In Jack Daniels Properties, Inc. v. VIP Products LLC, (slip. op. No. 22-148, June 8, 2023), the United States Supreme Court reversed the Ninth Circuit, ruling that a “Bad Spaniels” dog toy designed to look like a Jack Daniels liquor bottle did not avoid trademark infringement merely because it was a parody.
VIP Products LLC (“VIP”) makes a squeaky chewable dog toy with a “Bad Spaniels” logo that looks like a bottle of Jack Daniel’s whiskey. The tag line on the dog toy is “The Old No. 2 On Your Tennessee Carpet” with fine print that reads “43% poo by volume” and “100% smelly.” Notably, VIP has a line of similar dog toys parodying beverage brands that includes Dos Perros, Smella Arpaw and Doggie Walker, and has registered trademarks for them.
Jack Daniels Properties, Inc. (“Jack Daniels”) was the first beverage brand to challenge VIP’s use. VIP preemptively commenced a declaratory judgment suit in response, and moved for summary judgment of no trademark infringement and no trademark dilution. The district court denied VIP’s motion, rejecting VIP’s argument that parody protected its use, because VIP uses “Bad Spaniels” as a trademark to identify the source of the dog toy.
The Ninth Circuit reversed, holding that the Rogers test applies to shield the use as an “expressive work” that “communicates a humorous message”. The Rogers test originated from a case involving a Federico Fellini movie entitled “Fred and Ginger” about two fictional dancers who imitated the famous duo (Rogers v. Grimaldi, 875 F. 2d 994 (2d Cir. 1989)). There the Second Circuit permitted the use of Ginger Rogers’s name in the title of an artistic work as an “expressive element” that neither indicated the source of the movie, nor “explicitly mislead” consumers.
But the Supreme Court disagreed with the Ninth Circuit, ruling that the Rogers test does not apply when a trademark is used to distinguish a product from others. VIP uses “Bad Spaniels” exactly in that way – as the name of the dog toy, which could mislead consumers as to its source. Contrast this case with Louis Vuitton Mallatier S. A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012), in which a character in the movie The Hangover: Part II made reference to his “Louis Vuitton” luggage. In that case, reasoned the Court, Rogers applied because the “Louis Vuitton” trademark was not being used to identify the source of the movie. Nor was the “Barbie” trademark being used to identify the source of a song entitled “Barbie Girl” in Mattel, Inc. v. MCA Records, Inc., 296 F. 3d 894.
Parody, the Court ruled, cannot act as a shield for commercial use of a trademark that is used to identify the source of a product. Parody can, however, affect the likelihood of confusion analysis. Citing Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, (1994), a case in which 2 Live Crew did a rap version parodying Roy Orbison’s “Pretty Woman”, Justice Kagan stated for the majority: “Self-deprecation is one thing; self-mockery far less ordinary”. Consequently, consumers seeing the “Bad Spaniels” dog toy that openly mocks the whiskey will not necessarily believe that Jack Daniels is the source of the dog toy. The Court remanded the case to the district court to make that likelihood of confusion determination. It also dispensed with VIP’s dilution defense on the basis that the Lanham Act’s “fair use” exception to dilution contains its own exception where -- as here -- a mark is used “as a designation of source for the person’s own goods or services.” 15 U.S.C. § 1125(c)(3)(A).
While the Supreme Court clarified that parody is not a special category of trademark use that is entitled to protection, there remains a role for parody in trademarks. A trademark can be mocked as long as it is not used to distinguish a product, or if it is, then if the parody is done in such an outlandish way that consumers are unlikely to believe the trademark owner to be its source. Indeed, it remains to be seen whether that will be the eventual outcome here. Mintz’s trademark attorneys are experienced in advising clients on the use of third party trademarks in a commercial context, including for parody and other expressive purposes, and can assist with appropriate strategies for such use.