SCOTUS picks at bones of Jack Daniel’s dog toy dispute

Justices concerned that trademark claims potentially impair free expression | Marked reluctance to discard Rogers test | VIP Products and free speech advocates favour Rogers over likelihood-of-confusion analysis.

Hearings at the US Supreme Court tend to be relatively sober affairs, but this week's arguments drew hearty laughter as the justices tackled the IP and First Amendment questions evoked by a crudely themed dog toy.

The toy allegedly parodies a Jack Daniel’s bottle, associating the whiskey brand with 'dog poop or excrement', prompting justices to mull on topics ranging from their own sense of humour to political T-shirts—as well as a bizarre exchange over the hypothetical sale of dog urine.

During the oral arguments on Wednesday, March 22, Justice Elena Kagan frankly admitted that she “just didn’t get the joke” on the dog toy that advertises its contents ‘as 43% poop’, leading to chortles throughout the courtroom.

“What is there to it? What is the parody here? Because maybe I just have no sense of humour. But what’s the parody?” she asked.

Not to be outdone, Justice Samuel Alito wryly queried whether a reasonable person could really come to the conclusion that Jack Daniel’s had actually approved the toy or a similar product that joked it contained "dog urine".

Misunderstanding his droll delivery, Jack Daniel’s counsel Lisa Blatt, partner at Williams & Connolly, gave a sober reply. “I think if you’re selling urine you’re probably going to win on a motion to dismiss, but you’re probably also violating some state law,” she said—leading Alito to assure her that he had not been in earnest.

A common-sense approach

Joking aside, several justices expressed concerns that trademark claims filed under the Lanham Act could potentially impair free expression.

As Jeff Handelman of Crowell & Moring observed, many of the court’s questions seemed to favour a “common-sense approach” to trademark parody cases.

“The very nature of the parody—which conjures up the original but also pokes fun at it—often avoids confusion as to source or sponsorship. The justices recognised that consumers often are amused by a parody but not confused by it,” he said.

Quite simply, the justices seemed to concur that if such confusion is absent, there is no infringement under the Lanham Act and no need to reach difficult constitutional questions related to the First Amendment.

Using the Lanham Act’s traditional likelihood-of-confusion test, the justices asked: “Is a reasonable consumer likely to believe that the owner of the brand made or sponsored the accused product that features the parody?”

But this line of reasoning was muddied by the issue at the heart of the case: whether the Rogers test, which protects the use of trademarks in works of creative expression, should be applied or not to a commercial product.

A radical motion

SCOTUS decided to review the case after the US Court of Appeals for the Ninth Circuit held that the test applies in this scenario because the defendant’s dog toy was “humorous” and therefore an “expressive work".

On appeal, Jack Daniel’s argued that Rogers is overly protective of defendants who have used another party’s mark in an expressive work, and contended that it should be abolished or limited to a few narrow circumstances.

And it garnered powerful support in the form of an amicus brief filed by the US solicitor general.

But the justices seemed to fight shy of this somewhat radical suggestion.

Expressing her reluctance, Justice Sonia Sotomayor said: “I have reservations about getting rid of something courts have been relying on for years. Why should we rule broadly? And if we rule narrowly, on what basis? Why not just rule on parodies and whether this is a joke people are going to get?”

Justice Ketanji Brown Jackson echoed this unease, saying she was “concerned about impairing artists” if the court found in favour of Jack Daniel’s motion.

The justices probed why VIP Products shouldn’t pursue its case on a likelihood of confusion analysis under the Lanham Act, eschewing the Rogers test entirely.

For Anne Gilson LaLonde, author of Gilson on Trademarks, VIP Products' response underscored that it was on a mission to strengthen and confirm the application of the Rogers test to parody-related commercial works.

“When Justice Alito suggested that there was no likelihood of confusion and that VIP Products would likely prevail on that basis, its attorney insisted that it would prefer that it won under the Rogers test because that's a better overall outcome for expressive works in general,” she said.

But, contrary to the line of argument, the justices indicated in their questions that their interest in free expression is strongest in cases involving traditional artistic works such as paintings and movies.

Justice Kagan questioned how a dog toy could be protected speech expressing a message.

“This is not a political T-shirt. It's not a film. It's not an artistic photograph. It's nothing of those things. It's a standard commercial product. I don't see the parody, but, you know, whatever,” she said.

As Handelman reflected: “Justice Kagan pointed out, the accused product sold by VIP Products, a dog toy, is an ordinary commercial product. Because the case did not involve a traditional artistic work, the court seemed unwilling to give heightened First Amendment protection under the circumstances presented.”

A modified Rogers test?

Haynes Boone partner David Bell suggested that while the court seemed inclined to safeguard the Rogers test, it may yet be modified.

“One such way this could occur would be if the court narrows the scope of what should qualify as an expressive work. For instance, a product’s utility, or lack thereof, could signify whether it is an expressive work deserving of different analysis for Lanham Act cases,” he explained.

This development, he added, could create more certainty if the court provides guidance for analysing whether a mark or work qualifies for this test.

“This test would identify and address parody, humour, or other like expressions separately from the standard Lanham Act analyses for infringement and parody.”

And if the court does not do so, then defences of freedom of expression—including works that traditionally fall under this category, such as films—may “become substantially less impactful,” concluded Bell.

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