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.