• Coblentz Strengthens Tax Practice with the Addition of Nick Gerlach

    San Francisco (June 21, 2023) – San Francisco-based law firm Coblentz Patch Duffy & Bass LLP is pleased to welcome Nick Gerlach to the firm’s partnership.

    Nick handles federal, international, and state tax matters for corporations, partnerships, and individuals. He advises clients on the tax aspects of a wide range of business transactions, including structuring tax-efficient mergers, acquisitions, spin-offs, divestitures, and other restructurings for corporations, partnerships and other pass-through entities. He also focuses on drafting and negotiating agreements related to all phases of a company’s operations, including formation, acquisition, financing and restructuring.

    “Our merger and acquisitions tax practice has been in a strong growth mode and Nick’s practice perfectly complements our tax and corporate practices,” said Jeffry Bernstein, leader of Coblentz’s tax practice. “Nick is an outstanding addition to our team and we are thrilled to welcome him to the firm.”

    “I’m excited to be part of Coblentz and I look forward to collaborating with the team and helping shape and build the firm’s highly regarded tax and corporate practices,” said Nick Gerlach.

    Nick joins Coblentz’s Tax practice from DLA Piper. His experience also includes working at Deloitte Tax and PricewaterhouseCoopers.


    Categories: News
  • Supreme Court’s Bad Spaniels Decision Limits Parody Defense to Trademark Infringement

    By Sabrina Larson and Christopher Wiener

    On June 8, 2023, the Supreme Court issued a unanimous decision in Jack Daniel’s Properties, Inc. v. VIP Products, limiting the scope of a parody defense to a trademark infringement claim.

    The Takeaways

    • The test for likelihood of confusion must be applied where an infringer uses a trademark as a trademark to identify the source of its goods, even if it claims that use is a parody, rather than the First Amendment analysis applicable to the use of marks in expressive or artistic works.
    • The use of a mark as a parody does not shield an infringer from a dilution claim (alleged based on famous marks) where it uses the trademark as a trademark, to identify the source of its goods.


    VIP makes and sells a line of dog toys called “Silly Squeakers” designed to look like and to parody popular beverage brands, including toys named Dos Perros, Smella Arpaw, and Doggie Walker, to name a few. At issue here is VIP’s “Bad Spaniels” toy, designed to evoke the distinctive Jack Daniel’s brand and bottle:

    In addition to the overall trade dress of the bottle and label, the Bad Spaniels toy mimics numerous specific elements of the Jack Daniel’s bottle, many of which are registered trademarks. For example:

    • “Bad Spaniels” instead of “Jack Daniel’s”
    • “The Old No. 2 On Your Tennessee Carpet” instead of “Old No. 7 Tennessee Sour Mash Whiskey”
    • “43% poo by vol.” and “100% smelly” instead of “40% alc. by vol. (80 proof ).”

    As the Supreme Court wryly summarized, the “jokes did not impress” Jack Daniel’s. It claimed both trademark infringement and dilution.

    Use of Someone Else’s Trademark in Expressive Works: The Rogers Test

    VIP defended its use of the Jack Daniel’s trademarks under the First Amendment—claiming that the Bad Spaniels toy is an “expressive work.” It claimed that the Rogers test applied to its use of the trademarks and that as protected speech, the typical analysis for trademark infringement, whether the use of the trademark creates a likelihood of confusion as to the source of the goods, did not apply to the Bad Spaniels toy.

    The Rogers test dates to a 1989 case from the Second Circuit, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), and has since been applied by courts in many circuits to analyze use of trademarks in “expressive works,” where trademark rights and free speech rights under the First Amendment intersect. Rogers addressed potential infringement in the context of titles of expressive works—Ginger Rogers claimed Fellini’s film title incorporating her name was an infringement. The court disagreed, reasoning that the “expressive element of titles requires more protection than the labeling of ordinary commercial products.”

    Although Rogers dealt with titles of creative works, the test has since been applied broadly to the use of trademarks within an artistic or expressive work. When it is applied, Rogers requires dismissal of infringement claims where the trademark is used in an expressive work—without turning to a likelihood of confusion analysis—unless (i) the use of the mark has no artistic relevance to the underlying work or (ii) the use of the mark explicitly misleads as to the source or content of the work. The lead-up to the Bad Spaniels decision involved extensive debate over whether the Rogers test should be stricken or modified.

