A Tale of Trademark law, the Rogers test, and Parody

The Supreme Court has been busy lately with IP cases. Just recently, the Supreme Court sided with Jack Daniel’s by ruling that the lower court got it wrong when it said VIP Products’ dog squeak toy- the Bad Spaniels Silly Squeaker was covered by the First Amendment’s free speech protection. The Supreme Court’s judgment will allow Jack Daniel’s to continue pursuing trademark infringement claims against VIP in lower courts.

How Things Got to This Point
VIP Products created an entire line of squeak toys for dogs that spoof well-known beverages in the product’s shape, design, and wording. One of those, the Bad Spaniels Silly Squeaker, spoofed Jack Daniel’s whiskey. Jack Daniel’s asked the toy maker to remove it on the grounds that the toy violated trademark law.

Trademark Law for Dummies
Trademark law exists to make sure consumers aren’t confused about the source of origin of what they are buying. So, for example, a knock-off shoe company can’t use a swoosh in the shape of Nike’s on their products. This would be a type of bait and switch where customers, relying on the quality of Nike shoes, accidentally purchase a knockoff shoe of lower quality. That would damage Nike by 1) diverting money Nike would have gotten if the customer had not been confused, and 2) causing harm to Nike’s brand if the lower quality shoes are taken to be demonstrative of Nike’s quality in general. Essentially then, trademark law is meant to serve as consumer protection.

It’s not clear how consumers would be confused into buying a doggy squeak toy if they went looking for a bottle of Jack Daniel’s, given that they would be in different parts of a store, but there is more to trademark law than just the likelihood of confusion. Trademark law also includes the concepts of dilution; which is diminishing the capacity of a mark to identify and distinguish good or services, and tarnishment; which is portraying the mark in a negative light, which ultimately threatens the commercial value of the mark.

Jack Daniel’s and VIP Sniff Each Other Out
VIP’s squeaky toy was in the shape of a Jack Daniel’s bottle, with a label that reads “Bad Spaniel, the old No. 2 on your Tennessee carpet!” The lawyers with Jack Daniel’s weren’t as amused as the rest of us by the comparison of their fine whiskey with dog poo and told VIP to clean up the mess they’d figuratively left on the carpet by hitting them with a lawsuit for trademark infringement.

VIP said the poo stays on the carpet by arguing that Jack Daniel’s infringement claim failed under the Rogers test, which protects an artistically expressive use of a trademark from infringement claims. The criteria are 1) the mark has no artistic relevance to the underlying work, or 2) the use is explicitly misleading as the source or content of the work. VIP argued that since Jack Daniel’s couldn’t demonstrate either, there was no likelihood of confusion. As for a dilution claim, Bad Spaniels was a parody, and therefore was fair use, and for those reasons, asked that the matter be summarily dismissed. 

VIP Sent to the Doghouse, and then Let Out Again
The initial ruling rejected both VIP’s claims, and at the ensuing bench trial, the District court found that there was likelihood of confusion, as well as the negative association of Jack Daniel’s brand with dog poop.

The Court of Appeals however reversed the decision and sent it back to the District court to decide if Jack Daniels could satisfy either prong of the Rogers test.

Reconsidering the case, the Court found that Jack Daniel’s could not satisfy either prong of the Rogers test and decided that since the toy was a parody, it falls under the non-commercial use exclusion. VIP was cleared of infringement, and the Court of Appeals affirmed.

Bad Appellate Court! Bad Appellate Court!
Well, the Supreme Court wasn’t impressed with the Court of Appeals’ insistence that the infringement claim was subject to the Rogers test. In the Supreme Court’s opinion, “When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply.” VIP conceded that it had used the Bad Spaniel’s trademark and trade dress as source identifiers, and they’d done so with many similar products. Therefore, in the Supreme Court’s opinion, the only question left was whether the Bad Spaniel’s trademarks were likely to cause confusion. The Supreme Court decided that while VIP’s effort to parody Jack Daniel’s doesn’t justify use of the Rogers test, it may make a difference in the standard trademark analysis, so it sent the issue back down to the courts below.

The Supreme Court chose a narrow path. They didn’t rule on whether Rogers has merit in other contexts. They ruled it shouldn’t be used as the test in this instance.