A Circuit Split Remains Regarding the Standard Applied to Claims for Trademark Infringement by Commercial Products that Express Humor.

 *Claudia Wozniak

Jack Daniel’s Properties, Inc. (Jack Daniel’s), a whiskey seller, submitted a petition for a writ of certiorari in the Supreme Court of the United States.[1]  Jack Daniel’s sought review of the Ninth Circuit’s ruling that works of artistic expression do not violate the Lanham Act unless the trademark holder can establish that the defendant’s use of the trademark is either “not artistically relevant to the underlying work” or it “explicitly misleads consumers as to the source or content of the work.”[2]  Jack Daniel’s also asked the Supreme Court to review the Ninth Circuit’s decision that the use of a trademark containing some “protected expression,”—humor in this case—is noncommercial, and therefore there could be no claim of dilution by tarnishment under the Lanham Act.[3]

The protected humorous expression that was at issue came in the form of a squeaky dog toy.[4]  VIP Products LLC “designs, markets, and sells ‘Silly Squeakers,’ [which are] rubber dog toys that resemble the bottles of various well-known beverages, but with dog-related twists.”[5]  One of these dog toys bears a resemblance to a Jack Daniel’s whiskey bottle, has the words “Bad Spaniels” under an image of a spaniel, and is labeled “the Old No. 2, on your Tennessee Carpet,” whereas the actual Jack Daniel’s label has “Old No. 7 Brand Tennessee Sour Mash Whiskey” written on it.[6]  Jack Daniel’s demanded that VIP Products stop selling the toy, and VIP responded by seeking a declaration that their product did not infringe or dilute Jack Daniel’s trademark.[7]

The United States District Court for the District of Arizona, after a four-day bench trial, “permanently enjoined VIP ‘from sourcing, manufacturing, advertising, promoting, displaying, shipping, importing, offering for sale, selling or distributing the Bad Spaniels dog toy.’”[8]  The United States Court of Appeals for the Ninth Circuit, however, vacated the injunction on appeal and held that “the Bad Spaniels dog toy is an expressive work entitled to First Amendment protection.”[9]  

The Lanham Act provides that a person who uses another’s trademark in a way that “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation” or origin of the product “shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”[10]  When determining claims of trademark infringement under the Lanham Act, courts use the likelihood-of-confusion test, which requires that the defendant’s use of the plaintiff’s trademark is likely to cause confusion[11] relating to the “affiliation, connection, or association . . . origin, sponsorship, or approval” of the product.[12]  The Ninth Circuit, however, held that VIP Products’ use of humor is artistic expression, and that the likelihood-of-confusion test is too low a standard to infringe on free expression.[13]  Additionally, the Ninth Circuit required that the plaintiff show that the defendant’s use is not artistically relevant or that it explicitly misleads consumers as to the source or content of the work.[14]

This ruling likely made it more difficult for Jack Daniel’s and for other future plaintiffs similarly situated to succeed on a claim of trademark infringement if humorous expression is involved.[15]  Under the likelihood-of-confusion test, Jack Daniel’s was expected to succeed as it did in the District Court, simply by showing the similarities of the two products and that a significant number of potential purchasers believed the dog toy was associated with Jack Daniel’s.[16]  However, under the more stringent standard used by the Ninth Circuit, Jack Daniel’s was given a difficult task: they needed to successfully demonstrate that the dog toy explicitly misleads consumers considering there is a tag on the toy that states the “product is not affiliated with Jack Daniel Distillery,” which makes it difficult to prove the intent to explicitly mislead.[17]  Additionally, one could assume that proving the comical nature of the dog toy parodying the whiskey bottle is not artistically relevant to the underlying work will also be a difficult standard for Jack Daniel’s and future plaintiffs to meet.

