Background
On June 8, 2023, the Supreme Court issued a unanimous ruling in the intellectual property case Jack Daniel’s Properties, Inc. v. VIP Products LLC, vacating the previous decision by the Ninth Circuit Court of Appeals and remanding the case to a lower court.
The Ninth Circuit had originally sided with VIP Products, a company that makes a line of novelty dog toys called “Silly Squeakers Liquor Bottles.” The company’s “Bad Spaniels” chew toy, which is designed to look like a bottle of Jack Daniel’s whiskey, closely mimics many of Jack Daniel’s actual trademarks/trade dress and substitutes the original “Old No. 7 Brand Tennessee Sour Mash Whiskey” wording with the canine-themed scatological joke: “The Old No. 2 On Your Tennessee Carpet,” among other jokes.
Jack Daniel’s subsequently sued VIP Products, claiming that the toy both infringed upon and diluted Jack Daniel’s trademarks. The District Court for the District of Arizona originally found in favor of Jack Daniel’s, while the Court of Appeals found in favor of VIP, before the case was heard by the Supreme Court.
Trademark Infringement
In issues of trademark infringement, the standard of liability most frequently employed under the Lanham Act is whether the trademark in question “is likely to cause confusion” with other pre-established trademarks. 15 U. S. C. §§1125(a)(1)(A). However, in the case of certain “expressive works,” there exists an exemption meant to protect free speech rights called the Rogers test—a two-pronged threshold test from the 1989 case Rogers v. Grimaldi.
The Rogers test protects “expressive works” under the First Amendment from infringement suits unless the plaintiff can show that the alleged infringed a) has no artistic relevance to the underlying work or b) explicitly misleads as to the source or the content of the work. The Ninth Circuit originally ruled that the toy, deemed an “expressive work” because of its parodic nature, was shielded from infringement liability because Jack Daniel’s was unable to show that the mark usage met either of the two prongs of the Rogers test.
The Supreme Court, however, ruled that VIP’s mark usage should not enjoy the protections of the Rogers test at all because the mark was used as a source identifier, i.e., the mark functioned as an indicator of who created the product. The Court noted that historically “the Rogers test has applied only to cases involving ‘non-trademark uses’—or otherwise said, cases in which ‘the defendant has used the mark’ at issue in a ‘non-source-identifying way.’” Essentially, even if a mark is used in an expressive way, an alleged infringer cannot enjoy Rogers protections if the mark is still used as a trademark.
As an example, the Court contrasted this case with the 2002 case Mattel, Inc. v. MCA Records, Inc., which was subject to the Rogers test. Mattel, the maker of Barbie dolls, sued MCA Records over the release of the 1997 song “Barbie Girl” by Aqua. Because the song was an expressive work and the term “Barbie” was not used as a source identifier (i.e., the mark was not used to signal who had created the song), the Rogers test was applicable in such an instance.
With the Rogers test deemed irrelevant in this case, the Court stated that the trademark infringement issue would therefore hinge upon the traditional likelihood-of-confusion question of the Lanham Act: “Without deciding whether Rogers has merit in other contexts, we hold that it does not when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods. VIP used the marks derived from Jack Daniel’s in that way, so the infringement claim here rises or falls on likelihood of confusion.”
The Court did not make a ruling regarding whether VIP’s marks meet the likelihood-of-confusion threshold, having remanded that decision to a lower court. However, the Supreme Court did acknowledge that while a parodic use of a mark does not guarantee the automatic use of the Rogers test, it could very reasonably affect the likelihood-of-confusion question since “consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.”
Trademark Dilution
In issues of trademark dilution, the standard for liability revolves around whether the use of a mark “harms the reputation of” a similar pre-established mark. 15 U. S. C. §§1125(c)(2)(C). However, under the Lanham Act, defendants can be shielded from dilution claims with the following two relevant carve-outs:
- “noncommercial” use of a mark
- “fair use” of a mark in connection with parodying, criticizing, or commenting upon the famous mark owner or its goods, but only if the mark is not used as a source identifier
The Ninth Circuit originally deemed VIP’s use of Jack Daniel’s mark as “noncommercial” because of the toy’s parodic nature and underlying commentary on Jack Daniel’s. However, the Court noted that this conclusion is in direct conflict with the Lanham Act’s “fair use” exclusion, which specifically states that parodies are not shielded from liability if they use a mark to designate source (as VIP did). The Court noted that the Ninth Circuit’s “expansive view of the ‘noncommercial use’ exclusion effectively nullifie[d] Congress’s express limit on the fair-use exclusion for parody” and concluded that “the use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products.”
If you have any questions regarding trademark or other intellectual property law, please contact Roger Barton.
