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The “Old No. 2 on the Tennessee Carpet” Case
I am something of a free speech absolutist. So this story about a US Supreme Court case between Jack Daniels and VIP Products (a dog toy manufacturer/ retailer) caught my attention. VIP manufactures a dog toy that looks like a Jack Daniel’s whiskey bottle. Not only is the distinctive bottle shape used, but the label coloring, script, and wording are fashioned after the Jack Daniel’s product.
Jack Daniel’s claims VIP violated its trademark. VIP cites the First Amendment as protecting parody. The federal district court enjoined VIP from selling the product that violated trademark law; the Ninth Circuit Court of Appeals reversed; and now the case is being argued before the US Supreme Court.*
As a kid, I enjoyed reading Mad Magazine which would do this sort of thing in its comics. Of course, the magazine was sold as a parody product. No doubt the individuals and companies that were skewered on its pages did not always enjoy the experience. But VIP is selling a physical object. So what is the difference between a pictorial parody and a physical product parody?
Apparently, there is no humor in trademark law if Jack Daniel’s understanding of the law is correct. “It looks like our product” is the beginning and the end of the case. But the Ninth Circuit has found a “penumbra” of sorts, and written into the trademark protection statute a “heightened scrutiny” test to ensure that an infringing entity’s speech is not violated. In other words, the burden shifts from the infringer to the infringee to demonstrate that there is no free speech issue affected by enforcing trademark protection.
Of course, the entire reason this case is where it is is due to the fact that district courts are fact-finding bodies while appeals courts review only the legal reasoning that the district court applied to the facts it has determined. This creates a problem when the appeals court actually disagrees with the fact-finding, not the law. The district court could have found factually that there was no marketplace confusion and the case would have been over. But the district court did find that there was potential marketplace confusion between the products. So, now, the appeals court — because it reasonably questions that finding, is looking for an interpretation of law to rein in district courts findings on parody products. This “heightened scrutiny” is the do-over.
But that puts the Supremes in a box. Will they allow accretion of the law, or will they have to slap down the Ninth Circuit and allow a district court to enforce a humorless trademark law? In the opinion of Ronald Mann, author of the linked article…
I suspect that at the end of the day a large group of justices will have little sympathy for the notion that the First Amendment compels protection for a parody likening Jack Daniel’s to canine excrement.
If so, the lesson for VIP is to sell magazines, not physical objects.
* As outlined in Comment #15 the case began as a declaratory judgment action by VIP as it had been previously lost a case of trademark infringement to another company.
Published in General
I think it is pretty clear that this a parody. No one will accidentally buy the dog toy when they meant to buy whiskey.
It is also pretty clear they are using another Trademark to sell their product. This is using another company’s brand to increase your sales. It is trading on Brown-Forman’s trademark and should not be allowed.
Sounds like this is the fly in the ointment, as agree with @vancerichards and @bryangstephens coments above.
Sounds like the fact found was nonsensical, but required. Was there no way to make the case hinge on the problem that Bryan identifies? Because that’s not what the “found fact” was.
Absolutely zero marketplace confusion, but yes, a referent required to fully “get the joke” and therefore be more likely to buy the dog toy.
Still, the thing should sell well even if lettered in nonsense script, and not in any identifiable style. So any “damage” to the whiskey people should be slender indeed.
The damage would be akin to some sort of infringement. The company had some non-zero number of sales due to this piggybacking on a trademark built up over years. Now, how much that is, who can tell. Brown-Forman should at least get their court costs covered.
IANAL, but it does seem to wander across the line of appropriating trade dress, and finding a 1st amendment issue seems like a real stretch. OTOH, I have trouble figuring out just what damages are appropriate….
Yet the lower court (unless I missed it) does not comment on this, and instead hangs its hat on “marketplace confusion”. Different theory. I am assuming that something about the product or the jurisdiction means that only the confusion offense is germane. IANAL 2.
Yeah. Common sense and law never seem to overlap well.
Although, if was looking for a quality whiskey I would buy the dog toy before I’d buy a bottle of JD.
Based just on what you’ve reported here, I suspect, given what I know of copyright law, that part of the problem in this case is the negative connotation–the equating of the real Jack Daniels to puppy excrement.
In copyright law, if the parody makes a negative statement about the original copy, the court looks at the parody case differently from the way it would look at it if it were truly just humorous.
That’s just a guess.
