{"id":3735,"date":"2022-11-18T08:00:00","date_gmt":"2022-11-18T13:00:00","guid":{"rendered":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/?p=3735"},"modified":"2024-09-27T18:57:21","modified_gmt":"2024-09-27T18:57:21","slug":"but-i-was-just-joking-the-insurmountable-infringement-defense","status":"publish","type":"post","link":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/but-i-was-just-joking-the-insurmountable-infringement-defense\/","title":{"rendered":"\u201cBut I was Just Joking!\u201d: The Insurmountable Infringement Defense<\/strong>"},"content":{"rendered":"\n
\"\"
Screenshot of the Bad Spaniels website, taken by David Woodlief<\/figcaption><\/figure>\n\n\n\n

By David Woodlief,<\/a> Vol. 21 Staff Writer<\/p>\n\n\n\n

\u201cI was just joking!\u201d serves as a less than convincing defense to most accusations. Not so in the Ninth Circuit. There, as Jack Daniels learned in a case it now seeks to bring to the Supreme Court<\/a>, where an otherwise infringing product \u201ccommunicates a \u2018humorous message\u2019<\/a> \u201d it is almost impossible to win.<\/p>\n\n\n\n

Jack Daniels and many commentators fear that the standard \u201cplaces brand owners at significant risk of infringements and dilutions masquerading as expressive works.<\/a>\u201d In so doing, they place the value of commerce above the value of expression and do a disservice to the First Amendment.<\/p>\n\n\n\n

Is a Squeaky Toy Art?<\/strong><\/p>\n\n\n\n

            VIP Enterprises, LLC, sells dog toys on its website, mydogtoy.com, including a variety of squeaker toys that parody famous beverage brands<\/a>. For instance, \u201cCataroma<\/a>\u201d associates Corona beer with a cat\u2019s litter-box, and \u201cMountain Drool<\/a>\u201d associates Mountain Dew with dog slobber.<\/p>\n\n\n\n

Among VIP\u2019s products is \u201cBad Spaniels<\/a>,\u201d which mimics the shape and label of Jack Daniel\u2019s signature bottle<\/a>. Instead of reading \u201cOld No.7 Tennessee Sour Mash Whiskey,\u201d the chew toy purports to contain \u201cThe Old No.2 On Your Tennessee Carpet\u201d and to be \u201c43% Poo by Vol.\u201d rather than \u201c40% Alc. By Vol.\u201d Unamused, Jack Daniels demanded<\/a> that VIP cease use of its protected intellectual property. VIP responded by filing suit in Arizona, preemptively seeking a declaration from the court that its product did not infringe or dilute Jack Daniel\u2019s intellectual property.<\/p>\n\n\n\n

VIP argued<\/a> that Bad Spaniels was a parody and thus an expressive work deserving protection under the First Amendment. Specifically, VIP argued that this was protected speech because it used Jack Daniel\u2019s mark for a purpose \u201cbeyond its source identifying function\u201d and not as a part of a commercial transaction<\/em>. At summary judgment<\/a>, the court rejected VIP\u2019s argument, finding that parody protections were reserved for more traditionally expressive works like movies, plays, books, and songs. After a four-day bench trial<\/a>, the court found in favor of Jack Daniels on claims of dilution by tarnishment<\/a> and trademark and trade dress infringement<\/a> and enjoined VIP from selling \u201cBad Spaniels.\u201d<\/p>\n\n\n\n

On appeal, the Ninth Circuit saw the humor<\/a>. Leaving the factual conclusions of the trial court undisturbed, it overturned the decision. It reaffirmed prior holdings that where a work is \u201cexpressive,\u201d it deserves special protection. Then, an infringement action can only succeed where the work fails the Rogers<\/em> test<\/a> and \u201cis either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work<\/a>.\u201d<\/p>\n\n\n\n

\u201cBad Spaniels,\u201d the court said<\/a>, \u201cjuxtapose[es] the irreverent representation of the trademark with the idealized image created by the mark\u2019s owner\u201d and thus \u201ccomments humorously on precisely those elements that Jack Daniels seeks to enforce here.\u201d Regarding dilution<\/a>, the court said that the humorous message of the product places it into the \u201cnoncommercial\u201d exception to dilution actions, rather than the parody exception that excludes use \u201cas a designation of source for the person\u2019s own goods or services<\/a>.\u201d<\/p>\n\n\n\n

The Supreme Court refused to hear an appeal<\/a> and on remand the district court entered judgment in favor of VIP<\/a>, finding that Jack Daniel\u2019s could not overcome either path available under the Rogers <\/em>test. The Ninth Circuit affirmed<\/a>.<\/p>\n\n\n\n

