Prof. Laura E. Little and Andrew Rosen, Temple University School of Law
For those hoping the U.S. Supreme Court would demystify the role of parody, or humor more generally, in the sphere of trademark infringement and dilution, disappointment may await. On June 8, 2023, the Supreme Court handed down an opinion on the trademark dispute between Jack Daniels and VIP Products, the dispute over a dog chew-toy designed and sold by VIP, a toy that resembled Jack Daniels “Old No. 7 Brand Tennessee Sour Mash Whiskey.” The parodic chew toy replaced “Jack Daniels” with “Bad Spaniels” and was labeled as “The Old No. 2 On Your Tennessee Carpet.”
The case’s disposition ventured into granular details of trademark law and offered little about the intersection of humor and the law. Writing for a unanimous Court, Justice Kagan set forth two narrow holdings, neither of which commented on the effect humor has on trademark analysis. Refusing to turn trademark law on its head, the Court held that if a trademark is used as a trademark, neither the likelihood-of-confusion test nor a dilution analysis can be sidestepped, despite the existence of humorous expression. Trademark law is most concerned with protecting consumers from confusion, i.e., buying a product because one thinks it comes from one source, when it actually comes from another. To determine the existence of consumer confusion, courts use their own form of a “likelihood-of-confusion” test. VIP escaped this test in the lower courts by claiming that its humorous message—conveying an image of dog poop—was “artistic expression,” sidestepping further inquiry by means of what trademark lawyers call the Rogers test.
Premised on freedom of expression, the Rogers test acts as a shield from liability for the use of another’s mark that is expressive and doesn’t mislead as to its source. Justice Kagan explained that the Rogers test was inappropriate in this case, since VIP was evidently using its “Bad Spaniels” mark as a trademark for its own product. The Court reasoned that if the Rogers test is applied to every situation where some expressive or humorous content exists, then the “likelihood-of-confusion” test would become the exception instead of the rule, an outcome contrary to the essence of trademark law. Even though the Rogers test’sfocus on freedom of expression is now off the table for cases like VIP, the Court emphasized that a parody with a clear “message of ridicule or pointed humor” will likely pass the likelihood-of-confusion test, since no one expects a manufacturer such as Jack Daniels to engage in “self-mockery.”
The Court made a similar holding on Jack Daniels’ dilution by tarnishment claim “for the linkage of its whiskey to less savory substances.” (Less savory substances? One must hand it to the Jack Daniels lawyers for coming up with this euphemism for dog poo.) The lower court had held that VIP’s bathroom humor was a “noncommercial use,” excluding it from dilution liability, but the Supreme Court found congressional intent undermined such a broad reading. Since the fair-use defense excludes parody that is “source identifying,” the Court found the “noncommercial use” dilution exclusion to demand the same exception.
Some say that trademark principles triumphed over freedom of expression on this occasion, at least in the context of parody-inducing trademarks. By grounding its opinion in a mark’s functionality as a “trademark” as opposed to a “parody,” the court avoided the question of when humor may be protectable. Although the Supreme Court took the arrow-straight route by sticking with congressional intent and legal doctrine, it is unfair to say that the Court “didn’t get the joke.” In announcing the opinion from the bench, Justice Kagan hammed it up: not only did she include pictures of the squeaky toy in the Court’s opinion (now destined for the august pages of the official Supreme Court reports), but she also displayed the toy from the bench and broke into song when comparing the case to the “Barbie Girl” dispute regarding Mattel and the band Aqua: “Life in plastic, it’s fantastic.”