In Jack Daniel’s v. VIP Products, the U.S. Supreme Court was asked to decide whether a chewable “Bad Spaniels” dog toy shaped like a bottle of Jack Daniel’s whiskey violated Jack Daniel’s trademark rights. VIP claimed its dog toy was First Amendment free speech under the Rogers test—which protects unauthorized trademark use if the use is artistically relevant and not explicitly misleading. But the Court unanimously rejected VIP’s argument and held that Rogers does not apply when the challenged mark “is used as a [trade]mark.”1 The case now goes back to the Ninth Circuit, where VIP must defend its Bad Spaniels toy against more plaintiff-friendly tests for trademark infringement and dilution under the federal Trademark Act.
The Supreme Court described its holding in Jack Daniel’s as “narrow.”2 But some observers believe the case is not as narrow as the Court claimed. Others fear it threatens free speech that criticizes trademark owners.
Before Jack Daniel’s, the Rogers test gave makers of parody products (like VIP’s Bad Spaniels dog toy) a convenient escape hatch if they were sued for trademark infringement. Rogers was a powerful defense because it short-circuited the usual likelihood-of-confusion test for trademark infringement. If a court followed Rogers and found that the challenged use of a trademark owner’s mark was constitutionally protected free speech, the court would not consider whether the use was trademark infringement (or dilution) under the federal Trademark Act.
In Jack Daniel’s, the Supreme Court had no doubt that VIP was using its imitations of Jack Daniel’s marks as trademarks. A bottle of Jack Daniel’s whiskey features at least five federally registered marks—including one that protects the bottle’s shape or “trade dress”—and VIP’s Bad Spaniels toy mimicked all of them. Many of VIP’s riffs on Jack Daniel’s trademarks were overtly humorous and possibly derogatory. But all were unmistakable efforts to copy the look and feel of Jack Daniel’s trademarks. For instance, “Old No. 7 Brand Tennessee Sour Mash Whiskey” in the Jack Daniel’s label became “The Old No. 2 On Your Tennessee Carpet” in the Bad Spaniels label.3 VIP also effectively admitted it was engaged in trademark use by obtaining federal registrations for several of its parody marks, including “Dos Perros” (cf. Dos Equis), “Smella Arpaw” (cf. Stella Artois), and “Doggie Walker” (cf. Johnnie Walker).
The Supreme Court emphasized that it decided Jack Daniel’s on “narrow” grounds, without addressing “whether the Rogers test is ever appropriate ….”4 Instead, the Court held that federal laws prohibiting trademark infringement and “dilution” of famous marks play nicely with the First Amendment. In other words, “‘Whatever first amendment rights you may have in calling the brew you make in your bathtub “Pepsi” are ‘outweighed by the buyer’s interest in not being fooled into buying it.'”5 And so, the Court held that “Rogers does not apply when the challenged use of a mark is as a [trade]mark.”6
Legal commentators have raised two potential concerns about the ruling in Jack Daniel’s: First, some argue the decision is not truly “narrow” because the law that defines trademark use is unclear.7 Second, others fear that Jack Daniel’s threatens free speech by discouraging the creation of brands that mock or criticize other trademarks.8
1. Is Jack Daniel’s really a “narrow” decision?
Addressing the first concern, Professor Mark McKenna argues that the definition of trademark “use” is “totally and deeply controversial” and “kind of you know it when you see it.”9 This is partly true but also somewhat exaggerated.
