It is hard for me to believe that the US Supreme Court is hearing the case of Jack Daniels vs Bad Spaniels. For those who don’t know, Jack Daniels is a form of Whiskey. VIP Products makes and sells a squeaking dog toy known as “bad spaniels.” The setup here is a humorous parody, but JD is not laughing.
Jack Daniels sent a cease-and-desist letter to VIP who then filed a declaratory judgment action in Arizona. The district court sided with JD on both TM infringement and dilution and issued an injunction to stop ongoing sales and distribution. (The excrementory references in Bad Spaniel also led to tarnishment conclusions). On appeal though, the 9th Circuit identified the toy as an “expressive work” entitled to speech protections under the First Amendment of the US Constitution and ordered the lower court to apply an enhanced infringement analysis stemming from Rogers v. Grimaldi, 875 F.2d 994 (1989). Under Rogers, the court needs to consider the expressive relevance of the accused work and whether it is “explicitly” misleading. With regard to dilution, the appellate court found that the dog toy was not actually making commercial use of the JD mark. Although the toy was being sold in commerce, the JD mimicry was for humourous speech purposes rather than simply commercial.
The Supreme Court granted certiorari and the briefing is ongoing. Typically, the most important amicus brief in a private case is that filed by the U.S. Government. Here, the USPTO and DOJ joined together to file a brief strongly supporting the mark holder — writing that the 9th Circuit decision “is egregiously wrong.” The Gov’t is particularly concerned that a funny joke will be an excuse to allow infringement. Although humorous parody should be a factor in the likelihood-of-confusion analysis, the Gov’t argues that it should not be a determinative “get-out-of-the-Lanham-Act free card.” On the dilution side, the Gov’t argues that Congress expressly set the rules, including a defense that the accused use is not being used as a mark. The Gov’t argues here that the Ninth Circuit ignored that provision and instead created its own non-statutory rule regarding the commercial nature of the humor being used.
The Government’s basic argument here is that free speech concerns are properly incorporated into the infringement analysis and should not be given a separate overlay. The result then is a holistic balancing of speech interests against the misleading nature of a product. “The Ninth Circuit’s reasoning means that virtually any humorous pirating of a trademark will be “expressive” and thus qualify for heightened First Amendment protection, no matter how misleading.”
The briefing also highlights some concerning uses of marks to sell marijuana products, such as the Oreo knock-off below. These don’t really seem humorous, but who am I to know?
Read the Gov’t Brief here. One note, in the case, the appellate court did not expressly consider Bad Spaniels under a more traditional parody test. The Gov’t suggested vacatur and remand to the 9th Circuit to reconsider on those grounds.
2 live crew — Pretty Woman?
You indicate a copyright case.
As I noted below, trademark carries an even lower sense of “keep out” for the rights holder.
The link in the post appears to go the the cert petition. The government’s brief is here.
link to supremecourt.gov
The docket with all of the briefs is here.
link to supremecourt.gov
Thanks dcl.
Anyone remember the movie “Uncle Buck” (John Candy played the lead)? Buck’s brother and sister-in-law have to leave town suddenly, and so being jobless and with time on his hands, he takes care of their kids. There’s a scene where there’s a meeting with an elementary school principal, where she accuses Buck’s 6-year-old niece of being a lazy good-for-nothing, and Buck fires back at her,
“But I know I good kid when I see one, because they’re ALL good kids, until dried out, brain-dead skags like you drag them down and convince them they’re no good.”
I think that principal was modeled on JD.
link to youtube.com
Prophet is correct, Anon is correct. This is not even a close call.
I think it is a ridiculous case as I did with the Orbison Estate suing 2 Live Crew. BTW, does Jack Daniels police it’s Mark so when people order a bourbon, they do not get Jack Daniels? We live in an era with absolutely no sense of fun and joy. It is an oligarchy no doubt.
The only thing this US Supreme Court does consistently is rule for corporate interests. The Roberts court ruled there is a constitutional right to lie, upsetting 200 years of precedent. Why would the Supreme Court take up the case other than to overturn the 9th Circuit. Otherwise, the Supremes would have just denied cert. I don’t think we have reached the nadir of opinions coming out of the Roberts court.
…constitutional right to lie…?
Which case was that?
It was the stolen valor case where some guy claimed to have been awarded a medal of honor. US v Alvarez overturning the stole valor act.
Thanks – the 2012 case was surprisingly below my radar.
