Trademark Parody and Freedom of Speech in the U.S. – JD Supra

Food and beverage brands are routinely listed among the most famous and valuable brands in the world.1 With fame, however, comes the increased chance that a brand will be a target for trademark parodists. A March 2020 appellate court decision in a case involving the famous whiskey brand JACK DANIELS illustrates the difficulties brands face when pursuing claims against trademark parodies in the U.S.2

U.S. law does not provide for strict liability preventing the unauthorized use of anothers trademark. Instead, the parodists use must trigger liability under trademark laws prohibiting infringement or dilution or through common law unfair competition claims:

An infringement or unfair competition claim requires proof that the parodists use is likely to cause confusion.

A dilution claim requires proof that the parodists use is likely to blur or tarnish the brand owners famous mark.

There is also no automatic parody defense to an infringement claim. Common sense suggests it may be difficult to prove likelihood of confusion sufficient to meet the test for trademark infringement when faced with a successful parody, i.e., one that immediately communicates that the parodist is making a commentary about a brand through humor or criticism. If the humor or criticism is recognized and obvious making the parody successful why would consumers be confused? On the other hand, if it is difficult to detect the commentary and instead only the brand attributes are readily apparent in the parodists product making the attempt at parody unsuccessful the brand owner is more readily able to prove that confusion is likely.

In contrast to infringement claims, there is a parody defense under the fair use exclusion to federal dilution claims for at least some parodies. The Trademark Dilution Revision Act (TDRA) excludes from its coverage both parodies involving fair use of a famous mark other than as a designation of source for the parodists own goods or services and any noncommercial use of a mark.3 The fair use defense does not apply when the parodist uses the parody as its own trademark. Still, the brand owner must prove that the parody is likely to dilute the distinctiveness of the brand owners mark either by blurring or by tarnishment, with proof that the association of the parody with the brand is likely to impair or harm the brand. Such proof may not be obvious or readily available as to a parody that is perceived as a mere joke in the form of a noncompetitive product like a dog toy using as its brand name a play on words to mimic the brand of a luxury product, together with trade dress copied from the luxury product.4

On the other hand, a competitors advertisement that uses alterations to mock and belittle a brands mascot, even if amusing, crosses the line.5

In addition to the potential difficulties with proving the elements of the underlying claims, free speech considerations may come into play and override the brand owners trademark rights. The First Amendment to the U.S. Constitution provides that Congress shall make no law abridging the freedom of speech.6 Parody has been recognized as a form of artistic expression, and, where artistic expression is involved, the public interest in avoiding consumer confusion must be balanced against the public interest in free speech.7 Thus, the First Amendment right to freedom of speech can conflict with the consumer and brand owner protection goals of trademark laws. When an expressive work protected by the First Amendment is involved, courts apply the Rogers v. Grimaldi test and the brand owner must show that defendants use of the mark is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work.8

Historically, this test comes into play in cases involving works that are clearly artistic and expressive at their very core, such as movies, songs, opinion pieces and articles appearing on websites.9 The recent JACK DANIELS case extended the test to a novelty commercial product, namely dog chew toys, leaving brand owners to wonder just how far Rogers v. Grimaldi will be taken by the courts.10

In response to VIP Products suit for a declaratory judgment, Jack Daniels challenged VIP Products use of JACK DANIELS trade dress in connection with its dog chew toy shown below,11 which features the name BAD SPANIELS and various scatological references:

The district court found in favor of Jack Daniels on both infringement and dilution grounds.12 On the infringement claim, the court found that confusion was likely, with the factors that favored Jack Daniels including actual confusion demonstrated through a survey, VIPs intent to capitalize on the brands goodwill, the strength of the JACK DANIELS marks, the proximity of the goods (due to the Jack Daniels licensing program, which included dog products), the similarity of the marks and the marketing channels, and the low degree of care exercised by the buyer when purchasing the inexpensive dog toy novelty products. The district court also found that Jack Daniels established at the bench trial all the requisite elements for dilution by tarnishment: fame, similarity, and reputational harm.13 The lower court concluded that the claim of parody should be disregarded where the parodist seeks to capitalize on a famous marks popularity for the parodists own commercial use.14

