Does the humorous use of another’s trademark as one’s own on a commercial product receive heightened First Amendment protection, and is such use “noncommercial” and therefore immune from a dilution by tarnishment claim?
Jack Daniel’s Properties, Inc. demanded that VIP Products stop selling a dog toy called “Bad Spaniels,” a toy in the shape of a Jack Daniel’s whiskey bottle but with dog-related alterations to the name and label. The issue is whether the “Bad Spaniels” toy should receive heightened First Amendment protection as a form of expressive conduct or whether courts should analyze such satirical products under the traditional trademark infringement test of the Lanham Act. Additionally, the Supreme Court must consider whether humorous use of another’s trademark should be considered a “noncommercial” use and therefore be immune from a dilution by tarnishment claim. Jack Daniel’s contends that the Ninth Circuit’s endorsement of the Second Circuit’s likelihood-of-confusion test undermines the purpose of the Lanham Act and that “Bad Spaniels” violates the Lanham Act’s anti-dilution provision. VIP Products counters that the Second’s Circuit’s test fills in gaps in the Lanham Act and is widely accepted by lower federal courts; and, it further contends that the Lanham Act’s anti-dilution provision amounts to unconstitutional viewpoint discrimination. The decision in this case will affect the rights of trademark holders, as well as the protections of those whose political, social, and artistic work utilizes the trademarks of others.
Questions as Framed for the Court by the Parties
(1) Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, 15 U.S.C. § 1125(a)(1), or instead receives heightened First Amendment protection for trademark-infringement claims; and (2) whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C).
VIP Products, LLC (“VIP”) sells dog toys that parody well-known beverage brands on its website, MyDogToy.com. VIP Prods. LLC v. Jack Daniel’s Props. at 1172. These products, called “Silly Squeakers,” are in the shape of beverage bottles and cans but contain dog puns and other alterations. Id. For example, the product at issue in this case is a dog toy in the shape of a Jack Daniel’s Properties, Inc. (“JDPI”) whiskey bottle that has the words “Bad Spaniels” atop an image of a spaniel. Id. Attached to the toy is a tag that states that the “product is not affiliated with Jack Daniel Distillery.” Id. Other “Silly Squeakers” products include “Canine Cola;” a parody of Coca-Cola, “Mr. Slobber;” a parody of Dr. Pepper, and “Smella Arpaw,” a parody of Stella Artois. See MyDogToy.com.
In 2014, JDPI demanded that VIP stop selling the “Bad Spaniels” toy. VIP Prods. LLC at 1172–73. VIP instead filed a declaratory action in the United States District Court for the District of Arizona. Id. at 1173. In the action, VIP sought a declaration that its toy did not infringe or dilute JDPI’s trademark. Id. JDPI counterclaimed against VIP, bringing both infringement claims and trademark dilution claims. Id.
The district court held that JDPI’s bottle design was entitled to trademark protection, that VIP had infringed JDPI’s trademarks and trade dress (the bottle’s design), and that VIP had diluted JDPI’s trademarks by tarnishment. Id. The district court permanently enjoined VIP “from sourcing, manufacturing, advertising, promoting, displaying, shipping, importing, offering for sale, selling or distributing the Bad Spaniels dog toy.” Id.
VIP appealed the injunction to the United States Court of Appeals for the Ninth Circuit. Id. The Ninth Circuit affirmed the district court’s holding that JDPI’s trade dress was entitled to trademark protection. Id. However, it reversed the district court’s holding that VIP had diluted by tarnishment JDPI’s trademarks and trade dress and had infringed those marks. Id. at 1176.
The Ninth Circuit held that JDPI had a valid trademark in its trade dress and bottle design because the bottle and label elements of a Jack Daniel’s bottle, when taken together, are nonfunctional and distinctive. Id. at 1173–74.
For the infringement claim, the court applied a heightened First Amendment standard because the “Bad Spaniels” toy was an expressive work. Id. at 1175. In particular, the court found that they toy was a form of parody that communicated a humorous message by using word play. Id. The court also found that VIP had not diluted JDPI’s trademarks because a dilution by tarnishment claim requires the commercial use of a trademark. Id. at 1176. Since VIP used the marks to convey a humorous message, rather than just using the trademark to sell Bad Spaniels, there could be no dilution by tarnishment. Id.
