Trade Marks, Parodies, and Free Speech

Expressive content or messaging in literary titles and product branding is often claimed to be immune from IP infringement claims on the ground that it is free speech protected by the First Amendment to the U.S. Constitution.
Such cases are always interesting, and often humorous, but striking an appropriate balance between trademark rights and free speech rights is difficult and has challenged the courts.  One subset of such challenged content – parody – was the subject of a recent Supreme Court case, Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf.  According to the Oxford English Dictionary (3d ed.), a “parody” is “a piece of writing, music, art, etc., that deliberately copies the style of another, so as to be amusing.”

The Supreme Court has previously held that a parody may qualify as permissible fair use under the Copyright Act, in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), https://supreme.justia.com/cases/federal/us/510/569/case.pdf, but this was the first time the Supreme Court has addressed a parody case under the Trademark Act.

VIP sold a squeaky rubber dog toy that deliberately mimicked the well-known Jack Daniel’s whiskey bottle trade dress, trademarks, and labeling. The bottle sizes, shapes, and colors were similar, “Jack Daniel’s” was mimicked as “Bad Spaniels,” and “Old No. 7 Brand Tennessee Sour Mash Whiskey” was spoofed as “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s was not amused, and sent VIP a cease-and-desist letter. VIP responded by filing suit in federal district court in 2014, seeking a declaratory judgment of non-infringement.  It alleged its product shape and labeling were an amusing “parody” of the Jack Daniel’s product, and thus protected “speech” under the First Amendment. Jack Daniel’s countersued for trademark and trade dress infringement and related claims. After a bench trial (no jury), the court rejected VIP’s defenses and ruled in favor of Jack Daniel’s.

VIP appealed. The U.S. Court of Appeals for the Ninth Circuit reversed the district court, and ruled in favor of VIP. Without reaching the trademark likelihood of confusion issue, the court held that VIP’s products were Constitutionally protected parody. It relied on the “Rogers test,” which originated in an earlier Second Circuit case, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), https://law.resource.org/pub/us/case/reporter/F2/875/875.F2d.994.88-7828.88-7826.600.601.html.
That case grew out of the title of a Federico Fellini film, “Fred and Ginger,” in which the actors played two fictional Italian cabaret performers, Pippo and Amelia, who emulated the iconic dancing style of Fred Astaire and Ginger Rogers.  Ms. Rogers objected to the use of her name and filed suit under the Trademark Act.
However, the district court granted summary judgment to the defendant, finding that the title was an act of artistic expression rather than commercial speech.
On appeal, the Second Circuit affirmed the dismissal, holding that using the Fred and Ginger names in the title was protected free speech, and not trademark infringement, because it (a) had artistic relevance to the content of the film, and (b) was not explicitly misleading as to the origin of the work.

The Ninth Circuit considered the Rogers test, and held it extended beyond the works-of-art contest in which it originated, to VIP’s dog toys. It ruled in favor of VIP, and stated that the normal trademark infringement likelihood of confusion factors did not need to be considered, as the application of the Rogers defense is a threshold matter.

The Supreme Court saw things differently, and reversed the Ninth Circuit, ruling in favor of Jack Daniel’s.  Since the case involved VIP’s commercial use of simulated Jack Daniel’s trademarks as its own trademarks, the Court ruled it was error to rely exclusively on the Rogers defense and disregard the trademark likelihood of confusion analysis.

The Court emphasized its opinion was narrow, restricted to the case before it, and that it was not ruling generally on whether the Rogers test was ever appropriate, or how far the “non-commercial” exception goes.
It held only that “…Rogers does not apply when the challenged use of a mark is as a mark.” The Court vacated the Ninth Circuit’s decision and remanded the case back to the district court for the normal, full, likelihood of confusion analysis. As of this writing, those proceedings are still going on in the district court, ten years after the case was originally filed, and the final outcome is yet to be seen.