Has Trademark Law Become a Parody?

by Dennis Crouch

The Supreme Court recently issued its pro-trademark-owner opinion Jack Daniel’s Properties, Inc. v. VIP Products LLC and unanimously vacated the Ninth Circuit favoring the accused comedic copycat.  Justice Kagan delivered the opinion of the Court with concurring opinions from both Justice Sotomayor and Justice Gorsuch.  The holding is that the First Amendment does not require any special scrutiny in cases where the accused activity is “the use of trademarks as trademarks.” Rather in this use-as-a-mark situation, standard principles of trademark law apply.  The court offered the possibility (but did not decide) that a heightened situation could still apply in other situations such as use of another’s mark as artwork or for criticism, etc.

VIP’s dog toy resembles a Jack Daniel’s whiskey bottle, with several allegedly humorous alterations. Jack Daniel’s Properties, which owns the trademarks, demanded VIP stop selling the toy, leading to VIP seeking a declaratory judgment that their product neither infringed nor diluted Jack Daniel’s trademark rights. The District Court sided with the mark holder after concluding that VIP product used Jack Daniel’s features to identify the source of their own products. On appeal, the Ninth Circuit reversed, applying the Rogers test, which provides a heightened scrutiny in situations where a trademark is being wielded against “expressive elements” protectable under the First Amendment.  See Rogers v. Grimaldi, 875 F. 2d 994 (2nd Cir. 1989). After a bit more procedure, the case eventually reached the Supreme Court on a question focusing on the Rogers test.   The court attempted to issue a somewhat narrow holding:

Without deciding whether Rogers has merit in other contexts, we hold that it does not [require any threshold requirement] when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.

Slip Op.  Here, the court found that VIP’s use of the mark was as a source identifier.  What this mean is that VIP does not have an extra special First Amendment excuse.  However, standard trademark law already has some free speech outlet valves, such as the exception for parody.  The Supreme Court remanded the case to the lower courts to consider whether VIP’s “effort to ridicule Jack Daniel’s” offer an excuse in the “standard trademark analysis.”

Trademark law includes a special cause of action for big players with “famous marks” under the doctrines of dilution and tarnishment.  The trademark statute includes a fair-use exception, but it only applies in situations where the accused dilution/tarnishment is a use “other than as a designation of source.” This is a narrower exception that that available based upon judge-made law in traditional  trademark infringement cases.  And, the Supreme Court decided to stick with the statute — with the holding here that the VIP cannot claim fair use for the dilution/tarnishment because its use of the JD mark was as its own source identifier.

Critically, the [statutory] fair-use exclusion [for dilution] 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.” §1125(c)(3)(A). In that event, no parody, criticism, or commentary will rescue the alleged dilutor. It will be subject to liability regardless.

Id.  This is a powerful boon to those already in power.

Justice Kagen’s opinion was for the unanimous court. However, 5 of the justices also signed one of the concurring opinions.

Justice Sotomayor, joined by Justice Alito, joined the majority opinion but wrote separately to emphasize the need for caution in the context of parodies and other uses implicating First Amendment concerns. She highlighted the potential risk in giving uncritical or undue weight to surveys in alleged trademark infringement cases involving parody. She argued that surveys should be understood as merely one piece of the multifaceted likelihood of confusion analysis and that courts should carefully assess the methodology and representativeness of surveys.

Justice Gorsuch, joined by Justices Thomas and Barrett, also joined with the majority opinion. Gorsuch wrote separately to underscore that lower courts should handle Rogers v. Grimaldi, with care. He noted that the Court’s decision leaves much about Rogers unaddressed, including where the Rogers test comes from and whether it is correct in all its particulars. He urged lower courts to be attuned to these unresolved issues.

Tune In Next Term for More on TM/Speech: The Supreme Court recently agreed to hear the case of In re Elster, which involves a California lawyer, Steve Elster, is seeking to trademark the phrase “Trump too small,” a reference to a taunt from Senator Rubio during the 2016 presidential campaign. Elster’s intent was to use the phrase on T-shirts to convey a message that he believed some aspects of President Trump (as well as his policies) were diminutive. However, the USPTO rejected the application, citing the prohibition on registering marks that identify a particular living individual without their written consent. The Federal Circuit ruled in favor of Elster — effectively following the Supreme Court’s prior cases of Tam and Brunetti and holding denial of registration as a free-speech violation. The Gov’t’s petition to the Supreme Court argued that Elster is different than Tam or Brunetti for a couple of important reasons: (1) the prohibition on registering another person’s name is an effective protection of competing rights of privacy / publicity held by the other person; and (2) the prohibition is viewpoint-neutral and therefore should be reviewed with less scrutiny.

