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What Lies Ahead for Jack Daniel’s and for the Rogers Test?



To read the headlines of many media and legal news articles reporting on the Supreme Court’s recent decision in VIP Products, LLC v. Jack Daniel’s Properties, Inc., you’d think that the Court held that the dog chew-toy called “Bad Spaniels”, parodying a bottle of Jack Daniel’s whiskey, was found not entitled to First Amendment protection. But that’s not what the Court said, nor is it the question the Court was asked.

Jack Daniel’s, maker of the famous Old No. 7 Tennessee Sour Mash Whiskey, asked the Court to review the controversial Ninth Circuit ruling that a dog toy, even though sold as a for-profit commercial product, enjoyed First Amendment protection as an “expressive work” because it employed humor in parodying the famous Jack Daniel’s label, and posed two specific questions:

  1. 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.
  2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.

In addressing the first question, the Court had to consider whether the Ninth Circuit incorrectly applied the Rogers Test, a two-step analysis that, in the case of expressive works, may be substituted for the traditional, more detailed likelihood-of-confusion analysis, and has, over the past couple decades, become largely a free pass to First Amendment exemption from trademark infringement claims. The Court’s answer was direct and simple: Yes, the Ninth Circuit erred. The Rogers Test does not apply where the alleged parody is used specifically as a trademark. In such cases the full likelihood-of-confusion analysis must be conducted.

One reason for the Court’s holding is that a parody that is also used as a trademark must be subjected to the same analysis that would apply in any claim of infringement involving two trademarks. Underlying the court’s reasoning is the fact that a trademark is, by definition, commercial speech—words and images used in commerce to identify, promote, and sell commercial products and services. Commercial speech, because it can so easily be used to deceive, is subject to regulation to ensure its truthfulness, and thus entitled to a lower level of First Amendment protection than other forms of speech.

The second question arises from Jack Daniel’s claim that the dog toy tarnishes Jack Daniel’s trademark. Tarnishment is one form of trademark dilution—a cause of action available only to marks that are famous, generally recognized by the broad consuming public of the United States. A dilution claim has nothing to do with whether the public is likely to be deceived or confused; it alleges instead that the defendant’s activity harms the reputation and selling power of a famous trademark.

Dilution is covered by Section 43(c) of the Lanham Trademark Act, which contains its own built-in First Amendment balancing mechanism, consisting of a list of uses that are automatically exempt from dilution claims under the First Amendment. That list expressly excludes parodies that are used commercially. Because the “Bad Spaniel’s” parody was used specifically as a trademark for the chew-toy, the Court held that it was not qualified for automatic First Amendment protection. In other words, the Rogers short-cut should also not have been used to shield VIP from Jack Daniel’s tarnishment claim.

The Court did not address the applicability of Rogers to dilution claims in general, though it might well have done so. The Rogers Test is intentionally focused on likelihood of confusion, asking whether the plaintiff’s mark (or name) is “reasonably related” to the work in which it was used, and whether it was used in such a way as to “explicitly mislead” the public with respect to plaintiff’s involvement in the defendant’s work. (In the original case, Rogers v. Grimaldi, the Second Circuit fashioned the test to determine whether the use of Ginger Rogers’s name in the title of a film was likely to mislead the public into believing that Rogers was in the film or otherwise involved in its production, which she was not.)

One may reasonably ask whether dilution claims, which do not involve consumer confusion, are fair game for Rogers at all. The Rogers Test arose solely in response to a question about consumer confusion. No dilution claims were raised in the case. Indeed, when Rogers was decided in 1989 there was no such thing as federal dilution law. The Federal Trademark Dilution Act was not adopted until 1995; and tarnishment did not enter the picture until the current federal anti-dilution law, the Trademark Dilution Revision Act (TDRA) was enacted in 2006. Although state dilution causes of action have existed since the early 20th century, the Rogers Test was adopted for a world in which infringement—likelihood of consumer confusion—was the predominant and virtually only trademark cause of action.

Another question the Court wasn’t asked to answer in Jack Daniel’s involves how the effect of trademark dilution should balance with the parody defense. Should a parody trademark be allowed to tarnish with impunity the mark it is parodying? Or should a trademark that both parodies and tarnishes be subject to liability for tarnishment in spite of the fact that it is a legitimate parody? A “successful parody”, according to trademark parody jurisprudence, is humorous, critical, and unlikely to confuse. While the presence of those three characteristics arguably should overcome a claim of infringement, should it also override dilution?

