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Cockfighting in Puerto Rico and trade-dress protections for snack foods

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This week we highlight cert petitions that ask the Supreme Court to consider, among other things, the power of Congress to criminalize cockfighting under the commerce clause and the proper definition of “functionality” as applied to trade dress.

Puerto Rico is a United States territory, with its own constitution. And like a state, it is an autonomous political entity sovereign over matters not covered by the United States Constitution. For the past 400 years, cockfighting has been practiced on the island and is still today proclaimed by Puerto Rican law to be a “cultural right of all Puerto Ricans.” Although illegal under federal law since 1976, Congress continued to permit cockfighting where permissible under local law until 2018, when Congress passed Section 12616 of the Agriculture Improvement Act. Section 12616 eliminated the local law exemption of the Animal Welfare Act and effectively criminalized cockfighting in Puerto Rico. In Ortiz-Diaz v. United States, various individuals and organizations involved in the Puerto Rican cockfighting industry challenge the authority of Congress to govern what they consider a local custom. They insist that cockfighting is the island’s “national sport,” pointing to over 70 “cockpits” located throughout Puerto Rico, which host tens of thousands of cockfights each year, supporting an estimated 11,000 jobs and generating $65 million in annual revenue.

The district court and the U.S. Court of Appeals for the 1st Circuit rejected the challengers’ lawsuit, holding that Section 12616 was a proper use of Congress’ authority to regulate commerce under the commerce clause because of the substantial effect cockfighting has on interstate commerce. The challengers claim that such a holding raises federalism concerns, insisting that cockfighting is an inherently local issue that Puerto Ricans have the right to govern separate from the federal government. They also argue that the regulation of animal sports has generally been left to the states, citing examples such as rodeos, livestock shows, horse racing and hunting. Additionally, they argue that cockfighting has no effect on interstate commerce and ask the justices to grant cert to enforce the “outer limits” of the commerce clause and restore Puerto Rican sovereignty over what it considers a legitimate sport on the island.

Ezaki Glico Co. v. Lotte International America Corp. presents the justices with an intellectual-property question involving “trade dress” for the popular snack food Pocky, a thin, rod-shaped biscuit with a chocolate or cream coating. Trade dress refers to a product’s unique design or shape, such as the tear-drop shape of a Hershey’s Kiss. To be entitled to trademark protections, one requirement is that the unique trade-dress attribute cannot be “functional.”

Pocky and its competitor, as depicted in the cert petition.

Ezaki Glico Co., the manufacturer of Pocky, sued Lotte International America Corp., a rival snack-food company, after Lotte began selling a similar chocolate-coated biscuit snack. Glico argued that Lotte committed trade-dress infringement, but the district court and the U.S. Court of Appeals for the 3rd Circuit ruled that the design of Pocky is functional. In its cert petition, Glico argues that the 3rd Circuit applied an improper definition of functionality – departing from traditional trademark doctrine and the majority of other circuits – when it ruled that Pocky’s design is “useful” for being eaten and shared. Glico argues that this definition lowers the threshold for functionality and that alternative designs serving the same purpose should create a question of fact on functionality. The recognized tests for functionality, Glico continues, classify a product’s feature as functional only if it is essential to the use or purpose, if it affects the cost or quality, or if its exclusive use puts competitors at a significant disadvantage. Glico argues that a finding of functionality based on usefulness and “nothing more” threatens the uniformity of trade dress across the county and asks the court to announce the proper test for functionality.

These and other petitions of the week are below:

Ortiz-Diaz v. United States
Issue: Whether Congress has power under the commerce clause to criminalize cockfighting on the island of Puerto Rico.

Morales-Vázquez v. QBE Seguros
Issue: Whether the traditional doctrine of uberrimae fidei (“utmost good faith”) continues to apply in its strict form (as held by the U.S. Court of Appeals for the 1st Circuit in the decision below and also by the U.S. Courts of Appeals for the 3rd, 9th, and 11th Circuits), or is the doctrine limited to cases in which the insurer relied on a mistake or omission when issuing the policy (as held by the U.S. Courts of Appeals for the 2nd and 8th Circuits), or is the traditional doctrine no longer part of federal maritime law (as held by the U.S. Court of Appeals for the 5th Circuit), or should the doctrine be modified to limit an insurer’s ability to avoid the policy (which would restore uniformity with the law in England).

Ezaki Glico Co. v. Lotte International America Corp.
Issues: (1) Whether trade dress is “functional” if it is “essential to the use or purpose of the article” or “affects the cost or quality of the article,” as the Supreme Court and nine circuit courts have held, or if it is merely “useful” and “nothing more,” as the U.S. Court of Appeals for the 3rd Circuit held below; and (2) whether the presence of alternative designs serving the same use or purpose creates a question of fact with respect to functionality, where the product’s design does not affect cost or quality and is not claimed in a utility patent.

Lewis v. Pension Benefit Guaranty Corporation
Issue: Whether the U.S. Court of Appeals for the D.C. Circuit improperly extended Chevron deference to Pension Benefit Guarantee Corporation’s construction of ambiguous statutory provisions in informal, non-binding adjudications undertaken not in the agency’s congressionally assigned role as insurer (or in any other regulatory capacity) but instead as a plan trustee and fiduciary.

Recommended Citation: Mitchell Jagodinski, Cockfighting in Puerto Rico and trade-dress protections for snack foods, SCOTUSblog (Jul. 9, 2021, 4:20 PM),