Highlights of Jack Daniel's Case at Supreme Court
When VIP Products created a dog toy that copies Jack Daniel's trademark and trade dress and associates it with dog poop, it did "too much copying and not enough distinguishing," Lisa S. Blatt, an attorney representing Jack Daniel's told the Supreme Court Wednesday (3/22). The Supreme Court heard the case because a ruling by the 9th Circuit Court of Appeals in VIP Products's favor created conflict between the circuits.
Blatt began by noting that district court found both trademark infringement and dilution. The 9th Circuit "erroneously reversed both holdings," she said, adding that as to infringement, the 9th Circuit didn't disturb the trial court's finding of likelihood of confusion. "It instead reversed by applying an exception to the Lanham Act that the 2nd Circuit invented for movie titles."
That exception allows an "expressive work to confused as long as the use of a mark is artistically relevant and not explicitly misleading. But the Lanham Act has no exceptions for expressive works," Blatt said, adding that "artistic relevance has nothing to do with confusion, and both implicit and explicit uses can confuse."
She conceded that differences in marks, markets or message -- typically ridicule -- signal the brand owner didn't make the joke. But absent these features, pervasive copying and trading off a brand's goodwill tends to confuse, she said.
She add that survey results show consumer confusion, indicating that the paradist, VIP Products, when it created the Jack Daniel's bottle look-alike that is the heart of this case "did too much copying and not enough distinguishing."
Responding to a question from Justice Thomas, Blatt said a trademark is a property right and property owners are going to defend that right. A property right means the trademark owner has a limited monopoly on a right to use a name that's associated with the owner's good or service.
After several questions from different Justices, Justice Sotomayor asked if an activist sold a a t-shirt bearing the elephant or donkey symbols of the two political parties, and the animal is made to look drunk, and wore the t-shirt with its slogan, "Time to Sober Up America, would the activist need the party's permission to use the logo?
Blatt responded whether the t-shirt is funny is irrelevant. All that matters, she said, is whether it's the brand owner making the joke.
Blatt noted that "Jack Daniel's makes dog products and sells licensed merchandise, like hats and bar stools, in the same markets that Bad Spaniels was selling it s dog toys."
The Patent & Trademark Office has been "finding parody after parody either confusing or not confusing based on the same thing this trial court did. It looked at how similar and how famous the mark is, is there something that kind of says, whoa, it's so obvious."
Referring back to the t-shirt with the elephant on it, Blatt said "the average consumer is going to think the RNC."
As Blatt's argument on behalf of Jack Daniel's was wrapping up, Justice Jackson asked if "the confusion that we cre about is that people in the marketplace are going to be looking at these items and think they are the mark owner's because of the way they're labeled rather than the person who actually created them." That question wasn't definitively answered.
During Blatt's argument, Justice Gorsuch noted that the Federal Government would follow her as a friend or amicus, "but I'm not sure how much of a friend they really are to you." Blatt said she agreed.
Matthew Guarnieri, representing the U.S. Government, said he thinks that "reasonable people are not likely to be confused about the source of these products or whether the target of the parody sponsored or approved the product.
"That intuition is fully captured," he said, "by the likelihood of confusion test, and that's the statutory standard we think should be applied in all of these cases."
VIP Products view "is very different," he said. "That view says you should be allowed for various vague First Amendment policy concerns ... to engage in this behavior even if it is likely to confuse consumers about the source of your goods or about the senior mark holder's sponsorship or approval. And I think that view just can't be squared with the Lanham Act itself and is not compelled by the First Amendment."
Bennett E. Cooper represented VIP Products. He began by asserting that "In our popular culture, iconic brands are another kind of celebrity. People are constitutionally entitled to talk about celebrities and, yes, even make fun of them. Jack Daniel's advertised that Jack is everyone's friend, and Bad Spaniels is a parody playful in comparing Jack to man's other best friend."
It's clear, he said, that what Jack's Daniel's is complaining about is "the speech, the parody, the comparison to dog poop and a Bad Spaniel, not the mark."
In the arguments for Jack Daniel's and for the Government, the Justices had asked for suggestions on how the court might develop a rule for future cases. Cooper beat them to, offering a three part test:
- Can the Court reasonably perceive the product's parodic character?
- What is the proximity and competitiveness of the party's goods?
- Does the parody otherwise fail to differentiate itself from the parodied mark? This test protects speech while denying a free pass to knock off the counterfeits.
Bennett was asked to explain what's the parody in the Bad Spaniels dog toy. "The parody is to make fun of marks that take themselves seriously," he replied.
Justice Kagan then asked if he meant that soft drink and liquor companies take themselves too seriously as a class.
"You don't see, for example, a parody of Woodford Reserve bourbon because you don't get that building up of an edifice of making them into an iconic -- a cultural icon and reference point," he said, continuing:
"When you advertise on TV incessantly and you create this image of yourself as something that's so important --"
Justice Kagan cut him off. "So you're just saying anytime you go out after or you use the mark of a large company, it's a parody just by definition? Because they must take themselves too seriously because they're a big company?".
Cooper: "I think there's no doubt that Jack Daniel's takes itself very seriously."
Kagan: "Well, I don't know. I don't think Stella Artois takes itself very seriously. They have very funny commercials."
Justice Sotomayor showed showed a killer instinct when she zeroed in on VIP's assertion that it is the owner of "Bad Spaniels' trademark and trade dress. The only trademark I see on your product is on the Silly Squeakers. That's source, Silly Squeakers, Correct?"
Cooper acknowledged that was the trademark. But Sotomayor wasn't done with him. She got Cooper to acknowledge that's the only thing on Bad Spaniels that has an "R" on it, or a "TM."
"I'm not sure how you're calling Bad Spaniels a trademark or why you're calling how the bottle -- which you admit is the Jack Daniel's trade dress because it's -- it's a unique square bottle -- how you can claim it as your own," Sotomayor said.
"We're not," Cooper responded, "but Jack Daniel's claiming that we are using that as a trademark. We're simply --" Sotomayor cut him off.
"So why did your complaint said -- say that you are the owner of all rights in Bad Spaniels' trademark and trade dress?" Sotomayor asked.
Cooper: Your Honor, it's a form allegation of legal ownership, which is a conclusion. It's not, under Ninth Circuit precedent, any kind of judicial admission. What we were just saying, in the kind of rote way you do in complaints, that we own -- we're Bad Spaniels. And so the question is --"
Sotomayor: "You're not Bad Spaniels; you're Silly Squeakers?"
Cooper then agreed with Sotomayor that "every designer of products that puts their trade name on it -- name any famous designer -- they have a logo that symbolizes them, they give each design a different name. That's what you do. Bad Spaniels is one among many other names."
He said Jack Daniel's doesn't consider Bad Spaniels to be infringing. "It's the totality of the whole look. In fact, in their confusion survey, they used Bad Spaniels and the dog head as it appears on the hangtag of the product as their control sample."
Justice Thomas asked Cooper "why a product that you -- that you can buy online or at Petco is noncommercial?"
Cooper responded that whether something is sold or not does not make it noncommercial or commercial. Bad Spaniels is "simply making a joke and the joke is noncommercial" because there is "no parodic product. There is no bottle of poo." An advertisement would be commercial, he said.
Comment: It never pays to try to predict how the Supreme Court will rule, bur sense at the end of the hearing was that the justices were leaning toward Jack Daniel's.