    Jack Daniel’s Trademark Infringement Claim

    The Supreme Court did not overrule the Rogers test, but it clarified that the test does not apply when the alleged infringer uses the trademark as a trademark—i.e., as a source-identifier for its own goods. Rogers remains a “cabined doctrine” applying only when the defendant uses the mark in a non-source identifying way. Here, the Court concluded, VIP was using the Bad Spaniels trademarks as trademarks, to identify the source of the VIP dog toy products, a point that VIP had earlier conceded in the case. Accordingly, the only question that remains is whether the Bad Spaniels trademarks are likely to cause confusion with the Jack Daniel’s trademarks as to the source of each party’s products.

    The Supreme Court remanded the case to determine the question of likelihood of confusion. The issue of parody was, however, not resolved. While it cannot be analyzed under the Rogers test, VIP’s claimed use of the marks as parody will be relevant to likelihood of confusion. A successful parody must conjure up the original work while also creating a contrast, to make the message of ridicule or humor clear. If parody is done successfully, it is typically not likely to create confusion.

    Jack Daniel’s Dilution by Tarnishment Claim

    Jack Daniel’s also claimed that the Bad Spaniels toy constituted dilution by tarnishment of its famous trademarks. Dilution applies where the asserted trademark is famous—widely recognized by the public as designating the source of goods. 15 U.S.C. § 1125(c). Dilution can occur where an infringer uses a famous trademark for unrelated goods, creating an association that harms the reputation of the famous trademark: that is, for Jack Daniel’s, the association of its whiskey with dog excrement.

    A statutory exception to dilution is where the use of the trademark is “noncommercial.” VIP argued that its Bad Spaniels toy, despite being sold to consumers, was a noncommercial use because it parodied Jack Daniel’s. The Court held, however, that the use of a trademark is not necessarily noncommercial simply because it parodies another’s product. Instead, it again matters whether the trademark is being used as a trademark, to designate the source of goods.

    The Takeaways Revisited

    The Bad Spaniels decision narrows defenses that rely on the parodic nature of the use of the trademark. Instead, even if the intended use is a parody, the traditional trademark infringement analysis of likelihood of confusion will apply if the trademark is used to designate the source of the goods. Likewise, the noncommercial exception to a dilution claim cannot be invoked simply because the use is an intended parody. Parody is and remains, however, relevant to the likelihood of confusion analysis. Those who engage in parodies should carefully consider whether the parody is being used as a source identifier of their own goods or services—and if it is, to carefully consider whether it is likely to cause confusion. Meanwhile, the Rogers test remains intact, applying, as it traditionally has, in instances where the parody is not being used as a trademark.

    To view a PDF version of this article, please click here.

  • Legislation to Incentivize Commercial to Residential Adaptive Reuse Projects Moves Forward

    At the June 13, 2023 Board of Supervisors hearing, the “Commercial to Residential Adaptive Reuse and Downtown Economic Revitalization” legislation was introduced. The legislation would amend various Planning Code sections to facilitate office to residential conversions for qualifying “Adaptive Reuse Projects.” (See earlier post here.) The Board of Supervisors will subsequently consider the companion “Development Impact Fees for Commercial to Residential Adaptive Reuse Projects” legislation, which would waive all development impact fees for Adaptive Reuse projects, except for inclusionary housing requirements. As noted in SPUR’s office to residential conversion report, to which Coblentz provided input, Planning Code amendments and waivers of development impact fees will help make conversions more feasible, but tax abatements or incentives and reductions in inclusionary housing requirements will likely also be necessary.

    The legislation incorporates the following key amendments that were recommended by the Planning Commission: a waiver of Transportation Demand Management Plan (TDM) requirements for Adaptive Reuse Projects and an increase in the amount of additional space that Adaptive Reuse Projects may include (up to 33% of the existing Gross Floor Area (GFA), instead of 20% GFA and maximum of one story as originally proposed). It also includes an  amendment recommended by the Land Use and Transportation Committee to exclude conversions of commercial use to hotel use from the definition of “Adaptive Reuse Projects.”

    We will continue to monitor these pieces of legislation and the City’s other housing production plans and Downtown revitalization efforts.

    Categories: Blogs
  • Coblentz Land Use Practice and Two Partners Receive Top Recognitions by The Legal 500 United States 2023

    The Legal 500 United States has named Coblentz a “Top Tier” firm in the Real Estate – Land Use/Zoning category, with a National Tier 1 ranking. Coblentz is one of only a few Northern California firms recognized by The Legal 500 for outstanding performance in this area.

    Real estate and land use partners Tay Via and Frank Petrilli received individual recognition in the 2023 guide. Tay Via is recognized in the nationwide Land Use/Zoning “Leading Lawyers” category and Frank Petrilli is recognized in the “Next Generation Partners” category.

