The Supreme Court’s analysis of a dispute over a pun-laden dog toy will reach beyond Jack Daniel’s trademarks and may lead to new rules for trademark use in expressive works—and what counts as such a work.
Jack Daniel’s Properties Inc. convinced the high court to review an appellate reversal that found a whiskey bottle-shaped dog toy labeled “Bad Spaniels” constitutes an expressive work and non-infringing parody. The whiskey maker—along with the American Intellectual Property Association and International Trademark Association—argues that the US Court of Appeals for the Ninth Circuit extended a test for trademark uses in expressive works past the breaking point, and that new guidance is desperately needed.
The court will dissect the nature and applicability of the Rogers test, which balances trademark law with First Amendment concerns and allows mark use in an expressive work without the owner’s permission if it’s artistically relevant and not explicitly misleading. It’s been treated as a threshold matter that, if cleared, ends disputes without the need to analyze the likelihood of consumer confusion, the usual benchmark for trademark infringement.
Potential outcomes vary widely. The court could affirm extending the Rogers test’s low bar to an array of products. Alternatively, it could narrow the test and force sellers of myriad allegedly infringing products to survive a potentially costly confusion analysis to prove they’re not deceiving consumers.
AIPLA President Patrick J. Coyne of Finnegan Henderson Farabow Garrett & Dunner LLP said courts should apply a confusion analysis to accused commercial products, not “give a hall pass if there’s a minor level of humor.” The Ninth Circuit’s reasoning would leave brand owners powerless to address consumer confusion and their brands being tarnished, he said.
“All I have to do to infringe someone’s trademark is add an element of humor and get immunity,” Coyne said.
But trademark law was designed to protect consumers from fraud, and the Bad Spaniels case doesn’t approach anything so pernicious, said Harvard intellectual property professor Rebecca Tushnet, who authored a brief opposing Jack Daniel’s unsuccessful 2020 Supreme Court bid. She said there’s no meaningful legal distinction between expressions printed on a canvas, newspaper, or dog toy.
“The utility of Rogers is making it easy to end these cases before people get intimidated out of speaking, cases they would have easily won on the merits anyway,” Tushnet said. “The problem with Jack Daniel’s framing of the case is that it says there’s some sort of category called a commercial product. That’s not true, at least as far as First Amendment law.”
Defining Expressive Works
The Rogers test was created in the Second Circuit’s 1989 Rogers v. Grimaldi decision, which found a movie title, “Ginger and Fred,” didn’t infringe Ginger Rogers’ right of publicity. Several circuits have adopted and built on he testt, while none has expressly rejected it.
The Supreme Court has yet to weigh in on the test’s validity. Its recent forays into the relationship between trademark law and the First Amendment came in the context of registering vulgar and disparaging marks, not trademark infringement.
The Ninth Circuit deemed the dog toy—which replaced “Jack Daniel’s” label wording with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and “Tennessee Sour Mash” with “On Your Tennessee Carpet”—an expressive work to which Rogers should apply. The court said that the toy comments humorously on Jack Daniel’s trade dress, and the fact that VIP Products Inc. “chose to convey this humorous message through a dog toy is irrelevant.
That’s where the court erred, according to intellectual property attorney Vijay Toke of Rimon PC, who authored INTA’s brief encouraging the high court to hear the case.
“Our biggest issue is not necessarily with how the Ninth Circuit applies the Rogers test, but when the Ninth applies the Rogers test,” Toke said. “As far as I can tell, the Ninth hasn’t declined to apply Rogers to any case this decade.”
INTA, like AIPLA, neither takes a position on whether the Bad Spaniels toy crossed the line, nor refutes the validity of the Rogers test. But Toke said using Rogers as a threshold test means “no trademark owner could prevail unless there was blatantly egregious conduct.”
“That’s too high a bar,” he said.
The organizations’ briefs highlighted other circuits’ refusals to apply the Rogers test to alleged infringement beyond traditional expressive works. INTA’s brief proposed a standard for deciding whether an item is an expressive work to which Rogers could apply: strip the expression and see if the product retains its primary function. Or as Toke put it, “Are you left with that same product, or are you left with nothing?”
“Here, you’d have a dog toy. The purpose of a dog toy is to be squeaky and be something the dog wants to play with,” Toke said. “To us that’s not an expressive work. The Ninth Circuit seems to say everything is an expressive work.”
Even putting an undeniably expressive work on a product—for example a painting that incorporates a trademark on a sneaker—wouldn’t trigger a Rogers analysis under this standard, Toke said. That infringement defendant would then have to litigate a circuit court’s multi-factor analysis to determine whether it would confuse consumers.
Tushnet rejected INTA’s premise, arguing it’s “dumb as to what sells that squeaky toy.” As with the dog toy, stripping the expression from a printed New York Times still leaves the paper, and in both cases the printed expression was what drove people to buy the product, she said.
‘Someone Will Misunderstand Everything’
Tushnet also said the Rogers test doesn’t allow fraud, and confusion in the margins rightly takes a backseat to free speech concerns.
“There’s a reason First Amendment law has always tolerated that someone will misunderstand everything. How many people think The Onion is a real newspaper?” Tushnet said. The satirical paper is protected even though misperceived “defamation of a person by The Onion causes more damage than defamation of a brand.”
Coyne and Toke pushed back on the idea that a confusion standard would hamper free speech or that it would impose undue expense on defendants who aren’t merely riding on plaintiffs’ marks for commercial gain. Toke said frivolous infringement suits over marks used in expressive speech on products would be dismissed quickly, even under a confusion standard.
But Tushnet said the confusion standard in trademark law as a whole has strayed too far from its fraud-prevention purpose. At it’s core, trademark law was based on preventing the sale of products that claim to be something else. Courts have since “relaxed many of the requirements” to bring infringement suits, such as demonstrating a material effect on sales. That has lowered the bar for establishing confusion from where it needs to be to protect consumers, she said.
“Stuff people say is confusion in trademark law wouldn’t pass the laugh test in other areas of consumer protection,” she said.
Coyne recognizes that increasing litigation costs can create an unfair field for the smaller entity for any claim. But he objected to letting VIP off the hook without defending itself against claims its products confused consumers and tarnished Jack Daniel’s trademarks, noting that Jack Daniel’s had itself licensed its trademarks for use on dog toys.
“We don’t see that as a chilling effect,” Coyne said. “Our point was to try to get cleaned up where the line is. How far does parody really extend to giving you immunity.”