By: Sam Jacobson
Volume IX – Issue II – Spring 2024
Introduction
This article will first provide a background on the First Amendment, with a focus on how it relates to intellectual property law. Then, it will review and analyze relevant information regarding trademark law, defining what exactly a trademark entails and discussing policy justifications behind the trademark system in the United States. After providing this background information, the article will explore two relevant acts/cases surrounding the primary case, the Lanham Act, which includes federal action against trademark infringement and trademark dilution, and the test derived from Rogers v. Grimaldi (1989) that protects the use of certain trademarks. Then, this article will discuss the primary case at hand, Jack Daniel’s Properties v. VIP Products, LLC (2023), including the holding reached by the Supreme Court (hereinafter, “the Court”), with an analysis of the case at hand and of the holding. The article concludes by considering future implications based on the reached holding of the Court and how it relates to the intersection of First Amendment and trademark law protections. I will argue that, in the case of Jack Daniel’s Properties, Inc. v. VIP Products, LLC, VIP Products LLC should not be entitled to heightened First Amendment protection, as while the dog toy is a parody in itself, the product still works against trademark law by arguably diluting the Jack Daniels trademark and potentially creating consumer confusion as a result of the products being highly similar.
I. Background on the First Amendment
The First Amendment of the United States Constitution protects the rights to freedom of religion, to assemble, to petition, and the right to freedom of expression from government interference [1]. Within the freedom of expression consists of the right to freedom of speech, considered a means of expression, which protects an individual in expressing themselves without concern of government interference. Essentially, speech is defined vaguely within the Constitution and, while courts have worked to define speech through case law, there are a plethora of ways in which one can express themselves. Under this broad umbrella of expression includes parodies, considered to be works of expression by serving as pieces of commentary/criticism on existing creative works (art, literature, film, etc.). The fact that parody is protected by the First Amendment will be considered in the analysis of the case at hand.
II. Background on Trademark Law: Trademarks and the Lanham Act (1946)
i. Defining Trademarks
The term “trademark” (also known as “mark”) is defined in 15 U.S. Code § 1127 to include “any word, name, symbol, or any combination thereof”, used by a person or in which a person has “a bona fide intention to use in commerce” , with the purpose of the trademark to “identify and distinguish his or her goods…. from those manufactured or sold by others and to indicate the source of the goods” even in cases in which “ the source is unknown. ” [2] Ultimately, trademarks, as a piece of intellectual property, function as a source identifier, meant to prevent consumers from confusing one person/company’s product from others such that the consumer is not harmed from any misrecognition. The United States Patent and Trademark Office (PTO) is responsible for certifying patent and trademark registration, along with any arising litigation. The PTO defines legally protected trademarks to include a “word, phrase, or design, or a combination” that, with such word/phrase/design/combination only trademarked in relation to the mark’s usage with the specific goods or services involved [3]. While federal registration of a trademark is not mandated, benefits of federally registering a trademark with the PTO protects one’s trademark from being registered by others without one’s permission and prevents others from creating similar trademarks relating to similar goods/services, as determined by the PTO. [4] In terms of what is considered a protected trademark, the Lanham Act (1946) lays out the eligibility requirements for a trademark to receive protection, along with what constitutes trademark infringement.
