By Jeffrey E. Jacobson, Esq. with Ben E. Radisch
In June, 2023, the Supreme Court issued a unanimous ruling in favor of Jack Daniel’s, a bourbon company, against VIP Products, the producers of parody dog toys. The issue centered around VIP’s “Bad Spaniels” dog toy that resembled the Jack Daniel’s bourbon bottle. Importantly, this decision seemingly upended trademark law and has opened the window for parody products to be subject to a whole new realm of trademark litigation.
Generally, trademarks are vital to intellectual property protection. Trademarks serve as an indicator for a product’s origin and separate the products from others. In doing so, trademarks aid consumers in purchasing the products they actually want. As a result, this permits the producers to obtain the monetary benefits associated with the product’s good will and reputation. For example, the Nike Swoosh logo allows consumers to purchase genuine Nike shoes, not a “knock off” or different brand, and allows Nike to generate income from its long standing reputation and image. Succinctly, trademark law is designed to protect brands, logos, and other symbols that distinguish a producer of goods or services from another.
With this in mind, trademark cases are generally for infringement or dilution. Infringement is whether the defendant’s (infringer’s) use of the trademark is “likely to cause confusion, or to cause mistake, or to deceive.” On the other hand, dilution is whether the defendant (infringer) “harm[ed] the reputation” of a famous trademark or diluted its distinctiveness.
Notably here, Jack Daniel’s responded to VIP’s initial action by filing claims against VIP for trademark infringement and dilution. The District Court contended that consumers were likely to be confused by the source of the dog toy and its elements, such as the “The Old No. 2” symbol or “43% Poo By Vol.” The District Court saw these elements as negative associations of Jack Daniel’s with dog feces. Subsequently, the Circuit Court reversed the infringement claim based on the Rogers test. It was then remanded by the Court of Appeals to determine whether the Rogers test was satisfied or not.
The Rogers test has been a vital part of trademark law for several decades. It was developed to reconcile First Amendment free speech principles with trademark law’s goal of avoiding confusion. Courts employ the Rogers test when dealing with “artistic” works in an infringement claim. This approach recognizes that such works possess an “expressive” element that invokes First Amendment Rights and poses a minimal risk of consumer confusion regarding the goods’ source. Accordingly, the Ninth Circuit ruled that VIP’s dog toy deserved special scrutiny under the Rogers test because of its “expressive” nature of conveying a humorous message. Upon remand, the District Court concluded that VIP did not infringe because Jack Daniel’s could not provide enough to satisfy the Rogers test burden.
Regarding the dilution claim, the Court of Appeals denied it because the Bad Spaniels dog toy parodied Jack Daniel’s bottle design, thus falling under the “non-commercial use” exclusion. Essentially, the dog toy was considered an expressive or creative parody work and this exclusion prevented the parody dog toy from being subject to a dilution claim.
Following this, the Supreme Court thoroughly reevaluated the application of the Rogers test. After some consideration, they declared that the Rogers test is inapplicable when an alleged infringer uses a trademark as a designation or indicator of the source for their own goods. The Court referenced the case of Mattel, Inc. v. MCA Records, Inc., where the famous “Barbie Girl” song produced by MCA Records did not utilize Mattel’s “Barbie” name as a source identifier. Fundamentally, the song merely used the name “Barbie” without implying that it was using Mattel’s “Barbie” brand and trademark as its own. The Court applied this reasoning to VIP’s dog toy, stating that the dog toy’s design was not akin to the Barbie song. Instead, VIP used the Jack Daniel’s trademark as its own to market the dog toy, regardless of whether the “humorous” element of the dog toy were expressed to any degree.
As a result, the Supreme Court’s decision has momentous implications for trademark law and intellectual property. Professor McCarthy voiced his concerns, stating, “I had expected the Supreme Court to reverse and redefine what qualifies as an ‘expressive’ work (e.g., a novel or movie) eligible for the application of the Rogers test. However, the Supreme Court took a different approach. It narrowed the application of the Rogers test in a distinct manner.” The Court asserted that the Rogers test does not apply when the accused use functions as a trademark itself. In such cases, the traditional trademark infringement test of likelihood of confusion adequately accommodates free speech policies. With this ruling, the Court seems to have provided a narrow interpretation that significantly limits the scope of creative and expressive works outlined by the Rogers test.
That being said, this ruling raises questions about the future viability of parody products in trademark litigation. For instance, in Tetley, Inc. v. Topps Chewing Gum, Inc., the Supreme Court ruled in favor of Topps, the producer of “Wacky Packages” − a children’s toy that used similar trademarks for parody stickers. The Court’s judgment in Tetley had broader implications for balancing trademark rights and free speech. There, the Court ruled that while trademark owners had legitimate interests in safeguarding their marks, the parodies created by Topps did not actually infringe on these rights. The Tetley Court emphasized the importance of free speech and artistic expression, concluding that the parodies constituted social commentary and humor rather than an attempt to confuse consumers. Under this reasoning, VIP using Jack Daniel’s bottle design as inspiration for the “Bad Spaniels” dog toy should be no different than Topps using established brands’ trademarks for their “Wacky Packages.” The Tetley decision considered several factors to assess whether the alleged infringing product could lead to source confusion: (1) the distinct market, (2) the actual product itself or the product medium, and (3) the sales location. Based on these factors, the likelihood of confusion regarding Jack Daniel’s association with “Bad Spaniel’s” appeared relatively low. Jack Daniel’s liquor is marketed to adults aged 21 and above for recreational use, sold in liquor stores; while “Bad Spaniel’s” is a dog toy targeted at dog owners and families, likely available primarily in pet stores. Consequently, the average consumer would likely not reasonably mistake “Bad Spaniel’s,” a dog toy, for being endorsed or sold by Jack Daniel’s themselves. Moreover, the average consumer is likely familiar with parodies or the concept of parodies and would easily identify a product as such.
Ultimately, the Supreme Court’s ruling now undermines the long established standards of Tetley and the reliability of the Rogers test. While the Supreme Court did not outright reject the Rogers test, three justices expressed concerns about its viability in the future. They cautioned that the Rogers test might not be entirely sound in all its particulars and suggested that lower courts should handle it with care. The court viewed the Rogers test as an “easy out” for parody products to use trademarks as their own if they claimed there was any expressive value to it. This is no longer the case. Without defining what “expressive” means, the Supreme Court has seemingly closed the door for parody products to use trademarks that are central to what makes a parody product a parody product.
© 2023 The Jacobson Firm, P.C.