Next week the Supreme Court will hear oral argument in Jack Daniel’s Properties, Inc. v. VIP Prods., LLC, and yes, the petitioner is that Jack Daniel’s. The famous whiskey brand sued VIP, claiming that its squeak toy for dogs—in the shape of a bottle and featuring various elements that resemble and thereby parody Jack Daniel’s—infringes the company’s trademark in violation of the Lanham Act. It is nearly impossible to make sense of a trademark infringement case without reference to the products, so it is useful to start with a side-by-side comparison of a bottle of Jack Daniel’s whiskey and VIP’s squeak toy. Here they are:
To succeed on a Lanham Act claim like the one currently before the Court, a plaintiff must show that the appearance of the defendant’s product “is likely to cause confusion” about whether there is an “affiliation, connection, or association” with the plaintiff. Right from the start, it is difficult to see how there could possibly be a likelihood of confusion about the nature or origin of “Bad Spaniels.”
True, Bad Spaniels rhymes with Jack Daniels, and the two products are roughly the same size and shape. But, at the risk of belaboring the obvious, there are some notable differences: Bad Spaniels is a pink plastic squeak toy for dogs sold in pet stores, not a glass bottle filled with amber-colored whiskey sold in liquor stores; there is a prominent picture of a dog on the squeak toy but not the whiskey bottle; and “Old No. 2,” “on your Tennessee carpet,” and (in small print at the bottom) “43% POO BY VOL.” are all clearly poop jokes. Only especially naïve shoppers will be confused into thinking that, in addition to distilling and distributing whiskey, Jack Daniel’s has branched out into selling dog toys that parody its own most valuable product.
Nonetheless, after a bench trial, the district court judge found that there is a likelihood of confusion based on a multi-factor test derived from prior precedents. The crucial factor appears to have been an internet-based survey conducted by an expert hired by Jack Daniel’s. Twenty-nine percent of survey participants mistakenly thought that Jack Daniel’s “had made, sponsored, or approved” the Bad Spaniels squeak toy. As VIP notes in its Supreme Court brief, however, there is little basis for concluding that even those people thought Jack Daniel’s was the source of the squeak toy; with no evidence of actual real-world confusion, the mistaken survey participants probably thought that Jack Daniel’s had given a dog-toy manufacturer permission to make the parody product. Even so, the district judge went on to rule for Jack Daniel’s.
The Lanham Act and the First Amendment
The Supreme Court decides legal issues, not disputed questions of fact. Accordingly, the issue before it is not whether the district court correctly applied the multi-factor likelihood-of-confusion test. Rather, the crucial question is whether that is the correct approach.
The U.S. Court of Appeals for the Ninth Circuit—which reversed the initial trial court judgment for Jack Daniel’s—applied a stricter test derived from the 1989 ruling of the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi. In that case, the court relied on the First Amendment to reject a lawsuit by famed dancer/actor Ginger Rogers against the makers of a film titled Ginger and Fred (and directed by Federico Fellini). Rogers argued that, in light of its title, some people would mistakenly think that she and her on-screen dance partner Fred Astaire had made or endorsed the film. The court held that where the defendant produces a work of artistic expression, the “First Amendment . . . must . . . inform [a court’s] consideration of the scope of the [Lanham] Act as applied to claims involving” the work.
Jack Daniel’s argues to the Supreme Court that the Rogers test is inconsistent with the text of the Lanham Act and not required by the First Amendment. Part of the statutory dispute concerns whether the Bad Spaniels dog toy falls within an exception to Lanham Act liability for trademark dilution for “noncommercial” use. An excellent amicus brief filed by Harvard Law Professor Rebecca Tushnet on behalf of First Amendment scholars argues that “[]commercial” speech, as that term is used in the Lanham Act, does not cover all expression that happens to be sold for money, but only speech that “proposes a commercial transaction.” Otherwise, the Lanham Act could be used to block a great deal of First Amendment-protected speech.
