Lisa ramsey

Professor of Law

Dog toys, trademarks, and free speech in Jack Daniel’s v. VIP Products VI.

In Jack Daniel’s Properties, Inc. v. VIP Products LLC, Jack Daniel’s accused VIP of infringing and diluting its trademark rights by selling a dog chew toy that poked fun at the company’s famous brand of whisky . The toy featured a similar black-label design and shape, a spaniel dog’s face above “Bad Spaniels,” and jokes about dog excrement . In a unanimous opinion written by Justice Kagan, the Supreme Court held that if an accused infringer uses another’s brand name or packaging design as a trademark to designate the source of its own goods, this fact will limit the defensive doctrines than can be invoked in a trademark lawsuit The Court declined to decide whether any specific speech-protective doctrine created by judges should be used to resolve conflicts like this between trademark and free speech rights Still, the Court’s decision suggests it believes the First Amendment limits the scope of trademark rights even if the justices do not currently agree on the best method for protecting expressive values in trademark law

A trademark owner can prevail under the infringement provisions of the Lanham Act if it proves that the defending party is using an identical or similar mark in connection with its goods or services in a manner that is “likely to cause confusion” about the product’s source or the parties’ business relationship .  Courts normally use a multi-factor likelihood of confusion test developed by judges to make this determination, and often decline to decide whether a certain use is likely to cause confusion on a motion to dismiss because this is a fact-intensive, context-specific analysis

If the allegedly infringing mark is used within the title or content of an expressive work that conveys ideas or viewpoints, however, courts in the Ninth Circuit may dismiss the lawsuit under a different speech-protective trademark test first created by the Second Circuit in Rogers v. Grimaldi and later adopted by the Ninth Circuit in Mattel v. MCA Records Under the Rogers test, the Lanham Act cannot apply to use of another’s name or mark within an expressive work unless the use is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work . The Rogers test protects First Amendment interests in trademark law by allowing speech-harmful trademark disputes to be resolved early in litigation before costly discovery or an expensive trial . The Ninth Circuit agreed with VIP that the Rogers test should apply to VIP’s expressive use of Jack Daniel’s marks and that its humorous message displayed on a dog toy was a “noncommercial use” of the marks that fell outside the scope of the dilution statute .

The Supreme Court disagreed . It concluded that VIP claimed trademark rights in its Bad Spaniels design and held that application of the stringent Rogers test for infringement liability “is 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 . ” The Court declined to decide whether the Rogers test or a different “threshold First Amendment filter” applies when another’s mark is used within a creative work or is displayed in a decorative manner on a toy, T-shirt, or other type of expressive merchandise

VIP could still win the infringement claim on remand, as the Court explained that a “trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion ” Per the Court, “that kind of message matters in assessing confusion because consumers are not likely to think that the maker of a mocked product is itself doing the mocking ” The Court also clarified that a district court can grant a motion to dismiss a trademark infringement claim if “a plaintiff fails to plausibly allege of a likelihood of confusion” due to the “dissimilarity in the marks or various contextual considerations . ”

A concurring opinion, written by Justice Sotomayor and joined by Justice Alito, urged lower courts to treat the results of surveys that purport to show a likelihood of consumer confusion “with particular caution . ” They stressed the importance of not “giving uncritical or undue weight to surveys” when an alleged trademark infringement involves a parody, as the “answers may reflect a mistaken belief among some survey respondents that all parodies require permission from the owner of the parodied mark ” They cautioned that relying on survey results that reflected only confusion about such approval, or “misunderstanding[s] of the legal framework,” “would risk silencing a great many parodies, even ones that by other metrics are unlikely to result in the confusion about sourcing that is the core concern of the Lanham Act . ”

Ultimately, the Jack Daniel’s opinion suggests that the justices may approve of the focus on source confusion in the “explicitly misleads” prong of the Rogers test when First Amendment interests are implicated in a trademark lawsuit .  The Court said this is the type of confusion “most commonly in trademark law’s sights,” “the bête noire of trademark law,” and the “cardinal sin under the law . ” During oral argument, some justices seemed wary of having judges or juries determine what is art or what uses of marks are “artistically relevant” under Rogers, but the Court did not discuss these concerns in the majority opinion . In a concurring opinion joined by Justices Thomas and Barrett, Justice Gorsuch expressed doubts about the provenance and correctness of some parts of the Rogers test and noted that “lower courts should be attuned to that fact . ” He may have been referring to this first “no artistic relevance” prong of the Rogers test when he made these comments .

Finally, the Jack Daniel’s Court determined that VIP could not take advantage of the “noncommercial use of a mark” exemption from dilution liability by claiming its humorous use of the marks was not pure commercial speech . The Court held this rule cannot be broadly construed to include “every parody” because such an interpretation would conflict with the separate “fair use” exclusion in the Act that applies to parody, criticism, and other commentary, which “does not apply when the use is ‘as a designation of source for the person’s own goods or services ’” The Court declined to decide “how far the ‘noncommercial use’ exclusion goes,” but it held “that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying ” The Court’s new non-trademark use requirement for application of the “noncommercial use” exclusion in the contexts of parody, criticism, and commentary is surprising, because there is no such limitation in the statute’s text and there is an alternate way to interpret these speech-protective rules in the dilution law .

After the Jack Daniel’s decision, VIP could still win on the dilution by tarnishment claim on the ground that this law is an unconstitutional regulation of nonmisleading commercial speech that targets offensive expression protected by the First Amendment Regardless of what happens in this dispute, trademark attorneys will likely advise their clients to think carefully before claiming trademark rights in brand parodies or other messages that incorporate another’s trademark