Ariel Goldberg is a 1L JD Candidate at Osgoode Hall Law School.
Usually, a dog toy’s squeak echoes throughout a home. A Jack Daniel’s bottle-shaped dog toy called “Bad Spaniels” will be heard at the U. S. Supreme Court and could bark new rules for trademark use in expressive works. Will it bite?
Jack Daniel’s Properties, Inc.’s (“Jack Daniel’s”) petition to the U. S. Supreme Court explains that the case addresses a significant reoccurring tension in trademark and trade dress protection under the U. S.’s Lanham Act: “under what circumstances does humorous use of another’s trademark as one’s own mark on a commercial product constitute trademark infringement or dilution.” VIP Products LLC (“VIP Products”) runs the e-commerce website MyDogToy.com. Under the shopping category “Silly Squeakers”, VIP Products sells an array of dog toys that parody existing brands’ trademarks and trade dress including a Mountain Dew bottle that reads “Mountain Drool”, a Baileys bottle called “Tailfleas” and, the toy at issue, a nearly identical Jack Daniel’s Old No. 7 Brand Tennessee Sour Mash Whiskey bottle altered to say “Bad Spaniels.”
Image from Jack Daniel’s U. S. Supreme Court Petition.
Initially, the district court held that the “Bad Spaniels” dog toy likely causes consumer confusion and tarnishes Jack Daniel’s marks. On appeal, the Ninth Circuit reversed the decision holding that the likelihood-of-confusion test would not apply because the toy is an expressive work with First Amendment protection of freedom of speech. The Ninth Circuit applied the Rogers Test from the Second Circuit’s Rogers v. Grimaldi (1989) decision. The two-pronged test balances free speech and trademark protection by allowing the use of trademarks in expressive works if artistically relevant and not explicitly misleading. Here, the trademark use was artistically relevant to the “joke about dogs defecating on a carpet.” Next, the toy was not explicitly misleading because VIP Products altered the trade dress. The toy had a disclaimer on the back of the toy that stated that Jack Daniel’s was not affiliated.
Jack Daniel’s petition argues that the Ninth Circuit’s “egregiously wrong” decision “unjustifiably transforms humor into a get-out-of-the-Lanham-Act-free card” allowing for companies similar to VIP Products to tarnish trademarks and create mass marketplace confusion. Jack Daniel’s highlights that the courts of appeal are divided on this issue, specifically that the Ninth Circuit’s use of heightened First Amendment Protection for humorous trademark use conflicts with the decisions of other Circuit courts. . These circuits have not used the First Amendment and instead applied the traditional likelihood-of-confusion test with consideration towards the humor or parody as a factor against the mark holder. For example, in Louis Vuitton Malletier, SA v. Haute Diggity Dog, LLC, the Fourth Circuit held that Haute Diggity Dog’s “Chewy Vuitton” dog toy successfully parodied Louis Vuitton’s handbags through applying the likelihood-of-confusion test with humour as a factor.
Essentially, Jack Daniel’s wants the U. S. Supreme Court to create a higher bar for parody works which would create more ease for mark holders to address consumer confusion and dilution from parodies. The main concern is the use of humour to gain immunity. Susan Scafidi, the academic director of Fordham University Fashion Law Institute, explains that “every brand with a beloved trademark is worried about seeing cheesy versions of its primary corporate asset used to sell not only dog toys, but also a vast range of other novelties that, over time, could cheapen the perception of the brand.” In addition, others disagree that dog toys are expressive works because its purpose is to be played with by dogs.
However, the argument to raise the bar for parody works is contentious. Rebecca Tushnet, a professor at Harvard Law School and author of a brief opposing Jack Daniel’s 2020 Supreme Court bid, highlights that trademark law exists to protect consumers from fraudulent products rather than clear humorous uses of existing trademarks and trade dress. Further, expressions on a canvas are not meaningfully legally distinctive from expressions on a dog toy.
The U. S. Supreme Court decision will be a significant precedent. In Hermès v. Rothschild, Mason Rothschild claimed his fur-covered Birkin bag NFTs, MetaBirkins, satisfied the Rogers Test by being artistically relevant and not explicitly misleading. Clearly, the humorous use and reworking of existing trademarks and trade dress is here to stay making Jack Daniel’s shot at heightened First Amendment protection highly relevant. Time will tell if Jack Daniel’s is barking up the wrong tree.