The Ninth Circuit lifted the permanent injunction, allowing VIP to continue selling the “Bad Spaniel” dog toy on its website. Id. JDPI appealed the Ninth Circuit’s decision to the Supreme Court. Petition for a Writ of Certiorari. The Supreme Court of the United States granted certiorari on November 21, 2022. Miscellaneous Order.
DETERMINING THE APPROPRIATE TEST TO ADDRESS CONSUMER CONFUSION
JDPI argues that VIP’s dog toy violates the Lanham Act, a federal law that, among other things, prohibits a party from designing their products with marks so similar to a registered trademark owned by another party that the similarity could confuse consumers. Brief for Petitioner, Jack Daniel’s Properties, Inc. at 22, 27. JDPI explains that, to determine whether a product’s marks violate the Lanham Act, courts compare a wide range of factors that assess whether, from the consumer’s perspective, the two products have confusingly similar marks. Id. at 24–25. JDPI argues that every factor of this multifactor test, such as the products’ similarity in appearance and the companies’ overlap in product offerings, suggests that the marks on VIP’s dog toy confuse consumers about who produced it. Id. at 27.
JDPI further argues that the Second Circuit’s decision in Rogers v. Grimaldi, in which the court adopted a two-part test for exempting certain uses of borrowed trademarks from the Lanham Act’s prohibition of confusingly similar marks, was wrong. Id. at 21–22. JDPI asserts that the test’s two parts, which consider whether an alleged infringer’s use of a registered trademark has “artistic relevance” or “explicitly misleads” consumers to determine whether the “public interest in avoiding consumer confusion outweighs the public interest in free expression,” are inconsistent with the text of the Lanham Act. Id. at 22–23. JDPI points to Congress’s explicit protection of others from liability for using registered trademarks to suggest that, had Congress intended to protect the users covered by the two-part test under Rogers, it would have said so itself. Id. JDPI also asserts that the Rogers test undermines the Lanham Act’s purposes of protecting consumers and preventing opportunistic infringers from undermining trademark owners’ investment into their registered trademark’s reputation with consumers. Id. at 36–38.
JDPI asserts that the First Amendment, which provides protections for freedom of expression, does not require the two-part test under Rogers. Id. at 28. Because the Second Circuit did not have to avoid addressing the Lanham Act’s constitutionality in Rogers, JDPI contends, the Second Circuit would have declared its application to expressive marks unconstitutional if it ran afoul of the First Amendment. Id. at 28. Regardless, JDPI adds, the Lanham Act’s application to expressive uses does not violate the First Amendment because the First Amendment allows for regulations of misleading commercial speech, which Congress and the courts have historically enacted. Id. at 29–32. JDPI notes that the Rogers test incompletely considers the First Amendment-related expressiveness of the original registered trademark, whereas the multifactor test accounts for it. Id. at 34–35. In the alternative, JDPI claims that the two-part test under Rogers only applies to artistic works, not to information about the source of a product, and that the marks on VIP’s dog toy concern the source of the dog toy. Id. at 38–39.
VIP counters that the marks on its dog toy do not confuse consumers about who produced the toy. Brief for Respondent, VIP LLC at 13. VIP emphasizes that the marks do not cause confusion because they parody JDPI’s whiskey bottle and are an artistic expression about a “fictional product” that no one sells. Id. at 14. VIP underscores that its dog toy is a garden-variety brand parody, not at all confusing to consumers, and a longstanding application of artistic expression. Id. at 14–16.
VIP also responds that courts should use both tests to analyze claims under the Lanham Act: the multifactor test for commercial products and the Rogers test for expressive works. Id. at 27. Pointing out that the Lanham Act does not specifically call for either test, VIP argues that courts created the two tests to fill in gaps left behind by the Act’s sparse wording. Id. at 27–28. VIP contends that the Rogers test performs a distinct function from the multifactor test by assessing marks that creatively reference the registered trademark from which they are borrowed, rather than identify the source of a product. Id. at 30–31. The Rogers test, VIP argues, is responsive to the risk that the multifactor test would disallow expressive messages and appropriately weighs consumer confusion against the public interest in hearing the message. Id. at 31–32. VIP highlights that the long history of the Rogers test’s use in courts demonstrates that the test is easy for courts to apply and prevents trademark litigation from suppressing free speech. Id. at 33–34. VIP further argues that the multifactor test’s factors sometimes excessively favor the trademark owner because of their origin in the commercial context and reliance on flawed consumer confusion surveys. Id. at 40–43. The Rogers test, VIP compares, properly corrects for these problems by asking whether marks involve “artistic relevance” that would provide them with greater protection under the First Amendment without being “explicitly misleading” in the marketplace. Id. at 46–47.