It's instructive to recall the 2007 case of Louis Vuitton v. Haute Diggity Dog, which bears strong similarities to Jack Daniel’s v. VIP. The defendant, also a producer of novelty pet toys, had marketed a dog chew-toy in the shape, style, and decoration of a Louis Vuitton bag. The toy was branded “Chewy Vuitton” and the defendant went so far as to apply to register the phrase as a trademark. Vuitton sued for both infringement and dilution. Without applying Rogers, the District Court (and, on appeal, the Fourth Circuit) found that the product was a “successful parody” and upheld the toymaker on all claims. Most relevantly, the Fourth Circuit held that while Haute Diggity Dog’s use of “Chewy Vuitton” as a trademark disqualified them from automatic First Amendment protection under the TDRA, that “does not preclude a court from considering parody as part of the circumstances to be considered for determining whether the plaintiff has made out a claim for dilution”. The Court went on to find Louis Vuitton’s dilution claims—in particular, Vuitton’s tarnishment claim, resting on the concern that Vuitton’s reputation could be harmed if a dog should choke on the Chewy Vuitton toy—too weak to outweigh the social comment value of Haute Diggity Dog’s parodic speech and held that First Amendment protection should prevail.

Notably, the Chewy Vuitton toy did not comment on the quality of Louis Vuitton goods. Indeed, the fact that Louis Vuitton makes luxury products directed to people with high tastes and higher budgets was part and parcel of the joke of a dog chewing on a Louis Vuitton bag. By contrast, VIP’s Bad Spaniels parody directly associates Jack Daniel’s premium whiskey, a product made for human consumption and aesthetic enjoyment, with animal excrement. VIP has done this before and often—most notoriously in 2008 when they marketed a dog toy parodying a bottle of Budweiser beer under a “Buttwiper” label that featured a crazed chihuahua viewed from its tail end and got slammed with an injunction favoring Anheuser Busch just weeks after the toy appeared.

Why was the Jack Daniel’s case different? Largely because, since 2008, the Ninth Circuit has enthusiastically endorsed and broadened use of the Rogers Test. That year, the Ninth Circuit applied Rogers to the case of a video game’s use of a parody nightclub based on an actual California roadhouse, in E.S.S. Entertainment 2000 v. Rock Star Videos. From the Rogers Test’s original purpose of determining whether the use of an individual’s name in the title of an expressive work was entitled to First Amendment protection, the Ninth Circuit adopted, adapted, and broadened it to cover not only names and titles but also trademarks used within the content of expressive works, failing to acknowledge—as the original Rogers court did—that there is an element of commercial speech in the title of an expressive work that is not present in the generally protectable free-speech content of such works.

Now we have the Supreme Court’s judgment that the Ninth Circuit has gone too far in applying Rogers to parodies used specifically as trademarks, and that the presence of humorous “expressive” content is not sufficient to give a commercial product and brand automatic First Amendment protection. We now know for certain that Rogers may not be applied when the accused parody is used as a trademark, as commercial product branding. This holding is consistent with the Court’s recent copyright holding in Andy Warhol Foundation v. Goldsmith, indicating that today’s court is reluctant to extend either First Amendment or Fair Use exemption to purely commercial activities. The Jack Daniel’s holding is also likely to become a weapon against parody-branding in the cannabis industry, which in some jurisdictions has a history of using packaging imitative of familiar candy wrappers. Many jurisdictions, including Washington, have restrictions against this kind of packaging.

However, we do not yet know whether Jack Daniel’s will ultimately prevail on either its infringement or its tarnishment claims. Even without the Rogers Test in the mix, Jack Daniel’s infringement claims still might not withstand likelihood of confusion analysis. How likely is it that a reasonable consumer, looking at the Bad Spaniel’s label, would think that Jack Daniel’s is the source of the product? But Jack Daniel’s submitted persuasive survey evidence that a substantial number of consumers were indeed confused, sparking Justice Sotomayor to concur separately, urging caution when weighing survey results.

Even if Jack Daniel’s ultimately loses its infringement case, it’s hard to believe that it will lose its tarnishment claims. The court could still find, as the “Chewy Vuitton” courts did, that the defendant’s ineligibility for automatic First Amendment protection does not prevent the court from weighing First Amendment interests against purely commercial considerations. But it seems unlikely that allegations of humor, criticism, and “poking fun” give even the cleverest parodist latitude to associate the parodied product with excrement—a bridge much farther than the gentle criticism of luxury marketing in the Vuitton case.

Much remains to be seen as the Ninth Circuit and the original trial court reconsider Jack Daniel’s v. VIP in light of the Supreme Court’s guidance.

This article is provided for informational purposes only—it does not constitute legal advice and does not create an attorney-client relationship between the firm and the reader. Readers should consult legal counsel before taking action relating to the subject matter of this article.

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