Another unanimous case result: Jack Daniel’s Properties, Inc. v. VIP Products LLC (JD v VP). And one that I would have thought the media would have more fun with. They did when it originally happened, but the results are less fun, so…. yeah. As Kagan said in the majority opinion, “This case is about dog toys and whiskey, two items seldom appearing in the same sentence.” (JD v VP, p5).
VIP Products decided to play off Jack Daniels and made “Bad Spaniel” toys.
Look familiar? Yeah. Jack Daniels thought so too. They sued for Trademark infringement. Makes sense to me honestly. You see, trademark law has this thing about “consumer confusion.” It does, however, not always play nice with First Amendment. You know, we’re allowed to make fun of stuff.
So the court, in Rogers v. Grimaldi (1989), said artistic expression couldn’t be put up to trademark law. You know, that pesky free speech thing we keep knocking our heads on. So they created the “Rogers” test. But the Rogers test specifically was about a movie called “Ginger and Fred” that people associated with Ginger Rogers. Neither Ginger Rogers nor the movie were technically commercial products (arguably. Legally. Something). Only an IP lawyer can probably make it make sense.
Kagan wrote this one and honestly, she is one of my favorites on the court right now. I love what a teacher she is at heart. Her prose is digestible and she gives excellent examples. She sets trademark as “But whatever else it may do, a trademark is not a trademark unless it identifies a product’s
source (this is a Nike) and distinguishes that source from others (not any other sneaker brand).” (JDvVP p7). Makes sense to me.
Apparently, Jack Daniels has trademarked the following elements: the square-shaped bottle, the stylized label, the Jack Daniel logo, “Old No. 7” and “Jack Daniels” and the font they use. I had no idea you could trademark the shape of a bottle. I guess it kind of makes sense. Maybe? I mean, can you picture a Jack Daniel’s bottle? (as Kagan said “Recall what the bottle looks like (or better yet, retrieve a bottle from wherever you keep liquor; it’s probably there)” – seriously. She’s fun to read).
VIP Products makes parody products of various brands – including Jack Daniels. They register the trademarks for them under the umbrella “Sily Squeakers.” Jack Daniel’s didn’t like this. VIP argues that they do not “infringe” (compete) or “dilute” (confuse consumers) on Jack Daniel’s. Again, Jack Daniel’s disagreed on both counts. So to the court they went!
So VIP pulled out the good ‘ole Rogers test and claimed some kind of “artistic relevance” AND that is couldn’t dilute Jack Daniel’s trademark (at least for argument of being sued) because it’s “fair use” as a parody item. Nah-nah-nah-boo-boo. Except the court rejected these claims.
A product that is being manufactured and sold is vastly different than a movie and it is clearly derived from Jack Daniel’s trademark. Rogers doesn’t apply. So then it goes to the whole “consumer confusion” question on trademarks. VIP didn’t do well here either, because for some reason associating alcohol with dog shit might not be funny to everyone… I think we’re all well aware the court doesn’t have a sense of humor, but this really buries the bone for good.
Court of Appeals did reverse this, saying the toys ARE funny (not really). But seriously, it’s a good question and that is why the Supreme Court is now going to chew on the question.
Kagan gives the following things: There is a difference between a movie and a dog toy when talking about “creative expression.” And it really gets hammered home when looking at the precendent case Mattel, Inc. v. MCA Records, Inc. (2002) – “the band’s use of the Barbie name was “not [as] a source identifier”: The use did not “speak[] to [the song’s] origin.”” (JD v VP, p 15). No one thought Mattel wrote the song. You can mention a brand in a movie (Louis Vitton was mention in The Hangover: Part II apparently) and not makes consumers confused.
This is not art. This is making another trademark item. Specifically, VIP has trademarked “Bad Spaniels.” So… conflicting trademarks means it’s not artistic/first amendment protected. Kagan states, “when the defendant may be “trading on the good will of the trademark owner to market its own goods”—Rogers has no proper role.” (JDvVP p18). Jack Daniels is clearly the source of this toy’s design.
The next argument sums up, “Critically, the fair-use exclusion has its own exclusion: It does not apply when the use is “as a designation of source for the person’s own goods or services.”” (JDvVP p23).
The court didn’t throw out the Rogers test (Kagan actually specifically said they aren’t throwing it out), but pointing out it shouldn’t always apply just because something is parody. Gorsuch actually writes a concurring opinion and states, “For another thing, it is not obvious that Rogers is correct in all its particulars—certainly, the Solicitor General raises serious questions about the decision […] All this remains for resolution another day, ante, at 13, and lower courts should be attuned to that fact.” (JDvVP p27). CLIFFHANGER???
Dream by Day 