As part of its trial evidence, Jack Daniels submitted testimony from an expert in consumer behavior, who relied on general consumer psychology research to opine that the association of any food or beverage with defecation creates disgust in the mind of the consumer with respect to that food or beverage. The court described this as [w]ell documented empirical research support[ing] that the negative associations of Old No. 2 defecation and poo by weight [on the parody product label] creates disgust in the mind of the consumer when the consumer is evaluating [the brand owners] Jack Daniels whiskey.15 The court accepted this testimony to support a finding of reputational harm to Jack Daniels, because the parodying products references to defecation would creat[e] negative associations, either consciously or unconsciously, and undermin[e] the pre-existing positive associations with its whiskey that would be particularly harmful for a brand selling goods for human consumption: human consumption and canine excrement do not mix.16

The court also found tarnishment based on associating the whiskey brand with toys, particularly the kinds of toys that might appeal to children, because Jack Daniels, as a seller of alcoholic beverages, has a policy that it does not market to children, does not license goods for children, and does not license goods that might appeal to children.17

While the First Amendment was not addressed in the final district court decision, the court had held earlier in the litigation that the First Amendment does not establish protection for the adaptation of the JACK DANIELS trademark and trade dress for the commercial selling of a noncompeting product, distinguishing the dog toy from the expressive works to which the Rogers test had been applied in the Ninth Circuit.18

In a somewhat surprising decision in March 2020, the Ninth Circuit disagreed with the district court regarding whether the dog chew toy is an expressive work. The circuit court held that VIPs Bad Spaniels dog toy is an expressive work entitled to First Amendment protection, reversed the district courts judgment on the dilution claim on the grounds that the noncommercial use defense applied, vacated the judgment on trademark infringement, and remanded back to the lower court for further proceedings on the infringement claim. The appeals court acknowledged that the dog toy was surely not the equivalent of the Mona Lisa but held that the humorous message was sufficient expressive content and that such expressive content is not rendered non-expressive simply because [the product] is sold commercially.19

Jack Daniels sought rehearing en banc by the full appeals court, arguing that the Ninth Circuits designation of a commercial novelty product as an expressive work:

erroneously reaches ordinary commercial products creatively marketed by their manufacturers, thus producing an exception that swallows the traditional rules governing trademark infringement. It also unnecessarily injects constitutional issues into routine cases and threatens the publics ability to avoid confusion, as well as trademark owners ability to protect their marks.20

The Ninth Circuit denied the request for rehearing en banc on June 3, 2020.

Now back at the district court, in order to succeed, Jack Daniels will be required to first satisfy at least one of the two prongs of the Rogers v. Grimaldi test: that the use of the JACK DANIELS marks by VIP was either not artistically relevant or explicitly misleading. Artistic relevance is usually found, giving a parodist broad artistic license, so to speak. Similarly, for a reference to be explicitly misleading, the abuse of the brand owners mark must be particularly compelling. The upshot is that only rarely has a brand owner been able to avoid a swift loss once Rogers is applied, reflecting the difficulty of meeting this test.21

It remains to be seen whether the Ninth Circuits application of the Rogers test to a novelty product will be accepted in other circuits or will be further challenged through a petition for review by the Supreme Court. Meanwhile, brand owners wishing to bring action to stop novelty parody products may wish to avoid the Ninth Circuit.

1 See, e.g., The Worlds Most Valuable Brands 2020, available at https://www.forbes.com/the-worlds-most-valuable-brands/#1c950ba8119c (last accessed Aug. 2, 2020), listing McDonalds, Budweiser, Coca-Cola, Pepsi, Nescafe, Starbucks and Frito-Lay among the first 50 such brands.

