Trademark holders often face the dilemma of whether and how to respond when their marks are used for comic effect, particularly when the humour is at their expense for another's commercial gain. Instinctively, trademark holders want to protect their marks, often with an aggressive legal response. However, that approach is not always wise and is now less likely to succeed, at least in one appellate circuit, following a recent case involving the well-known Jack Daniel's brand.
The case involved Arizona-based VIP Products, which made and sold dog chew toys with branding that played on well-known alcoholic beverage and soda brands. According to VIP, its dog toys reflected "on the humanisation of the dog in our lives" and commented on "corporations that take themselves very seriously".
In July 2014 VIP introduced the Bad Spaniels toy (Figure 1), which mimicked the Jack Daniel's whisky bottle with some added 'bathroom humour'. For example, the label included the phrases:
- "[o]ld No. 2 on your Tennessee Carpet";
- "43% POO BY VOL"; and
- "100% SMELLY".
Figure 1: Bad Spaniels toy and Jack Daniel's whisky bottle
Shortly after the product's launch, Jack Daniel's sent VIP a cease and desist letter. In response, VIP – no stranger to litigation – sued in the Arizona district court, seeking a declaration that Bad Spaniels did not infringe or dilute Jack Daniel's trademark or trade dress rights. Jack Daniel's countered with federal and state law claims for trademark and trade dress infringement and dilution of its name and whisky bottle design.
On summary judgment(1) the district court rejected VIP's defence that its Bad Spaniels dog toy merited heightened First Amendment protection as a parody under the Second Circuit standard set in Rogers v Grimaldi (875 F2d 994 (2d Cir 1989)).
Rogers involved a claim by actress Ginger Rogers that a film titled Ginger and Fred violated the Lanham Act by creating the false impression that she had sponsored the movie. The Second Circuit ruled against Rogers on the basis that "the expressive element of titles requires more protection than the labeling of ordinary commercial products". The court held that there would be no infringement unless "the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work".
In Jack Daniel's, the district court reasoned that Rogers was limited to titles of "artistic expression" (eg, movies, plays, books and songs) and did not extend to "[promotion of] a somewhat non-expressive, commercial product" such as Bad Spaniels. Following this ruling and a four-day bench trial, the court ruled in favour of Jack Daniel's for infringement and dilution.
On appeal, the Ninth Circuit reversed the district court's decision.(2) It ruled that Bad Spaniels deserved heightened First Amendment protection as a parody, crediting VIP's testimony that its dog toys poked fun at serious businesses. According to the court, while the dog toy was "surely not the equivalent of the Mona Lisa", it was an "expressive work" because it communicated a "humorous message". On this basis, the Ninth Circuit remanded the case, instructing the lower court to apply the Rogers test.
Before that could happen, Jack Daniel's filed a petition with the Supreme Court, asking it to review the case. It argued that VIP's dog toy was entitled to no heightened protection and should be subject to a standard likelihood of confusion test used for parody in other appellate circuits and applied by the district court in this case. Several interested parties filed briefs in support of Jack Daniel's.
VIP opposed and the Supreme Court recently denied the petition without comment, leaving the decision as the law of the Ninth Circuit.
Before taking legal action, trademark holders should consider the courts' advice that "[i]n some cases… it is better to accept the implied compliment in a parody and to smile or laugh than it is to sue".(3)
Where trademark holders decide to pursue legal action, they should consider the jurisdiction, as the law of the circuit could matter. For example, to succeed on an infringement claim involving parody in the Ninth Circuit under Jack Daniel's, a brand owner must prove that the defendant's use of the mark either is "not artistically relevant" or "explicitly" misleads customers in addition to prevailing on the likelihood of confusion factors. However, the Second, Fourth, Fifth, Seventh, Eighth and Tenth Circuits – as well as the Trademark Trial and Appeals Board – do not apply Rogers, but account for humour within the standard likelihood of confusion test applied to other products. The First, Third, Sixth and Eleventh Circuits have yet to rule definitively on this issue.
Endnotes
(1) VIP Prods, LLC v Jack Daniel's Props (2016 Dist LEXIS 13387 (D Ariz 27 September 2016)).
(2) VIP Prods LLC v Jack Daniel's Props, (953 F3d 1170 (9th Cir 2020)).
(3) Louis Vuitton Malletier, SA v My Other Bag, Inc, 156 F Supp 3d 425, 445 (SDNY 2016).
