James W. Pfister: Jack Daniel’s versus Bad Spaniels
On June 8, Justice Elena Kagan announced the Supreme Court decision in Jack Daniel’s Properties Inc. v. VIP Products LLC. VIP made a dog-chew toy which greatly resembled a bottle of Jack Daniel’s named Bad Spaniels. The motivation was parody and humor. Could VIP do this under the trademark law, the Lanham Act? Is such expression protected by the First Amendment?
The comparison was as follows: on the toy, the arched Jack Daniel’s name became “Bad Spaniels” and the phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” became “The Old No. 2 On Your Tennessee Carpet.” The bottle was square with white twirling lines on it. The toy looked like the Jack Daniel’s bottle.
Was this a trademark “infringement” or a dilution of the Jack Daniel’s mark? Or was it protected by the First Amendment principle articulated in this area of law as the “Rogers test,” based on the case Rogers v. Grimaldi, 875 F. 2d 994, 2d Cir. 1989?
A trademark shows the source of a product, such as Nike’s graphic design, or Hershey’s Kiss with its distinctive shape and wrapping. A trademark can be registered or unregistered. The key purpose of the Lanham Act is to prevent confusion as to the source of the product, i.e., who made it. This helps both the consumer and the owner of the trademark.
Jack Daniel’s did not appreciate the humor in the toy. It sent a demand letter to VIP that they stop selling the product. VIP responded by bringing the lawsuit here for a declaratory judgment that the toy did not infringe or dilute Jack Daniel’s trademarks. They argued that the First Amendment protects expressive works, according to the Rogers test. The issue of confusion was not relevant. Regarding dilution, it was “fair use.”
The District Court rejected VIP’s arguments, because of source identification: that VIP was using the Jack Daniel’s bottle for its own trademark, creating confusion as to who made the product, the main thing the Lanham Act was designed to avoid. The Rogers test did not apply. Regarding dilution, the District Court thought the image of “canine excrement” would be injurious to the Jack Daniel’s trademark.
However, the Ninth Circuit of the Court of Appeals reversed, relying on the Rogers test that Bad Spaniels was an “expressive work” communicating a humorous message protected by the First Amendment.
Jack Daniel’s appealed to the Supreme Court. The court vacated the judgment of the Ninth Circuit. The question was: “Should the company have had to satisfy the Rogers threshold test before the case could proceed to the Lanham Act’s likelihood of confusion inquiry?” (Majority opinion). The answer was “no.” Since the infringer used another’s trademark “as a designation of source for the infringer’s own good,” there was a likelihood of confusion. (Ibid.). In the original Rogers case, Ginger Rogers sued two Italian dancers who imitated Ginger Rogers and Fred Astaire. There was no confusion as to the source of the product. It was protected expressive conduct.
To the extent that the trademark is confusing regarding the product’s source, the law protects the consumers and the trademark owners. (Ibid.). This is a limit on the First Amendment. Regarding dilution, “the fair use exclusion has its own exclusion: It does not apply when the use is ‘as a designation of source for the person’s own good or services’.” (Ibid.). The diluter will be subject to liability under these circumstances.
The court made clear that this was a narrow ruling where the Rogers test did not apply. More must be done to understand the full scope of the Rogers expressive content protection. Justice Neil Gorsuch wrote in concurrence that the Rogers test should be handled with care by the lower courts. The Court has not here fully dealt with it. “All this remains for resolution another day … and lower courts should be attuned to that fact.” (Gorsuch, concurrence).
The policy is that a person cannot use another’s trademark as a source-identifier for one’s own product, regardless of the First Amendment. The goal is “to ensure that consumers can tell where goods come from.” (Majority opinion). Jack Daniel’s won regarding the principles for which it argued. Cheers!
James W. Pfister, J.D. University of Toledo, Ph.D. University of Michigan (political science), retired after 46 years in the Political Science Department at Eastern Michigan University. He lives at Devils Lake and can be reached at jpfister@emich.edu.
This article originally appeared on The Daily Telegram: James Pfister: Jack Daniel’s versus Bad Spaniels
