{"id":3409,"date":"2023-12-28T11:52:10","date_gmt":"2023-12-28T16:52:10","guid":{"rendered":"https:\/\/journals.law.harvard.edu\/jsel\/?p=3409"},"modified":"2024-09-25T18:34:38","modified_gmt":"2024-09-25T22:34:38","slug":"free-speech-is-a-funny-thing-jack-daniels-properties-v-vip-products-narrows-first-amendment-protections-for-trademark-usage","status":"publish","type":"post","link":"https:\/\/journals.law.harvard.edu\/jsel\/2023\/12\/free-speech-is-a-funny-thing-jack-daniels-properties-v-vip-products-narrows-first-amendment-protections-for-trademark-usage\/","title":{"rendered":"Free Speech is a Funny Thing: Jack Daniel\u2019s Properties v. VIP Products Narrows First Amendment Protections for Trademark Usage"},"content":{"rendered":"

\"\"<\/a><\/em><\/p>\n

Image Courtesy of Foodie Factor\/Pixabay<\/strong><\/p>\n

By Alec Winshel<\/em><\/p>\n

In Jack Daniel\u2019s Properties, Inc. v. VIP Products LLC<\/em>, the Supreme Court held<\/a> that the First Amendment does not protect use of another\u2019s trademark as a signifier of one\u2019s own product. Trademarks are words or symbols<\/a> that identify a seller\u2019s goods and distinguish them from others in the marketplace. Consider the Nike swoosh or, simply, the name Coca-Cola. Trademarks may be used by non-owners under the protections of the First Amendment by, for example, speaking a company\u2019s name in a film\u2019s dialogue. In these cases, the public\u2019s interest in free speech is high and the potential for consumers to be misled about the source of a product is low.<\/p>\n

The Supreme Court\u2019s holding in Jack Daniel\u2019s<\/em> places a limit on the First Amendment\u2019s capacity to defend against a claim of trademark infringement. Now, free speech may not protect the use of another\u2019s trademark to indicate the source <\/em>of one\u2019s own product. In Justice Kagan\u2019s words, there is no constitutional protection for expressive works when an alleged infringer uses \u201ca trademark as a trademark.\u201d The Court\u2019s decision narrows a long-standing test that has protected creative expression<\/a> in films, music, and visual art. The Court\u2019s holding in Jack Daniel\u2019s Properties <\/em>supports continued First Amendment protection for the invocation of another\u2019s trademark in commercial work, like a book, that do not use the trademark as a signifier of that book\u2019s origin. The holding, however, creates a legal hurdle for companies making parodies of others\u2019 products.<\/p>\n

In 2014, VIP Products LLC (\u201cVIP\u201d) began selling<\/a> a new product to its target audience: canines. The company debuted a chewable plastic toy modeled after the recognizable square bottle of Jack Daniel\u2019s Tennessee Whiskey. It was the latest in VIP\u2019s line of \u201cSilly Squeaker\u201d rubber toys that resembled well-known beverage brands. This toy\u2019s black-and-white coloring, font choice, and twirling pattern evoked Jack Daniel\u2019s famous alcohol bottle. The text found on Jack Daniel\u2019s standard bottles, however, had been replaced. \u201cJack Daniel\u2019s\u201d had become \u201cBad Spaniels,\u201d and \u201cOld No. 7\u201d was now \u201cThe Old No. 2. On Your Tennessee Carpet\u201d etched beneath the face of a startled canine. In small typeface, \u201c40% ALC. BY VOL.\u201d became \u201c43% POO BY VOL.\u201d Importantly, a logo featuring a dog and the words \u2018Bad Spaniels\u2019 in Jack Daniel\u2019s recognizable typeface appeared on the back of the toy\u2019s packaging. Jack Daniel\u2019s was not amused. The company believed that the dog toy infringed and diluted its trademarks, which include its name, logo, and bottle shape.<\/p>\n

Jack Daniel\u2019s demanded VIP stop selling the toy. VIP filed a lawsuit seeking declaratory judgment that it had neither infringed upon nor diluted Jack Daniel\u2019s trademarks. Jack Daniel\u2019s counterclaimed for trademark infringement and dilution. The U.S. District Court for the District of Arizona denied VIP\u2019s motion and ruled in favor of Jack Daniel\u2019s infringement and dilution claims. The district court issued an injunction enjoining VIP from manufacturing the toy.<\/p>\n

The Ninth Circuit reversed<\/a>. The court held that the toy was an \u201cexpressive work entitled to First Amendment protection.\u201d As an expressive work, the infringement claim was required to pass the two-prong test established by the Second Circuit in Rogers v. Grimaldi<\/em>. The Rogers <\/em>test asks whether the defendant\u2019s use of the mark is (1) artistically relevant to its expression and (2) if it explicitly misleads consumers as to the source of the product. The Ninth Circuit held that the district court erred by finding infringement without satisfying these prongs and remanded the claim. Similarly, the Ninth Circuit held that the toy\u2019s parodic use of Jack Daniel\u2019s mark to convey a humorous message was \u201cnoncommercial\u201d under the Lanham Act<\/a>, the relevant federal trademark law, and awarded judgment in favor of VIP. On both claims, the Ninth Circuit relied on the First Amendment to protect VIP\u2019s use of Jack Daniel\u2019s trademark.<\/p>\n

On remand, the District Court applied the Rogers<\/em> test and awarded summary judgment to VIP Products on the trademark infringement claim. The Ninth Circuit affirmed. The Supreme Court granted certiorari.<\/p>\n

