Jack Daniel's and the "Bad Spaniels" Dog Toy: The Supreme Court Leaves Trademark Litigants Something to Chew On

trademark_liquor-dog_dburtonIn Jack Daniel's Properties, Inc. v. VIP Products, LLC, No. 22-148, 599 U.S. ___ (2023), the Supreme Court unanimously ruled that a First Amendment "filter" was inapplicable to a claim of trademark infringement by Jack Daniel's against a parody product, a dog chew toy marketed under the name "Bad Spaniels."  The main takeaway from the case is that parody and humor are not get-out-of-jail free cards when a product evokes someone else's trademark.  However, the narrow ruling in Jack Daniel's leaves for a later day at least two important issues, as explained at the end of this article.

The alleged infringer in Jack Daniel's, VIP Products, sells dog toys called "Silly Squeakers." Slip op., p. 6.   "Most of the toys in the line are designed to look like – and to parody – popular [alcoholic] beverage brands": Dos Perros instead of Dos Equis, Smella Arpaw instead of Stella Artois, Bad Spaniels instead of Jack Daniel's.  Id.  The Bad Spaniels toy mimics the colors and text font on the label of a Jack Daniel's bottle, and riffs on the slogans on the Jack Daniel's bottle, e.g., "43% poo by vol." instead of "40% alc. by vol."  Id. at 7.  VIP Products, it seems, aspires to the same level of humor as "Wacky Packages," the stickers (fondly remembered by many who were grade school-age in the 1970s) that parodied, through illustrations, various real products:  "Weakies" cereal instead of Wheaties; "Crust" toothpaste instead of Crest; "Jail-O" instead of Jell-O, and so on.

In the case of the Bad Spaniels squeak toy, Jack Daniel's viewed it as a trademark infringement, and sent VIP a cease-and-desist letter.  Slip op., p. 8.  VIP responded by suing for a declaratory judgment of non-infringement.  Id.  The Ninth Circuit Court of Appeals held that Jack Daniel's infringement claim was "subject to the threshold Rogers test because Bad Spaniels is an 'expressive work,'" id. at 9, and remanded to the district court to determine whether the claim passed the test; however, Jack Daniel's instead took the case to the Supreme Court.

The Supreme Court noted that the touchstone, or "keystone," id. at 4, for determining trademark infringement under the federal Lanham Act is whether the alleged infringement will cause likelihood of confusion among consumers.  Yet, "[t]he so-called Rogers test requires dismissal of an infringement claim at the outset unless the complainant can show . . . [either] that the challenged use of a mark 'has no artistic relevance to the underlying work' or that it 'explicitly misleads as to the source of the content of the work.'"  Id. at 8 (quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)).  As VIP argued, if the infringement allegations fail the Rogers test, "the likelihood-of-confusion issue [becomes] irrelevant."  Slip op., p. 8.

Therefore, the question for the Supreme Court as to trademark infringement was "[s]hould the company [Jack Daniel's] have had to satisfy the Rogers threshold test before the case could proceed to the Lanham Act's likelihood-of-confusion inquiry?"  Id. at 10.  The Court ruled that the Rogers test, by which "we mean any threshold First Amendment filter," id. at p. 10 n.1, has no "merit" when a trademark is used "in the way the Lanham Act most cares about: as a designation of source for the [alleged] infringer's own goods."  Id. at 10.  Although VIP argued that, because its humorous products are "expressive," they are protected from infringement liability, the Court ruled that VIP is using "Bad Spaniels" as a true trademark, "to designate the source of its own goods."  Id. at 2.  The Court called such a use "the heartland of trademark law."  Id.  A trademark -- for example, Nike's swoosh design -- typically "identifies a product's source (this is a Nike) and distinguishes that source from others (not any other sneaker brand). . . . In other words, a mark tells the public who is responsible for a product."  Id. at 5.  Preventing confusion among the public as to the source of goods is the primary goal of trademark infringement law.  Id. at 4.

Rogers has always been a "cabined doctrine" – "the Rogers test has applied only to cases . . . in which 'the defendant has used the mark' at issue in a 'non-source-identifying way'" (id. at 13 (citation omitted)), "solely to perform some other expressive function."  Id. at 11.  Examples from real cases of "some other expressive function" cited by the Court included a reference to the Barbie trademark in the song "Barbie Girl," id. at 11, and a character in the movie "The Hangover: Part II" referencing his "Lewis" Vuitton luggage.  Id. at 12.  In neither case was the alleged infringer using the trademark as a source identifier.

