Court agrees to hear parody goods case

The U.S. Supreme Court will hear Jack Daniel’s v. VIP Products, the “dog toy” trademark case. Cokato Copyright Attorney Thomas James explains.

In my last blog post (“MSCHF Testing the Limits of Free Speech“) I wrote about the Wavy Baby Shoes case in the Second Circuit Court of Appeals. Now, in a different case raising similar issues, the United States Supreme Court will have an opportunity to resolve a circuit split on the parody goods question. On Monday, the Court granted certiorari in Jack Daniel’s Properties v. VIP Products.

The “Bad Spaniels” Dog Toy

Jack Daniel’s Products claims trademark rights, including trade dress, in the distinctive shape and label of its whiskey product. VIP Products has made a dog toy called “Bad Spaniels.” It has a very similar shape and label. Jack Daniel’s sued VIP, asserting trademark infringement and dilution claims.

The district court ruled in favor of Jack Daniel’s, finding that the dog toy was likely to confuse consumers about the source of the product and tarnish the Jack Daniel’s brand. The Ninth Circuit Court of Appeals however, reversed. The dog toys, the Court ruled, are parody goods protected as expression by the First Amendment.

The Second, Seventh and Eighth Circuit Courts of Appeals have taken different approaches regarding the scope of First Amendment protection for parody goods. The Supreme Court granted certiorari to resolve the split in the circuits.

The Trademark Dilution Revision Act

The Trademark Dilution Revision Act expressly excludes parody from dilution liability. It applies, however, only when the challenged use is “other than as a designation of source for the person’s own goods or services.” 15 U.S.C. § 1125(c)(3)(A)(ii). Thus, the Act covers parody advertisements or other parodic references to a product in a magazine, movie or other traditional form of artistic or literary expression, but it does not reach situations where a parody mark is used as a designation of source.

Rogers v. Grimaldi

As discussed in a previous blog post, the Second Circuit Court of Appeals ruled, in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), that the use of a trademark in the title of a film or other artistic work is not actionable unless “the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Id. at 999.

In the Jack Daniel’s case, the district court held that the rule articulated in Rogers is limited to the use of a trademark in the title of a film or other artistic work. The Ninth Circuit Court of Appeals did not agree that the rule is so limited.

The case squarely raises the question whether and to what extent the First Amendment insulates makers and sellers of parody goods from trademark liability.

Conclusion

A decision in this case will be coming in a few months. It is difficult to predict what it will be. Many legal scholars, I am sure, will frame the issue as whether the Court will choose to extend Grimaldi to parody goods, on one hand, or to limit the case to its facts, on the other. Another possibility, however, is that the Court might choose to disapprove Grimaldi altogether. As usual, we will just have to wait and see.

The Top Copyright Cases of 2021

by Minnesota attorney Thomas James

I initially had set out to put together a “Top 10” list. Really, though, I think the list can be boiled down to three. Admittedly, this is only my personal opinion. Time will tell. Nevertheless, for what it’s worth, here is my list of the 3 Top Copyright Cases of 2021.

Google v. Oracle America

Google v. Oracle America, __ U.S. __, 141 S. Ct. 1183 (2021)

This United States Supreme Court decision is the culmination of many years of litigation between tech giants Google and Oracle.

At issue was Google’s copying of 11,500 lines of code of the Java SE API. Illustrating the murkiness of the “fair use” concept, the United States Supreme Court declared that this was fair use.

The case highlights the relatively weak protection that copyright offers for computer programs. The functional aspects of a computer program are better protected by patent than copyright.

It is dangerous to read too much into the decision, though. It does not mean that computer program copyrights are worthless To the contrary, the case was decided on the basis of fair use. Google’s copying of the code was infringement. “Fair use” simply means that a court came to the conclusion that a particular defendant should not be held liable for a particular kind or instance of infringement. Another court could come to a different conclusion in a different case involving different parties, a different kind of computer program, and a different kind of use of it.

Warhol v. Goldsmith

Andy Warhol Foundation for the Visual Arts v. Goldsmith, No. 19-2420 (2nd Cir. 2021).

This case is notable primarily because of the celebrities involved. Lynn Goldsmith took a photograph of Prince in her studio in 1981. Andy Warhol created a series of silkscreen prints and pencil illustrations based on it. Goldsmith sued for infringement of the copyright in the photograph. The district court found in favor of Warhol, citing the transformative use doctrine. The Court of Appeals reversed, asserting that the district court misapplied the four “fair use” factors.

Reversals of “fair use” findings on appeal are not uncommon. They illustrate the nebulous nature of the four-factor test that courts use to evaluate fair use claims.

Design Basics v. Signature Construction

Design Basics v. Signature Construction, No. 19-2716 (7th Cir. 2021).

Design Basics holds registered copyrights in thousands of floor plans for single-family homes. The company attempts to secure “prompt settlements” of infringement claims. The court ruled against the company on an infringement claim, finding that these designs consisted mainly of unprotectable stock elements, much of which were dictated by functional considerations and existing design considerations.

Architectural designs are protected by copyright, but the protection is thin. Only a “strikingly similar” work can give risk to an infringement claim. In other words, infringement of an architectural work requires a showing of extremely close copying.

Need help with a copyright registration or a copyright matter? Contact the Cokato Copyright Attorney Tom James.

%d bloggers like this: