Although parody, like satire, is generally recognized as protected speech under the First Amendment, the Supreme Court decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ____ (2023), demonstrates that this is not always so when it comes to trademarking.
The case, which was unanimously decided in an opinion written by Justice Elena Kagan, arose from a suit brought by Jack Daniel’s, the manufacturer of a vintage Tennessee whiskey that comes in a distinctive square-shaped bottle with an equally distinctive black and white label. Jack Daniel’s had sought an injunction against VIP Products, which was selling a squeaky, chewable dog toy, in which the name “Jack Daniel’s” was changed to “Bad Spaniels” and “Old No. 7 Brand Tennessee Sour Mash Whiskey” became “The Old No. 2 On Your Tennessee Carpet.”
Lanham Act designed to protect trademarks
With obvious relish for such an unusual set of facts, Kagan began by observing that “This case is about dog toys and whiskey, two items seldom appearing in the same sentence.” She focused on the Lanham Act, which is designed to protect trademarks. A U.S. district court had initially accepted Jack Daniel’s argument that the VIP toy had both infringed upon and diluted the Daniel’s trademark by leading consumers to believe that the company had produced the toy and, in Kagan’s words, by “associating the famed whiskey with . . . dog excrement.”
In overturning this finding, the 9th U.S. Circuit Court of Appeals had bypassed the Lanham Act on the basis that First Amendment protection for an “expressive work,” such as the parody in question, trumped the law. In overturning the 9th Circuit decision, Justice Kagan and her colleagues found that “The infringement issue is the more substantial” because VIP has essentially “used a trademark as a [its own] trademark.”
In reviewing the Lanham Act, Kagan observed that it broadly protected words or symbols that distinguish one good from another: “It encompasses words (think ‘Google’), graphic designs (Nike’s swoosh), and so-called trade dress, the overall appearance of a product and its packaging (a Hershey’s Kiss in its silver wrapper).” Moreover, its “’primary’ function” was “to identify the origin or ownership of the article to which it is affixed.”
The law serves to protect “consumers and producers alike,” and enables consumers to select the goods and services they prefer. The company owning the trademark, and not would-be competitors, should reap its benefits. The law thus seeks to avoid deception by producers or confusion on the part of consumers. The law further created “a cause of action for the dilution of famous marks, which can succeed without likelihood of confusion.” The law did protect any “’noncommercial uses of a mark” as well as “’fair use’ of a mark in connection with . . . parodying, criticizing, or commenting upon the famous mark owner or [its] goods.” Such exclusions, however, do not apply “if the defendant uses the similar mark as a mark.”
Illustrating with color pictures of the Jack Daniel’s bottle and the squeaky toy, while suggesting that many readers might view the former simply by checking out their own liquor supplies, Kagan proceeded to show the outward similarities of the two trademarks. She argued that these were more prominent that the disclaimer that “This product is not affiliated with Jack Daniel Distillery.”
VIP and lower courts evoke Rogers Test
In making its case, VIP Products had invoked the Rogers Test, from the case of Rogers v. Grimaldi, 875 F. 2d 994 (CA2 1989), to argue that Jack Daniel’s motion for a summary judgment should be granted only in cases where a plaintiff could establish “that the challenged use of a mark ‘has no artistic relevance to the underlying work’ or that it ‘explicitly misleads as to the source or the content of the work.’” It further argued that, because the new label was a parody, VIP had engaged in “fair use” of its mark.
The district court had initially rejected VIP Products’ argument only to be reversed by the 9th Circuit Court, which thought the lower court should have considered whether the product was protected as an “expressive work” and by the “noncommercial use” provision of the Lanham Act. When the case was remanded, the district court found that Jack Daniel’s could not meet the Rogers test, and the circuit court affirmed.
Supreme Court: Rogers Test not applicable in Jack Daniel’s case
Indicating that it was not taking a specific stance on the Rogers Test, the Supreme Court argued that the test did not come into play “when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” Contrasting this case to other lower court cases that had invoked the Rogers test, Kagan noted that in those cases individuals had simply mentioned the names of products like Barbie dolls or Louis Vuitton luggage in passing. Kagan believed that the likelihood of consumer confusion was far greater in this case. The Rogers test should be “cabined” to cases “involving ‘non-trademark uses’—or otherwise said, cases in which ‘the defendant has used the mark’ at issue in a ‘non-source-identifying way.’”
Kagan argued that this was consistent with the “primary mission” of trademark laws to “’indicate the source’ of goods, and so to ‘distinguish’ them from ones ‘manufactured or sold by others.’” Citing a lower court decision, Kagan observed that “Whatever first amendment rights you may have in calling the brew you make in your bathtub ‘Pepsi’ are ‘outweighed by the buyer’s interest in not being fooled into buying it.’”
Kagan found that VIP Products was effectively using its resemblance to the Jack Daniel’s trademark to sell its products. Moreover, the “fair use” exclusion “does not apply when the use is ‘as a designation of source for the person’s own goods or services.’ In that event, no parody, criticism, or commentary will rescue the alleged dilutor. It will be subject to liability regardless.”
Justice Sonya Sotomayor authored a brief concurring opinion, joined by Justice Samuel Alito, warning that the reliance upon consumer surveys in such cases should be undertaken with great caution. Justice Neil Gorsuch authored another caveat, joined by justices Clarence Thomas and Amy Coney Barrett, reiterating that the constitutional basis for the Rogers Test was problematic and that lower courts should apply it with care.
It should be noted that in Matal v. Tam (2017), the court upheld the right of a musical group to trademark its name “The Slants” even though the term, which was sometimes used pejoratively to designated Asian Americans, would be offensive to some.
John R. Vile is a professor of political science and dean of the Honors College at Middle Tennessee State University.