The Second, Fourth, Fifth, Seventh, Eighth, and Tenth Circuits apply the likelihood-of-confusion test when a defendant uses a trademark in a humorous way for their commercial product, and hold that although parody is not a defense to trademark infringement, it is a factor in determining whether it will cause confusion.[18]  Jack Daniel’s petition asked the Supreme Court to resolve a split in the circuits: whether the use of humor in alleged trademark infringement requires the plaintiff to satisfy only the likelihood-of-confusion test, or that the use of such humor is expressive speech protected by the First Amendment and therefore requires the plaintiff to prove that the defendant’s use of the trademark is not artistically relevant or explicitly misleads consumers.[19]

The second question presented concerned 15 U.S.C. § 1125(c)(3)(C), which excludes any noncommercial use of a trademark from being actionable as dilution by blurring or dilution by tarnishment.[20]  The Ninth Circuit reasoned that since the dog toy contained protected expression in the form of its humorous message, it was noncommercial, and thus qualified for the exclusion provided by this section of the Lanham Act.[21]  Jack Daniel’s argued that this standard of excluding any humorous use of another’s trademark—due to its noncommercial nature as a matter of law—was overbroad in contrast to the standard embraced by the other circuits.[22]  Furthermore, Jack Daniel’s argued that the Ninth Circuit’s standard nullifies 15 U.S.C. § 1125(c)(3)(A), which excludes parodies other than those used as a designation of source for the parodist’s product.[23]    

Jack Daniel’s, a company that has spent hundreds of millions of dollars promoting its whiskey, maintaining its reputation, and preserving its trademark, does not want to be associated with the Bad Spaniels Silly Squeaker dog toy.[24]  On the other hand, VIP Products LLC created a dog toy parodying a well-known whiskey brand in an effort to “reflect on the humanization of the dog in our lives, and to comment on corporations [that] take themselves very seriously.”[25]  By denying certiorari, the circuit courts remain split as to the standard applied to allegations of trademark infringement by commercial products containing humorous expression.[26]  This could potentially increase the number of tactical decisions regarding venue selection for parties seeking application of a more favorable standard to their trademark infringement claims.

*Claudia Wozniak is a second-year day student at the University of Baltimore School of Law where she is a Staff Editor for Law Review.  She is a veteran of the U.S. Army where she served as an Arabic linguist and an Air Defense Artillery Officer.  This past summer Claudia worked as a summer associate for Miles & Stockbridge, a Maryland-based firm with offices throughout the Mid-Atlantic region, and will work as a legal intern in the Office of Chief Counsel for the U.S. Mint this spring.  Claudia is interested in business law and government contracts.    

[1]           Petition for Writ of Certiorari at 1, Jack Daniel’s Props., Inc. v. VIP Prods. LLC, No. 20-365 (Sept. 15, 2020).  The Supreme Court denied the petition on January 11th, 2021.  Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 20-365, 2021 WL 78111, at *1 (U.S. 2021).

[2]           VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174, 1175–76 (9th Cir. 2020). 

[3]           Id. at 1176.

[4]           See id. at 1172.

[5]           Id. at 1172.

[6]           Id.

[7]           Id. at 1172–73.

[8]           Id. at 1173.

[9]           Id. at 1172. 

[10]         15 U.S.C. § 1125(a)(1).

[11]        VIP Prods. LLC, 953 F.3d at 1174.

[12]         15 U.S.C. § 1125(a)(1)(A).

[13]          VIP Prods. LLC, 953 F.3d at 1174.

[14]         Id.

[15]         See id. at 1172.

[16]         See Petition for Writ of Certiorari at 14, Jack Daniel’s Props., Inc. v. VIP Prods. LLC, No. 20-365 (Sept. 15, 2020).

[17]         See VIP Prods. LLC, 953 F.3d at 1172.

[18]         Petition for Writ of Certiorari at 18–21, Jack Daniel’s Props., No. 20-365.

[19]         Id. at 18.

[20]         Id. at 24–26.

[21]         VIP Prods. LLC, 953 F.3d at 1176.

[22]         Petition for Writ of Certiorari at 24–25, Jack Daniel’s Props., No. 20-365.

[23]         Id. at 24–26.

[24]         See id. at 8–9.

[25]         VIP Prods. LLC, 953 F.3d at 1172 (internal quotations omitted).

[26]         See supra text accompanying notes 18–19.

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