CASE PREVIEW

Dog toy poking fun at Jack Daniel’s leads to dispute over parody exception to trademark protections

It is fair to expect Wednesday’s arguments in Jack Daniel’s Properties v. VIP Products to be heated, as the justices consider the possibility that protection for parodies requires an exception to traditional trademark protections.

The case involves a dispute between Jack Daniel’s (the largest American whiskey manufacturer) and VIP Products (the second-largest American dog toy manufacturer). VIP has a line of spoof products that parody famous brands. The toy in question was modeled on and closely resembles the distinctive square bottle in which Jack Daniel’s has marketed its whiskey since the 19th century – with the same size and shape and a label with a similar shape and font. The main difference is that instead of describing “Old No. 7 Tennessee Sour Mash Whiskey” manufactured by “Jack Daniel’s,” the toy refers to a “Bad Spaniel” that makes “Old No. 2 on your Tennessee carpet.”

Predictably enough, Jack Daniel’s sued VIP for trademark infringement and dilution. Finding a likelihood that consumers would confuse the “Bad Spaniels” toy with Jack Daniel’s, the trial court ruled in favor of Jack Daniel’s and barred VIP from continuing to manufacture the Bad Spaniels toy. The U.S. Court of Appeals for the 9th Circuit reversed on both counts. On trademark infringement (under the federal Lanham Act), the court of appeals concluded that VIP’s communication of a humorous message called for heightened scrutiny to ensure that trademark protection for Jack Daniel’s did not intrude on First Amendment values. On dilution (under the federal Trademark Dilution Revision Act), the court held that VIP was protected by an exception for “noncommercial” uses.

In its brief in the Supreme Court, Jack Daniel’s is scorching in its criticism of the 9th Circuit’s reading of federal trademark statutes. On the infringement point, Jack Daniel’s emphasizes that there is absolutely no basis in the text of the Lanham Act for requiring heightened scrutiny for parodies. Moreover, because the Lanham Act count for trademark infringement required Jack Daniel’s to prove that VIP’s product was confusing to consumers, there is no need for a First Amendment exception to the statute. Jack Daniel’s relies in particular on a Supreme Court decision that allowed the United States Olympic Committee to enjoin the “Gay Olympics” even without proof of confusion. At bottom, Jack Daniel’s contends, the First Amendment need not provide elevated protection for speech that is confusing.

Jack Daniel’s offers a similar argument on the dilution statute. Again, it contends, the text of the statute is clear, providing an exception limited to “noncommercial” uses. Here, because the use was labeling a product with a famous mark for the purpose of profitable sales, Jack Daniel’s characterizes the lower court’s conclusion that those sales were “noncommercial” as almost a ridiculous rewriting of the text.

VIP’s argument, supported by the weight of numerous academic amici, does not directly engage with the contention by Jack Daniel’s that the First Amendment is not called into play by speech that is confusing. Rather, it presents its own simple and straightforward argument about a “popular brand’s attempts to … weaponize[e] the Lanham Act.” For VIP, the key to the case is that the toy is a parody. Because it is a parody, VIP contends, traditional rules about likelihood of confusion are largely irrelevant – the parody wouldn’t work unless users associated it with the mocked brand. From that perspective, the 9th Circuit’s “heightened scrutiny” test makes perfect sense, because it leaves the necessary space for parodic comment on “iconic alcohol brands’ self-serious bombardment of consumers with advertising.” VIP’s perspective on dilution is much the same. In its view, the dilution statute would violate the First Amendment if it were read to apply to parodies that poked fun at the branded product.

I expect that some of the justices will spend a lot of time at the argument exploring exactly what they might want to say about how the federal trademark statutes must bend to accommodate the First Amendment. I may be wrong in my impression, but I suspect that at the end of the day a large group of justices will have little sympathy for the notion that the First Amendment compels protection for a parody likening Jack Daniel’s to canine excrement.