Supreme Court Holds First Amendment Doesn’t Give Unrestricted Right to Poop on Trademark Rights
Jun 20, 2023
In 2014 Jack Daniel’s Properties demanded VIP stop selling a squeaky dog toy that somewhat resembles a Jack Daniel’s whiskey bottle, but which also bears an image of a spaniel and includes funny phrases like “Bad Spaniels”, “the Old No. 2 on your Tennessee Carpet”, “40% alcohol by volume” and “100% smelly”. As Jack Daniel’s counsel summed up the situation: “Jack Daniel’s appreciates a good joke as much as anyone. But Jack Daniel’s likes its customers even more and doesn’t want them to be confused or associating its fine whiskey with dog poop.”
VIP sued Jack Daniels and sought a declaratory judgment that the dog toy neither infringed nor diluted Jack Daniel’s trademark rights for JACK DANIEL’S whiskey. The District Court sided with the trademark owner (Jack Daniel’s) after concluding that VIP used Jack Daniel’s features to identify the source of the dog toys. On appeal, the Ninth Circuit reversed, on grounds that the expressive parody of “Bad Spaniels” deserved First Amendment protection under the “Rogers test”. Rogers v. Grimaldi, 875 F. 2d 994 (2nd Cir. 1989). The case eventually reached the Supreme Court on a question focusing on applicability of the judge-made Rogers test.
According to the unanimous Supreme Court (opinion by Justice Kagan issued on June 8, 2023 in Jack Daniel’s Properties, Inc. v. VIP Products LLC), the First Amendment does not require any special scrutiny in cases where the accused activity is “the use of trademarks as trademarks.” Free speech policies are adequately accommodated by the traditional trademark infringement test of likelihood of confusion. According to the Supreme Court, the VIP dog toy is using “Bad Spaniels” as a source identifier, which is the definition of a trademark. The Supreme Court offered the possibility (but did not decide) that a heightened situation to protect “speech” could still apply in other situations, such as use of another’s trademark as artwork or for criticism. For example, a documentary on alcoholism might display JACK DANIEL’s whiskey without infringing Jack Daniel’s trademark rights. A trademark, wrote Justice Kagan, benefits “consumers and producers alike” by marking a product in a way that enables customers to select the goods and services they want, and discern those that they want to avoid. Moreover, registration of a trademark allows the trademark owner to sue when others use the mark in a manner that may confuse or deceive. In a trademark enforcement suit, the trademark owner must show that there is a likelihood of confusion, meaning that consumers may confuse the infringing product with the real one. Or in the “Bad Spaniels” case, that buyers of the “Bad Spaniels” squeaky dog toy might think the toy was in fact authorized or endorsed by Jack Daniel’s.
Jack Daniel’s victory at the Supreme Court does not end the dispute. The primary purpose of the Supreme Court’s opinion was not to decide on the underlying facts of Jack Daniel’s versus VIP/”Bad Spaniels”, but rather to prevent the “Rogers test” from expanding further to block trademark enforcement, and to clarify that a trademark being used in connection with a commercial product will be squarely governed by the regular trademark law instead of the First Amendment. As a result, the case has been remanded back to the District Court to give Jack Daniel’s the opportunity to prove there is likely confusion as to the source or sponsorship of the “Bad Spaniels” dog toys. I expect VIP will defend on grounds that its parody is permitted and/or that its product hang tag makes clear that the “Bad Spaniels” toy is not sourced or endorsed by Jack Daniel’s, such that consumers are not likely to be confused. If consumer confusion is not likely, then there is no trademark infringement.
Take-away: A parody of a famous trademark when used for a commercial product, whether or not there is direct competition with the product bearing the famous trademark, has potential trademark infringement risk. Before product launch, seek legal advice for how best to ameliorate that risk.
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