A recent trademark dispute between Jack Daniel's and VIP Products has raised intriguing questions regarding parody and the limits of trademark infringement.
Jack Daniel's filed a trademark infringement lawsuit against VIP Products for their dog toy "Bad Spaniel's." The toy clearly parodies Jack Daniel's signature product by transforming "Old No. 7 Brand Tennessee Sour Mash Whiskey" into "The Old No. 2 On Your Tennessee Carpet" as well as the protected trade dress of the bottle’s shape.
In a unanimous decision, the US Supreme Court ruled that the First Amendment's special protection did not apply in this case.
Justice Elena Kagan announced that the high court had found that the accused infringer, VIP Products, used the trademarks to designate the source of its own goods rather than enjoying the non-commercial protection associated with parody or commentary.
The Court emphasized that the use of a mark does not automatically gain non-commercial status simply because it parodies or comments on another's products.
The Rogers Test
The Rogers test is a legal standard used to evaluate trademark infringement claims in cases involving expressive works protected under the First Amendment. It determines whether the use of a trademark in such works qualifies as protected speech or constitutes trademark infringement.
To continue with a trademark infringement claim, the complainant must show either that the mark used has no artistic relevance to the work or that it explicitly misleads about the source or content of the work. The Ninth Circuit Court of Appeals considered the Bad Spaniels dog toy as an expressive work and applied the Rogers test in the Jack Daniel's infringement claim.
The Supreme Court, however, disagreed with this use of the Rogers test. Because the use of the Bad Spaniels trademark and trade dress by VIP was considered commercial and not purely expressive, the Supreme Court decided the test would be inappropriate for this case.
The Supreme Court declared:
“We do not decide whether the Rogers test is ever appropriate, or how far the ‘noncommercial use’ exclusion goes. On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying. It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function. The Lanham Act makes that fact crucial, in its effort to ensure that consumers can tell where goods come from.”
The Question of Expressiveness?
The dog toy alters the Jack Daniel’s trademark only slightly, and the trade dress protecting its bottle shape was barely altered at all. As a parody item, it is by definition unable to change the original mark too much, otherwise it would be unrecognizable to its target audience. As a result, the item is not nearly expressive enough to stand up to assertions of trademark infringement.
As a product, the squeaking dog toy had a very clear purpose: to be sold in commerce. VIP Products had claimed free expression protections for their product, but as the Lanham Act’s exclusion from dilution liability only covers non-commercial use of a mark.
When trademarks are employed in "commercial speech" to promote the sale of goods or services, they are granted only a limited level of protection under the First Amendment.
The Lanham Act does not protect use of a third-party’s trademark where it may cause confusion about the source identification, a point to which VIP Products has conceded.
The core purpose of trademark law is to prevent consumer confusion regarding the source of a product. In cases where a trademark is used in a way that causes confusion, dilution, or tarnishment, courts are less likely to deem the use as an expressive work.
In the case of Bad Spaniel, the court noted the striking similarity between the toy and the original Jack Daniel's bottle, making it challenging for VIP Products to argue against the likelihood of consumer confusion.
The Jack Daniel's dog toy dispute has potentially opened the floodgates for similar cases involving VIP Products and other famous brands.
Bad Spaniel’s is not the only item in the VIP Products catalog that could prompt allegations of trademark infringement, as the company continues to sell products intended to parody other brands, including Mountain Dew, Heineken, Coca Cola, and Guinness.
While VIP Products will surely feel the sting of losing the Bad Spaniel’s toy from its catalog, it is interesting to note that Jack Daniel’s has inadvertently experienced a "Streisand effect" during the legal battle, as the dispute attracted significant attention and potentially amplified the visibility of VIP Products. Online searches for terms such as “Bad Spaniels”, “Jack Daniels Dog Toy” have seen significant spikes since November of last year. That a brand attempting to defend its own marks in court can conjure such public awareness of a potentially infringing item is certainly a pitfall for brands to be mindful of.
This case serves as a reminder that trademark holders must be vigilant in protecting their marks, as the boundaries of expressive work and parody are subjective and fact-specific.
Future disputes may shed light on the evolving landscape of trademark law and the delicate balance between the protection of speech and creative expression and the rights of IP holders.