By Nicole Haff
The U.S. Supreme Court issued a decision today holding that a dog toy laced with amusing, scatological-based references satirizing Jack Daniel’s iconic liquor bottle was not covered by the First Amendment’s free speech protections.
A Bit of Background: Jack Daniel's Properties, Inc. v. VIP Products LLC
VIP Products LLC (VIP) is the seller of a dog toy marketed as the "Bad Spaniels Silly Squeaker.” It resembles a bottle of Jack Daniel's Old No. 7 Black Label Tennessee Whiskey and sets forth alterations to the text Jack Daniel’s prints on its bottles. These modifications—mostly “bad doggie” references centered on potty humor—include a references to “Bad Spaniels” rather than “Jack Daniel’s,” “Old No. 2, on your Tennessee Carpet,” instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey, and a boast of "43% POO BY VOL.,” in lieu of a listing of alcohol by volume.
A tag affixed to the Bad Spaniels item disclaims any affiliation with Jack Daniel’s. Nonetheless, Jack Daniel's Properties, Inc. (JD Properties) issued a cease and desist to VIP demanding that VIP stop selling the squeaky toy. In response, VIP filed a declaratory judgment action in federal court seeking a determination that the product did not infringe upon JD Properties’ trademark rights or dilute any of JD Properties’ trademarks or, in the alternative, that the Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. In effect, VIP sought to cancel the registration for the trade dress in Jack Daniel’s No. 7 bottle. JD Properties counterclaimed, asserting infringement of trademarks and trade dress and dilution by tarnishment.
Before trial, VIP filed a motion for summary judgment on both claims, asserting that (1) the infringement claim filed by JD Properties failed under the Rogers test, a threshold test derived from the First Amendment to protect “expressive works,” and (2) there was no dilution because the Bad Spaniels toy was a parody of Jack Daniels and therefore it made “fair use” of its famous mark, under statutory exemptions available for dilution claims. The Court rejected both arguments, and after conducting a bench trial, the district court entered judgment against VIP. The case was appealed.
On appeal, the Court of Appeals for the Ninth Circuit held that the district court erred in finding trademark infringement without first requiring JD Properties to satisfy at least one of the two prongs of the Roger’s test (discussed below). The Ninth Circuit also ruled that the humorous message conveyed by the toy was protected non-commercial speech and thus not actionable. With that, it reversed the district court’s judgment holding in favor JD Properties’ dilution claim, vacated the judgment JD Properties received against VIP for its trademark infringement claims, and remanded the case back to the District Court for further proceedings.
On remand, the district court found that Jack Daniel’s could not satisfy either prong of the Rogers test. Pursuant to this finding it granted summary judgment to VIP on infringement. The Ninth Circuit summarily affirmed and the case was then appealed to the Supreme Court.
The Rogers Test and Its Prior Application
While the test for trademark infringement varies slightly across circuits, trademark infringement boils down to whether the use of another’s trademark is likely to cause consumer confusion as to the source of goods or services. For more than three decades, the Rogers test, which spawns from the landmark case Rogers v. Grimaldi, has been the standard that courts throughout the country have used to determine when trademark protection should apply to artistic works.
In Rogers, the Second Circuit held such instances were limited to when the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the aftermath of Rogers, courts have used the test to make sure trademark law is not used to suppress otherwise protected speech, particularly for artistic and expressive works like movies, plays, books and songs. The Rogers test requires a party alleging trademark infringement to show that the defendant's use of the trademark either (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or content of the work. After this inquiry is met, likelihood of confusion is examined.
The Jack Daniel’s Decision
In a unanimous ruling, the U.S. Supreme Court held that when a mark is used as a source identifier, meaning as a trademark, the use does not receive special First Amendment protection and a threshold inquiry like the Rogers test should not apply, except perhaps in rare situations. Source identifiers, such as the Nike “swoosh” or the name of a brand, like Google, help consumers identify the source of goods and assist consumers in distinguishing that source from other sources.
The Court also ruled that “this result does not change because the use of the mark has other expressive content – i.e., it conveys some message on top of source.” The justices, in unanimity, reasoned that many marks possess an expressive element and if a threshold test, like Rogers, was applied to all expressive marks, few cases would ever advance to the likelihood of confusion test. Thus, when a trademark is used as a trademark, the traditional likelihood of confusion test must be used to determine infringement claims. A plaintiff is not required to first satisfy the Rogers test before a likelihood of confusion is examined. Notably, the Court expressly declined to decide whether the Rogers test is “ever appropriate.”
Further, the Court ruled that while goods, like the Bad Spaniels toy, may contain an expressive aspect, that “message” can be examined “in assessing confusion because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.” As such, mockery, humor and parody can still be considered but when a mark is being used as a source designator, that consideration is confined to the likelihood of confusion test, not a threshold First Amended inquiry, like Rogers.
Regarding the dilution claims raised by JD Properties, the Court ruled that the use of a mark does not count as non-commercial, “just because it parodies, or otherwise comments on, another’s products.” The Lanham Act’s statutory exclusion from dilution liability for “[a]ny noncommerical use of a mark,” does not shield parody, criticism or commentary when an alleged diluter uses a mark as a designation of source for its own goods.
Based on all of the foregoing, the Court vacated the judgment below and remanded the case for further proceedings consistent with its opinion.
An Important Takeaway
Businesses that produce parody products that use or imitate the trademarks of others should reconsider their business models in light of the Jack Daniel’s decision. While parody may be considered in conducting a likelihood of confusion test, the Rogers test is no longer available to the producers of parody goods when a mark is being used as a source identifier. In fact, it is unclear whether the Rogers test is “ever appropriate,” as the U.S. Supreme Court has declined to issue a holding on that issue.
This blog post is not offered, and should not be relied on, as legal advice. You should consult an attorney for advice in specific situations.