Can a well-known brand file trademark lawsuits to stop lawful speech protected under the First Amendment?
Juelsgaard Intellectual Property and Innovation Clinic students Victoria Fang and Julia Laurence (JD’24), recently filed an amicus short asking the Supreme Court to reject that question and to protect freedom of expression. The Clinic filed the brief for a group trademark law professors in the Jack Daniel’s Properties, Inc.trademark case between a well-known whiskey distillery, and a dog-toy manufacturer.
The Clinic was led by the Mark A. Lemley at Stanford Law School and the Mark P. McKenna at UCLA School of Law. It included thirty of the most respected trademark law professors in the country. The Clinic worked closely with the professors in advocating for an orderly development trademark law that is in the public’s best interests.
The lawsuit centers on a parody dog-toy called “Bad Spaniels”, which VIP Products introduced almost a decade ago as part of their “Silly Squeakers” line.
According to the Clinic’s brief, the Court was informed that the “Bad Spaniels” dog toy was unambiguously a joke (though Jack Daniel’s doesn’t appreciate it), and that this joke is the core of what consumers buy when they purchase VIP toys. . . Jack Daniels cannot stop others from making a joke about him under trademark law, even if it is a dog-toy.
The “Bad Spaniels” case highlights this tension between the trademark law’s interests, which protect brands and consumers from confusion when making buying decisions. And the First Amendment’s public interest in free speech. According to another court, the speech-trademark conflict was described in another case as “[i]f it were a sci fi melodrama” or Speech-Zilla meets Trademark Kong.
Jack Daniel’s claims that the amusing dog toy that states it is not affiliated with Jack Daniel Distillery is infringing its trademarks and should be banned. The amicus brief argues that the toy, which is a parody of the trademarks of Jack Daniel Distillery, should be protected under the First Amendment and not subject to infringement lawsuits.
In this case, the Supreme Court will decide which legal test courts should use in order to assess consumer confusion in trademark infringement cases involving speech. One is the “multifactor likelihood-of-confusion test” developed in the 1960s. Another is the Rogerstest, which is based on the case Rogers, 875 F.2d 994, (2d Cir.). 1989). A Clinic amicus brief stated that the Rogerstest is the best test to protect speech in expressive works.
Parody, satire and artistic or politically-motivated speech are all examples of expressive works. The Clinic’s brief explains that lower courts have known for many decades that expressive works go beyond traditional media like movies, books, or plays. They also include other goods such as music, video games, calendars, greeting cards, and calendars.
According to the Clinic’s brief, a Rogers-like test is required for expressive works because of the history in trademark law. Highlighting the scholarship and expertise of its amici–all law professors with deep experience researching and teaching trademarks–the brief explained that when the multifactor likelihood-of-confusion test was first developed by courts, no one imagined that trademark infringement lawsuits would apply to expressive works.
The multifactor test was not intended for expressive works. Rather, the multifactor test’s likelihood-of-confusion factors were originally developed by courts for cases involving goods that were closely related to each other. However, trademark law has grown significantly in recent decades. Although courts have attempted to apply the multifactor test for expressive works, the results have been inconsistent and not principled.
It is no surprise that courts have inconsistently applied the likelihood-of-confusion factors because those factors are fundamentally ill-suited for evaluating expressive works. Uncertainty in the application of the factors can lead to expensive and lengthy litigation. This often makes it difficult for lawful users to win or scare them away. The multifactor test will continue its chilling effect on legitimate speech unless it provides an early threshold test for freedom of expression (the Rogers test does this). The Clinic urged Court to adopt a Rogers-like test.
The Clinic’s brief pointed out serious flaws within the government’s amicus filed by the Solicitor general in support of Jack Daniels. The Clinic brief revealed that both the Rogersdecision as well as the current federal trademark statute, the Lanham Act, were mischaracterized by the government. It also highlighted how the government ignored “decades” of case law on trademark infringement claims.
The Clinic criticized the government’s mischaracterizations of the Rogerstest as being limited to titles of works. This was because Ginger Rogers, actress, sued over her first name appearing in the title of a movie. courts have “uniformly recognized” that Rogersprotection goes beyond the title of an expressive piece. Explicit works include everything from t-shirts and video games since the Rogersdecision more than three decades ago.
Seven others filed amicus briefs in support of VIP Products. A recent Law360 article stated that VIP Products’ counsel commented, “While some might have considered VIP Products the underdog,” Bad Spaniels runs with an imposing pack ready to defend the right of howling. We are grateful to have been supported by such distinguished professors in trademark and First Amendment law, advocates for free speech, as well as fellow practitioners of the creative arts.
On March 22, 2023, the Supreme Court will hear oral arguments in the case Jack Daniel’s Properties, Inc. against VIP Products LLC. The term will end in June or July 2023.
Bloomberg Law’s article, ” Justices Are Asked to Literally Link the Dots In Dog Toy IP Case” as well as Tech Dirt’s article ” MSCHF Ones the Onion in Filing Hilarious Supreme Court Amicus Shorts That Educate.” provides additional coverage.
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* Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 898 (9th Cir. 2002).