Lastly, VIP argues that because the marks on its dog toy carry a humorous message, parodying both dog owners and the Jack Daniel’s brand, the marks warrant First Amendment protection. Id. at 17. VIP claims that the First Amendment’s protection of messages like the one conveyed on its dog toy apply regardless of the medium through which they are conveyed. Id. at 26. Rather than focusing on the medium of the message, VIP posits, the applicability of the First Amendment’s protections to a message is based on whether the recipient of the message would perceive the message as communicative in nature. Id. at 25. VIP also notes that the First Amendment’s protections still apply to a message conveyed on a product that is sold for profit. Id. VIP maintains that the Rogers test is consistent with courts’ longstanding preferences for clear, categorical tests to answer questions under the First Amendment. Id. at 35–37. By contrast, VIP suggests that multifactor tests like the one for commercial uses under the Lanham Act are inherently uncertain or imprecise and accordingly take a long time to resolve, making multifactor tests ill-suited to expressive works. Id. at 34–37.
ANALYZING THE CONSTITUTIONALITY OF THE LANHAM ACT’S DILUTION PROVISION UNDER THE FIRST AMENDMENT
JDPI argues that VIP’s dog toy violates the Lanham Act’s anti-dilution provision, which prohibits marks that harm the public perception of a registered trademark. Brief for Petitioner at 40. Pointing to the dog toy’s purpose as a saleable product, JDPI disputes the Ninth Circuit’s finding that the dog toy qualifies for the anti-dilution provision’s “noncommercial use” exception based on the toy’s humorous purpose. Id. JDPI argues that the term “noncommercial use” is ordinarily defined by courts and Congress to exclude any circumstance involving the sale of goods or services. Id. at 40, 47–49. JDPI contends that the Ninth Circuit’s approach would subsume other, narrower exceptions to the anti-dilution provision, which JDPI maintains would be inconsistent with common statutory interpretation methods. Id. at 42. Finally, JDPI argues that the Ninth Circuit’s expansion of the noncommercial-use exception would prevent the anti-dilution provision from preserving the economic value of registered trademarks by allowing lewd marks to harm registered trademarks’ reputations. Id. at 43–44.
JDPI further explains that a broad noncommercial-use exception would encourage companies to bypass usual practices of licensing trademarks from their owners by simply claiming that their marks use the registered trademark humorously. Id. at 46–47. Finally, JDPI maintains that applying the dilution statute to a commercial product, even a humorous one, does not run afoul of the First Amendment because intellectual property laws only restrict the manner, rather than content, of speech and therefore do not implicate the First Amendment. Id. at 49–51.
VIP counters that the Lanham Act’s dilution provision violates the First Amendment. Brief for Respondent at 51. Pointing to its restriction on uses that “harm the reputation” of the trademark owner, VIP contends that the restriction amounts to viewpoint discrimination. Id. at 51–52. VIP points out that the restriction is inconsistent with traditionally permissible restrictions on speech. Id. at 53. VIP elaborates that the restriction, because it only restricts critical speech of a registered trademark’s owner, is effectively a one-sided content-based restriction. Id. VIP highlights the salience of this effect on humorous speech, like parody, pointing to its inherently critical targeting of the subject matter. Id.
VIP also argues that the noncommercial-use exception relies on the Supreme Court’s historic distinction between commercial and noncommercial speech rather than common definitions of the term “commercial.” Id. at 56. The Supreme Court’s approach, VIP maintains, only considers speech “commercial” when it solely presents an economic transaction. Id. When the speech is combined with any other purpose, VIP suggests, the Supreme Court considers it “noncommercial.” Id. at 57–58. Here, VIP argues that, because the speech contained in the marks on the dog toy are part of the product sold, and not merely part of a proposal to purchase the product, the dog toy falls into the “noncommercial” category established by the Supreme Court. Id. at 58.