Justice Kagan wrote for unanimous Court, while Justice Sotomayor and Justice Gorsuch each filed a concurring opinion. In her opinion, Justice Kagan extolls the virtues of trademark law: marks inform the public who is responsible for creating a product and consumers benefit from assurances of quality as producers build goodwill within the marketplace. The Lanham Act codifies causes of action for infringement and dilution \u2013 practices that, respectively, sow confusion about the source of products and harm the reputations of well-known producers.<\/p>\n

Justice Kagan held the Rogers <\/em>test inapplicable to Jack Daniel\u2019s claim of trademark infringement because VIP used Jack Daniels\u2019 marks, including its name and trade dress, as an identifier of their own product\u2019s source. The First Amendment protections contemplated by Rogers\u2019<\/em> two-prong test are unavailing when an alleged infringer uses another\u2019s trademark as a designation of source for their own product<\/em> or, in the words of Justice Kagan, when the trademark is being used \u201cin the way the Lanham Act most cares about.\u201d Justice Kagan distinguished Rogers<\/em>\u2019 protection of references to trademarks in film and songs, like a movie character that names a famous brand, from cases in which lower courts refused to apply the test when trademarks had been co-opted into a source identifier for the infringer\u2019s product. Nearly all uses of trademarks have some <\/em>expressive value, Justice Kagan writes, and the Court will not allow the First Amendment to consume infringement claims entirely. When \u201ca mark is used as a mark,\u201d the Lanham Act\u2019s rationales outweigh speech interests and the Rogers<\/em> test does not apply.<\/p>\n

The Court similarly held that the First Amendment does not shield VIP Products from Jack Daniel\u2019s dilution claim. Parody alone is insufficient to establish \u201cnoncommercial\u201d use within the Lanham Act. Justice Kagan imports the Lanham Act\u2019s \u201cfair use\u201d defense, which does not apply when the use designates a product\u2019s source<\/em>, to the Court\u2019s reading of the statute\u2019s \u201cnoncommercial use\u201d exclusion. For the same reason the Court rejected the Rogers<\/em> test, it reversed the Ninth Circuit\u2019s holding on dilution: the use of \u2018Bad Spaniels\u2019 as a source identifier rendered its constitutional protections moot.<\/p>\n

Two members of the Court filed concurring opinions with warnings for lower courts. Justice Sotomayor wrote to suggest that courts treat surveys with caution, particularly when a trademark\u2019s use is parodic. Justice Gorsuch concurred to suggest that the Supreme Court may revisit the Rogers<\/em> test in the future to answer \u201cserious questions\u201d about its holding and that, in the meantime, lower courts should handle its application \u201cwith care.\u201d<\/p>\n

After Jack Daniel\u2019s<\/em>, litigants will seek to defend claims of infringement and dilution by arguing that their use of another mark is not \u201csource-identifying.\u201d VIP Products was unable to make this argument for multiple reasons: the company explicitly stated that it used the \u2018Bad Spaniels\u2019 mark to \u201cidentify\u201d its product and placed the logo on the packaging directly opposite another of its trademarked logos. The company had even registered the names of its other dog toys, which parodied famous beverages, as trademarks with the Patent and Trademark Office. It could hardly be asserted that its use of Jack Daniel\u2019s mark wasn\u2019t as a source identifier.<\/p>\n

This case creates a hurdle for manufacturers of consumer products. A manufacturer might enjoy the remaining protections of the First Amendment by limiting its use of another trademark to non-signifying purposes, but it\u2019s not entirely clear where courts will draw the line. Jack Daniel\u2019s<\/em> suggests that at least three uses indicate the mark is a source-signifier: (1) registration with the Patent and Trademark Office, (2) parallel placement of a logo near another\u2019s trademark, and (3) a history of using similar marks as source-signifiers. Justice Kagan\u2019s analogies to cases in lower courts suggest that use of another\u2019s mark in a slogan or logo also places the alleged infringer on perilous ground.<\/p>\n

All such uses appear to maintain First Amendment protections for referencing trademarks in creative arts. Indeed, Justice Kagan describes lower courts\u2019 appropriate application of the Rogers <\/em>test to alleged infringement in film, songwriting, and a visual artist\u2019s memorialization of a moment in sports history. Concerns by interested parties<\/a> that the Court\u2019s ruling might eviscerate First Amendment protections for film and television appear, despite Justice Gorsuch\u2019s ominous warning, to be unfounded. \u00a0\u00a0 The challenge after Jack Daniel\u2019s<\/em> is primarily for consumers products that reference another well-known brand. However, even for consumer products whose constitutional protections have been weakened, the Court\u2019s holding in Jack Daniel\u2019s<\/em> does not spell doom. Infringement claims must still establish a likelihood of confusion<\/a> for consumers: a humorous product poking fun of famous brands from a distance in the marketplace should remain safe from claims under the Lanham Act. VIP Products will now make that claim concerning its own product in a lower court after the Supreme Court\u2019s remand.<\/p>\n

Justice Kagan\u2019s opinion for the unanimous court walked a narrow line: scaling back the broad protections embraced by the Ninth Circuit without rejecting wholesale the relationship between the First Amendment and trademark. Now, it falls to lower courts to carve out the boundaries of its holding.<\/p>\n","protected":false},"excerpt":{"rendered":"

Image Courtesy of Foodie Factor\/Pixabay By Alec Winshel In Jack Daniel\u2019s Properties, Inc. v. VIP Products LLC, the Supreme Court held that the First Amendment does not protect use of another\u2019s trademark as a signifier of one\u2019s own product. Trademarks are words or symbols that identify a seller\u2019s goods and distinguish them from others in 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