ii. The Lanham Act (1946)
The Lanham Act, as outlined in 15 U.S. Code § 1051, was enacted by Congress in 1946 to create a national system of trademark registration and protect owners of federally registered trademarks “against the use of similar marks” [5]. Specifically, the Lanham Act was meant to protect against the use of similar marks that were likely to (i) create consumer confusion and/or (ii) dilute a “famous” mark [6]. While consumer confusion is relatively more clear (typically established by surveying consumers on how they associate a product with a brand), the term “dilution” is not necessarily clear, at least initially. The term “dilution” refers to the use of a trademark that is “sufficiently similar” to a “famous mark” (trademarks of brands widely recognized by the general public) such that the use of the trademark “confuses or diminishes” the public’s perception of the famous mark [7]. There are two types of dilution of a famous mark: (i) blurring and (ii) tarnishment. Blurring occurs when the famous mark is determined to be less “distinctive” (with distinctiveness defined as a trademark’s ability to identify and distinguish particular goods from one source and not another) as a result of its association with another similar mark [8]. An example of this would be with McDonald’s, with the “Mc” considered distinctive as it has been found consumers associate the “Mc” with the fast food services provided by McDonald’s specifically. If there were several brands not related to fast food services but containing the “Mc” such as McDanny’s Cars or McDon’s Sunglass Hut, while there arguably wouldn’t be consumer confusion (because these proposed brands wouldn’t be tied to fast food services), increasing use of the Mc makes the McDonald’s as a brand less distinctive (more blurred). In comparison, tarnishment is defined by harm dealt to the reputation of a famous mark by association with a similar mark [9]. An example of this is with Mattel, the company behind the Barbie doll, that sued MCA Records, the record company behind “Barbie Girl” by Aqua, for tarnishment as they argued that “Barbie Girl” sexualized the Barbie brand, which would now be infiltrated within consumer minds while shopping at Mattel [10]. Ultimately, under the Lanham Act, a plaintiff can sue on the grounds of dilution or trademark infringement, in which for the latter the plaintiff must prove that:
They have a valid and legally protectable mark
The plaintiff owns the mark; and
The defendant’s use of the mark to identify goods or services causes a likelihood of confusion [11]
Considering the First Amendment, along with trademark law, as defined by what constitutes a trademark and the Lanham Act (1946), this article will now look at a prior case that introduced a two-part test adopted by the Second Circuit Court and was later considered in the primary case in front of the Supreme Court.
III. Case Precedent: Rogers v. Grimaldi (1989)
i. Facts of the Case
The plaintiff, celebrity actress and dancer Ginger Rogers, sued defendants Alberto Grimaldi and film company Metro-Goldwyn-Mayer Studios (MGM) for using her name for the 1986 film Ginger and Fred, which references Rogers and Fred Astaire (who co-starred with Rogers in various musical films), with the movie about two Italian performers who make a living by imitating Rogers and Astaire and their routines [12]. Among claims of using her likeness and misrepresenting her personality , Rogers sued the defendants alleging, under the Lanham Act, that they created a false impression that Rogers was involved with the movie in any regard or endorsed it [13]. Rogers specifically referenced Section 43(a) of the Lanham Act, in 15 U.S. Code § 1125(a), which imposes civil liability on “any person who shall… use in connection with any goods or services… a false designation of origin, or any false description or representation” [14]. At the trial level, the lower court ruled in summary judgment to Grimaldi, stating that Rogers’ claims were precluded by First Amendment protections granted to the defendants, as they had created an expressive work (a film). Ultimately, the question in front of the Second Circuit Court was whether the creator of an expressive work protected under the First Amendment could be liable under the Lanham Act for using a celebrity’s name in the title of the work.
ii. Holding
The Second Circuit Court ultimately affirmed the holding of the lower court, stating “in sum, we hold that section 43(a) of the Lanham Act does not bar a minimally relevant use of a celebrity's name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content” [15]. This led to the formulation of what was known as the Rogers Test in which, in the case of expressive works, rather than employing the likelihood-of-confusion analysis detailed within the Lanham Act, that there should be a different test due to the heightened First Amendment protections associated with these expressive works [16]. The two-step test, invented by the Second Circuit Court, considers the following two things [17]:
Whether use of another’s trademark in an expressive work has some “artistic relevance” to the underlying work
a. With a note that the standard for “artistic relevance” is a low threshold
Whether the use “explicitly misleads as to the source or the content of the work”
The Rogers Test, along with a consideration for the First Amendment, Lanham Act, and trademark law, will now be applied to the primary case of this article, Jack Daniel’s Properties, Inc. v. VIP Products, LLC (2023).
