Recently, we saw the filing of a hilarious brief by the Onion in Novak v. City of Pharm in which an Ohio man was prosecuted for posting a parody of his local police department. Now the Court has accepted a different parody case involving Jack Daniels where the company is suing the maker of dog chew toys. The case is Jack Daniel’s Properties Inc. v. VIP Products LLC.
Some of us have been following the Novak case as an important free speech case after Anthony Novak was prosecuted for a parody on Facebook to mock the police department in Parma, Ohio. He was charged (and later acquitted) of a felony under an Ohio law prohibiting the use of a computer to “disrupt” or “interrupt” police functions.
The Onion filed a brilliant parody brief to support the parody claim. It began with the following declaration:
The Onion is the world’s leading news publication, offering highly acclaimed, universally revered coverage of breaking national, international, and local news events. Rising from its humble beginnings as a print newspaper in 1756, The Onion now enjoys a daily readership of 4.3 trillion and has grown into the single most powerful and influential organization in human history.
In addition to maintaining a towering standard of excellence to which the rest of the industry aspires, The Onion supports more than 350,000 full- and parttime journalism jobs in its numerous news bureaus and manual labor camps stationed around the world, and members of its editorial board have served with distinction in an advisory capacity for such nations as China, Syria, Somalia, and the former Soviet Union. On top of its journalistic pursuits, The Onion also owns and operates the majority of the world’s transoceanic shipping lanes, stands on the nation’s leading edge on matters of deforestation and strip mining, and proudly conducts tests on millions of animals daily.
Now, the Court has accepted a parody case out of the United States Court of Appeals for the Ninth Circuit. Jack Daniels sued VIP over its introduction of the Silly Squeakers “Bad Spaniels” rubber squeaky toy. It is shaped like a whiskey bottle with a cartoon spaniel on the front and the caption: “Bad Spaniels, the Old No. 2, on your Tennessee Carpet.” On the back is a small disclaimer reading: “This product is not affiliated with Jack Daniel Distillery.”
That is clearly not enough for the distillery, which argued that people would be confused by the parody. While the Court previously declined the case at an earlier stage, it is now set for argument.
The district court opinion declared that Bad Spaniels Toy … alters JDPI’s trade dress in a way that creates new expressive content.”
The history here is interesting. The district court originally found for Jack Daniels and rejected VIP’s nominative fair use defense and First Amendment fair use defense. It found that the Bad Spaniels Toy was not an artistic or expressive work and therefore was not entitled to protection under the First Amendment.
The Ninth Circuit reversed and remanded. It found that it was expressive speech protected by the First Amendment.
On remand, the district court declined to apply the likelihood-of-confusion test in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) until it was satisfied that the expressive work was not protected under the First Amendment. That meant applying the test under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under the Rogers test, “the trademark owner does not have an actionable Lanham Act claim unless the use of the trademark is ‘either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work.’” Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443, 462 (9th Cir. 2020). The district court a accepted that VIP carried its burden that this was an expressive work, which seems unassailable.
“A parody functions just like a mash-up. It modifies and plays with the elements of an original work to express something new and different. Accordingly, ComicMix governs the outcome here. As JDPI recognizes elsewhere in its brief, VIP’s imitations of JDPI’s trademark and trade dress are the “centerpiece” of the Bad Spaniels Toy. (Doc. 302 at 20.) VIP is making a joke, and the joke turns on mimicking JDPI’s trade dress. This is more than adequate to satisfy the “above zero” relevance required by the Ninth Circuit’s interpretation of the Rogers test.”
