Trademark holders face a common dilemma in deciding whether and how to respond when their marks are used for comic effect, particularly when the humor is done at their expense for another’s commercial gain. Instinctively, trademark holders want to protect their marks, often with an aggressive legal response. But that approach is not always wise and is now less likely to succeed, at least in one appellate Circuit, following a recent case involving the well-known Jack Daniel’s brand.
The case involves Arizona-based VIP Products, which makes and sells dog chew toys with branding that plays on well-known alcoholic beverage and soda brands. According to VIP, its dog toys reflect “on the humanization of the dog in our lives” and comment on “corporations that take themselves very seriously.”
In July 2014, VIP introduced the “Bad Spaniels” toy, pictured below, which mimics the Jack Daniel’s whiskey bottle with some bathroom humor: “Old No. 2 on your Tennessee Carpet,” “43% POO BY VOL,” and “100% SMELLY.”
Shortly after launch, Jack Daniel’s sent VIP a cease-and-desist letter. In response, VIP – no stranger to litigation – sued in Arizona federal court, seeking a declaration that Bad Spaniels did not infringe or dilute Jack Daniel’s trademark or trade dress rights. Jack Daniel’s countered with federal and state law claims for trademark and trade dress infringement and dilution of its name and whiskey bottle design.
On summary judgment, the district court rejected VIP’s defense that its Bad Spaniels dog toy merited heightened First Amendment protection as parody under the Second Circuit standard set in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). See VIP Prods., LLC v. Jack Daniel’s Props., 2016 Dist. LEXIS 13387 (D. Ariz. Sept. 27, 2016).
Rogers involved a claim by actress Ginger Rogers that a film titled Ginger and Fred violated the Lanham Act by creating the false impression that she sponsored the movie. The Second Circuit ruled against Rogers on the basis that “the expressive element of titles requires more protection than the labeling of ordinary commercial products.” The court held that infringement would not lie unless “the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”
In Jack Daniel’s, the district court reasoned that Rogers was limited to titles of “artistic expression,” such as movies, plays, books, and songs, not to “[promotion of] a somewhat non-expressive, commercial product” like Bad Spaniels. Following this ruling and a four-day bench trial, the court entered judgment in favor of Jack Daniel’s for infringement and dilution.
On appeal, the Ninth Circuit reversed the district court, ruling that Bad Spaniels deserved heightened First Amendment protection as parody and crediting VIP’s testimony that its dog toys poke fun at serious businesses. See VIP Prods. LLC v. Jack Daniel’s Props., 953 F.3d 1170 (9th Cir. 2020). According to the court, while the dog toy was “surely not the equivalent of the Mona Lisa,” it was an “expressive work” because it communicated a “humorous message.” On this basis, the Ninth Circuit remanded the case, instructing the lower court to apply the Rogers test.
Before that could happen, Jack Daniel’s filed a petition with the U.S. Supreme Court, asking it to review the case. It argued that VIP’s dog toy was not entitled to heightened protection and should be subject to a standard likelihood of confusion test used for parody in other appellate Circuits and applied by the district court in this case. Several amici filed briefs in support of Jack Daniel’s.
VIP opposed, and the Supreme Court recently denied the petition without comment, leaving the decision as the law of the Ninth Circuit.
What does this mean for trademark holders? First, before taking legal action, be sure to consider this sage advice given by courts: “In some cases… it is better to accept the implied compliment in a parody and to smile or laugh than it is to sue.” Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425, 445 (S.D.N.Y. 2016).
Second, if you do pursue legal action, be sure to consider jurisdiction, as the law of the Circuit could matter. For example, to succeed on an infringement claim involving parody in the Ninth Circuit under Jack Daniel’s, a brand owner must prove the defendant’s use of the mark is either “not artistically relevant” or “explicitly” misleads customers in addition to prevailing on the likelihood of confusion factors. Meanwhile, the Second, Fourth, Fifth, Seventh, Eighth, and Tenth Circuits – as well as the Trademark Trial and Appeals Board – do not apply Rogers, but account for the humor within the standard likelihood of confusion test applied to other products. The First, Third, Sixth, and Eleventh Circuits have yet to rule definitively on this issue.
So before leaping into action, be sure to watch where you step!