Dog Toy Copycats: The Future of Brand Parodies Following Jack Daniel’s v. VIP Products

[1]

While a dog toy and a bottle of whiskey may appear to have numerous differences, the Supreme Court recently addressed the similarities between the two in Jack Daniel’s Properties, Inc. v. VIP Products. LLC.[2] On June 8, 2023, the Court unanimously vacated a Ninth Circuit decision holding that VIP Products (“VIP”) did not infringe on Jack Daniel’s trademark when VIP produced a dog toy parody of a Jack Daniel’s whiskey bottle.[3] The Court held that, on the infringement claim, the Rogers test “does not apply when the challenged use of a mark is as a mark.”[4] Furthermore, on the dilution claim, when a parody product uses a brand’s mark as a source-identifier, the parody is not afforded special First Amendment protection under the noncommercial exclusion.[5] This holding may present future challenges for brand parodies.[6]

Jack Daniel’s owns the trademark to the bottle and many of the words and graphics on the bottle.[7] The whiskey bottle shaped, chewable dog toy designed by VIP includes text similar to text displayed on a Jack Daniel’s bottle.[8] Additionally, the toy is detailed with a “black label with stylized white text and a white filigreed border,” and is “about the same size and shape as an ordinary bottle of Jack Daniel’s.”[9]

After Jack Daniel’s demanded VIP stop selling the Bad Spaniels product, VIP sued Jack Daniel’s and Jack Daniel’s “counterclaimed under the Lanham Act for both trademark infringement and trademark dilution by tarnishment.”[10] The District Court, applying the likelihood of confusion infringement standard, found for Jack Daniel’s after survey evidence revealed consumers were likely to be “confused about the source of the Bad Spaniels toy.”[11] However, the Court of Appeals reversed, ruling the infringement claim was subject to the Rogers test because the mark is an “expressive work” and holding that the exclusion for “noncommercial use” shielded VIP from liability.[12] On remand, the District Court found Jack Daniel’s satisfied neither Rogers prong and granted summary judgment to VIP on the infringement claim.[13]

The Supreme Court, granting certiorari on both the infringement claim and the dilution claim, held that Rogers does not apply in this case.[14] The Rogers test, as stated by the Court, has only previously been applied to “cases in which ‘the defendant has used the mark’ at issue in a ‘non-source-identifying way.’”[15] Here, Bad Spaniels used the mark in a source-identifying way by using a similar mark to that of Jack Daniel’s on VIP’s product.[16] The Supreme Court stated that the expressive content of the mark does not change the application of the test because trademarks are often expressive, and “Rogers might take over much of the world” if expressive content is automatically entitled to Rogers protection, like in the Ninth Circuit decision.[17]

The Supreme Court admits their holding is narrow, and that the decision is confined to points specifically present in this case, not on the broader application of the Rogers test.[18] The concurring justices expressed concern for the future of parodies and the application of the Rogers test.[19] Justice Sotomayor, joined by Justice Alito, questioned the use of consumer surveys in the infringement analysis, specifically writing that survey respondents might mistakenly believe that all parodies require permission from the owner of the parodied mark, as evidenced by the survey results for the present case.[20] Justice Sotomayor emphasized the importance of treating survey results as “merely one piece of the multifaceted likelihood of confusion analysis.”[21] In his concurrence, Justice Gorsuch, joined by Justices Thomas and Barrett, wrote that while the majority is correct in refusing to apply Rogers in the present case, the decision leaves the application of Rogers unclear, and the Rogers case itself may not be entirely correct.[22]

The refusal to apply the Rogers test and extend First Amendment protection to VIP presents the question of what happens next for brand owners and brand parodies.[23] Legal professionals have offered their assessments on the strength of the Rogers test, and the case’s impact on businesses that sell parody goods.[24] One observer believes this decision to be good news for brand owners looking to protect their IP from parodies, noting this decision “may be indicative of a broader trend of the Court protecting IP owners and looking more askance at those that copy and imitate those protected works.”[25] With regard to businesses that rely on parodying brands, other commentary has cautioned against continuing parody product lines.[26] Alternatively, others have nonetheless affirmed that Rogers is still alive and “continues to afford creators great leeway to use third-party marks in titles of artistic works for purposes of parody, commentary and criticism.”[27] However, they caution sellers of “parody products that use third-party trademarks as designators of source for their own goods.”[28]

Only time will tell as the case continues to lower courts for a determination on whether the Bad Spaniels toy satisfies the likelihood of confusion test.[29] Rogers remains good law but concerns about its validity expressed by the concurring Justices could present challenges in the future.[30] It may be a “ruff” future for parody brands who use third-party trademarks to market their parodied goods.[31]

