Message in a bottle: Impact of trademark ruling debated

By Kris Olson, BridgeTower Media Newswires

The subject matter — a dog toy fashioned to look like an iconic liquor bottle — may have helped the U.S. Supreme Court decision capture an unusual amount of mainstream press.

But while the facts may be amusing, the ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC — and what happens on remand to a federal District Court — offer some helpful clarifications about the cabined nature of a defense to infringement and dilution claims grounded in the First Amendment, trademark experts say.

As now seems apparent, the Supreme Court granted certiorari in the case to clear up confusion in the circuit courts over when to apply the so-called “Rogers test,” named for the 1989 2nd U.S. Circuit Court of Appeals decision in Rogers v. Grimaldi.

The Rogers case involved dancer Ginger Rogers’ attempt to use the Lanham Act to halt the use of her name when the Federico Fellini film “Ginger and Fred” — about two fictional Italian cabaret dancers who imitated Rogers and Fred Astaire — was released in the United States.

The 2nd Circuit rejected Rogers’ claim, highlighting the “expressive element” of the film’s title, which implicated “First Amendment values.” The name also posed only a “slight risk” of confusing consumers about either “the source or the content of the work,” the 2nd Circuit noted.

In the decades since, that “threshold filter” had been applied to deny the claims of toymaker Mattel over the song “Barbie Girl” and Louis Vuitton over a reference to the company’s luggage in the film “The Hangover: Part II,” Justice Elena Kagan said in her opinion for the majority in Jack Daniel’s.

When the Rogers test applies, the burden shifts to the party alleging infringement to demonstrate either that the challenged use of its trademark “has no artistic relevance to the underlying work” or that it “explicitly misleads as to the source or the content of the work.”

That can be a hard hurdle to clear, as Jack Daniel’s itself found out when the 9th Circuit reversed the District Court’s decision in its favor and ordered it to apply Rogers.

But now the U.S. Supreme Court has clarified that lower courts should not be so quick to assume that Rogers does, in fact, apply. While the 9th Circuit had considered the dog toy an “expressive work” — albeit “surely not the equivalent of the ‘Mona Lisa’” — the Supreme Court said the proper focus is on how the alleged infringer is using another’s trademark.

When a trademark is used “in the way the Lanham Act most cares about” — as a “designation of source for the infringer’s own goods” — Rogers does not apply, the court ruled.

Instead, the infringement claim “rises or falls on likelihood of confusion,” Kagan wrote.

To that end, the fact that the dog toy is a parody of a Jack Daniel’s bottle may still matter “because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking,” Kagan wrote.

Unless the case settles, the forthcoming battle between the parties in Jack Daniel’s on the likelihood-of-confusion issue could itself be instructive, sources tell Lawyers Weekly.

Parody loses ‘get-out-of-jail-free card’

One big lesson from the Jack Daniel’s case is that it is now clearer that parody will not be the “get-out-of-jail-free card” some alleged infringers may have presumed when they used another’s trademark as their own “source identifier,” Boston attorney Daniel B. Weinger said.

When Rogers is invoked in future cases, the question of whether an alleged infringer is using the trademark as a source identifier for its own goods — i.e., is using it as a trademark — can be expected to be a common, central focus for the litigants, agreed Boston attorney Paul Sennott.

Boston attorney Erik P. Belt called the Jack Daniel’s decision “a shot in the arm for IP owners,” one that brings the law back to “first principles,” making a likelihood of confusion the primary consideration.

“I think the [Supreme Court] was sensitive to not making too many exceptions to the rule, where trademarks would start to lose value,” he said.

At least in theory, if consumers believed that Jack Daniel’s was sponsoring or endorsing the dog toy — as survey data introduced in the case suggested — that at least could threaten to dilute the brand equity of Jack Daniel’s, he noted.

The Supreme Court’s guidance was much needed, according to Boston’s Lisa M. Tittemore, who co-authored an amicus brief on behalf of the American Intellectual Property Law Association in Jack Daniel’s.

“In my opinion, Rogers was getting applied far too broadly, and it was getting applied in context where it was really eviscerating the likelihood-of-confusion standard analysis and making it almost impossible for a trademark owner to show that there was confusion,” she said.

Less enthused about the Supreme Court’s decision is Harvard Law Professor Rebecca Tushnet, who had authored an amicus brief on behalf of fellow trademark law professors opposing Jack Daniel’s cert petition.

Tushnet said the Supreme Court in Jack Daniel’s “did something that nobody had argued for, which is not always bad, but it means that what they did doesn’t fit fully into the rest of the system.”

That means “there’s going to be a lot of hydraulic stuff to move around doctrinally,” Tushnet said.

