Is Humorous Parody Trademark Infringement or Free Speech? The Supreme Court Wants to Know
I know the world of trademark law was already exciting enough already, but you should know, it’s about to be pure fire. By that I mean the Supreme Court has recently agreed to hear TWO – not one – but TWO trademark cases this term! So what’s going on? Isn’t trademark well-settled law? Nope. Nothing is well-settled law anymore. Let’s check out what the Justices are going to be evaluating. Here’s Part 2 of our Supreme Court review.
Jack Daniel’s Properties, Inc. v. VIP Products, LLC
In this case the justices have agreed to determine “(1) Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, 15 U.S.C. §1125(a)(1), or instead receives heightened First Amendment protection from trademark-infringement claims; and (2) whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act, 15 U.S.C. §1125(c)(3)(C).
Jack Daniels is suing VIP Products for trademark infringement and dilution for their dog toys that are shaped like Jack Daniels whiskey bottles. While the name Jack Daniels isn’t used, it is clear the bottle is attempting to replicate the famous Jack Daniels bottle with substituted words like “Bad Spaniels”, “The Old No. 2 on Your Tennessee Carpet”, “43% Poo by Vol.” and “100% Smelly”.
This case will be of great interest to many food manufacturers and apparel designers. I walked in a pet goods store once just because I was shocked by the fashion labels being replicated into dog toys, like “Chewy Vuitton.” But is a trademark infringed when the good is unrelated to the goods the trademark is registered for, and the logo or actual trademark is not used but implied? Are consumers likely to be confused about the source of dog toys that look like famous beverages and handbags? I lean toward these products amounting to trademark infringement, false designation, and dilution rather than a fair use of the First Amendment’s right to free speech. However, the Court will specifically be looking at whether or not the traditional test for likelihood of confusion applies to humorous or parody goods. If not the traditional likelihood of confusion test, what? Will the justices name factors or elements for specific non-related goods like this? And will this be applied narrowly, such as only to famous brands? Or will the Court simply call it free speech?
I doubt there will be anything simple about this analysis. I’m especially interested to see how part 2 of the question is evaluated. I would find it difficult to argue that the sales of these dog toys are “noncommercial.” While the commercial sales of dog toys are not in competition with the sales of whiskey, there is still a strong commercial purpose behind the dog toy design.
For a little more on what the justices will be looking at, here’s some of the specific U.S. Code sections involved:
“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.” 15 U.S.C. §1125(a)(1).
“Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition or of actual economic injury.” 15 U.S.C. §1125(c)(1)
I’ll be taking days off so I can tune into these oral arguments, so stay tuned for updates! If you can’t get enough of Supreme Court and trademark talk, check out Part 1 of our Supreme Court update here.
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Monica Ugliuzza, Esq.
Monica is an attorney with a practice dedicated exclusively to trademark law. Monica is the founder and owner of Creative Law Studio, a law firm with creative minds to best serve creative clientele.
Disclaimer: This blog/website is intended to be published for educational and entertainment purposes and to give readers a general idea of the law of trademark. This blog/website is not intended to give any specific legal advice or to target a specific person. Readership of this blog cannot create an attorney-client relationship between you and the publisher. This blog should never be used to substitute the seeking out of personal, legal advice. The discussion of an existing or potential trademark shall not be taken as an endorsement by creative law studio, nor shall the same be taken as an endorsement of creative law studio. The discussion of specific trademarks does not mean that creative law studio is a record attorney for such trademarks.