40 thoughts on “Has Trademark Law Become a Parody?

  1. 11

    One of the best write-ups I have seen so far is Robert Hunziker’s High Court TM Ruling Is A Small Dog With A Big Bite (sorry – pay wall of Law360).

    He focuses on the narrowness of the Supreme Court ruling – duly noting that “on remand, may or may not ultimately result in trademark infringement liability.

    For those with Law360 access: link to law360.com

    He notes specifically (footnotes omitted):

    The Supreme Court rightly concludes that its two core holdings are narrow.

    First, the court holds that the Rogers test cannot shield putatively expressive content from the traditional likelihood-of-confusion analysis of trademark infringement where the defendant is using the putative expression as a trademark, i.e., to identify the source of its product or service.

    Second, the court holds that a defendant’s use of a mark cannot automatically be deemed noncommercial merely because it includes an aspect of parody.

    On remand, I would expect neither of these narrow holdings to enable Jack Daniel’s Properties Inc. to prevail.

    First off, the defendant is NOT using the putative expression as a trademark, i.e., to identify the source of its product or service. The clear (as already noted, first time in the discussion being shown in the picture of this blog) actual source description is the packaging of the dog toy – and NOT the dog toy itself.

    Second, the law as written does NOT require ALL aspects to be present – and as the case cite I provided already shows, parody and commercial use simply do NOT dictate a result (of either infringement liability as the author notes, nor of the aspect of tarnishment, as some here – hint, Greg – take as a given.

    1. 11.1

      missed a closing tag – the third last paragraph and beginning of second last paragraph are both mine, not Hunziker’s.

  2. 9

    There is an interesting difference between ‘In re Elster’ and ‘Bad Spaniels.’
    Elster is not prevented from publishing his speech. He can make as many T-shirts as he wants. The Trademark Office just won’t help him stop others from saying the same thing on their own T-shirts.
    Spaniels is about preventing the publishing of speech, which is quite entertaining speech by the way. But then the entertainment value is the real issue in Bad Spaniels, and the fact that there is virtually no likelihood of confusion is a no-brainer.
    In both cases, the marketing value for all parties in the publicity about their disputes probably far outweighs the costs of their litigation.

    1. 9.1

      In both cases, the marketing value for all parties in the publicity about their disputes probably far outweighs the costs of their litigation.

      This is in line with my case cite at 1.4 below.

  3. 8

    If someone is so wasted that they can’t tell the difference between a dog toy and a bottle of whiskey, they probably should be purchasing any more whiskey.

  4. 7

    This decision is wrong. The labels are readily distinguishable. The dog toy does not use the famous JD mark. Tennessee, the only shared term is a geographical descriptor for the whiskey. The labels feature white lettering (that spell different words and phrases) and design elements (noticeably different design elements) on a black background. However, a label with white lettering and design elements on a black background cannot be deemed a famous mark of JD. This decision will embolden trademark bullies. The Supreme Court does more harm than good when it dabbles in intellectual property law.

    1. 7.1

      “The Supreme Court does more harm than good when it dabbles in intellectual property law.”

      True that. How. True. That.

      1. 7.1.1

        In the context of this case, the famousness of Jack Daniels’ trade dress is almost res ipsa loquitur. If Jack Daniels’ trade dress is not famous, why was a dog toy company trying to parody it? The market for dog toys and the market for whisky are pretty distinct. The only way that the dog toy manufacturer could expect customers to “get” the joke here is that Jack Daniels’ trade dress is so immediately recognizable to a wide variety of the public—i.e., the joke only works if Jack Daniels’ trade dress is famous. It will be hard for Silly Squeakers to deny that Jack Daniels’ trade dress is famous.


            Yes, I was scratching my head (but not too hard) on your comment’s placement. 🙂


          If you want to catch Malcolm’s eye, you might announce the Drum comments on autonomous driving…

    2. 7.2

      Do you seriously mean to say that Jack Daniels’ trade dress is not a famous mark? Good luck with that.

      1. 7.2.1

        More OMB-TDS….

        I for one will be quite happy when “T” does not obtain the “R” nomination and the 0bsess10n can cease.

  5. 5

    I find it a bit odd that this is the very first time that the complete package for the dog chew toy has been shown.

    It is quite evident that the parody here is NOT serving as the source identifier.

    I do wonder why this plainly evident fact was not stressed — seemingly at all — by Silly Squeakers.

  6. 4

    Said it before, will say it again: no one thinks that JD makes chew toys. The chew toy obviously is not made by JD b/c it’s clearly a parody of JD, and we all know JD doesn’t do parodies, because, as we’ve seen in other cases, JD has no sense of humor. There’s no likelihood of confusion here.