2 VIP Prods., LLC v. Jack Daniels Props., Inc., 953 F. 3d 1170 (9th Cir. 2020).

3 15 U.S.C. 1125(c)(3).

4 See, e.g., Louis Vuitton Malletier S.A.v. Haute Diggity Dog, LLC, 507 F.3d 252, 252 (4th Cir. 2007). But see Anheuser-Busch, Inc. v. VIP Prods., LLC, 666 F. Supp. 2d 974 (E.D. Mo. 2008), where a dog chew toy offered by VIP Products using BUDWEISER trade dress and the BUTTWIPER name was enjoined. For images from these and other parody cases, as well as a check list of pertinent factual considerations, see the authors article, Free Ride or Free Speech? Predicting Results and Providing Advice for Trademark Disputes Involving Parody, 109 The Trademark Reporter 691 (July-Aug. 2019).

5 Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 46 (2d Cir. 1994).

6 U.S. Const. amend. I.

7 Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 414 (S.D.N.Y. 2002).

8 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

9 Id. at 999 (movie title); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) (song title); Radiance Found., Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015) (website and opinion piece).

10 See Amicus Brief of the International Trademark Association submitted in support of Jack Daniels Petition for Rehearing or Rehearing En Banc, arguing that the appellate court holding has the potential to exempt from trademark infringement liability any product that employs a modicum of creative expression on packaging or on the products themselves. Available at https://www.inta.org/wp-content/uploads/public-files/advocacy/amicus-briefs/INTA-Amicus-Brief-VIP-v-JDPI.pdf (last accessed Aug. 2, 2020).

11 Images from VIPs Opening Brief on Appeal, filed Nov. 9, 2018, available at Dkt. No. 16, p. 20-21, in VIP Prods., LLC v. Jack Daniels Props., Inc., Appeal No. 18-16012 (9th Cir.).

12 VIP Prods., LLC v. Jack Daniels Props., Inc., 291 F. Supp. 3d 891 (D. Ariz. 2018).

13 Id. at 905.

14 Id. at 908. To support this proposition, the court cited Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1175 (C.D. Cal. 1986), where DOGIVA dog biscuits were enjoined based on likely confusion and/or dilution with GODIVA chocolates. In the Grey case, the parodists testimony regarding development of the parody products and permission allegedly received from a former GODIVA business person was found to be internally inconsistent and contradicted in significant part by the testimony of others and documentary evidence. In other words, the court found that the parodist was a liar and that finding permeates the opinion and likely influenced the outcome.

15 Id. at 903.

16 Id. at 904.

17 Id.

18 Decision on Summary Judgment, VIP Prods., LLC v. Jack Daniels Props., Inc., No. CV-14-2057-PHX-SMM (D. Ariz. Sept. 27, 2016).

19 953 F. 3d at 1175.

20 Jack Daniels Petition for Rehearing and Petition for Rehearing En Banc, VIP Prods., LLC v. Jack Daniels Props., Inc., No. 18-16012 (9th Cir. Apr. 14, 2020 (Dkt 63-1 at 6)).

21 In Parks v. LaFace Records, for example, plaintiff was able to convince an appeals court that a triable issue of fact was presented as to whether defendants use of Rosa Parks as the title of the song was artistically relevant to the song content, where the song was not about Ms. Parks but did use the refrain Everybody move to the back of the bus. 329 F.3d 437, 451-452 (6th Cir. 2003), rehg and suggestion for rehg en banc denied (July 2, 2003), and cert. denied, 540 U.S. 1074 (2003). In Gordon v. Drape Creative, Inc., 909 F.3d 257, 270271 (9th Cir. 2018), the Ninth Circuit found there was a triable issue of fact as to whether defendants simple use of Gordons mark Honey Badger dont care on greeting cards with minimal artistic expression of their own in the same way that Gordon was using the mark was explicitly misleading.

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Trademark Parody and Freedom of Speech in the U.S. - JD Supra

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