Supreme Court limits parody protections in trademark dispute between Jack Daniels and Bad Spaniels – The Hollywood Reporter

Jack Daniel’s could be what unites a divided nation – at least when it comes to the US Supreme Court. In a unanimous decision Thursday, the Supreme Court sided with the Tennessee whiskey maker in a trademark dispute over a “Bad Spaniels” dog toy.

“This case is about dog toys and whiskey, two things that rarely appear in the same sentence,” Judge Elena Kagan writes in the option. “Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey. But not quite. For example, on the toy, the words “Jack Daniel’s” become “Bad Spaniels”. And from “Old No. 7 Brand Tennessee Sour Mash Whiskey becomes The Old No. 2 On Your Tennessee Carpet.

Jack Daniel’s wasn’t keen on the poop joke, and when VIP Products refused to stop selling the squeakers, the dispute escalated to the courts. VIP requested a statement that Bad Spaniels did not infringe or dilute Jack Daniel’s trademarks, and the whiskey brand filed a counterclaim for trademark dilution.

In essence, it is about the so-called Rogers Test instituted by the 2nd Circuit in 1989 to protect First Amendment rights in trademark matters. Essentially, it seeks to strike a balance between avoiding public confusion and encouraging creative expression, examining whether a use is artistically relevant to the underlying work and whether it is explicit in terms of the source or content of the work is misleading.

The matter had gone back and forth between a federal court in Arizona and the 9th Circuit. The district court ruled against VIP in summary judgment, concluding that the company had used Jack Daniel’s facial features as a trademark to “identify source.” Rogers Safeguards and fair use exceptions do not apply.

Here is how the Supreme Court summarized what followed: “The case moved to a trial in which the district court found that consumers were likely confused as to the source of the Bad Spaniels toy and that the toy’s negative associations with dog feces (eg e.g. “The Old No. 2”) would damage Jack Daniel’s reputation. The Ninth Circuit was reversed. Determination of Infringement Claim Subject to Threshold Rogers To determine whether Jack Daniel’s could meet both criteria of this test, the Court of Appeals remanded the case to the District Court. And the Court of Appeals ruled on VIP’s dilution claim, finding that because it parodies Jack Daniel’s, Bad Spaniels falls under the “non-commercial use” exclusion. During the pre-trial detention, the district court found that Jack Daniel’s could not satisfy either count Rogers, and therefore issued a summary judgment of infringement to VIP. The Court of Appeal confirmed this in summary.”

The Supreme Court was asked to consider two questions: “Whether the humorous use of someone else’s mark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood of confusion analysis or instead receives increased First Amendment protections from claims of trademark infringement.” and “whether humorous use of someone else’s mark other than one’s on a commercial product is ‘non-commercial’ … and thus legally precludes a claim for dilution by taint under the Trademark Dilution Revision Act.”

In the statement, Kagan cites a number of high-profile fights that he has been involved in Rogers Test including a Mattel suit over Aqua’s 1997 catchy song “Barbie Girl” and a Louis Vuitton suit over it The Hangover Part II and another dog toy fight with Tommy Hilfiger to illustrate which uses are protected (the first two) and which are not (the latter). She also explains that the main function of the Lanham Act is to distinguish the origin of goods from those made or sold by others, and that trademark law’s “cardinal sin” is to undermine this and confuse consumers.

The 9th Circuit ruled that Jack Daniel’s must pass the exam first Rogers Test it out before considering the likelihood of confusion, as the Bad Spaniels toy is “certainly not the toy equivalent.” mona lisa“ – was an expressive work with a humorous message. It was also decided that it was eligible for non-commercial use ban due to brand dilution due to the parody of the famous whiskey. In both cases, the Supreme Court disagrees with the 9th Circuit.

The court did not consider whether Rogers should ever be used as a threshold test for matters involving expressive works, it found that it is “inappropriate if the accused infringer has used a trademark to designate the source of his own goods – in other words, if he uses a trademark as a trademark used”. Kagan notes, “When a mark is used as a trademark (except possibly in rare situations), the likelihood of confusion study does enough work to take into account the interest in free speech.”

The underlying logic is the same as the fair use defense to dilution. “However broad the scope of the ‘non-commercial use’ exclusion may be, it cannot, as the Ninth Circuit held, include every parody or humorous comment,” writes Kagan. “Significantly, the fair use disclaimer has its own disclaimer: it does not apply when the use is ‘as an attribution to the person’s own goods or services.'”

“Today’s opinion is narrow,” Kagan continues. “In the case of violations, we only record that Rogers does not apply if the objected use of a trademark is as a trademark. Regarding dilution, our only opinion is that the non-commercial exclusion does not protect parodies or other comments where use of a trademark similarly attests to the source. It is no coincidence that both of our holdings are concerned with whether the use of a trademark fulfills a source attribution function. The Lanham Act makes this fact vital to ensure consumers can identify where goods are coming from.”

In doing so, the court reversed the 9th Circuit’s judgment and dismissed the question of whether the Bad Spaniels marks are likely to cause confusion.

In two unanimous opinions — one by Justice Sonia Sotomayor with Justice Samuel Alito and another by Justice Neil Gorsuch with Justices Clarence Thomas and Amy Coney Barrett — the judges warn against giving too much weight to polls when it comes to consumer confusion and warn before that the Rogers The test should be treated with caution.