Tag: parody

Parody as fair use

Balancing the First Amendment on Whiskey and Dog Toys

The US Supreme Court has heard oral arguments and will soon decide the fate of the “Bad Spaniels” dog toy.

The United States Supreme Court has weighed First Amendment rights in the balance against many things: privacy, national security, the desire to protect children from hearing a bad word on the radio, to name a few. Now the Court will need to balance them against trademark interests. The Court heard oral arguments in Jack Daniel’s Props. v. VIP Prods., No. 22-148, on March 22, 2023.

I’ve written about this case before. (See Court Agrees to Hear Parody Goods Case.) To summarize, it is a dispute between whiskey manufacturer Jack Daniel’s and dog-toy maker VIP Products. The dog toy in question is shaped like a bottle of Jack Daniel’s whiskey and has a label that looks like the famous whiskey label. Instead of “Jack Daniel’s,” though, the dog toy is called “Bad Spaniels.” Instead of “Old No. 7 Brand Tennessee sour mash whiskey,” the dog toy label reads, “Old No. 2 on your Tennessee carpet.”

VIP sued for a declaratory judgment to the effect that this does not amount to trademark infringement or dilution. Jack Daniel’s filed a counterclaim alleging that it does. The trial court ruled in favor of the whiskey maker, finding a likelihood of consumer confusion existed. The Ninth Circuit Court of Appeals, however, reversed. The appeals court held that the dog toys came within the “noncommercial use” exception to dilution liability. Regarding the infringement claim, the court held, basically, that the First Amendment trumps private trademark interests. A petition for U.S. Supreme Court review followed.

Rogers v. Grimaldi

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) is a leading case on collisions of trademark and First Amendment rights. In that case, Ginger Rogers, Fred Astaire’s famous dance partner, brought suit against the makers of a movie called “Ginger and Fred.” She claimed that the title created the false impression that the movie was about her or that she sponsored, endorsed or was affiliated with it in some way. The Second Circuit affirmed the trial court’s ruling against her, on the basis that the title of the movie was artistic expression, protected by the First Amendment as such.

When the medium is the message

Some commentators have suggested that the balance struck in favor of the First Amendment in Rogers v. Grimaldi should only apply in cases involving traditional conveyors of expressive content, i.e., books, movies, drawings, and the like. They would say that when the product involved has a primarily non-expressive purpose (such as an object for a dog to chew), traditional trademark analysis focused on likelihood of confusion should apply sans a First Amendment override.

Does this distinction hold water, though? True, commercial speech receives a lower level of protection than artistic or political speech does, but both dog toys and movies are packaged and marketed commercially. Books, movies, music, artwork, video games, software, and many other items containing expressive content are packaged and marketed commercially. Moreover, if a banana taped to a wall is a medium of artistic expression, on what basis can we logically differentiate a case where a dog toy is used as the medium of expression?

A decision is expected in June.

 

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 MSCHF Testing the Limits of Free Speech, 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.

Update: Read about the Supreme Court’s decision in Balancing the First Amendment on Whiskey and Dog Toys. 

Read about the Supreme Court’s decisions on trademark speech rights. 

 

 

MSCHF Testing the Limits of Free Speech

Wavy Baby Shoes test the limits of the First Amendment and trademark rights. Cokato Minnesota attorney Tom James explains what Vans v. MSCHF is about.

The owner of a trademark has the exclusive right to use it in commerce. The scope of the right is geographically limited, but if it is registered with the USPTO, then the owner’s exclusive right extends throughout the entire United States. The United States Constitution, however, also protects rights of speech and press freedom. What happens when these rights collide? What is the constitutional scope of trademark speech rights?

The U.S. Court of Appeals for the Second Circuit is now considering a case squarely raising that question, Vans v. MSCHF Prod. Studios, No. 22-cv-2156 (WFK)(RML), 20223 WL 1446681 (E.D.N.Y. April 29, 2022), argued, No. 22-1006 (2nd Cir. Sept. 28, 2022).

