IP Tech Knowledgy

The Supreme Court ruled last week that a parody of another company’s trademark could likely be an infringement if the parody itself is used as the parodist’s own trademark. The decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC differentiates parodies used as trademarks from parodies not used as a brand of the parodist.

The case revolves around a dog toy that looks like and includes names and designs very similar to those used on, a Jack Daniels whiskey bottle. The parody uses the term “Bad Spaniels” in place of “Jack Daniels,” and makes other jokes, such as using “The Old No. 2 On Your Tennessee Carpet” instead of “Old No. 7 Tennessee Sour Mash Whiskey” and uses “43% poo by vol.” instead of “40% alc. by vol.”  The key fact is that the parodist also used “Bad Spaniels” as a trademark for its product.
 
The decision negated a presumption applied by some lower courts that if a parody has any artistic relevance, then there cannot be an infringement, due to First Amendment freedom of expression.  Instead, in balancing First Amendment protections for free expression against the right of a trademark owner to protect the designation of its source of origin, the Supreme Court ruled that the trademark rights should be protected. Under the Jack Daniel’s ruling, a parody with some artistic relevance does not automatically negate a claim of trademark infringement when the parody is used are a brand of the parodist’s goods.  In the same vein, a trademark does not become “non-commercial” just because it is being used as a parody.

But a parody used as a trademark may still be infringing. The Supreme Court remanded the case to the trial court to determine if the manner in which the parody was used would likely confuse consumers that there is a connection between the parody and the original – and thus be infringing.

A business wanting to parody someone else’s brand should be careful that the parody is only included in the content of its own material, and not used as a brand for its own product.

In its decision, and concurring opinions, the Court made it clear that it will likely in the future address the broader issue of when a trademark of a third-party is used as a parody within the parodist’s content, and not merely as the parodist’s brand.  The leading case, Rogers v. Grimaldi, sets forth that a parody of a third-party trademark is protectable, and not an infringement, if the parody “has no artistic relevance to the underlying work.” While Jack Daniel’s narrows the Rogers test, as described in this article, some Justices appear primed to dig deeper into the Rogers test. Justice Gorsuch’s warned in his concurrence “lower courts should be attuned to that fact.”

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com