When Trademark Rights Collide with Free Speech, Which Wins?

The Supreme Court recently decided a case on the balance between trademark rights and free speech, especially when parody products are at issue.

The case addressed something less lofty: whiskey and dog poop.

VIP Products makes a line of dog chew toys called “Silly Squeakers,” which parodies famous commercial products. One rubber toy replicates a Jack Daniel’s bottle with a few changes. The bottle bears the brand name “Bad Spaniels” instead of “Jack Daniels.” Instead of calling it “Old No. 7,” it uses the subtitle “The Old No. 2 on Your Tennessee Carpet.”

Jack Daniel’s Properties, the whiskey maker, was not amused. It demanded that VIP Products stop selling the toy. VIP Products preemptively sued Jack Daniel’s Properties, seeking a declaration that it did no wrong. Jack Daniel’s Properties countersued, claiming trademark infringement.

The federal trial court ruled for Jack Daniel’s Properties. In doing so, it refused a request by VIP Products to apply a special doctrine to exonerate it. That doctrine, called the “Rogers test,” is essentially a get-out-of-jail-free card used by people who make expressive works to defeat trademark claims made against them.

VIP Products appealed, and the Second Circuit Court of Appeals reversed the decision. It held the Rogers test applies because Bad Spaniels is an expressive product since it parodies the famous Jack Daniel’s whiskey bottle.

The Supreme Court took the case and decided it this June. The Court held that the get-out-of-jail-free card – the Rogers test – couldn’t shield defendants from trademark-infringement liability when they use an allegedly infringing name as a business, product, or service name, all of which are trademarks.

This doesn’t mean Jack Daniel’s Properties will win the case. It still has to prove infringement.

When trademarks conflict with each other, the more recent user has to stop. Trademarks conflict (infringement in legal lingo) when the similarity of the trademarks and associated goods or services is such that a material fraction of the public might be confused about whether there is a relationship between them.

Parody can be a successful defense to a trademark-infringement claim, but it’s tough to prove. A successful parody does two things: it calls to mind the famous trademark and makes fun of it in such a way that the public will understand that the humor source isn’t the trademark owner. For example, Bad Spaniels would be a legally successful parody if people get the reference to Jack Daniel’s and intuit that Jack Daniel’s didn’t make the toy because there is no way it would associate its whiskey with dog poop.

To complete the picture, here’s how the Rogers test works: It grants artistic works nearly bulletproof protection from trademark infringement claims. The doctrine arose from a case concerning a movie called Ginger and Fred by the famous director Federico Fellini. (In this case, Fellini didn’t have permission from Ginger Rogers, whose name is referenced in the title. Fred Astaire was already dead.)

The case developed a legal doctrine that unauthorized artistic usages of trademarks deserve special free speech protection. The language of the doctrine is complex, but it effectively holds that if the defendant establishes that its work is artistic, it probably wins, even if there is some chance that a fraction of the public will be confused as to whether the new user is related to the well-known trademark.

VIP Products argued it should benefit from the Rogers test because its chew toy is a parody, which is a form of expression. The Supreme Court declined to opine on whether the Rogers test is legitimate but held that, regardless, it doesn’t apply whenever the defendant uses as its business, product, or service name (i.e., trademark) the term that is attacked as a trademark infringement.

What are the implications of this case?

It strengthens the hand of trademark owners, especially famous trademarks. It effectively takes away the get-out-of-jail-free card – the Rogers test – from the makers of parody products. But, as noted above, the trademark owner still has to win the trademark-infringement lawsuit.

Conversely, people who make parody products must carefully craft them to ensure the public understands they aren’t related to the skewered famous trademark owner. And because this decision strengthens the position of trademark owners, expect them to be more willing to litigate against unauthorized references they dislike. That’s expensive to defend against.

As for Bad Spaniels, I think Jack Daniel’s has no interest in burying the hatchet, but it faces a serious parody defense when the case resumes. Speaking of burying, why did the dog bury the whisky bottle in the backyard? Because he thought “on the rocks” meant underground!

Written on July 19, 2023

by John B. Farmer

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