What was interesting was the district court’s final statement. It continued to disagree with the Ninth Circuit and criticize the suggested unfairness in giving companies no option when faced with protected speech:
“Because JDPI cannot carry its burden to create a material issue of fact as to either of the Rogers prongs under Ninth Circuit precedent, the Court must conclude that the Bad Spaniels Toy is entitled to First Amendment protection and JDPI’s claim for trademark infringement must fail. However, it appears nearly impossible for any trademark holder to prevail under the Rogers test. Where relevance need be merely “above zero” – which is to say, relevance can be scant or de minimis – it is difficult to imagine what creative junior use would not pass the Rogers test. In fact, in the seven cases in which the Ninth Circuit has applied the Rogers test, it has never once found a mark irrelevant to a junior use. … Similarly, the “explicitly misleading” standard essentially displaces the likelihood-of-confusion test with a standard that excuses nearly any use less than slapping another’s trademark on your own work and calling it your own. The likelihood-of-confusion test provided a multi-factor consideration of the effects of a junior use on a senior user’s mark; the explicitly misleading test is unconcerned with the real-world effects on a senior user’s mark. Thus, while JDPI finds the depiction of a dog relishing a bowel movement on a carpet distasteful and an abuse of its mark, in the final analysis, JDPI has no means to protect the viability of its trademark. Yet, the Court is bound by Ninth Circuit precedent. For JDPI or similarly situated trademark holders to obtain a different outcome, they must seek relief before the United States Supreme Court or the United States Congress.”
I fail to see the great injustice in such a rule in protecting First Amendment expression. However, the Supreme Court has now accepted the case for a reason. The assumption is often that it is unhappy with the lower court decision (which would be good news for Jack Daniels). However, it can also reflect a desire to amplify or alter the underlying case. In this case, it may want to address the “above zero” approach. It could have also taken the case to address a split in the circuits. The Second, Seventh, and Eighth Circuits have expressly rejected the rule applied by the Ninth Circuit.
The Trademark Dilution Revision Act (TDRA) expressly excludes parody from dilution liability. However, the exception only applies if the challenged use is “other than as a designation of source for the person’s own goods or services.” 15 U.S.C. § 1125(c)(3)(A)(ii).
Thus, Jack Daniels claims that the Ninth Circuit has grafted on a test that negates the express language of the Latham Act. The company makes this plain in its brief:
“The Ninth Circuit’s infringement holding unjustifiably transforms humor into a get-of-out-the-Lanham-Act free card. To be sure, everyone likes a good joke. But VIP’s profit-motivated “joke” confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill.”
As will come as no surprise to many on this blog given my free speech writings, I favor the chew toy company. While the Court may choose to alter the “above zero” standard, I believe the result is still the right one on this expressive work. Otherwise, this case could take a large bite out of the First Amendment.
Would like to see Professor Turley cover the “Novak v. City of Pharm” case listed above.
Specifically why didn’t the DOJ’s Civil Rights Division enforce federal laws like Title 18 US Code 245 or 42 USC 1983 against the city officials? A citizens 1st and 8th Amendment rights were violated, which violates federal criminal law. Why didn’t DOJ indict?
By not enforcing federal law, it creates and incentivizes a “pattern & practice” of corruption by the local officials. The citizen then has to pay legal costs to go to court. There is little to no risk of penalty to the local officials.
This is essentially how local Jim Crow laws operated. A local official perceived themselves, in their little fiefdoms, to be in a constitution-free zone.
I’m not seeing the “free speech” issue here.
You don’t need to name your dog toy after Jack Daniels in order to mock Jack Daniels. They chose that name to try to make money off of the Jack Daniels name.
They should lose.
The Onion is parody. This is just a company trying to use a better known company’s Trademark to advance their business.
The whole POINT of Trademark is to keep people from doing that. No?
No. The whole point of trademarks is to protect the CONSUMER from being defrauded into purchasing an inferior product under the impression that it is a superior one. Since nobody is ever going to buy one of these toys thinking it’s a bottle of whiskey, there is no violation.
And the Trademark Dilution Act is a travesty that should have been struck down as exceeding Congress’s powers under the trademarks clause.
“The whole point of trademarks is to protect the CONSUMER . . .”
That is incorrect.
The primary purpose of trademark, which is a type of IP, is to protect the *creator’s* property. Consumer confusion is a secondary issue.
If that knockoff does not look remarkably similar to the original, then to you, all apples are just different.
Sorry Milhouse is more correct. There is actually no such thing as intellectual property.
You can not own ideas, or expressions.
The constitution allows congress to create special priviledges for creators, in return for public benefit.
The only legitimate justification for copyrights, patents, and trademarks is the benefit to the public.
“The only legitimate justification for copyrights, patents, and trademarks is the benefit to the public.”
