You may have heard that the U.S. Supreme Court has agreed to consider a trademark infringement and dilution case pitting 150-year-old whiskey distillery Jack Daniel’s against dog toy manufacturer VIP Products LLC. At issue is VIP’s Bad Spaniels Silly Squeaker dog toy, which mimics the Jack Daniel’s whiskey bottle:
After a decision from the Ninth Circuit Court of Appeals that the Bad Spaniels toy is “an expressive work entitled to First Amendment protection,” the U.S. District Court for the District of Arizona granted summary judgment in VIP Products’ favor on remand. The Supreme Court eventually agreed to hear the case, setting the stage for a showdown between First Amendment-protected expression of commercial products and trademark rights of the subjects of allegedly expressive parody.
Over the years, there have been countless law review articles, panel discussions, and other ink spilled on parody cases. This blog isn’t the place for in-depth analysis. Instead, we now give you quick hits from the world of…canine puns.
We promise, we aren’t barking up the wrong tree; parody jurisprudence has been shaped in part by low-brow jokes about the bodily functions and other less-than-endearing traits of man’s best friend.
Things get a little hairy in the world of trademarks and parody when a commercial product is said to have expressive First Amendment value. In its petition for writ of certiorari, Jack Daniel’s argues the Ninth Circuit’s decision would rip trademark rights to shreds any time there is a modicum of expression by an alleged infringer. Further, according to Jack Daniel’s, there is a split among courts of appeal between the Ninth Circuit’s claimed position that “the copycat’s supposed First Amendment interest trumps all else” and other circuits’ decisions that consider parody as one factor among the entire likelihood of confusion test. VIP argues that there is no circuit split and Jack Daniel’s “lacks a sense of humor.”
So, without further ado, three fetching examples of how courts have considered parody in trademark cases:
Tommy Hilfiger Licensing v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002): The Southern District of New York granted summary judgment in favor of Nature Labs, the manufacturer of “Tommy Holedigger” (later “Timmy Holedigger”) pet perfume. The court noted that, “When a parodist makes trademark use of another’s mark, it should be entitled to less indulgence, even if this results in some residual effect on the free speech rights of commercial actors.” However, it then applied the Second Circuit’s likelihood of confusion test to find that confusion was not likely.
Louis Vuitton v. Haute Diggity Dog, No. 06-2267 (4th Cir. 2007): The Fourth Circuit Court of Appeals affirmed the district court’s holding that the “Chewy Vuiton” purse-shaped dog toys did not infringe or dilute the LOUIS VUITTON handbag brand. The court first found that the “Chewy Vuiton” product was an “obvious parody” of the LOUIS VUITTON brand and then considered the likelihood of confusion factors in that light.
Recot, Inc. v. M.C. Becton, Case No. 91096518 (TTAB Sep. 14, 2000): The Trademark Trial and Appeal Board refused registration of the mark FIDO LAY for dog treats based upon an opposition brought by the owner of the FRITO-LAY brand. Although the decision noted that the TTAB had “at least some doubt about our conclusion that confusion is likely,” it gave considerable weight to the fame of the FRITO-LAY brand in its consideration of the likelihood of confusion factors and did not reference parody. (This decision was on remand after a prior Board decision was reversed by the Federal Circuit Court of Appeals, which found that the Board’s first decision did not fully consider the facts before it, particularly as to the fame of FRITO-LAY.) While this decision held that there was a likelihood of confusion, note that the TTAB decides only whether the mark should be registered, not whether there is infringement.
As we have now buried as many dog puns in this post as we possibly can, we will bring it to a close. While in the Tommy Hilfiger and Louis Vuitton cases, the “parody” product ultimately prevailed, the Jack Daniel’s case may change the weight given to the expressive nature of the product among the likelihood of confusion factors. We will sit and stay to watch as both parties attempt to mark their territory before the Supreme Court.