BALANCING PROTECTIONS FOR FREE EXPRESSION AND REGISTERED TRADEMARKS
Campbell Soup Company (“Campbell”), in support of JDPI, contends that providing a heightened First Amendment standard for trademark infringement and a broad category of “noncommercial” use for dilution by tarnishment defeats the benefits of the Lanham Act. Brief of Amicus Curiae Campbell Soup Company, in Support of Petitioner at 6–7. Campbell points out that the Lanham Act helps consumers to make informed choices and to be sure they are buying products made by the manufacturers they trust. Id. Campbell points out that allowing others to use a trademark for expressive purposes could impair the benefits at the heart of the Lanham Act. Id.
Constellation Brands, Inc. (“Constellation Brands”), in support of JDPI, underscores that allowing companies to use a trademark simply by adding some expression to the trademark would allow companies to exploit well-known trademarks and profit from them. Brief of Amicus Curiae Constellation Brands, Inc., in Support of Petitioner, at 16–17. Constellation Brands also highlights the importance of the First Amendment in the trademark infringement context because courts generally do not award monetary damages for Lanham Act violations but rather enjoin the infringing conduct. Id. at 18–19.
The Foundation for Individual Rights and Expression (“FIRE”), in support of VIP, counters that using a heightened First Amendment standard will curb abuses of Lanham Act claims by companies with the money to litigate them. Brief of Amicus Curiae Foundation for Individual Rights and Expression, in Support of Respondent, at 4–5. FIRE also argues that a heightened First Amendment standard is needed to protect political, social, and artistic expression. Id. at 5–6.
Thirty trademark law professors (“Professors”), in support of VIP, worry about the effect of the Lanham Act in chilling speech. Brief of Amici Curiae 30 Trademark Law Professors, in Support of Respondent at 16–18. The Professors argue that the traditional likelihood-of-confusion test requires protracted litigation and many expert witnesses, requiring extensive resources and trial time. Id. Professors point out that by contrast, a First Amendment claim could generally be resolved quickly by the judge without a jury trial. Id.
THE LINE-DRAWING PROBLEM OF DEFINING AN “EXPRESSIVE” WORK
NIKE, Inc. (“NIKE”), in support of JDPI, claims that protecting all forms of parody, even if the First Amendment does protect some parody, is too overbroad. Brief of Amicus Curiae NIKE, Inc., in Support of Petitioner at 15–16. NIKE’s concern is that any person could take a trademark, call the infringing product a parody, and be immune from the Lanham Act. Id.
Levi Strauss & Co. and Patagonia, Inc. (“Levi Strauss”), in support of JDPI, argue that courts within the Ninth Circuit’s jurisdiction are already applying this parody exception to acts of plain copying with hardly any expressive conduct. Brief of Amici Curiae Levi Strauss & Co. and Patagonia, Inc., in Support of Respondent at 10–11. Levi Strauss cites examples of cases where courts have deemed the use of a trademark as expressive even when there was actual consumer confusion and a minimum amount of artistic expression. Id.
Artists Dan McCall, Sky Shatz, and Don Stewart (“Artists”), in Support of VIP, argue that heightened First Amendment scrutiny would not protect all parodies or expressive works. Brief of Amici Curiae Dan McCall, Sky Shatz, and Don Stewart, in Support of Respondent at 9–11. The Artists state that the Lanham Act already incorporates First Amendment protections and concerns and that any heightened protection would not be so expansive as to destroy the policies behind the Lanham Act. Id.
Authors Alliance and ComicMix (“Authors Alliance”), in support of VIP, emphasize that heightened First Amendment protection would not protect all expression, especially not expression that explicitly misleads the consumer. Brief of Amici Curiae Authors Alliance and ComicMix, in Support of Respondent at 25–27.
- Brad Japhe, Jack Daniel’s Trademark Dispute is Headed to the Supreme Court, Forbes (Nov. 25, 2022).
- Adam Liptak, May ‘Bad Spaniels’ Mock Jack Daniel’s? The Supreme Court Will Decide., N.Y. Times (Dec. 5, 2022).
- Isaiah Poritz, High Court to Review Speech Test in Jack Daniel’s Trademark Case, Bloomberg Law (Nov. 21, 2022).
- Dan Schweitzer, Supreme Court Report, NAAG (Dec. 14, 2022).