Tag: trademark

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. 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 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.

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