So a novelist who spends months or years writing a novel, or an inventor who spends years creating a uniue product, is *not* “legitimate justification” to establish ownership and the right to profit?!
Creators of IP are not a means to a collective ends. They have a moral right to private ownership and personal profit, in the same way and for the same reasons as does a man who builds a house on his land.
What I described is the actual state of things – read the US constitution.
Next – constitution or not there can be no “ownership” – because the products of creative work are not property.
They do not share the attributes of property.
If you write a poem – I can copy it without taking anything tangible from you.
If you own a car – there is only one care, I can not “copy” it for free.
To be clear – I am not opposed to government securing compensation for creators.
But treating creative works as property is a bad idea – because they are not.
It results in BAD LAW to think of ideas as property.
Our founders thought copyrights should last 14 years. Later they allowed ONE renewal for 14 years
And copyrights had to be registered.
Today a work is copyrighted forever if it is unpublished and for more than a lifetime if it is published.
We keep extending copyrights longer and longer – because god forbid that Mickey Mouse should enter the public domain.
Many people worked to invent “the telephone” – but Bell’s patent application was filed a bit before others.
The other people who “invented” the telephone were not stealing from Bell. They worked on their own – or from the same prior sources as Bell.
They were just a step behind at the patent office door.
Regardless we LEGITIMATELY provide SOME protection, some ability to profit from creative works – because doing so benefits society.
NOT because ideas can be owned.
Decades ago IBM did a study and found they spend far more on defensive patenting than they make from patents – that they and most creators would be better off entirely without patents.
“[T]he products of creative work are not property. They do not share the attributes of property.”
A book is not physical?! An iPhone is not material?!
“If you write a poem – I can copy it without taking anything tangible from you.”
Except, of course, for the fact that you’d be stealing the time, effort, and thinking it took me to write that poem. And you would be taking the material values I could have bought, if you had paid me for that property.
“I am not opposed to government securing compensation for creators.”
Which is done via the IP laws. Without IP, you get legalized piracy.
“A book is not physical?! An iPhone is not material?!”
When I buy a book – I OWN IT – not the author.
When I buy an iPhone – I OWN IT – not the author.
AGAIN Real property has entirely different attributes than ideas.
““If you write a poem – I can copy it without taking anything tangible from you.”
Except, of course, for the fact that you’d be stealing the time, effort, and thinking it took me to write that poem.”
Obviously not. You chose to write the poem. YOU chose to spend time and effort doing so.
Not one took those from you.
” And you would be taking the material values I could have bought, if you had paid me for that property.”
Not property – your own arguments make it clear that creative work does not share the attributes of property.
I can only sell of give away my iphone ONCE – when I do it becomes the property of the person I give it to.
If I wish to do that again – I must make another iphone.
Real property can not be duplicated without nearly as much effort as creating it in the first place.
When you steal real property – you steal an actual thing that can only be fully possessed by one person.
That can not be divided and still remain whole.
““I am not opposed to government securing compensation for creators.”
Which is done via the IP laws. Without IP, you get legalized piracy.”
No – it can be done through laws. But not PROPERTY laws – because ideas are not property.
That is the core of this debate. You – and governments around the world are making a category error.
The nature of all law is intrinsically connected to the subject of the law. We criminalize acts of violence – not piano playing.
We enforce actual contracts – not wishes.
Again “I am not opposed to government securing compensation for creators.”
But treating ideas as property leads to bad law – because ideas are not property.
“. . . ideas are not property.”
Your constant repetition of that empty expression betrays a woeful ignorance of IP.
IP protects ideas that are given *physical* form — a book, a transitior, a pharmaceutical. That physical form is called “property.”
If you do not believe in protecting that property, then you are advocating legalized piracy.
Sam, I am very aware of the law and history of copyrights.
I have debated them extensively with Prof. Lessig who argued the unconstitutionality of the most recent copyright law extension.
The first major problem we have is with the phrase IP or intellectual property.
It is false and misleading. There is no actual property involved.
You are correct that the law USED to be about protecting the physical form of expression of ideas.
But that went out the door in the 80’s starting with series of court decisions and computer software which has ZERO consequential physical manifestation.