Van’s Old Skool shoe

MSCHF is a New York art collective that creates and sells irreverent art products such as “Jesus shoes” and “Satan shoes.” It also allegedly created and sold about 4,000 pairs of what it calls “Wavy Baby” shoes, described as a parody of Van’s “Old Skool” skate shoes and the “digital shoes” that Van’s sells in computer games. MSCHF designed the shoe by applying a “liquify” filter to an image of an Old Skool shoe. The shoes are distributed with a warning that the consumer assumes the risk that the wavy sole may cause injury or death.

Vans sued MSCHF for trademark infringement. (Trade dress, including product design, can function as a trademark.) MSCHF asserted a First Amendment defense, arguing that Wavy Baby Shoes are protected parodic or artistic expression. The district court rejected the defense. An appeal to the Second Circuit Court of Appeals followed.

Nominative Fair Use

It is a longstanding principle of trademark law that merely mentioning or referring to another person’s trademark is not trademark infringement. This kind of use of a trademark, called nominative use, helps protect values central to the First Amendment. If people were not allowed to even mention another person’s trademark, then criticism and commentary about a company or its products and services would be severely hamstrung. Likewise, a photographer’s or artist’s ability to sell cityscape paintings and pictures would be severely hampered if including even a single company name or logo in it could open the artist to liability for trademark infringement.

Nominative use is a relatively easy concept to apply. If a trademark is used in a way that is not likely to confuse a consumer about the source of a product or service, then the use is not infringing. In most cases, nominative uses of trademarks are not likely to mislead any reasonable consumer about the source of a product.

Parody

Parody is another area where the First Amendment may trump trademark rights. It is an explicit statutory defense to a trademark dilution claim. Courts have used the First Amendment to extend the defense to infringement claims, too, provided certain conditions are met.

To qualify for protection, a parody product must convey two contradictory messages: (1) That it is the original; and (2) that it is not the original. That is to say, it must be sufficiently similar to the original that consumers understand the reference, but at the same time, it must also be sufficiently distinguishable that consumers are not likely to think it comes from the same source as the original. To work as parody, the second message must communicate some articulable element of ridicule, mockery, or irreverent commentary. This is consistent with the traditional trademark infringement “likelihood of confusion” requirement. A seller of a trademarked product is not likely to also sell products that mock, ridicule or make fun of the product and/or its seller.

In this case, the district court found that the Wavy Baby shoes satisfied the first element of a parody: They conveyed enough similarity to the Old Skool trademark to enable consumers to understand the reference. The court, however, found that the second message had not been communicated clearly enough, that the shoes and their packaging had failed to clearly communicate a satirical message.

In reaching its decision, the court found it significant that the Wavy Baby shoe is a “competing product” that does not “incorporate[] clear puns and parodic references.”

The Appeal

The main point MSCHF is raising on appeal is that the district court should have applied the rule announced in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In that case, Ginger Rogers sued Grimaldi and MGM for producing and distributing a movie called Ginger and Fred. The movie was about a different pair of dancers who had been compared to Fred Astaire and Ginger Rogers. The Second Circuit Court of Appeals held that the use of the phrase was artistically expressive and therefore not actionable as trademark infringement. MSCF contends that Wavy Baby Shoes, too, are artistically expressive, and that Rogers, therefore, should apply.

Vans argues that Rogers is distinguishable because that case did not involve infringing trade dress used to sell goods that compete with the trademark owner’s goods. “Since Rogers was decided, the courts in the Second Circuit have uniformly limited its application to expressive works such as books, movies, and video games.” Vans Br. at 31, Dkt. 75 (July 22, 2022). Vans maintains that “[t]here is no basis under Rogers or later authority to expand this holding to a commercial product that incorporates a competitor’s trademarks and trade dress,” id. at 33.

Conclusion

Assuming the Court does not disturb the district court’s anti-parody findings, the Court will need to decide whether the Rogers v. Grimaldi test should be extended to products, on one hand, or limited to traditional expressive works (e.g., books and movies), on the other. In any event, it is hoped that the Court will take the opportunity to clarify the relationship between parody goods doctrine and the Rogers test.

Contact attorney Tom James

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