Sure, but this parody is so tangential, so obviously just a pun of opportunity, that there’s clearly no equation of the product with poo. Clearly to me anyway.
When I look at this, I percieve absolutely zero denigration of the JD product.
It’s an interesting legal conundrum because VIP is not making a competing product. They don’t stand to make any money by denigrating Jack Daniels Whisky.
This case falls in between a lot of legal cracks.
I wonder what the product development thoughts were, what their goals were in designing this product. It’s an interesting case. If I were the court, I’d probably be interested to know that. It was kind of weird thing to do, to be so specific.
It’s one of a whole series of similar products. They didn’t single out Jack Daniel’s for parody. There’s also a Mountain Drool dog toy, for example, but as far as I know PepsiCo hasn’t sued them.
Okay. I didn’t know that. (In all fairness to Jack Daniels, however, drool is not as bad as poop.)
On a free speech level, VIP seems to be in the clear here and Jack Daniels just needs to respond somehow. That’s how that works.
But in the world of trademarks and copyrights, I’m not sure what the trademark and copyright owners believe they are buying by registering their products. It’s a whole different legal world.
Apparently this wasn’t the first case of trademark infringement brought against VIP. Earlier a case was brought by Anheuser-Busch against VIP for their “Buttwiper” canned beer toy. That case was brought in Missouri (home of Anheuser-Busch) and the Eighth Circuit. VIP learned their lesson and sought a declaratory judgment on the trademark question for Bad Spaniels from an Arizona federal court (Ninth Circuit). As hoped, the Ninth Circuit held for VIP and now you had a conflict between federal circuit courts and a golden ticket to the Supremes to settle it.
From an article entitled Jack Daniel’s Not Amused by Dog Toy Decision, is the following:
While I laughed out loud when I saw the offending product and its slogan, I do think the issue for Jack Daniels is that the company HAS to defend its trademarked “trade dress,” or else it faces the prospect of losing the trademark’s protections.
While it makes for a funny story about an oddity of a case, nevertheless the risk to Jack Daniels is not from the pet store crowd, but from the potential loss of valuable intellectual property rights by neglecting to defend them.
Is this why we can’t get Wacky Packages anymore!? : (
For some reason I saved a bunch of those from my youth. Found them in a box with some old baseball cards. Not sure what to do with them, but I can’t bring myself to throw them away.
I had so many . . .
This is how you know you’re living in an unserious country. The SOCTUS has nothing better to do? For Pete’s sake.
The vast majority of the Supreme Court’s cases are relatively boring issues like this. They generally only make the news when they’re handling big important constitutional cases, but those are actually relatively rare. This sort of thing is exactly what the Court does, and has always done.
Ideally, parody like this should be protected. It seems to get into the legal weeds pretty quickly, though. I’m not a lawyer, so I’m not supposed to have an opinion, apparently.
It’s one thing to be boring. It’s another to be silly.
I disagree. Brown-Forman did the work to build and maintain a brand. Someone else trading on a version of that brand is, in effect, theft. They have no zero sales because of this parody. That is not fair to Brown Forman.
Yes, but they’re not selling whiskey, they’re selling dog toys. I have a bottle of Jack Daniels in my cupboard. There’s no reason I wouldn’t have one there if I also had the dog toy. I just think the dispute is silly and it should have been settled in the lower court. Or, preferably, no lawyers would have been involved (and paid ridiculous sums for a ridiculous lawsuit).
Yes.
And they are selling more dog toys by piggy backing on someone else’s trademark.
They are using the JD trademark to make money. I think that is wrong.
Copyrights are a “use it or lose it” type of deal. If you do nothing to defend your trademark or copyright, you may lose the ability to enforce it later, because you’ve set a precedent. This is sometimes a pain, because you have to go to some trouble and legal expense even to simply issue a valid takedown notice, let alone fight it. That’s my guess as to why Jack Daniels went to court.
The American Cinema Foundation owns the copyright and trademarks of the Freedom Film Festival, but after I left ACF they stopped defending them, even by the minimal means of sending a letter to the offending party–“Dear Sir: knock it off or we’ll sue”. So it’s my understanding that ACF can’t claim exclusivity anymore, exactly the situation that ol’ Jack is trying to prevent.
Yes, parody is fair use, but only up to a point.
Avoiding trademark violations are what image licensing is for. VIP could have sought a license from Brown-Forman. Of course, Brown-Forman might not have been interested.
True and true.