- The Supreme Court’s review of the Rogers test may shift the balancing of trademark law and First Amendment considerations.
- Companies seeking to protect their brand against parody products should be mindful of how such disputes influence public relations.
For months, Jack Daniel’s has had a bone to pick with VIP Products, the manufacturer of a parody dog toy called “Bad Spaniels.” In Jack Daniel’s Properties Inc. v. VIP Products, claims of trademark infringement and dilution by tarnishment were raised against the dog toymaker. The Bad Spaniels dog toy at the center of this dispute is shaped and colored like a Jack Daniel’s bottle, with similarly stylized labels stating “Bad Spaniels,” “The Old No. 2,” and “on your Tennessee Carpet.” Regardless of one’s whiskey preferences, this case may leave quite the aftertaste on trademark use in expressive works as it rests at the intersection between trademark law and the First Amendment.
Following a demand that it cease selling the Bad Spaniels dog toy, VIP Products sought a declaration of non-infringement while Jack Daniel’s countersued with its claims of trademark infringement and dilution by tarnishment in the District of Arizona. Reversing the district court’s initial findings, the Ninth Circuit ultimately held that the dog toy is an expressive work entitled to First Amendment protection. However, the U.S. Supreme Court agreed to review the decision and heard oral arguments on March 22, 2023.
The ruling in favor of VIP Products relies on the conclusion that Jack Daniel’s could not satisfy either prong of the Rogers test, which balances free expression under the First Amendment against the trademark protections of the Lanham Act. Under the Rogers test, a plaintiff’s infringement claim will succeed if the use of the mark either (1) has no artistic relevance to the underlying work, or (2) explicitly misleads as to the source or content of the work. Should the humorous use of Jack Daniel’s whiskey be subject to the typical likelihood-of-confusion analysis under the Lanham Act or instead receive heightened First Amendment protection? This question, catching the eyes of the highest court, implicates both First Amendment and trademark law doctrines.
The comedy of Bad Spaniels was not lost on the high court, as oral arguments from each side sparked laughter throughout the hearing. With respect to multiple issues, the justices expressed colorful thoughts about the dog toy as they discussed whether it is expressive or purely commercial, whether it constitutes a parody, and whether it has confused a substantial number of consumers. Following questions about what made the toy a parody and concerns about impairing artists, Justice Alito appeared convinced that Bad Spaniels was not confusing to reasonable consumers. Meanwhile, Justice Kagan asserted that the dog toy was a standard commercial product distinguishable from a political t-shirt, film, or artistic photograph. Amidst hypotheticals and comedic remarks, some skepticism was directed toward arguments from both sides, including the plaintiff’s premise that confusion is created by consumers not knowing the source of a work rather than the work itself and the defendant’s suggestion that the use of a company’s mark constitutes parody if that company takes itself too seriously. Generally speaking, the justices expressed interest in determining how to identify whether a work is explicitly misleading or expressive, as well as some scrutiny regarding the implications of discarding the Rogers test.
While it will be months until the Supreme Court renders its decision, a reversal of the Ninth Circuit would not be surprising given the tenor of oral arguments and weight of precedent. At the same time, a refusal to abandon the Rogers test does not mean a refusal to adjust how it is applied. Regardless of how the justices rule, we can expect a shift, or at least some clarification, about the intersection of trademark law and the First Amendment. Moving forward, companies should be mindful not only of how others might use their marks in similar ways, but also of how they should respond with public relations considerations in mind. For better and worse, Jack Daniel’s has fetched a lot of attention in pursuing this litigation. Only the Supreme Court can tell us whether it has been barking up the wrong tree.
For further information, please contact:
Jeffery A. Handelman, Partner, Crowell & Moring