The Supreme Court holds that a trademark that humorously parodies another mark is not automatically entitled to First Amendment protection from Lanham Act liability.

In March, Polsinelli reported on the oral argument before the United States Supreme Court in the Jack Daniels’ Properties, Inc. v. VIP Products, LLC case. The Supreme Court issued its decision on June 8. The opinion favored Jack Daniels, in that the Court rejected VIP’s argument that the First Amendment overrode the Lanham Act in the context of a parody mark. But the Court emphasized that parody is still a factor that will weigh against finding a likelihood of confusion, signaling to VIP and other parodists that all may not be lost.

Jack Daniels owns trademarks related to its brand of Tennessee Whiskey, including its name, logo, and bottle shape. VIP makes and sells dog chew-toys branded “Bad Spaniel’s.” It is shaped like a Jack Daniel’s bottle and had a label reminiscent of Jack Daniel’s label. The toy made references to dog poop, for example replacing Jack Daniel’s “Old No. 7 Tennessee Sour Mash Whiskey” with “The Old No. 2 on your Tennessee Carpet.”

Not amused, Jack Daniel’s demanded that VIP cease the use of its branded Bad Spaniels chew toy.  VIP refused and litigation, under the Lanham Act, 15 U.S.C. §1125(a), ensued.

The district court, after a bench trial, held that there was a likelihood of confusion because consumers would believe that Jack Daniel’s originated, sponsored, or approved Bad Spaniel’s chew toy.  The court went to say that the confusion would lead to an association between Jack Daniel and dog poo that diluted the Jack Daniel’s mark.

The Ninth Circuit reversed, holding that the district court should never have gotten to a likelihood of confusion analysis because Bad Spaniel’s parody of Jack Daniel was expressive and therefore protected by the First Amendment, based on a Second Circuit decision called Rogers v. Grimaldi¹. Jack Daniel’s appealed, and the Supreme Court granted certiorari.

In the Supreme Court, both sides swung for the fences. VIP argued that Rogers meant that the First Amendment virtually always shielded a parody mark from Lanham Act liability. Jack Daniel’s argued that parody or expressiveness were not relevant to the Lanham Act, and that the only issue was likelihood of confusion.

As we predicted, the Supreme Court rejected both sides’ broad arguments. In a 9-0 opinion authored by Justice Kagan, the Court held that Rogers does not apply where the alleged infringer uses its mark “in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” Because VIP used its Bad Spaniel’s mark in that way, Rogers did not protect it. On the other hand, the Court made it clear that using a mark to parody or make fun of another mark is relevant to a confusion analysis, “because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.”²

The Court drew the line between where Rogers and the First Amendment would and would not protect a parody mark from possible Lanham Act liability. It first focused on the context and facts of Rogers – using actress Ginger Rogers’ name in the title of an “artistic work” (a Fellini movie) that implicated “First Amendment values” with only a “slight risk” of causing confusion about its source.³ Citing other cases involving the use of Barbie, Alabama football uniforms, Janis Joplin lyrics and Louis Vuitton bags, the Court limited Rogers to such artistic and non-confusing contexts.

But, citing cases involving Harley Davidson and Tommy Hilfiger marks (the latter involving a pet perfume named Timmy Holedigger), the Court held that when “trademarks are used as trademarks,” Rogers does not apply, and liability turns on a traditional likelihood of confusion analysis. Any other rule, the Court held, would allow the First Amendment to far too often overwhelm the Lanham Act.

The Court remanded the case back to the lower courts. In doing so, the Court emphasized that issues of humor, parody and expressiveness are relevant in assessing likelihood of confusion. So, all is not lost for VIP. The district court may well have to conduct a new trial, or at least reconsider its conclusion on likelihood of confusion in light of the Supreme Court’s guidance about the weight of parody in a confusion analysis: if a parody creates contrasts “so that its message of ridicule or pointed humor comes clear,” then it “is not often likely to create confusion.”⁴ And Justices Sotomayor and Alito’s concurrence warned lower courts not to give “uncritical or undue weight to surveys” in cases like this, because “cleverly designed surveys could also prompt confusion,” thereby handing “well-heeled brands with the resources to commission surveys” “an effective veto over mockery.”

So, while VIP lost this round, it will have a lot to talk about with the district court on remand. Stay tuned.

FOOTNOTES

¹ 875 F.2d 994 (2^nd Cir. 1989).

² Slip op. at 10.

³ Slip op. at 11.

⁴ Slip op. at 18.