    At least JD has given me yet another reason, apart from poor quality, to avoid drinking its product. I would consider using that product as wiper fluid, but at Walmart I can get a gallon wiper fluid for less than I pay for a quart of JD.

    1. 4.1

      AM – as noted in the first comment below, JD calls that stuff whiskey. That definitely means they have a sense of humor and can make a joke.

    2. 4.2

      There’s no likelihood of confusion here.

      Fair enough. That is a reasonable point vis-à-vis the infringement counts. On the other hand, the anti-dilution provisions of the Lanham Act apply “regardless of the presence or absence of actual or likely confusion…” (15 U.S.C. §1125(c)(1)).

      1. 4.2.2

        What’s being diluted? JD’s mark for its alcohol-containing dishwater isn’t weakened because someone parodies it. People seeking to get drunk will still know JD when they see…unless, as another commenter noted, they’ve already had way too much alcohol.


          The anti-dilution statute provides protection against two sorts of dilution: by blurring; and by tarnishment. Jack Daniels should not be too hard pressed to establish that their mark is tarnished by association with a poop-themed toy.

    3. 4.3

      It is a parody sure, but I would say its level of commentary or transformativeness is hovering somewhere around 0%.

      1. 4.3.1

        You seem to be wanting to conflate multiple Different categories.

        That’s not how it works.

  7. 3

    The Supreme Court recently agreed to hear the case of In re Elster, which involves… the phrase “Trump too small,”…

    Is that why there is ketchup oozing down the walls in Mar-a-Lago tonight? Nah, probably not…

    1. 3.1

      Yea – more OMB-TDS.

      Here is your lack-of-objectivity indicator: the length of time delay (if ever) of similar charges against the likes of Biden and Pence.

  8. 2

    Do you know the difference between those two products? One product is an undrinkable joke at the expense of decent whiskey. The other product is a chew toy for dogs.

      1. 2.1.1

        “!” – flowers…?

        I have to wonder why Greg is such a fan-boy of Drum.

        Perhaps he thinks that this “enhances” his blog presence. Perhaps he thinks that signaling with the obsequious details may camouflage the Sprint Left propaganda.

        In actuality, it only emphasizes his being a c1ue1ess d00fus.

  9. 1

    Anyone remember Garbage Pail Kids back in the ’80s meant to parody the Cabbage Patch Kids?

    1. 1.4

      Well ipguy, my on-point post (happening to have more than one link) is stuck in the filter.

      That being said – I DO have to wonder if the Court scr ewed the pooch here by not mentioning:

      In the first appellate case under the TDRA, the Fourth Circuit Court of Appeals said that the Louis Vuitton trademark wasn’t diluted by the use of the term “Chewy Vuitton” for a pet chew toy that was “evocative” of a Louis Vuitton bag. The defendant showed the court a line of chew toys that parodied famous designers such as “Furcedes” (parodying Mercedes) and “Chewnel No. 5” (Chanel No. 5). The court determined that “Chewy Vuitton” was a parody and that a successful parody wouldn’t dilute the famous brand. It said a successful parody could actually make the brand even more famous. (Louis Vuitton v. Haute Diggity Dog, 507 F.3d 252 (2007).)

      This** is available at: link to nolo.com

      ** my comment in moderation includes the proviso that TM is outside my bailiwick, so I am doing a little background reading…

    2. 1.5

      Yet another try (there appears to be a George Carlin word in the mix)…

      As trademarks are outside of my usual bailiwick, I was doing some reading (specifically, on the tarnishment angle), and lo and behold at: link to commdocs.house.gov
      I found this:

      Tarnishment arises when a famous trademark is linked to products of inferior quality, or is portrayed in an immoral or reprehensible context likely to evoke negative beliefs about the mark’s owner. An example of the tarnishment might be
      PAIL KIDS cards, where the cards ”derisively depict dolls with features with features similar to Cabbage Patch Kids dolls in rude, violent and frequently noxious settings.”(see footnote 6)

      Footntoe 6: Original Appalachian Artworks, Inc. v. Topps Chewing Gum, 642 F.Supp.1031 (N.D. Ga. 1986).

    3. 1.6

      And part two:

      That being said, at link to govinfo.gov

      We have this (emphasis added):
      (3) EXCLUSIONS.—The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
      (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—
      (i) advertising or promotion that permits consumers to compare goods or services; or
      identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
      (B) All forms of news reporting and news commentary.
      (C) Any noncommercial use of a mark.

      Note that A through C are in the alternative – and NOT a full requirement for each and every section.

      It may be fair to note that the words that made it into the legislation ARE DIFFERENT than the judiciary committee notes.

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