Earlier this year, one of my colleagues posted a guide to parody under U.S. trademark law for those brands hoping to navigate trademark parody without crossing into trademark infringement or dilution. But as we all know, the legal landscape can change in just a few months, especially when the Supreme Court gets involved. In this post, we explore the Court’s recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC and discuss what, if anything, it changes for brands navigating that parody tightrope. (Spoiler Alert: Not that Much.)
For those unfamiliar, VIP Products makes a “Bad Spaniels” poop-themed dog toy designed to look like a bottle of . . . you guessed it . . . Jack Daniel’s whiskey. Unamused, Jack Daniel’s demanded VIP Products stop selling the toys, and the parties became embroiled in years-long litigation with Jack Daniel’s claiming infringement and dilution of its trademarks and VIP Products crying parody. While Jack Daniel’s was victorious in the district court, the joke seemed to have landed on more humorous ears in the Ninth Circuit, and the Court held that the “Bad Spaniels” toy was an expressive work warranting heighted First Amendment protection from trademark infringement claims. On the dilution issue, the Court found that the humorous nature of the product rendered the toys “non-commercial” and thus exempt from the dilution claim.
The Supreme Court unanimously rejected the Ninth Circuit’s decision and held that no threshold First Amendment test should be applied when an alleged infringer uses the mark at issue as a designation of source for its own goods or services. Thus, when the defendant is “trading on the good will of the trademark owner to market its own goods” – even if simultaneously making a humorous or expressive comment about the trademark owner – a trademark infringement claim must be examined under the likelihood of confusion analysis. On dilution, the Supreme Court overruled the Ninth Circuit’s holding that any parody or humorous commentary is noncommercial in nature, even if used to sell a product.
So, what does this all mean for brand owners?
It is important to keep in mind that the Supreme Court’s decision is a narrow one and does not drastically change the legal landscape when it comes to trademark parodies and infringement. While the Court did not hold that a threshold First Amendment test is never appropriate when it comes to trademark parodies,1 parody is not a get out of jail free card and use of another’s trademark – no matter how humorous – is still infringement if likely to cause confusion.
Brands should keep in mind that adopting a trademark for your own product that parodies another brand – no matter how clever it may be – is a risky endeavor. But if you’re feeling punny, take a look at our prior guidance and consider consulting an intellectual property lawyer to assess your risk profile.
And for brands finding themselves as the butt of an unwelcome and unamusing joke, the decision does not open the floodgates to enforce trademark rights against all parodies, and brands should continue to be mindful of the potential PR ramifications of overly aggressive enforcement in this space.
[1] Justice Gorsuch’s concurrence, on the other hand, signals there may be trouble ahead for the Rogers test, cautioning lower courts to handle the test with care and “be attuned” to those questions the Court chose to leave for another day. How the district courts will interpret Justice Gorsuch’s not so subtle shade is a question for another day, but this author for one is intrigued to find out.
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