IV. Jack Daniel’s Properties, Inc. v. VIP Products, LLC (2023)
i. Facts of the Case
VIP Products, LLC (“VIP”; “Defendant”) sells dog toys that parody well-known beverage brands, shaped as bottles or cans, known collectively as “Silly Squeakers”, with toys similar to the one at issue in this case being “Canine Cola” (Coca-Cola), “Mr. Slobber” (Dr. Pepper), and “Smella Arpaw” (Stella Artois) [18]. In this case, one of the “Silly Squeakers” toys that Defendants come out with is “Bad Spaniels”, referencing drink company Jack Daniels, with the toy being in the shape of the Jack Daniels whiskey bottle [19]. More specific details include the difference in labeling: “Old No. 7 Tennessee Sour Mash Whiskey” found on the original product is substituted with “Old No. 2 on your Tennessee Carpet” with “Bad Spaniels”, along with “40% ALC. BY VOL.” on Jack Daniel’s being substituted with “100% SMELLY” with “Bad Spaniels” [20]. The two products are shown below as Figure 1. In 2014, in response to “Bad Spaniels”, Jack Daniel’s Properties, Inc. (“JDPI”; “Plaintiff”), demanded that VIP stops selling “Bad Spaniels”, which led to VIP filing for declaratory action in the US District Court for the District of Arizona, in which they sought a declaration that VIP did not infringe or dilute JDPI’s trademark [21]. In response to declaratory action, JDPI counterclaimed, arguing that VIP did in fact infringe on their trademark in relation to the Jack Daniel’s whiskey bottle, creating consumer confusion, and diluted the trademark with their dog toy, tarnishing the trademark by associating Jack Daniel’s whiskey with dog excrement [22]. The District Court ultimately held that “Bad Spaniels” was entitled to First Amendment protections, as a toy is considered a humorous parody, and this was affirmed by the US Court of Appeals for the Ninth Circuit, leading to the case going in front of the Supreme Court [23]
Figure 1. Jack Daniel’s “Old No. 7 Tennessee Sour Mash Whiskey” vs. VIP Products (Bad Spaniel’s) “Old No. 2 on your Tennessee Carpet” [24].
ii. Holding
In a 9-0 holding, the Supreme Court sided with Jack Daniels, ruling that “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers Test does not apply” [25]. In the opinion by Justice Elena Kagan, use of the Rogers Test has typically been confined to where a trademark is used “not to designate a work’s source, but solely to perform some expressive function’, such as with Mattel Inc. v. MCA Records, Inc. (2002) (where use of the Barbie name was not seen as a source identifier by the Court) [26]. Therefore, VIP Products’ parodic use of a commercial product is subject to the Lanham Test’s likelihood-of-confusion analysis rather than the Rogers Test. Additionally, the Court ruled that such parodic uses are not shielded from the Lanham Act’s dilution component, and its exception for non-commercial use of a mark “does not shield parody, criticism, or commentary when an alleged diluter uses a mark as a designation for its own goods” [27]. Considering the facts of the case, the holding, and relevant case law and intellectual property law, this case will now be analyzed, considering arguments from both perspectives.
V. Analysis
Ultimately, Jack Daniel’s Properties v. VIP Products is seeking to weigh First Amendment protections with trademark law. So, this case is a question of freedom of speech and expression versus concerns of consumer confusion. On the one hand, people are entitled by law in the United States to express themselves freely, with some limitations, and such freedoms are enshrined in the United States Constitution and at the core of societal values. So, one could argue that they should be allowed to express themselves by creating a dog toy product in whatever shape, color, size, font they choose. Additionally, one could argue that if the Court were to side with Jack Daniels here, then they would be actively working to limit artistic expression and creativity, which results in less creativity being available to the public. While this argument certainly has some validity to it, it is not inherently realistic or true, and it fails to highlight the main issue at hand: consumer confusion. Comparing the products, as seen in Figure 1 above, the products do have some differences: Jack Daniels’ is an amber color, and the label is slightly different from the Bad Spaniels’ one, which is a red color and features a dog on the label. However, these two products are arguably very similar: they encompass the same/highly similar shape, both prominently feature black in similar spaces on their product with similar white text font and both use “Old No.” as part of their labeling. While the likelihood of consumer confusion could most likely be verified through surveys, the golden standard for the Lanham Test analysis, these products are arguably very similar to each other and could create consumer confusion. While one could argue that a consumer is likely not going to pick Bad Spaniels’ thinking it is an alcoholic beverage, especially given the name and prominent dog shown on the labeling, the similarity in the products’ names and design could lead to consumers assuming that Bad Spaniels’ is a secondary product part of the Jack Daniels’ brand, that maybe they are extending into the dog toy industry. This is something that trademark law is trying to avoid, as consumers can potentially be harmed by believing that a brand they trust is behind a product, such that they buy the product based on this established trust and the product could create negative outcomes. Additionally, with the concern of dilution, it is arguably reasonable that if consumers associate a dog toy product with Jack Daniels’ that it could dilute the brand with associations to things such as dog excrement. Ultimately, while it is incredibly important to protect the rights of speech and expression, Bad Spaniels’ could have easily parodied the Jack Daniels’ mark without doing so to such a degree that the mark is almost entirely copied to create their product. Therefore, the Supreme Court’s holding appears to be reasonable and valid in using the Lanham Act’s analysis, and while the likelihood of consumer confusion would need to be further confirmed, it appears that VIP Products is infringing on and potentially diluting Jack Daniels’ trademark.
