Jack Daniel’s may be what unites a divided nation — at least when it comes to the U.S. Supreme Court. In a unanimous ruling handed down Thursday, the high court sided with the Tennessee whiskey maker in a trademark fight over a “Bad Spaniels” dog toy.
“This case is about dog toys and whiskey, two items seldom appearing in the same sentence,” writes Justice Elena Kagan in the option. “Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey. But not entirely. On the toy, for example, the words ‘Jack Daniel’s’ become ‘Bad Spaniels.’ And ‘Old No. 7 Brand Tennessee Sour Mash Whiskey’ turns into ‘The Old No. 2 On Your Tennessee Carpet.'”
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Jack Daniel’s wasn’t amused with the poop joke and when VIP Products refused to stop selling the squeakers the fight moved to the courts. VIP asked for a declaration that Bad Spaniels didn’t infringe or dilute Jack Daniel’s marks and the whiskey brand filed a counterclaim for trademark dilution.
At the core of the issue is the so-called Rogers test, which was established by the 2nd Circuit in 1989 to protect First Amendment rights in trademark issues. It essentially seeks to balance avoiding public confusion with encouraging creative expression and looks at whether a use is artistically relevant to the underlying work and if it’s explicitly misleading as to the source or content of the work.
The matter had bounced back and forth between an Arizona federal court and the 9th Circuit. The district court ruled against VIP on summary judgment, finding it had used Jack Daniel’s features as trademarks for “source identification” and therefore Rogers protections and fair use exceptions don’t apply.
Here’s how the Supreme Court summarizes what followed: “The case proceeded to a bench trial, where the District Court found that consumers were likely to be confused about the source of the Bad Spaniels toy and that the toy’s negative associations with dog excrement (e.g., ‘The Old No. 2’) would harm Jack Daniel’s reputation. The Ninth Circuit reversed. Finding the infringement claim subject to the threshold Rogers test, the Court of Appeals remanded the case to the District Court to decide whether Jack Daniel’s could satisfy either prong of that test. And the Court of Appeals awarded judgment on the dilution claim to VIP, holding that because Bad Spaniels parodies Jack Daniel’s, it falls under the ‘non-commercial use’ exclusion. On remand, the District Court found that Jack Daniel’s could not satisfy either prong of Rogers, and so granted summary judgment to VIP on infringement. The Court of Appeals summarily affirmed.”
The Supreme Court was asked to consider two questions: “Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims,” and “whether humorous use of another’s mark as one’s own on a commercial product is ‘noncommercial’… hus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.”
In the opinion, Kagan cites a number of high-profile fights involving the Rogers test, including a Mattel suit over Aqua’s 1997 earworm “Barbie Girl,” one from Louis Vuitton over The Hangover Part II and another dog toy fight involving Tommy Hilfiger to illustrate what kinds of use have been protected (the first two) and what haven’t (the latter). She also explains that the Lanham Act’s key function is to distinguish the source of goods from those manufactured or sold by others and the “cardinal sin” of trademark law is to undermine that and confuse consumers.
The 9th Circuit held that Jack Daniel’s must first pass the Rogers test before considering the likelihood of confusion because the Bad Spaniels toy — while “surely not the equivalent of the Mona Lisa” — was an expressive work with a humorous message. It also held that because it parodies the famous whiskey it qualifies for the noncommercial use exclusion for trademark dilution. The Supreme Court disagrees with the 9th Circuit on both.
While the court didn’t address whether Rogers should ever be used as a threshold test for matters involving expressive works, it found it’s “not appropriate when the accused infringer has used a trademark to designate the source of its own goods — in other words, has used a trademark as a trademark.” Kagan notes, “When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression.”
The underlying logic is the same on the fair use defense to dilution. “However wide the scope of the ‘noncommercial use’ exclusion, it cannot include, as the Ninth Circuit thought, every parody or humorous commentary,” writes Kagan. “Critically, the fair-use exclusion has its own exclusion: It does not apply when the use is ‘as a designation of source for the person’s own goods or services.'”
“Today’s opinion is narrow,” continues Kagan. “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.”
With that, the court vacated the 9th Circuit’s judgment and remanded the matter of whether the Bad Spaniels marks are likely to cause confusion.
In two concurring opinions — one from Justice Sonia Sotomayor with Justice Samuel Alito joining and another from Justice Neil Gorsuch with Justices Clarence Thomas and Amy Coney Barrett joining — the justices caution against giving too much weight to surveys when it comes to consumer confusion and warn that the Rogers test should be handled with care.
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