Jack Daniel’s wins big in challenge to spoofing Bad Spaniels dog toy

Thursdays decision in Jack Daniel’s Properties v. VIP Products firmly rejected the use of the Jack Daniels trademarks by a manufacturer selling a line of dog toys that mock various beverage manufacturers. The one at issue here copies numerous elements of the famous Jack Daniels bottle. In the words of Justice Elena Kagan:

• The toy is about the same size and shape as an ordinary bottle of Jack Daniels;
• The faux bottle follows the original in using a black label with stylized white text and a white filigreed border;
• The toy has the product name (Bad Spaniels) in a like font and arch to those of the Jack Daniels bottle; and
• Old No. 2 On Your Tennessee Carpet replaces Old No. 7 Tennessee Sour Mash Whiskey.

All members of the court joined Kagans opinion finding that toy a condemnable infringement of the Jack Daniels marks.

Kagan rests her analysis on two basic points of trademark law, summarized emphatically at the beginning and reiterated at the end of her opinion. First, the basic purpose of a trademark is to identif[y] a products source (this is a Nike) and distinguis[h] that source from others (not any other sneaker brand). Second, the central purpose of the cause of action for trademark infringement in the federal Lanham Act is confusion, specifically, confusion about the source of a product or service. She quips: Confusion as to source is the bte noire of trademark law the thing that stands directly opposed to the laws twin goals of facilitating consumers choice and protecting producers good will, both of which depend on a reliable identification of the source of products.

Kagans treatment of the dispute flows directly from that foundation. First, for her the most important feature of the Bad Spaniels toy is the purpose for which it uses the Jack Daniels marks, as a designation of source for [its] own goods. Whatever protections parodies might have in other contexts, Kagan reasons that there can be no special First Amendment defense when the copied mark is used in that way.

She spends several pages more than a third of the entire opinion discussing the 1989 ruling in Rogers v. Grimaldi, in which the U.S. Court of Appeals for the 2nd Circuit rejected the effort of legendary movie star and dancer Ginger Rogers to block the use of the title Ginger and Fred by a movie about two fictional Italian cabaret performers. The lower court in this case thought that Rogers gave the dog toy a free pass because of the communicative aspects of the toy. The Supreme Court has not directly embraced (or rejected) Rogers, but Kagan rejects the lower courts treatment of it as completely out of step with the way other courts have understood it. In her view, the many lower courts adopting a First Amendment defense based on Rogers have (except in this case) never applied it to cases in which a trademark is used to designate a works source. Rather, they have confined it to case[s] in which a trademark is used to perform some other expressive function.

She offers the memorable example of the Barbie Girl song, which Mattel (the owner of Barbie trademarks) could not block because Barbie Girl did not suggest that the song was by Mattel: [A] consumer would no more think that the song was produced by Mattel than they would think that Janis Joplin and Mercedes Benz had entered into a joint venture when they heard Janis Joplin croon Oh Lord, wont you buy me a Mercedes Benz? Summarizing her perspective, Kagan concludes that whatever you make of Rogers and we take no position on that it has always been a cabined doctrine, limited to products that use the mark in a non-source-identifying way.

Having set that boundary on any defense based on Rogers or the First Amendment, Kagan reminds us that she has drawn that boundary from the doctrinal foundation she used to start her opinion. Circling back to that foundation, she quotes a leading treatises description of the central function of trademarks: to indicate the source of goods, and so to distinguish them from ones manufactured or sold by others. For readers who cant remember the bte noire of trademark from the opening pages of the opinion, she emphasizes that [t]he cardinal sin under the law is to undermine the ability reliably to indicate the source of goods, and reasons that confusion is most likely to arise when someone uses anothers trademark as a trademark rather than for some other expressive function. For the justices, the lower court was profoundly mistaken to believe that the First Amendment demanded protection for such a use. When a mark is used as a mark, the interest in free expression gets all the protection it needs by requiring the trademark owner to prove a likelihood of confusion.

The opinion closes with a brief rejection of a separate statutory ruling protecting the toy under a federal statute that prevents uses that dilute trademarks like those of Jack Daniels. That statute has an exception that protects competing uses if their use of the mark is noncommercial. The lower court here treated the use as noncommercial because it parodies and convey[s] a humorous message about Jack Daniels. Kagan finds that reading of the statute untenable, because the statutes protection for fair use is limited, explicitly, so that it does not apply for use as a designation of source for the persons own goods or services. Echoing the analysis in the main part of her opinion (about the Lanham Act), Kagan reasons that Congresss explicit statutory rejection of any protection use as a designation of source means that the use in question here squarely within that category cannot be protected from a suit by the trademark holder Jack Daniels.

The Supreme Court does not often decide cases focusing on core issues of trademark law, so the vigorous discussion of the importance of confusion here likely will be considered frequently by lower courts and in detail by scholars. For the observer, perhaps the most notable thing about the opinion is the muscular tone. As in other major intellectual property cases this term Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith for copyrights and Amgen Inc. v. Sanofi for patents come to mind the Jack Daniels court is much more assertive than it usually is in this area in offering bold and unqualified basic principles as a basis for its decision. In past years the justices often wrote with such a hesitant and guarded tone that lower courts and scholars would be frustrated in trying to discern any clear line of decision in the courts reasoning. That is not a problem with the central intellectual property cases of this term.