“This isn’t the result that I would have preferred,” she said. “But there’s certainly plenty of room left in this system to respect freedom-of-expression concerns. It’s just that the trademark system as a whole is implicated in a way that I think none of the parties briefing the issue understood.”

While Belt said he liked Jack Daniel’s chances of establishing a likelihood of confusion on remand, Weinger said he would be watching closely how the lawyers on both sides present their cases, as the ultimate resolution could prove instructive on where the line lies between “self-deprecation” and “disparagement.”

Weinger said the question is: Are the dog-poop jokes incorporated into the toy’s label — “The Old No. 2 on Your Tennessee Carpet” replaces “Old No. 7 Tennessee Sour Mash Whiskey” — ones that the company might reasonably tell at its own expense? If so, it would bolster the whiskey company’s case for confusion. But if defendant VIP Products can demonstrate that no one would think Jack Daniel’s would say such things about its own product, it would cut in the dog toy company’s direction.

Tittemore noted that similar issues are implicated in a case stayed in the 2nd Circuit. The suit involves the sneaker company Vans and an art collective known as MSCHF, which collaborated with the rapper Tyga to launch a sneaker line, Wavy Baby, featuring what it said was a parody of Vans’ Old Skool sneakers by warping its straight-line logo into a rippled — or wavy — pattern.

The parties have since filed letters offering the court their versions of how Jack Daniel’s affects their case, she said.

Is ‘Rogers’ dead?

The Jack Daniel’s decision also had two short concurrences. The one authored by Justice Neil Gorsuch, with whom Justices Clarence Thomas and Amy Coney Barrett joined, has called into question how much longer Rogers will remain good law more generally.

Given the narrow nature of its decision, the court was leaving much about Rogers “unaddressed,” Gorsuch said.

“For example, it is not entirely clear where the Rogers test comes from — is it commanded by the First Amendment, or is it merely gloss on the Lanham Act, perhaps inspired by constitutional-avoidance doctrine?” Gorsuch wrote.

Gorsuch also noted the “serious questions” the solicitor general had raised about some of the “particulars” of Rogers in its amicus brief.

“All this remains for resolution another day… and lower courts should be attuned to that fact,” Gorsuch concluded.

That is a somewhat ominous warning for those who represent creators, Sennott suggested.

“This case, and any further narrowing of Rogers, is something that all clients in the media and entertainment space will need to be aware of as it is regularly relied on by creators,” he said.

But while acknowledging the justices’ skepticism, Weinger said that, as a practical matter, it is hard to envision the circumstances in which Rogers will again be tested, because the line is “so well-known.”

Uses like the “Barbie Girl” song and the “Ginger and Fred” movie title have long been understood to be OK, meaning no one is likely to sue over such uses, while facts like those in Jack Daniel’s will similarly not implicate Rogers at all, he said.

Survey says

The other concurrence came from Justice Sonia Sotomayor, who was joined by Justice Samuel A. Alito Jr.

Sotomayor wrote “to emphasize that in the context of parodies and potentially other uses implicating First Amendment concerns, courts should treat the results of surveys with particular caution.”

She continued: “Like any other evidence, surveys should be understood as merely one piece of the multifaceted likelihood of confusion analysis.”

Sotomayor also stressed the importance of assessing carefully the methodology and representativeness of surveys, “as many lower courts already do.”

In that regard, parodies are particularly tricky, she noted.

“Survey answers may reflect a mistaken belief among some survey respondents that all parodies require permission from the owner of the parodied mark,” she wrote, pointing out just such a strain of responses to the surveys in Jack Daniel’s.

To some degree, this apparent evidence of consumer confusion could be manufactured, Sotomayor suggested.

“Allowing such survey results to drive the infringement analysis would risk silencing a great many parodies, even ones that by other metrics are unlikely to result in the confusion about sourcing that is the core concern of the Lanham Act,” she wrote. “Well-heeled brands with the resources to commission surveys would be handed an effective veto over mockery.”

That is not the “careful balancing” between “the needs of merchants for identification as the provider of goods with the needs of society for free communication and discussion” that the Lanham Act was designed to achieve, Sotomayor wrote.

Sotomayor’s concurrence may prove quite useful in some circumstances, Tushnet said, “because we actually don’t want the scope of rate trademark rights to turn on whether trademark owners convince people that parodying them requires permission.”

Belt noted that there is at least a little bit of tension between the Supreme Court’s decision in Jack Daniel’s and its 2020 ruling in the patent case U.S. Patent and Trademark Office v. Booking.com B.V. In the Booking.com case, survey data was key in resolving the issue of whether the character of a particular term was generic or not.

Belt said he reads Sotomayor’s concurrence as compatible with the idea that “so long as a survey has some best practices behind it,” survey data will continue to be an important factor in resolving trademark issues.