The federal Trademark Act defines a “trademark” as a mark that a person uses “to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods.”10 This definition requires analyzing whether consumers will interpret a mark as a source identifier (e.g., this is a Nike shoe). And evidence about consumer perception of a mark can be costly to develop and highly subjective. But the Trademark Act has long required most of the millions of trademark applications filed with the U.S. Patent and Trademark Office (USPTO) to contain evidence of trademark use before they can mature into federal registrations.11 As a result, there is already a substantial body of case law that can help clarify this point, especially in the Federal Circuit Court of Appeals, which has appellate jurisdiction over the USPTO.12
While some worry that lower courts are broadly applying Jack Daniel’s to non-trademark speech, the cases cited as examples of this are complex and usually involve what is at least arguably trademark use. For example, in a case challenging the title of HGTV’s “Ugliest House in America” television show, the court did not allow HGTV to dismiss the case under Rogers even though TV shows are expressive works protected by the First Amendment.13 But the title of a TV show or other “series” of creative works has long been recognized as having the ability to function as a trademark.14
In another case where the Rogers escape hatch was slammed shut, the authors of a book titled Gringo sued over a Gringo movie released on Amazon Prime.15 The title of a book, movie, or other “single creative work” is usually held not to function as a trademark.16 But after Jack Daniel’s, the Ninth Circuit ordered the trial court to rehear the Gringo case, leading some commentators to question whether Jack Daniel’s had effectively abolished the Rogers test. In the Gringo case, however, there was a genuine dispute about whether the book title had acquired “secondary meaning” and thus functioned as a trademark. And because the case was decided at the motion to dismiss stage, it made sense for the trial court to follow Jack Daniel’s. Conversely, if the evidence had shown the relevant marks were not used as trademarks, the trial court could have recognized Rogers or another First Amendment defense without disturbing the Supreme Court’s narrow holding in Jack Daniel’s.
There is at least one line in Jack Daniel’s that arguably muddies the definition of trademark “use.” Specifically, the opinion states:
When … the [challenged] use is “at least in part” for “source identification”—when the defendant may be “trading on the good will of the trademark owner to market its own goods”—Rogers has no proper role.17
Out of context, this sentence could be interpreted as redefining “use” to include anything that leverages the “good will” of another brand to catch a consumer’s eye, even if the use is not source-identifying. But writ large, it’s clear that the Supreme Court intended Jack Daniel’s to be a “narrow” decision and never claimed to invalidate the statutory definition of trademark “use.” The lower courts should apply Jack Daniel’s accordingly.
2. Does Jack Daniel’s threaten free speech?
The fear that Jack Daniel’s will threaten the freedom to criticize, parody, or otherwise speak about trademarks or trademark owners seems, at least for now, to be unfounded. The Supreme Court has long recognized that the First Amendment protects even deeply offensive speech.18 And the holding in Jack Daniel’s notes that “parody must … create contrasts [with the parodied mark], so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion.”19 In other words, the Court recognized that consumers know brands normally do not ridicule or criticize themselves. The Court also noted that there may be “rare situations” where the usual likelihood-of-confusion test is insufficient to protect free expression.20
But in Jack Daniel’s, the Supreme Court seemed to recognize that VIP’s primary purpose was not to criticize but rather to commandeer the goodwill of Jack Daniel’s trademarks to boost sales of VIP’s dog toys.21 Considering VIP’s blatant mimicry of Jack Daniel’s trademarks and trade dress, it’s no surprise that the Court held this was a trademark case where Jack Daniel’s was entitled to litigate its claims under the federal Trademark Act. Of course, defending a statutory trademark infringement claim is a heavier lift for trademark defendants than invoking the “but it’s funny” (or criticism or other free speech) defense under Rogers. But the Court found this is what the First Amendment permits and the Trademark Act requires. And because Jack Daniel’s applies the same standard to virtually all trademarks—expressive or otherwise—it only seems fair.
Overall, the Supreme Court’s holding in Jack Daniel’s only restricts a narrow slice of speech about trademarks where (1) the speech is also used as a source identifier (trademark) for the speaker’s goods or services and (2) the speaker’s mark is confusingly similar to a senior trademark or dilutes a “famous” mark. When there is uncertainty about whether a challenged use is trademark use, parties should look to other judicial circuits and especially the Federal Circuit for helpful precedents. And if a rare situation arises where the likelihood-of-confusion test will stifle free speech, the holding in Jack Daniel’s allows for heightened First Amendment scrutiny in that exceptional case.