I would further note that a book, a transistor, a pill are all property. When I buy property it is mine to do with as I please.
ORIGINALLY the law restricted ONLY commercially replicating the idea the property reflected.
I could copy a book – for myself. I could copy portions to cite, but I could not copy the entire book and sell it.
ORIGINALLY we understood that we could not grant actual ownership of ideas – because they are not property.
The law essentially granted a limited term license to an idea to the creator, to use or resell as they wished for the duration of that term.
It should be self evident that all ideas must eventually return to the public domain.
Again unlike property.
Just to be clear – though I would keep them incredibly narrow and short lived – I am not opposed to law that grants temporary protection to ideas.
But that MUST be contingent on the benefit to all, NOT false claims or rights by creators.
We grant copyrights to books in return for an increase in the books that are created.
We grant protection to trademarks because that aides consumers.
This is not a question of belief. There is litterally no such thing as intellectual property.
Ideas are not property. PERIOD, this is not debateable.
The wheel, calculus, the works of Shakespeare, the bible – am I committing a crime by copying these ? Piracy ?
Of course not.
We as a society – in the US through the constitution have decided to temporarily grant exclusive and transferable privileges in ideas, Because that benefits all of us.
The reward to the creator is contingent on an overall NET societal benefit.
Copyrights are the most clear example, they are also the oldest. Initially they were for very short term.
Today the actual value of a copyright is if anything shorter than ever before.
Producers of copyrighted material collect 95% of any reward in most cases within 3-5 years of publication.
Yet today copyrights are incalculably long. That is error and modern copyright law should have been found unconstitutional, we should revert to prior law.
Many studies have found that patents today are primarily defensive in value – that means there is no foundation for patents.
There MAY be exceptions for things like drugs that have huge cost to develop but near zero cost to produce.
That would appear to apply to drugs, it certainly should apply to software – except that the studies that found the value of patents as almost entirely defensive are specifically for software patents.
He who lights his candle at mine receives light without darkening me.
Thomas Jefferson
That would be the guy who created the US patent system.
Sam, you are correct.
Hard case and I think the court should expand the “confusion” test to liability. “If the dog chew toy was defective and resulted in the deaths of dogs, would the image of Jack Daniel’s be harmed because of its likeness?” This cuts through the humor aspect of it. It also gets rid of the “non zero” element as no one would set the bar at the bare minimum. The parody should have the burden of limiting liability they can inflict on the subject they are parodying. A disclaimer on the back label may not be enough depending on the type of product and parody.
Another issue is “image and likeness” and “fair use.” If EA sports created cartoonish parodies of college athletes that were readily identifiable to use in a video game they sold to appeal to college sports fans, would this claim of parody be acceptable? It’s not straightforward. Wasn’t their a ruling
The real legal question here is whether a dog would be fooled by “Jack Daniel’s Old No. 7” over “Bad Spaniels The Old No. 2.”
Since the evidence amply establishes that no dog seeking a treat would be fooled by “Jack Daniel’s Old No. 7,” the makers of Jack Daniel’s are, therefore, protected from any claims that they infringed on the tradename “Bad Spaniels The Old No. 2.”
I’m not sure how anyone could mix up the two or how this could defame Jack Daniels/hurt their brand. They aren’t even similar products. However, once the lawyers get involved…
It does remind me of the time years ago that Walgreens said the Wegman’s logo was too close to the Walgreens “W” and that customers could end up confusing you the two, leading to possible harm to the Walgreens brand. As a commenter on a news article back then said “Walgreens can only HOPE that people will confuse them because that would greatly IMPROVE Walgreens reputation.”
This is a civil case. The government is not threatening fine or imprisonment. Why does the First Amendment apply? The Constitution is not a code of conduct for Americans; it is a set of rules and limitations on government (with the exception of the 16th Am. and the 18th, which has been repealed).
Is the issue not the same as for defamation law? A person’s speech degrading another is legal unless it is deemed to have defamed…i.e., as a civil matter, the speech is protected unless it violates 1A restrictions, and only then can the aggrieved seek damages.
The first amendment is not limited to fines or imprisonment. Congress shall make no law at all that abridges the freedom of speech. A law that allows a court (a government agency) to force someone to pay damages for their speech is a law, and if that speech is protected (which it is) then the law abridges the freedom to engage in it.