Jack Daniel’s and its amici push back by characterizing the Bad Spaniels dog toy as a hybrid of commercial and noncommercial expression. They point to the 1994 Supreme Court case of Campbell v. Acuff-Rose Music, Inc., which involved a lawsuit alleging that 2 Live Crew’s version of Roy Orbison’s song “Oh, Pretty Woman” infringed the copyright. Jack Daniel’s points out that there the Court treated the 2 Live Crew song as commercial in nature, even though it was a parody. Likewise, Jack Daniel’s argues, a parody toy can be commercial for purposes of the Lanham Act.
Yet seen in wider perspective, Campbell is a stronger precedent for VIP than for Jack Daniel’s. Although the Campbell Court did not expressly rely on the First Amendment in construing the Copyright Act, the ruling made it quite difficult for a plaintiff to prevail in a copyright infringement suit against a parodist. “Parody’s humor,” Justice Souter wrote for the unanimous Court, “necessarily springs from recognizable allusion to its object through distorted imitation.” That is a pretty good description of the relation of a Bad Spaniel dog toy to a bottle of Jack Daniel’s. And just as copyright law should not be construed to stymie parody, neither should trademark law.
The Humor in Confusion
Trademark protection helps consumers identify brands they trust. If someone goes to a liquor store seeking a bottle of Jack Daniel’s and accidentally purchases a bottle of a lookalike knockoff (labeled “Jock Daniel,” say, and otherwise nearly identical), that will harm both Jack Daniel’s and the consumer. Trademark law thus justifiably limits the speech of makers of knockoff and other goods that would mislead or unduly confuse consumers.
In fashioning a rule of law, the Justices must apparently ask at what point the cost to trademark policies imposed by consumer confusion is so high as to justify limits on presumptively protected parodic speech. But that way of looking at the matter may be too generous to Jack Daniel’s. Confusion is not simply an unfortunate byproduct of parody that trademark holders bear. Confusion can sometimes be part of what makes parody work. My own experience illustrates how.
As regular Verdict readers know, in addition to my bi-weekly contributions to this site, I also publish a blog, Dorf on Law, that focuses on legal issues (as well as politics, economics, and occasionally other topics). The essays on Dorf on Law by me and my co-bloggers are generally serious, but each year on April Fools’ Day I publish a parody essay poking fun at myself, other legal academics, or other persons or institutions. As a rule, I never indicate in the essay that it is an April Fools’ joke. Why not? Because that could spoil the fun. Most years I receive emails from readers saying something like “you had me until . . . .” For these readers, the surprise of an increasingly ridiculous story they had initially taken seriously adds to the enjoyment of the essay.
In some years, my failure to identify my parody posts as such has led to unintentional but hilarious mischief. My 2010 April Fools’ post described a new “faculty hotness” category for US News rankings of law schools. It included the claim that University of Chicago Law Professor Brian Leiter had come up with an alternative methodology under which, according to a bogus quote I attributed to him, his own faculty turned “out to be more than three degrees hotter than their closest competitors.” I inadvertently fooled the University of Chicago’s publicity department, which put out a statement touting its own Professor Leiter’s “comments on faculty hotness.”
In 2017, when Newsweek had blanket permission to republish my blog posts, the magazine republished my April Fools’ piece as though it were serious, including a picture I used an online tool to generate showing then-President Donald Trump holding up an official signed proclamation stating, in full: “I hereby sign this order to speed up the explosion of Obamacare so that I can replace it with something terrific lickety split. Suck on that Paul Ryan, Freedom Caucus, and Democrat aka loser party.”
Consumer confusion can undermine trademarks, but confusion is often a feature of parody, not a bug. I share VIP’s doubts that anyone would actually think Jack Daniel’s has branched out into making poop-themed dog toys, but even if some number of such people are confused, that seems like a small price to pay for good speech-based fun.
Jack Daniel’s proclaims in its principal merits brief in the Supreme Court that it “appreciates a good joke as much as anyone.” Its lawsuit suggests otherwise. The company’s management and lawyers should lighten up. Perhaps a shot of their favorite Tennessee whiskey would help.