Reconciling trademark rights with freedom of speech

Jack Daniel's whiskey takes VIP Products to court over possible infringement with their Bad Spaniels liquor bottle-shaped dog toy

Bad Spaniels WhiskeyThe United States Supreme Court is going to decide a case that will provide guidance on when actions that might otherwise be trademark infringement are afforded First Amendment protection as artistic or expressive speech.  The case involves Jack Daniel’s whiskey and the maker of a dog toy shaped like a liquor bottle sold under the name Bad Spaniels.

Broadly speaking, a trademark is anything that is used to communicate where goods or services come from.  The name of a restaurant is a trademark.  So is the logo on a piece of clothing.  Trademark rights can even extend to product shapes so long as the shape signifies where the product comes from.

Trademark law is concerned with avoiding consumer confusion.  Courts deciding questions of trademark infringement use a multifactor test for determining whether there is a likelihood of confusion between two trademarks.  The factors include the similarity of the trademarks, the similarity of the products or services they are being used to sell, and where those products or services are advertised and sold.

But what happens if a trademark is used in a way that is artistically expressive, and how do you decide whether the use is, in fact, expressive?  These are the questions that the United States Supreme Court will grapple with in a case known as Jack Daniel’s Properties, Inc. v. VIP Products, LLC.

Jack Daniel’s sells Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey in a square-shaped bottle.  VIP Products sells a Bad Spaniels Silly Squeaker dog toy.  The toy looks like a bottle of Jack Daniel’s both in how it is branded and how it is shaped.  The writing on the toy makes several poop-related jokes.  For example, it replaces “Old No. 7” with “Old No. 2,” and says it is 43 percent poo by volume.  A tag attached to the dog toy says it is not associated with Jack Daniel’s.  VIP Products claims that its products reflect on the humanization of dogs and comment on corporations that take themselves too seriously.

Jack Daniel’s sent a cease-and-desist letter to VIP Products and litigation ensued.  A California appeals court decided that the Bad Spaniels toy could not infringe on Jack Daniel’s trademark rights because it was artistic speech and therefore entitled to First Amendment protection.

The California court relied on a prior decision of a New York appeals court known as Rogers v. Grimaldi.  Under the Rogers case, a brand owner cannot assert trademark rights to block another’s expressive speech unless the speech is artistically irrelevant to the underlying work or explicitly misleading.  The California appeals court wrote that, although “not the equivalent of the ‘Mona Lisa,’” the Bad Spaniels toy was nevertheless an expressive work and therefore entitled to First Amendment protection.  Earlier this year, the Supreme Court agreed to review the decision.

In its submission to the Supreme Court, Jack Daniel’s argues that the California court was too generous in granting free speech rights to VIP Products, who was, after all, selling a product — albeit one intended to be humorous.  In Jack Daniel’s telling, if the California opinion stands, humor will become a license to infringe trademark rights.  Although that argument may be a little overblown, commentators have observed that once a court decides the speech is expressive and the Rogers test applies, that is typically bad news for the brand owner.

For its part, VIP Products argues that Jack Daniel’s cannot properly use its trademark rights to control the public discourse about its whiskey.  That much is certainly true, but the relevant question is how far that principle extends into commercial uses of another’s trademark.

After all, VIP Products clearly wants consumers to buy its dog toys.  It is not offering social commentary purely for the greater good.  Yet at the same time, almost nobody suggests that Jack Daniel’s can use trademark law to prevent others from making jokes about its products.

An appeals court decision from Virginia suggests a middle ground.  There, the court considered whether a dog toy that resembled a Louis Vuitton handbag violated the French luxury brand’s trademark rights.  The Virginia court concluded that it did not, but did so without invoking the First Amendment.

Instead, it applied the multifactor likelihood of confusion test, and concluded that consumers were not likely to confuse the parody with the real thing.  In so doing, the decision applied existing and broadly accepted principles of trademark law without elevating the dog toy to artistic speech and triggering First Amendment protection.

The Supreme Court is likely to hear arguments on the Jack Daniel’s case in the spring of 2023, and issue an opinion by next June.

Categories: Law