Trademark Law is Not Going to the Dogs
An update on the Bad Spaniel’s Silly Squeaker dog toy case
A few articles ago, we wondered whether trademark law was going to the dogs. The Supreme Court has now ruled that it is not. Or at least it decided that the Bad Spaniel Silly Squeaker Toy doesn’t have a first amendment right to poke fun at Jack Daniels’ bottle.
Let’s revisit the background of the case for a minute.
Background
Jack Daniels’ whiskey bottle is famous. To quote Justice Kagan, if you want to see what the bottle looks like “retrieve a bottle from wherever you keep liquor; it’s probably there) . . .”
If you don’t have one, here is the Supreme Court’s decision. Scroll down a few pages to see a picture of the bottle. https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf
VIP is not as famous. It makes dog toys. Dog owners usually have a sense of humor about dog stuff. So, they are likely to think it’s funny to take a famous thing like a Jack Daniel’s bottle and turn it into a dog toy, complete with a squeaker. And so was born the “Bad Spaniels Silly Squeaker” dog toy.
The toy is in the shape of a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey. But it’s a chew toy. To add to the fun, VIP uses some doggie humor. So, for the squeaker toy, “Jack Daniel’s” is replaced with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and alcohol content descriptions with “43% POO BY VOL.” and “100% SMELLY.” Lest anyone think Jack Daniels was behind all this doggie humor, VIP put a label on the toy that said, “product is not affiliated with Jack Daniel Distillery.”
You can find a picture of the toy in the Supreme Court’s decision. Click https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf and scroll down.
Most dog lovers will see the humor in VIP’s approach. But Jack Daniels apparently takes its whiskey and name more seriously than that. It demanded that VIP “cease all further sales of the Bad Spaniels toy.” That’s the way trademark lawyers put things when they really mean business.
Seeing that Jack Daniel's really meant business, VIP took the matter right to federal district court in Arizona. It asked the court to declare that the Bad Spaniels toy “does not infringe or dilute any claimed trademark rights” of Jack Daniel’s and that Jack Daniel’s trade dress and bottle design are not entitled to trademark protection. It also asked the court to cancel the mark Jack Daniel’s had registered for its bottle design.
The district court rules
The court ruled that Jack Daniel’s trade dress and bottle design were entitled to protection. That left Jack Daniel’s claims of dilution by tarnishment and whether Jack Daniels could establish the customer confusion needed to establish trademark infringement. After a bench trial, Jack Daniels won on both its trademark infringement and dilution claims.
Recall that trademark law protects the value of famous marks by preventing trademark dilution even without confusion. Tarnishment is one flavor of dilution. It harms the mark by portraying the infringed mark in a negative light. (Like, say, associating it with “dog poo.”) From now on, I think we will be able to refer this case as a textbook example of dilution by tarnishment.
The court enjoined VIP from making or selling its Bad Spaniels dog toy.
The Ninth Circuit disagrees
The Ninth Circuit reversed the decision against VIP.
It did agree that Jack Daniel’s had trademark and trade dress rights. But, where an expressive work is involved, trademark rights must give way to First Amendment rights. So, a trademark owner can establish infringement of an expressive work only if the plaintiff shows that the defendant’s use of the mark is either (1) “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.” This is known as the Rogers test, named after Rogers v. Grimaldi, 875 F. 2d 994, 999 (2d Cir. 1989).
But is a doggie chew toy, sold to make a profit, an expressive work? Yes it is, said the court. To be an expressive work, the work – in this case the chew toy – just needs to communicate ideas or express a point of view. The court conceded that the Bad Spaniels Silly Squeaker” dog toy wasn’t exactly the Mona Lisa. But it was enough that the toy had a “humorous message. ” It used word play to alter the serious phrase that appears on a Jack Daniel’s bottle— “Old No. 7 Brand” — with a silly message — “The Old No. 2.”
The Ninth Circuit said it doesn’t matter that the dog toy was sold commercially. After all, most books and movies – most or all of which are expressive works – are sold commercially. Jack Daniel’s didn’t make the showing necessary to prove infringement by an expressive work, so its trademark claim failed.
The court made short work of the dilution by tarnishment claim. Where a work is “non-commercial” in nature, a claim for dilution by tarnishment cannot survive. And a work can be “non-commercial” even if it is used to sell a product. If it does more than propose a commercial transaction, and contains some “protected expression,” it qualifies as non-commercial. The Bad Spaniel Silly Squeaker used Jack Daniel’s bottle design and trade dress to “convey a humorous message.” That was good enough to foreclose a claim for dilution by tarnishment.
Enter the Supreme Court
I’m not sure whether the Supreme Court has a less-developed sense of humor than the Ninth Circuit or not. But it had a different view of trademark law – at least when it comes to squeaky dog toys
I can’t explain the Court’s view better than Justice Kagan did. She said the threshold consideration of the expressive use of a mark . . .
is not appropriate when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection. The dilution issue is more simply addressed. The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products.
So much for the First Amendment defense. The First Amendment does not trump federal trademark rights.
Does that mean there is no First Amendment protection anymore for trademarks use in expressive works? No. Justice Kagan explained:
Today’s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the “noncommercial use” exclusion goes. On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying. It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function. The Lanham Act makes that fact crucial its effort to ensure that consumers can tell where goods come from.
The Court did not reach the issue of consumer confusion because the Ninth Circuit didn’t. Finding the claim was barred by the First Amendment, it didn’t need to get to what is usually the main issue in a trademark case: Is the use of the mark likely to create confusion as to the product’s source? It didn’t get to trademark dilution either.
The Court remanded the case to the courts below for further decision in light of its guidance.
By the way, the case is well worth reading for Justice Kagans succinct lesson in trademarks 101. Here is the link again: https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf
What’s the big deal?
Is this a big moment in the history of trademark law? Probably not, but it’s not nothing either.
For source identifying trademarks on products, the Rogers defense is no longer available. That is, the First Amendment does not trump trademark law for such disputes.
Had the Supreme Court ruled the other way, the Rogers defense would be available in many more trademark cases than it now is. That would have been a pretty big deal.
Trademark lawyers will have to stick with the familiar notions of likelihood of consumer confusion and dilution of famous marks when evaluating their clients’ rights and defense in cases involving source identifying marks on products.