Have not digested that case yet, but at first blush, the plurality decision does not appear to have the heft suggested.
Since trademark cases are heavily fact dependent, as required by the multi-factor likelihood of confusion text, I highly recommend reading the district court’s first opinion or Jack Daniel’s merits brief before sounding off on whether this looks like a legitimate parody or not. Of particular relevance underscoring the district court’s initial finding of liability is that the customer survey found almost one-third consumer confusion as to source affiliation of VIP’s dog toy (generally, trademark infringement cases are won on 8-10% confusion), and Jack Daniel’s does license dog products and thus VIP’s product is being sold in the same channels of commerce as those long used by the trademark owner, which underscores why there is such significant confusion. Moreover, VIP has a long-established business practice of unauthorized uses of trademarks, and an earlier court already found it liable for trademark infringement for another unauthorized use of the famous Budweiser trademark (owned by Anhheuser-Busch). These are significant differences from other parody product cases, such as the Haute Diggity Dog case. But the Rogers test, at least as it is currently framed, excludes any consideration of the legitimate trademark interests or the strategic uses of trademarks by companies like VIP in seeking to pirate valuable goodwill by mimicking famous trademarks in their own products. However the Court decides the case, whether it discards Rogers as argued by Jack Daniel’s and the U.S. Government given that free speech interests can be accommodated by the likelihood of confusion inquiry or whether it merely reframes the Rogers test to make it less of a blunt instrument that fails to account for legitimate interests of trademark owners in protecting their valuable goodwill and famous marks, I don’t think this is such an “easy” case as it is superficially characterized by many commentators.
In full disclosure, I and Devlin Hartline worked with a law firm in submitting an amicus brief filed last week in support of Jack Daniel’s, which was joined by Hon. Paul Michel, Hon. Randall Rader, Hon. Kathleen O’Malley, Hon. Andrei Iancu, and many other scholars and professors.
“ Jack Daniel’s does license dog products and thus VIP’s product is being sold in the same channels of commerce”
To be clear, Jack Daniels is itself in the humorous dog chew toy business via the licensing of its trademark for parody purposes? Is that what you are asserting? Can we see one of these “official” products that might appear on the same shelf with the allegedly infringing product?
Also, involvement with the production of competing parody dog chew toys would seem undercut JD’s tarnishment argument a little bit …
“the customer survey found almost one-third consumer confusion as to source affiliation of VIP’s dog toy”
A better survey might be one that presented 19 actual Jack Daniels products and this one accused product and then asked customers to pick out the parody product that was not made by Jack Daniels. How much “confusion” would there be in that case?
This is the primary reason so many district court judges revile consumer survey evidence when used to show likely confusion, the survey questions are often suggestive of the desired response. District judges love to throw out consumer survey evidence for precisely this reason.
The dirty little secret in trademark litigations is that mark holders often commission several different surveys (hiring separate companies to do them). They then submit the one survey that yielded the results they’re looking for, and thus the Court never learns about other surveys that may have shown little or no confusion.
This is one of the key reasons why “evidence of actual confusion,” over the years, has been given far less weight in trademark litigations than one would expect. The nature of the inquiry and the adversarial system all but guarantee the evidence on this point will be selective, anecdotal, and in many cases, downright misleading.
LR,
You raise a good point (that could be explored over on the -underused- ethics side of the blog).
If a party in a suit knowingly commissions multiple surveys, ALL surveys should be made known to the Court.
Selective cherry-picking should not be allowed in a vacuum.
Not being a TM litigator…
1) would those other (i.e., not relied upon) surveys be privileged? If not, boilerplate interrogatory?
2) does the defendant ever do their own, competing survey? It’s easy to argue that any given survey is of poor quality, but if you don’t submit your own evidence on that point, what choice does the court really have?
OldCurmudgeon:
(1) Not-relied-upon surveys are often claimed as attorney work product and thus not produced in discovery. But for this to work, a party should use separate firms that have no contact with each other. If a party uses a single firm for both relied-upon and not-relied-upon surveys, that increases the chance a court will order that all of them be produced.
(2) It is often the case that only one party (e.g., the mark holder) submits consumer survey evidence. But the United States has an adversarial system of civil litigation, after all, so of course the defendant can submit its own survey to argue for an opposite conclusion. The fact-finder or jury would weigh competing surveys the same way they’d weigh all other competing evidence in the case. Surveys are typically presented at trial through expert testimony from the person(s) who oversaw and ran the survey, which is usually someone with deep experience running consumer surveys. If the other side thinks the survey was flawed, biased, or wrong for some reason, they can of course make that point through cross-examination at trial and in closing argument, as well as through testimony of their own competing survey expert (if it has one).