If merely having any expressive content was enough to invoke Rogers, then "the Rogers exception would become the general rule," id. at 16, insulating from liability trademark source-identifying uses that cause confusion among consumers, which is contrary to the purpose of trademark law.  The Court expressly approved of the summary of the law in Yankee Publ’g, Inc. v. News American Publ’g, Inc., 809 F. Supp. 267 (S.D.N.Y. 1992), that "'trademark law generally prevails over the First Amendment' when 'another's trademark' (or a confusingly similar mark) is used . . . as a means of 'source identification.'"  Slip op., p. 17 (quoting Yankee, 809 F. Supp. at 276).

The Court provided a balm for would-be parodists, however, by noting that, even without a "filter," the plaintiff still must prove likelihood of confusion by consumers as to the source of the goods. In the case of Bad Spaniels, clearly, "VIP uses the marks at issue in an effort to 'parody' or 'make fun' of Jack Daniels," and it should be difficult to show confusion as to the source of a parody product, since "consumers are not so likely to think that the maker of a mocked product is itself doing the mocking."  Slip op., p. 10.  If, in fact, it is apparent that there is a lack of confusion, even where the defendant is using the offending trademark to identify source, then a Rule 12(b)(6) dismissal should follow.  Id. at 15 n.2 (not "every infringement case involving a source-identifying use requires full-scale litigation. . . . If, in a given case, a plaintiff fails to plausibly allege a likelihood of confusion," dismissal is appropriate).

Also lessening the effect of the ruling on parody products is that, post-Jack Daniel's, alleged infringers will not be so bold as to admit that the allegedly confusing use of a trademark is a source-identifying use, which is what VIP Products did in its declaratory judgment complaint. "VIP alleged that it both 'own[s]' and 'use[s]' the 'Bad Spaniels' trademark and trade dress for its durable rubber squeaky novelty dog toy.'"  Id. at 17 (quoting the Complaint).  Thus, VIP "conceded" that it used the Bad Spaniels trademark "as source identification of its dog toy."  Id.  Later in the litigation, VIP tried to backpedal, but, just like on a game show, the judges said they had to accept the first answer.  Id. at 17-18.  Presumably, future litigants will avoid admitting that the challenged use identifies a source, and rather will argue that it is purely a Wacky Packages-type parody product (although, interestingly, the Internet article linked earlier says that some Wacky Packages in the initial release were not reprinted, due to objections by trademark owners, e.g., the "Moron Salt" sticker was dropped after a cease-and-desist letter from Morton Salt).

Lastly, the narrowness of the ruling in Jack Daniel's leaves at least two important questions unanswered.  First, the Court stated that its ruling means that First Amendment protection for "free expression" is absent "[w]hen a mark is used as a mark (except, potentially, in rare situations)."  Id. at 17 (emphasis added).  It is unclear what those potential, "rare" situations would be.  Surely, though, at some point, a litigant will say its trademark is core First Amendment expression that should be permitted even if there is a likelihood of confusion among consumers, and courts will have to confront that issue.

Second, as the Court acknowledged, it left open the question of whether the Rogers test is sound doctrine at all. It merely ruled that the test did not apply when the challenged mark is used as a designation of source, "[w]ithout deciding whether Rogers has merit in other contexts."  Id. at 10.  In a concurrence, Justice Alito, joined by Justices Thomas and Barrett, noted pointedly that "it is not entirely clear where the Rogers test comes from – is it commanded by the First Amendment, or is it merely gloss on the Lanham Act . . . ?"  He also noted that "the Solicitor General raises serious questions about [Rogers]."  In fact, the Brief of the United States as Amicus Curiae (p. 28) argued that a threshold First Amendment test is never needed when determining trademark infringement: "[t]o the extent that using the marks to identify goods in commerce is viewed as a form of speech, the First Amendment permits the regulation of such speech when the Act's likelihood-of-confusion standard is satisfied." At least three Justices may agree with that statement, but that is another issue that will have to be addressed by Jack Daniel's' progeny.

About The Author

Don Burton | Faruki Attorney