    The Legal 500 Series provides worldwide coverage on legal services providers in more than 150 jurisdictions and highlights the practice area teams who are providing the most cutting edge and innovative advice to corporate counsel. Rankings are based on a series of criteria, including research based on feedback from more than 300,000 clients worldwide.

    Categories: News
  • Six Coblentz Partners and Three Practices Ranked in Chambers USA 2023

    Six Coblentz partners and three practices have been recognized by Chambers & Partners in the 2023 edition of Chambers USA. Real estate and land use partners Harry O’Brien and Tay Via are listed as leading lawyers in the Real Estate: Zoning/Land Use – California category, real estate partner Alan Gennis is listed as a leading lawyer in the Real Estate – Northern California category, litigation partners Timothy Crudo and Rees Morgan are listed in the Litigation: White-Collar Crime & Government Investigations – California category, and Employment partner Fred Alvarez is listed in the Labor & Employment – California category.

    Independent and objective, Chambers USA is carefully researched and widely considered to be the most reputable law firm directory in the world. Ranking criteria include technical legal ability, client service, commercial vision and business understanding, diligence, depth of the team, value for money, and other qualities most valued by legal clients.

    Real Estate & Land Use

    Coblentz’s real estate and land use practice is again ranked by the Chambers USA 2023 Guide in the top tier, Band 1, in the Real Estate: Zoning/Land Use category for California. Our land use practice has been continuously ranked by Chambers for 13 years and our real estate practice is ranked by the Chambers USA 2023 Guide in Band 3 in the Real Estate category for Northern California. Chambers notes that our “prominent real estate practice offer[s] particular strength in obtaining land use, zoning and environmental approvals for development projects,” with “notable healthcare, technology and real estate investment companies among its clients.” Three real estate and land use partners received individual rankings.

    Harry O’Brien is again ranked as a Leading Lawyer in Band 3 in the Real Estate: Zoning/Land Use – California category. Chambers notes that Harry “is well respected for his handling of a wide spectrum of real estate matters, ranging from land use to transactional issues. He has significant experience advising clients on acquisitions, entitlements and CEQA compliance.” Harry has been recognized by Chambers since 2003.

    Tay Via is again ranked as a Leading Lawyer in Band 4 in the Real Estate: Zoning/Land Use – California. Chambers notes that Tay “works with market-leading companies…on land use and other real estate aspects of large development projects.” Tay has been recognized by Chambers since 2022.

    Alan Gennis is again ranked as a Leading Lawyer in Band 2 in the Real Estate – Northern California category. Chambers notes that Alan “is recognized for his significant experience handling real estate transactions, such as acquisitions and joint ventures. He also advises on entitlements and due diligence, including providing counsel on mixed-use and office development projects.” Alan has been recognized by Chambers since 2018.


    Coblentz’s white collar defense and investigations practice is ranked by the Chambers USA 2023 Guide in Band 4 in the Litigation: White-Collar Crime & Government Investigations category for California. A client notes the team is “capable of handling their client’s cases with ease – diving deep into the matters, simplifying the complex issues and preparing effective defense strategies. They strive for excellent client service and show a real passion for their clients.” Another remarks, “They are a really business-savvy firm, who consistently deliver results.” Two litigation partners also received individual rankings in the category.

    Timothy Crudo moved up in the rankings and is now ranked as a Leading Lawyers in Band 2 in the Litigation: White Collar Crime & Government Investigations category for California. A client notes, “Timothy is a consummate professional, who is great in court and experienced in getting fantastic results for his clients.” Another client raves, “He is an incredibly experienced lawyer, who has gained the respect of both sides of the Bar.” Tim has been recognized by Chambers since 2016.

    Rees Morgan moved up in the rankings and is now ranked as a Leading Lawyer in Band 4 in the Litigation: White Collar Crime & Government Investigations category for California. “Rees shows deep legal skill and professionalism. He fights incredibly hard for his clients, exceeding their expectations each time,” notes a client. Another client notes, “He is a very gifted lawyer. When it comes to oral arguments, he shows real clarity, slickness and style.” Rees has been recognized by Chambers since 2021.


    Employment partner Fred Alvarez is recognized as a Senior Statesperson in California in the Labor & Employment category. “He’s really nimble and able to follow the best path for his client, which gets him the best result,” raves one client. Another notes, “He has an incredible depth of experience and subject matter expertise.” Fred has been recognized by Chambers for the past 20 years.

    To view the complete list of Coblentz rankings in the 2023 edition of Chambers USA, please visit the publication’s website linked here.

    Categories: News
  • What We’re Reading, Watching, and Listening to: June 2, 2023

    A roundup of news and multimedia from the Unfamiliar Terrain team:

    San Francisco


    Bay Area

    California and Beyond

    Categories: Blogs