Not sure how a third party item (and one which purportedly is geared to how the public would view something) could properly be claimed to fall under privilege from the Court. After all, the exact same thing (cherry picked to be certain) IS given to the Court.
I can see the attorney communications to the client about the reports (like for example, “gee, this one is bad for us, let’s do another”) to fall under privilege, but not the reports themselves.
You’re mixing up the attorney-client privilege with the work product doctrine. They are two distinct things. Work product isn’t about protecting communications with clients. It’s about protecting documents and other materials prepared for an attorney to assist in litigation (“in anticipation of litigation”). This includes confidential reports prepared by non-attorneys, i.e., non-testifying consultants, hired by the attorney. It’s an important but qualified protection. For example, if reports of non-testifying consultants had to be turned over no matter what, attorneys wouldn’t hire third party consultants and investigators to help the attorney candidly assess the strengths and weaknesses of their client’s positions. It would be very difficult for most insurance companies to do their jobs in assessing the strength of an insured’s claim in litigation, for example, if work product didn’t protect the written reports and other materials generated during these non-testifying consultants.
Fair enough, excellent points — thanks!
>It’s about protecting documents and other materials prepared for an attorney to assist in litigation
I agree… but in this case, the survey results are the key fact (vs. an analysis of that fact). If it were me, I’d make the raw question/answer pairs discoverable.
fake edit: this would implicitly expose the naked p-hacking scheme.
Egads — I will have to check myself**, as normally i view Mossoff’s stuff as pretty solid, but his (and Hartline’s) writings on this topic have been tedious and way-too-much assume-the-desired-conclusion.
** finding that Malcolm is echoing my view always calls for a self-check.
Perhaps it is because I just don’t see the same imperative as I do in regards to the IP of patents and copyrights as I do for trademarks (trademarks coming from a different — and frankly in a secondary manner — part of the Constitution; as well as have a much heavier notion as to protecting the non-rights holder), but I just don’t see the rights holder having a compelling case here.
Malcolm’s two points ARE on point (and how often does that happen?)
Step back to first principles: there’s no likelihood of confusion here.
Nobody with a working brain confuses this dog toy, or could confuse this dog toy, with JD’s “Tennessee Sour Mash”. Among other things, it’s a different color, it’s got a different picture on the front, and IT’S MARKETED TO PET OWNERS, not to the folks who drink JD’s “whiskey”.
As to tarnishing reputation…let’ s just that no connoisseur of Scotch, Irish or Canadian whiskey would ever mistake JD’s stuff for Chivas Regal or Crown Royal, let alone for a single malt scotch. What JD’s product has going for it – the only thing it has going for it? – is that it contains ethanol (something that’s notably absent from the doggie toy). And has JD commissioned a study comparing the taste of its product to that of the doggie toy? It might be that the toy tastes better than JD’s product, in which case, even if there was confusion, the toy would enhance JD’s reputation.
The people advocating for JD need to get out of the weeds of precedent – which develops in a path-dependent matter, and thus doesn’t necessarily reach the best place – and take a bird’s eye view of this. This case is absurd, and will be even more absurd if SCOTUS sides with JD.
2 Live Crew’s parody of Pretty Woman should have settled this. No parody of Trademarks, but gutting the Patent Laws. What an idiotic system we now have. Not surprising as we live in a No Fun time in a oligarchy. Trademarks are to protect consumer not prevent parody of their owners. Boycott Jack Daniels is the solution here.
Best to let sleeping dogs lie. Woof!
Jack Daniels is the only whiskey I drink. I was a bit pissed when I bought some Bad Spaniel by mistake. I’m glad I have the Supreme Court to protect me.
pi**ed is American slang for angry, and British idiom for drunk. I am thinking the moderator (a human?) is a bit too sober.
^^^ a filter release well worth the wait.
Kudos DC
“The result then is a holistic balancing of speech interests against the misleading nature of a product.”
Under any reasonable view, no one would be confused that the No. 2 has the same source as the No. 7.
For all of the hullabaloo for the mark holder, this one strikes me as an easy call against the mark holder.
I concur with your opinion, but I don’t think the Supreme Court will look at this issue with any integrity or fidelity with the law.
+1
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