VI. Conclusion and Future Implications
To conclude, it is important to recognize that there needs to be a balance between maintaining the rights of consumers (trademark law) and the rights of creators to express themselves artistically without government interference (First Amendment). In Jack Daniel’s Properties, Inc. v. VIP Products, LLC, one could find the Court’s reasoning to reject the Roger Test in relation to trademarks used as source identifiers, rather than purely expressive marks, on the basis that consumer harm is a major concern of intellectual property law, specifically trademark law, and consumers mistakenly associating a highly similar product of a different brand with the brand they trust could end up harming them. Thus, it makes more sense to apply the Lanham Act’s analysis of likelihood of consumer confusion to support this goal. Additionally, based on the analysis of Figure 1, it appears likely that VIP Products infringed and potentially diluted Jack Daniels’ trademark due to the almost identical degree of similarity, though further evidence would be needed to verify these arguments. In terms of implications from this case, while artistic expression could be more limited now with the rejection of the Rogers Test, this case does not specifically prohibit parodies of existing marks, rather it now exists on a case-by-case basis. This case ultimately strengthens trademark law by putting in law a new way to hopefully prevent consumer confusion. As artificial intelligence (AI) becomes more prominent, and art is increasingly generated by AI, which could be used for branding purposes, this could be an interesting point of intersection with the decision reached in Jack Daniel’s Properties v. VIP Products.
Endnotes
[1] The First Amendment. https://www.law.cornell.edu/wex/first_amendment.
[2] 15 U.S. Code § 1127 - Construction and definitions; intent of chapter.
[3] Trademark, patent, or copyright. https://www.uspto.gov/trademarks/basics/trademark-patent-copyright#:~:text=Trademarks%2C%20patents%2C%20and%20copyrights%20are,of%20intellectual%20property%20you%20have
[4] Ibid.
[5] Lanham Act (1946). https://www.law.cornell.edu/wex/lanham_act#:~:text=The%20Lanham%20Act%20defines%20a,it%20in%20commerce%20
[6] Ibid.
[7] Dilution (trademark). https://www.law.cornell.edu/wex/dilution_%28trademark%29
[8] Ibid.
[9] Ibid.
[10] Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120 (C.D. Cal. 1998). https://law.justia.com/cases/federal/district-courts/FSupp2/28/1120/2532136/
[11] Dilution (trademark). https://www.law.cornell.edu/wex/dilution_%28trademark%29
[12] Rogers v. Grimaldi, 695 F. Supp. 112 (S.D.N.Y. 1988). https://law.justia.com/cases/federal/district-courts/FSupp/695/112/2345732/
[13] Ibid.
[14] Ibid.
[15] Ginger Rogers v. Alberto Grimaldi, Mgm/ua Entertainment Co., and Pea Produzioni Europee Associate, S.R.L., 875 F.2d 994 (2d Cir. 1989). https://www.courtlistener.com/opinion/524053/ginger-rogers-v-alberto-grimaldi-mgmua-entertainment-co-and-pea/
[16] Ibid.
[17] Ibid.
[18] Jack Daniel’s Properties, Inc. v. VIP Products, LLC (2023). https://www.law.cornell.edu/supct/cert/22-148.
[19] Ibid.
[20] “Supreme Court Clarifies Limits Of First Amendment Defenses To Use Of Trademarks In “Parody” Products” (2023). https://www.gibsondunn.com/supreme-court-clarifies-limits-of-first-amendment-defenses-to-use-of-trademarks-in-parody-products/.
[21] Jack Daniel’s Properties, Inc. v. VIP Products, LLC (2023). https://www.law.cornell.edu/supct/cert/22-148.
[22] “Supreme Court Clarifies Limits Of First Amendment Defenses To Use Of Trademarks In “Parody” Products” (2023). https://www.gibsondunn.com/supreme-court-clarifies-limits-of-first-amendment-defenses-to-use-of-trademarks-in-parody-products/.
[23] 22-148 Jack Daniel’s Properties, Inc. v. VIP Products LLC (2023). https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf
[24] 22-148 Jack Daniel’s Properties, Inc. v. VIP Products LLC (2023). https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf
[25] Ibid. 2.
[26] Ibid. 3.
[27] Ibid. 3.