NOT FOR PUBLICATION FILED

UNITED STATES COURT OF APPEALS JUN 9 2022

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT

DIECE-LISA INDUSTRIES, INC., No. 21-55816

Plaintiff-Appellant, D.C. No. 2:20-cv-09147-TJH-JC v.

DISNEY STORE USA, LLC; et al., MEMORANDUM*

Defendants-Appellees.

Appeal from the United States District Court for the Central District of California Terry J. Hatter, Jr., District Judge, Presiding

Submitted June 7, 2022** Pasadena, California

Before: M. SMITH, BADE, and VANDYKE, Circuit Judges.

Plaintiff Diece-Lisa Industries, Inc. (DLI) appeals from the district court’s

grant of summary judgment in favor of defendant Disney.1 We have jurisdiction

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. ** The panel unanimously concludes this case is suitable for decision without oral argument. See Fed. R. App. P. 34(a)(2). 1 The complaint names Disney Store USA, LLC and numerous related entities as defendants. We refer to them collectively in our disposition as “Disney.” pursuant to 28 U.S.C. § 1291, and affirm.

The parties’ familiarity with the record is assumed. DLI does not

meaningfully contest that its claims are barred by our existing precedents adopting

and applying Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), see, e.g., VIP Prods.

LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174-75 (9th Cir. 2020), arguing

instead that we should overturn or modify those decisions. DLI requests that we

hear this case initially en banc so that our court can reconsider its use of the Rogers

test wholesale. In a concurrently filed order, we deny this request. We also decline

DLI’s invitation to “modify” the Rogers test. At bottom, we are constrained by

existing circuit precedent. See, e.g., Silva v. Garland, 993 F.3d 705, 717 (9th Cir.

2021). DLI identifies no apposite authority that would permit us to add a significant,

novel wrinkle to our Rogers jurisprudence. Cf. Twentieth Century Fox Television v.

Empire Distrib., Inc., 875 F.3d 1192, 1198 (9th Cir. 2017) (rejecting effort to invent

new legal requirement that did “not appear in the text of the Rogers test”).

Because DLI’s briefing is directed almost entirely to arguing that we should

change existing precedent, it has likely waived any assertion that our existing Rogers

case law allows its claims to go forward. See, e.g., Paladin Assocs., Inc. v. Mont.

Power Co., 328 F.3d 1145, 1164 (9th Cir. 2003). In any event, we agree with the

district court that Disney’s alleged use of DLI’s trademark was protected by the First

Amendment pursuant to the Rogers test. Rogers allows the application of federal

2 trademark protection “to an expressive work only if the defendant’s use of the mark

(1) is not artistically relevant to the work or (2) explicitly misleads consumers as to

the source or the content of the work.” Gordon v. Drape Creative, Inc., 909 F.3d

257, 264 (9th Cir. 2018). There is no genuine dispute that Disney’s use of the LOTS

OF HUGS mark was relevant to the plot of a work of artistic expression, Toy Story

3, or that Disney’s use of the mark was not explicitly misleading within the meaning

of the Rogers test. See id. at 264 (“[T]he level of artistic relevance under Rogers’s

first prong need only exceed zero.”); Dr. Seuss Enters., L.P. v. ComicMix LLC, 983

F.3d 443, 462 (9th Cir. 2020) (to satisfy Rogers’s second prong, there generally must

be “an explicit indication, overt claim, or explicit misstatement about the source of

the work,” which is a “high bar” (citation and internal quotation marks omitted)).

Consequently, Rogers bars DLI’s claims. Because we affirm based on the

Rogers test, we do not address Disney’s argument that alternative grounds for

affirmance exist.

AFFIRMED.

3