Supreme Court case could be the end of parody products, Northeastern expert says by Beth Treffeisen April 11, 2023 Share Mastodon Facebook LinkedIn Twitter A bottle of Jack Daniel’s Tennessee Whiskey is displayed next to a Bad Spaniels dog toy in Arlington, Va. Jack Daniel’s has asked the Supreme Court justices to hear its case against the manufacturer of the toy. AP Photo/Jessica Gresko The Supreme Court is considering the complexities of federal trademark law in a case with two unlikely candidates. At the center of the debate is a dog toy that resembles a Jack Daniel’s bottle. The “Bad Spaniels Silly Squeaker” toy created by VIP Products looks strikingly similar to Jack Daniel’s Tennessee whiskey bottle. The distiller sued the company over the toy, claiming it violated federal trademark law. The case pits the rights of a famous trademark holder against the First Amendment rights of a company to use those marks to sell a humorous product. Alexandra Roberts, Professor of Law and Media, poses for a portrait. Photo by Alyssa Stone/Northeastern University VIP’s “Bad Spaniels Silly Squeaker” toy has the same general shape as a Jack Daniel’s bottle and uses a similar font style and a black label. VIP borrows Jack Daniel’s “Old No. 7 Brand Tennessee Sour Mash Whiskey” to sell “The Old No. 2 On Your Tennessee Carpet,” a reference to dog poop. It also changes the liquor bottle’s “40% ALC. BY VOL. (80 PROOF)” with “43% POO BY VOL.” and “100% SMELLY.” To answer questions about how the ruling of this debate might forever change parody products, Northeastern Global News spoke to Northeastern School of Law professor Alexandra Roberts about the case. From 4-5:30 p.m. on Thursday, April 13, at Northeastern University School of Law, Roberts and professor Rebecca Tushnet of Harvard Law School will discuss the topic. You can learn more about the event here. Roberts’s comments have been edited for brevity and clarity: What is happening in this case? Parody is not an uncommon business model for dog toys. If you go into a dog store, you see a lot of parody items. For example, you can get your dog a Chewnel toy if you love Starbucks or Chanel. In this particular case, VIP Products makes a whole line of toys they call Silly Squeakers. They make some alcoholic and nonalcoholic beverages, and they contain a lot of puns. So this one uses the Jack Daniels trade dress. Jack Daniels has trademark protection and registration, not just for the Jack Daniels mark but for the whole shape and details of the bottle. Jack Daniels did not like that dog toy. So it sent a cease and desist letter to VIP Products alleging trademark infringement and dilution. Trademark infringement is an assertion that the sale of this item creates a likelihood of confusion among consumers–not necessarily a likelihood of confusion that the dog toy comes from the Jack Daniels company, but at a minimum, it’s made with their permission. When the case went to the lower court, Jack Daniels showed up with survey evidence that some people did think that. And then dilution is another cause of action that’s only available to the owners of famous brands. And it doesn’t even require confusion. So the argument there is if you’re using somebody else’s exact famous mark for something different, it can undermine the power of that mark—it can lessen its distinctiveness, and if it’s used in connection with something gross, like something tawdry, like sex, or drugs, or pornography, or maybe poop, that it also harms the product. That’s called dilution by tarnish. What is the timeline of the case? VIP Products returns Jack Daniel’s letter by saying, ‘Well, we don’t think that we need to stop selling this toy. So we’re going to sue to get a declaratory judgment of non-infringement. We’re going to be the ones to take you to court to get a judge to say, ‘No. You’re fine. You’re correct.’ That is not what happened. So the lower court did say it was infringing. The district court granted Jack Daniel’s a motion for summary judgment and enjoined the use of the sale of the dog toy and said that Jack Daniels established both dilution and tarnish and that VIP use wasn’t a parody that’s protectable under the First Amendment. So that case went up on appeal to the Ninth Circuit in 2020, which reversed it, and the Ninth Circuit said, ‘No, this is a parody.’ Parody use has a message to it, and it contains speech. And we have some additional protection for those kinds of uses. And in fact, courts have held that even if there’s some likelihood of confusion, we can tolerate some likelihood of confusion because we want to create plenty of space for those uses that are expressive, those uses that have something to say. And there’s plenty of case law behind that kind of idea. Why is this case important? A couple of issues are now on appeal to the Supreme Court. One is whether the fact that this use is of a humorous use and entitles the VIP Products to this heightened First Amendment protection. When we think about things that deserve First Amendment protection, we tend to think first about traditional expressive works, works of art, like a song, a movie, a painting, or an artistic photograph that you might display in a museum. And we don’t think the same way about mass-produced commercial goods like T-shirts, dog toys, greeting cards and stuff like that. So there’s this question of whether they should be treated the same or whether there’s some other category for them. So with parody, we look for some specific things, like it’s supposed to be making fun of the brand itself, the people who purchased it, or the culture around it. One thing that happened at oral arguments was one of the justices was like, ‘Well, what is your message?’ And the VIP Products lawyer said, ‘Oh, we’re making fun of these brands that take themselves too seriously. They’re so serious.’ And the justice asked, ‘Really? Is that the whole thing? What about Stella Artois? Don’t you have a Stella Artois toy? They don’t seem like they take themselves that seriously. Do you need more of a message?’ Or do we not want courts and judges saying, ‘Well, I don’t get the joke, so it doesn’t qualify, or I see you’re trying to do something funny, but it wasn’t funny to me, or some things are worthy of being made fun of in some particular way. And others are too abstract or vague.’ Are those the kinds of questions that we want to make courts answer? Or do we just want to say this is a thing that contains speech? A second question, in this case, is whether a humorous use of a trademark is the kind of noncommercial use that can’t be subject to a tarnish claim. And then, more broadly, we’ve been using this test for a while called the Rogers test. The Rogers test says an artistic work that uses a trademark that might otherwise violate the Lanham Act isn’t going to infringe unless that user has no artistic relevance to the underlying work or if it has some artistic relevance unless it explicitly misleads about the source or content of the work. The artistic relevance has to be above zero. In the last few years, courts thought it was a useful test and began to apply it in other cases where somebody’s using a trademark as part of speech. So there’s an argument by some that say the use of that test has gotten out of control. The test was designed because the idea was the traditional likelihood of confusion test is for purely commercial uses. And it doesn’t take into consideration the balance of speech interests. So let’s design a test that gives more weight to those speech interests. And so there’s an argument that we tipped too far in the wrong direction by setting the bar so low, and maybe we need some third test. Jack Daniels’ lawyer says we don’t need any other test; we just need the likelihood of confusion tests because nobody will be confused if it’s an effective parity. And if people are confused, that proves that you did a bad job with your parody. What will happen if the court rules to make it stricter for parody use products? So if the court sided with Jack Daniels and said all we need is a likelihood of confusion test, then we would see a decrease in parody products, novelty stuff. Traditional expressive works will always continue to get robust protection. First of all, those uses are noncommercial. And then, second all, we still have the nominative fair use doctrine, which essentially says you can always refer to a brand by name. If you went back to a likelihood of confusion test for that, we would probably see more caution by creators. I don’t know what we would see in terms of outcomes. I think I expect that judges would still be pretty concerned about the potential to squash speech. What’s next? Oral arguments were a couple of weeks ago, in March. So by the end of the term, we should get a published decision on this issue. And we’ll see how deep they get into the weeds. Sometimes the Supreme Court wants to do the least and say, what’s the minimum amount that we can act on this without changing everything? In oral arguments, I heard sympathy toward both parties and skepticism directed at both parties. So I don’t expect the Supreme Court to do away with the Rogers test completely. But they might say this is not the appropriate test for commercial goods, and it’s more appropriate for the titles of expressive works. Beth Treffeisen is a Northeastern Global News reporter. Email her at firstname.lastname@example.org. Follow her on Twitter @beth_treffeisen.