References: [1] Nick Youngson, Trademark Law (photograph) in The Blue Diamond Gallery (last visited Oct. 30, 2023), https://thebluediamondgallery.com/legal08/t/trademark-law.html. [2] Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140 (2022). [3] Id. [4] Id. at 163. [5] Id. [6] Susan Kohlmann, et al., Unpacking the Supreme Court’s Decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, Jenner & Block: News & Insights (June 12, 2023), https://www.jenner.com/en/news-insights/publications/unpacking-the-supreme-courts-decision-in-jack-daniels-properties-inc-v-vip-products-llc. [7] Jack Daniel’s, 599 U.S. at 144. [8] Id. [9] Id. at 149. On the toy, “The Old No. 2. On Your Tennessee Carpet” replaces “Old No. 7 Tennessee Sour Mash Whiskey.” Id. The toy also substitutes “43% poo by vol.” and “100% smelly” for “40% alc. by. vol. (80 proof),” which can be seen in small print at the bottom of the toy. Id. [10] Jack Daniel’s, 599 U.S. at 150. The Lanham Act creates a cause of action for trademark infringement and dilution of famous marks, both of which are relevant in this case. Id. at 147. Dilution of a mark can occur “by tarnishment” which is defined as an “‘association arising from the similarity between’ two marks—one of them famous—may ‘harm[] the reputation of the famous mark.’” Id. (alteration in original) (quoting 15 U.S.C. § 1125(c)(2)(C)) “A famous mark is one ‘widely recognized’ by the public as ‘designati[ng the] source’ of the mark owner’s goods.” Id. (alteration in original) (quoting 15 U.S.C. § 1125(c)(2)(A)) However, two exclusions to dilution are (1) protection of noncommercial use of the mark and (2) protection of a fair use of the mark if used for parody purposes, unless the defendant uses the similar mark as a mark for the defendant’s goods. Id. [11] Id. at 151-52. The District Court did not apply the Rogers test because it reasoned the Rogers test does not apply when “another’s trademark is used for source identification.” Id. at 151. The District Court also found that the “fair-use” exclusion did not apply because VIP was using a similar mark to Jack Daniel’s for VIP’s own products. Id. [12] Id. at 152. The Court of Appeals for the Ninth Circuit applied the Rogers test because the court determined that Bad Spaniels is an “expressive work” and that it “communicates a humorous message.” Id. (quoting VIP Products LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170, 1175 (2020)) The Rogers test originated from Rogers v. Grimaldi, where the court ultimately found that when a title “with at least some artistic relevance” was not “explicitly misleading as to source or content,” a claim for infringement could not go forward. Rogers v. Grimaldi, 875 F.2d 994, 999-1000 (2d Cir. 1989). The test has been applied in lower court cases “in which a trademark is used not to designate a work’s source, but solely to perform some other expressive function.” Jack Daniel’s, 599 U.S. at 154; see, e.g., Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901 (2002) (holding band who wrote song “Barbie Girl” prevailed under Rogers test because Barbie name was not used to identify band, and it is unlikely that consumers would believe song was produced by Mattel). [13] Jack Daniel’s, 599 U.S. at 152. Jack Daniel’s appealed the District Court decision, and the Ninth Circuit affirmed the District Court decision. Id. [14] Id. at 152-53. The Court applied a “narrower path” and decided whether Rogers had merit in this context only. Id. at 153. The Court held that Rogers does not apply in this case because “it does not [have merit] when an alleged infringer uses a trademark in the way the Lanham Act most care about: as a designation of source for the infringer’s own goods.” Id. VIP used Jack Daniel’s marks to so identify its own goods. Id. Therefore, the appropriate test is whether a consumer is likely to be confused. Id. [15] Jack Daniel’s, 599 U.S. at 155-56 (quoting Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law Through Trademark Use, 92 Iowa L. Rev. 1669, 1684 (2007)). [16] See id. at 149-50. [17] Id. at 158. The Court named examples including Tommy Hilfiger Licensing, Inc. v. Nature Labs, which exemplified how a mark can both function as a mark and have parodic content. Id. at 156; see Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 415 (S.D.N.Y. 2002). [18] Id. at 163. “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.” Id. [19] Id. at 163-65 (Sotomayor, J., concurring); id. at 165 (Gorsuch, J., concurring). [20] Jack Daniel’s, 599 U.S. at 163-64 (Sotomayor, J., concurring). [21] Id. at 163. [22] Id. at 165 (Gorsuch, J., concurring). Justice Gorsuch noted additionally, based on an amicus brief by the United States, that the “Solicitor General raise[d] serious questions about the [Rogers] decision.” Id. [23] Eileen McDermott, Jack Daniel’s Gets Last Laugh for Now in SCOTUS’ Ruling in ‘Bad Spaniels’ Case, IP Watchdog (June 8, 2023, 1:15 PM), https://ipwatchdog.com/2023/06/08/jack-daniels-gets-last-laugh-now-scotus-ruling-bad-spaniels-case/id=162151/. [24] Id. [25] Id. [26] Id. [27] Id. [28] In Jack Daniel’s v. Bad Spaniels Trademark Case, Supreme Court Holds Parody Products on a Short Leash, Sullivan & Worcester: Insights (June 12, 2023), https://www.sullivanlaw.com/viewpoints/in-jack-daniels-v-bad-spaniels-trademark-case-supreme-court-holds-parody-products-on-a-short-leash. [29] See Kohlmann, et al., supra note 6. [30] See Jack Daniel’s, 599 U.S. at 165. [31] See Kohlmann, et al., supra note 6.