly on May 26, 2022 and is reprinted with permission.