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Free Speech and Trademark Rights. Where is the Line?

on Wednesday, 29 March 2023 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

On November 21, 2022, the Supreme Court agreed to review the Ninth Circuit’s decisions in Jack Daniel’s Properties, Inc. v. VIP Products LLC, wherein the federal appeals court held that the alleged infringing mark was an expressive work protected by the First Amendment. Jack Daniel’s concerns a lawsuit filed by Jack Daniels, the whiskey distiller, alleging that a dog toy made by VIP Products violates trademarks owned by Jack Daniel’s. The dog toy in question mimics Jack Daniel’s famous whiskey bottles with dog-themed jokes. For example, replacing “Old No. 7” with “the Old No. 2, on your Tennessee Carpet.” By granting the petition for writ of certiorari, the Supreme Court will be expected to establish the boundaries between parody protected by the U.S. Constitution’s First Amendment and a trademark owner’s right to protect against infringement.

The Ninth Circuit based their holding on the Rogers Test, stemming from the Second Circuit decision in Rogers v. Grimaldi, brought by performer Ginger Rogers. Ginger Rogers claimed that the title of the movie “Ginger and Fred,” a film which refers to her esteemed dance partnership with Fred Astaire, implied that she was involved in the movie when the opposite was true. The Second Circuit held for the defendants, finding that the film was a work of artistic expression, not a commercial product, and thus was beyond the scope of the Lanham Act. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Through Rogers, the Rogers Test was born. Under the Rogers Test, the use of a third-party mark in an expressive work does not violate the Lanham Act, “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Id. at 999.

The Supreme Court is anticipated to clarify whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood of confusion analysis, or whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act. The implications of this decision, however, will have a sweeping effect. Several amicus briefs have been filed with prominent brand owners including Nike, Campbell Soup, Patagonia, and Levi Strauss claiming that a ruling for VIP Products would threaten their ability to protect their brands and trademarks from bad actors. The Biden administration filed a brief stating that the normal trademark infringement standard should have been applied by the Ninth Circuit, with parody as one of the factors considered. Conversely, VIP Products claims a ruling favoring Jack Daniel’s would have a stifling effect on free speech.

Oral arguments were held on March 22, 2023 and the Court’s decision is expected in June 2023. We will continue to monitor the Jack Daniel’s case and provide updates on any significant developments.

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