Jack Strikes Back<\/strong><\/p>\n\n\n\n

            Now, Jack Daniels seeks Supreme Court review a second time<\/a>. It claims that the Ninth Circuit has created a circuit split and ignored the built-in parody protections within trademark law in favor of protections of its own devise.<\/p>\n\n\n\n

            In order to establish a trademark infringement action, a plaintiff must prove three elements<\/a>: (1) the existence of a valid and legally protectable mark, (2) which the plaintiff owns, and (3) that \u201cthe defendant\u2019s use of the mark\u201d \u201ccauses a likelihood of confusion.\u201d In addition, the circuit courts have long recognized special First Amendment protections<\/a> in artistic works and titles because they \u201ccombin[e] artistic expression and commercial promotion.\u201d<\/p>\n\n\n\n

The Second Circuit first used the Rogers<\/em> test in Rogers v. Grimaldi<\/em><\/a>, because it saw a need for more protection of artistic works and their titles. In that case, the court held that a movie title, \u201cGinger and Fred,\u201d which clearly connected itself to Ginger Rogers and Fred Astaire, did not run afoul of trademark protections because it was artistically relevant to the underlying work and not explicitly misleading.<\/p>\n\n\n\n

In other instances, the courts have been less deferential. When dealing with the parodic use of another\u2019s mark for the sale of commercial products, other circuits, including the Second<\/a>, Fourth<\/a>, Seventh<\/a>, and Eighth<\/a>, provide heightened protection only in that a successful parody weighs against finding a likelihood of confusion. This is the path Jack Daniels proposes.<\/p>\n\n\n\n

            In order to establish dilution by tarnishment<\/a>, the plaintiff must demonstrate that \u201cthe association arising from the similarity between a mark . . . and a famous mark that harms the reputation of the famous mark,\u201d subject to a few exclusions including noncommercial use and some parodies<\/a>, those which do not designate the source of the person\u2019s own goods or services.<\/p>\n\n\n\n

Bad Spaniels Make Good Law<\/strong><\/p>\n\n\n\n

            While the Ninth Circuit\u2019s test may be very permissive, its protection of parody is more in line with First Amendment and fair-use law in other areas than the minor deference argued for.<\/p>\n\n\n\n

In Hustler v. Falwell<\/em><\/a>, the Supreme Court held that the First Amendment barred a claim for intentional infliction of emotional distress on the basis of a parody Campari ad lampooning Jerry Falwell. It did so because it believed parody and satire \u201cplay[] a prominent role in public and political debate,\u201d where a public figure<\/a> is the subject. Here, Jack Daniels, who must prove that its mark is famous in order to prevail on its dilution by tarnishment claim, is similarly situated to Jerry Falwell. Like the Campari ad in that case, the parody of Bad Spaniels provides valuable social commentary on a matter of public debate. Though there may be no one proper interpretation of the parody, it provokes the viewer to ask questions about the role that Jack Daniels, other large brands, and alcohol play in society. That it does so in a subtle, humorous, and denigrating way does not deprive it of the same value, contributing to public debate, that parody provides to society.<\/p>\n\n\n\n

Against that backdrop, it is hard to understand how a commercial product, like a dog toy, which expresses a message should receive less protection than traditionally expressive works like movies and books receive under the Rogers<\/em> standard. The justices are considering the case in conference today, November 18, 2022. Should it take up the case, Jack Daniels v. VIP Products<\/em> would present the Supreme Court with an opportunity to reiterate the value of parody and to cement First Amendment protection throughout the country. It should do so.<\/p>\n\n\n\n

***UPDATE*** On November 21, 2022, the Supreme Court granted <\/a>the certiorari petition and will hear the case!<\/p>\n","protected":false},"excerpt":{"rendered":"

\u201cI was just joking!\u201d serves as a less than convincing defense to most accusations. Not so in the Ninth Circuit. There, as Jack Daniels learned in a case it now seeks to bring to the Supreme Court, where an otherwise infringing product \u201ccommunicates a \u2018humorous message\u2019 \u201d it is almost impossible to win.<\/p>\n","protected":false},"author":10,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":true,"template":"","format":"standard","meta":[],"categories":[396,10],"tags":[133,258,327,346],"_links":{"self":[{"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/posts\/3735"}],"collection":[{"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/users\/10"}],"replies":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/comments?post=3735"}],"version-history":[{"count":1,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/posts\/3735\/revisions"}],"predecessor-version":[{"id":5286,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/posts\/3735\/revisions\/5286"}],"wp:attachment":[{"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/media?parent=3735"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/categories?post=3735"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/tags?post=3735"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}