On Wednesday, U.S. Supreme Court dug about a way to settle a disagreement over a dog toy parodying a Jack Daniel’s whiskey bottle, though they plainly did not consider the case, which explored the line between artistic expression and trademark infringement, to be a stroll in the park.
The judges heard arguments in Jack Daniel’s appeal of a lower court’s judgment that the pun-laden “Bad Spaniels” vinyl chew toy offered by Phoenix-based VIP Products LLC qualified as a “expressive work” protected by the First Amendment to the United States Constitution. Brown-Forman Corp of Louisville, Kentucky owns Jack Daniel’s Properties Inc. (BFb.N).
Even while they acknowledged its flaws and sought alternatives, several judges were hesitant to abandon a long-standing legal rule that gives an early exit from costly litigation when parody products face trademark infringement charges.
“I’m concerned about the First Amendment implications of your position,” conservative Justice Samuel Alito told a Jack Daniel’s lawyer, alluding to the constitutional provision that guarantees free expression.
The argument puts the whiskey brand’s trademark rights against legal safeguards for artistic expression – in this case, a spoof of Jack Daniel’s Old No. 7 Tennessee whiskey bottle by VIP Products, complete with excrement-themed alterations such as a label saying “the Old No. 2, on your Tennessee Carpet.”
Lower courts ruled in favor of VIP Products after applying the so-called Rogers test – stemming from a dispute between actress Ginger Rogers and film director Federico Fellini. This test lets artists lawfully use another’s trademark when doing so has artistic relevance to their work and would not explicitly mislead consumers about its source.
The justices expressed mixed sentiments about whether the Rogers test, arising from a 1989 case in which she sued over a Fellini movie, struck the right balance between a company’s interest in protecting its corporate image against free speech protections.
Liberal justice Ketanji Brown Jackson posed sharp questions to a lawyer for VIP Products about whether the Rogers test was too permissive of “expressive works” that cause confusion. Jackson asked if products that risk confusing consumers should be allowed to sidestep a more-rigorous judicial test under which the nature of the product is just one of several factors under review.
“It sounds like what you’re doing is saying when you’re dealing with an expressive work, we get a pass under the Lanham Act,” Jackson said, referring to the federal statute that governs trademark law.
A lawyer for President Joe Biden’s administration urged the justices to discard the Rogers test in favor of the more-rigorous multi-factor test normally used in trademark-infringement cases, which looks squarely at whether the acts would likely cause marketplace confusion.
This so-called likelihood-of-confusion test can adequately account for lawsuits involving parodies, Justice Department lawyer Matthew Guarnieri said.