This reminds me of Abbott and Costellos “Who’s on First Base” routine.
I can see their point….after all, their whiskey does taste like dog piss!
You know, I think I must have misread the headline at the Citizens Free Press site… thought it said “Supreme Court accepts case of Jack Daniels”… Now that would have been self-explanatory… 😆😆😆
OT: SCOTUS shot down TFG’s petition to prevent the House committee from seeing his tax returns.
TFG=LOZER!
The Fed, the IRS and the rest of the communist American welfare state are all unconstitutional.
Americans have the absolute right to privacy of persons, papers, etc.
The Constitution severely limited and restricted the government, not the free American citizens.
The singular American failure is the Supreme Court, the Justices of which swore an oath to support the literal, “manifest tenor” of the Constitution.
Can’t wait to see where Nasty Nancy Pelosi hides her Insider Trading money. Let’s do hers next!!! (or first when the Republicans take over!!)
Frivolous
Dismiss
Two words come to mind.
Oh, and police must be charged and prosecuted with extreme prejudice when they counter “charge” as retaliation and intimidation, constituting malicious action and prosecution.
Looks like they have a serious bone to pick.
I suspect the Justices of the Supreme Court will “chew over” this wonderful case and the arguments placed before the court. I also suspect that those Justices that imbibe will have a drink or 2 with Jack Daniels in the mix and then have to decide if they should then recuse themselves because of the drinks. Maybe we’ll get to see a photo from the discussion chamber with all judges holding high a glass of undisclosed liquid.
Myself I only go for Black Russians 50/50 with ice.
I agree that this is speech protected by the 1st Amendment, but it is not profit protected by the 1st Amendment.
This should be a damages case and not an injunctive relief case. Jack Daniel’s should be compensated for the use of its hard earned reputation and trademark.
In this case, Jack Daniels has the Bourban of Proof.
Darren,
That was terrible. So terrible, I just might have to make Bourban Street chicken for dinner, with a Bourban glaze over buttered noodles.
I like it!
Whiskey a No Go
Mr. Smith, my guess is that, inevitably, an illustrious visitor will purloin these brilliant spoonerisms and lucratively monetize them in book form.
Are they retrievably flagged, by the way, just asking?
Someone from Gyna Colleges called.
They said the Pabst Beer is normal.
I didn’t even know you liked beer.
– Note on Refrigerator
Dear Prof Turley,
Free speech is as smooth as Tennessee whisky and as sweet as strawberry wine.
*as a new-found analyst of the Turley blog, I call out for some media liability .. .
https://taibbi.substack.com/p/youtube-censors-reality-boosts-disinformation
DgSnowden,
Thank you for posting the Matt Taibbi article.
Good read.
If you cannot see the pure humor in this….it is not just sour mash that Jack Daniels is selling!
Had they a sense of humor they would have bought that Dog Toy and marketed it themselves understanding that every JD guzzling dog owning Red Neck would just have to have them for Rover and his buddies that live under the front porch.
I don’t drink the foul stuff but my Labrador retriever would love to have one….and shall now that I have read this! Perhaps even some for Christmas Gifts for my Dog owning friends and neighbors….who oddly all own dog(s).
Ralph, I like the way you think.
The answer for infringing speech is more speech. JD just needs to market the exact same toy to the exact same audience. The can do the exact same bottle, no need to make a few changes, Let the market decide.
Ralph I like the way you drink!
Dog toy maker should simply provide affidavits from the thousands of consumers who drank too much JD, woke up the next morning with the hair of the dog, and saw that THEY crapped on the carpet
Great toy! I bought it for my dog. In return, to show his appreciation, my dog bought me a bottle of Jack Daniels. We’re both happy.
@Double Dutch,
You need to send your pooch for remedial training.
There are much better whiskeys/bourbons than Jack.
Full Disclosure.
In college, I lost a couple of fights. One to Jack, and then his buddy Jim.
You’d think that I’d have learned my lesson, but I still like a good Bourbon or Whiskey. Just not those guys,
-G
jack daniels should EMBRACE this!!!!