SCOTUS told: don’t ‘muzzle’ free speech for Jack Daniel’s
US’ highest court set to hear arguments in a key dispute concerning the interplay between freedom of expression and trademark law | Bad Spaniels parody borrowed “only enough to make the joke work” claims writ | Harvard University Law | Potomac Law.
The creator of a dog toy parody of a Jack Daniel's whiskey bottle has asked the US Supreme Court to protect its right to freedom of expression, as the debate concerning the role of this tenet in IP law intensifies.
Arizona-based VIP Products filed a writ of certiorari on February 16, asking the justices to affirm earlier rulings that went in its favour, in a case that arguably has the trademark community on tenterhooks.
Next month, the court is set to examine the question of whether a humorous use of another’s trademark 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.
The US First Amendment protects freedom of speech and expression.
It will also look at whether humorous use of another’s mark as on a commercial product is “noncommercial” and bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.
Background
According to VIP Products, Bad Spaniels was “whelped” in a bar in 2013, when VIP owner Stephen Sacra and graphic designer Elle Phillips worked up a sketch of a funny dog toy that parodied the Jack Daniel’s brand.
When the product went on sale, Jack Daniel's then sued the toy company alleging violation of its trademark. The US District Court for the US District of Arizona held that the toy is a humorous parody entitled to First Amendment protection, and the US Court of Appeals for the Ninth Circuit affirmed.
In November 2022, SCOTUS agreed to review the case, and the oral arguments are scheduled for March 23.
In its brief, VIP Products accused Jack Daniels of seeking to use the Lanham Act to “muzzle” its playful dog-toy parody, and argued that the Ninth Circuit had rightfully “recognised that the legal tests for garden-variety infringement and dilution-by tarnishment claims poorly fit parodies and other artistic expression”.
The Ninth Circuit, it added, had correctly applied the long-standing test of Rogers v Grimaldi (1989), to the infringement claim and the noncommercial-use exclusion to the dilution claim.
Further, the company contended that the briefs of Jack Daniel’s and many amici curiae backing the whiskey brand’s stance miss what distinguishes VIP’s parody toy from pun-based trademarks used to sell non-parodic goods.
A pretend product?
“Bad Spaniels” is a pretend trademark for a pretend product—there is no bottle of “43% POO BY VOL.” or anything else,” said the brief.
It asked the justices to reject Jack Daniel’s potentially “nuclear” bid to abolish the “decades-old and universally followed Rogers test”.
The Rogers test should be preserved, the company insisted, because it appropriately balances the public’s interests in both avoiding confusion and preserving freedom of speech and humour.
“Our sombre world needs more speech and more laughter; the Rogers test keeps it from growing any darker,” it said, adding that in designing the Bad Spaniels parody, VIP borrowed “only enough to make the joke work”.
It did not, however, use “Jack Daniel’s” or other elements of the trade dress as they appear on the Jack Daniel’s label, added the brief.
VIP went on to insist that the case is about speech and a popular brand’s attempts to control that speech by “weaponising” the Lanham Act, and that the toy at the heart of the case was indisputably a good-faith (and successful) parody.
MetaBirkins and the Lanham Act
The hearings come after the landmark ruling in Hermès’ dispute with the creator of non-fungible tokens known as MetaBirkins, which held that designer Mason Rothschild had infringed the fashion firm’s trademarks and could not be shielded by the Rogers test.
Commenting on that outcome and the pending SCOTUS case, Rebecca Tushnet, a professor of law at Harvard University who supported Rothschild, told WIPR that she perceived that ruling as a blow for many artists. But despite this setback, she emphasised that the Jack Daniel’s hearings would be far more critical.
“We're obviously disappointed with the MetaBirkins ruling and considering our options, given the importance to artists of freedom to comment on the world, including on big brands.
“But the real question is what the Supreme Court will do in the Jack Daniel's case, so I'm turning my attention to that. While MetaBirkins was disappointing for artists, the Supreme Court's decision will profoundly shape what that means going forward,” she explained.
On the opposite side of the divide, Julia Anne Matheson, partner at Potomac Law, welcomed the MetaBirkins verdict, but like Tushnet, she placed greater emphasis on the ramifications of the upcoming SCOTUS hearings.
“As an attorney who represents well-known brands, and is watching with some trepidation how the Supreme Court will handle the interplay between the Lanham Act and the First Amendment in the Bad Spaniels case, I am gratified that the jury in the MetaBirkins case was able to see through the defendant’s First Amendment smokescreen to find liability in this particular case,” she said.
But that litigation, she added, was “very fact specific” and is unlikely to be applied broadly except for what it suggests about future cases involving non-fungible tokens.
Ultimately, critical questions remain regarding whether the Lanham Act always trumps the First Amendment—and when a court should evaluate an alleged infringement by giving precedence to the Rogers test. The pressure is mounting for SCOTUS justices to deliver concrete answers.
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