High Court’s Jack Daniel’s Ruling Sends Media Branding Mixed Signals
A chewable dog toy is at the heart of one of this year’s key court cases for media companies and creators.
In its recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, the U.S. Supreme Court ruled on a closely watched trademark dispute between storied whiskey maker Jack Daniel’s and a dog toy company that had used its image.
Unanimously siding with Jack Daniel’s, the high Court offered several lessons for use of brands in movies, television shows and other media — and, more importantly, left a number of questions open for future resolution that may substantially impact entertainment and content branding.
Even a Parody Can Be Trademark Infringement
The dispute centers on VIP’s “Bad Spaniels” dog toy — part of its “Silly Squeakers” line. (“Yes, they squeak when bitten,” the Supreme Court clarified.) The Bad Spaniels toy is meant to resemble a bottle of Jack Daniel’s, with various aspects of the bottle’s design replaced by dog-related humor: “The Old No. 2 on Your Tennessee Carpet” instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey” and “43% poo by vol.” instead of “40% alc. by vol.”
Unamused, Jack Daniel’s demanded VIP stop selling Bad Spaniels, and VIP sued. The company claimed it wasn’t liable for trademark infringement, based on the Rogers v. Grimaldi test — a 1989 decision in which Ginger Rogers had sued over “Ginger & Fred,” a 1986 Federico Fellini film with her name in the title.
To pass the Rogers test, Jack Daniel’s needed to show that VIP’s parody of the well-known whiskey distillery had “no artistic relevance” to the Bad Spaniels product or “explicitly misleads as to the source or the content of” Bad Spaniels — a high bar. Jack Daniel’s couldn’t show either of those things, so, according to VIP, Bad Spaniels was above board.
But the justices of the Supreme Court disagreed, unanimously ruling that the Rogers test can only be a shield when the expressive content is not being used as a trademark. Here, it ruled, VIP was using its parodies of the Jack Daniel’s trademarks as its own — for example, as a logo on Bad Spaniels’ hangtags — so Rogers didn’t apply, and VIP was subject to the standard, much more easily met test of likelihood of confusion.
Not All Brand Uses Are Created Equal
Despite its mission to prevent Rogers from “tak[ing] over much of the world,” the Court’s ruling still strikes some encouraging notes for the use of third-party brands in media.
Most important, the justices didn’t completely strike down the Rogers test. Far from it, in fact, as the Court directly acknowledged the test and seemed to provide some support for its continued use in some expressive contexts. The key point for uses of brands in media is to avoid the “cardinal sin” of trademark law: confusing consumers as to the source of a product.
For example, the Court approvingly cited a lower court’s rejection of Louis Vuitton’s claim that Warner Bros. infringed its trademarks when a character in “The Hangover Part II” called his luggage a “Louis Vuitton” (mispronouncing “Louis” as “Lewis”). While it is clear from context that the mark is being used to make a plot-related point or otherwise not as a trademark, it is unlikely consumers will be confused as to it indicating something about the source of a film or television show.
As the Court emphasized, this is different from another luggage maker emblazoning its products with minimally altered copies of Louis Vuitton logos. In that case, consumers may well be confused about whether the French luxury brand is the source of the knockoff.
The Court pointed to similar examples of acceptable use of third-party brands in media: the song “Barbie Girl” using the name Barbie, Janis Joplin’s repeated requests for a luxury vehicle (“Oh, Lord, won’t you buy me a Mercedes-Benz?”) in her song named after the German car manufacturer and the use of the University of Alabama’s trademarked football uniforms in a piece of sports art depicting a notable football scene. Consumers are unlikely to think these trademark uses indicate that Barbie, Mercedes-Benz and the Crimson Tide are the sources of these creative works.
The Court even suggested that the original Rogers case got it right — at least on the specific facts of that case. Because “Ginger & Fred” served as the title of a film, not as a trademark, an interest in free expression in creative media overshadowed the small risk that consumers might be confused.
Expressive Uses of Trademarks Face Uncertain Future
Despite its cautious endorsement of some expressive uses of trademarks, the justices were equally clear that uses of trademarks in creative media don’t automatically get special treatment. “There is no threshold test working to kick out all cases involving ‘expressive works,’ ” the Court underscored.
With the Rogers test trimmed down to size, future battles over whether an expressive use of a third-party brand is infringement will likely focus on whether the brand is being used as a trademark — a fact-intensive inquiry with few bright lines to guide media companies and creators.
Moreover, there is some chance that the Rogers test’s days are numbered. In a separate concurring opinion, Justice Neil Gorsuch raised doubts about the continued viability of the test, inviting lower courts to scrutinize it in future cases. It’s unclear, he noted, whether such a carveout for expressive works is required by the free-speech guarantees in the First Amendment or whether, instead, Rogers is just a safety valve courts have developed to end-run those constitutional issues. Although the Court left those issues for another day, the implication that Rogers rests on shaky ground is unmistakable.
A world without Rogers would upend the way media companies “clear” the use of brands in movies, television shows and other media. In that world, not asking for permission to use a third-party brand in an expressive work would mean that, if the expressive work is challenged, a court will go straight to a standard trademark-infringement analysis. The standard multifactor analysis provides less clarity and reassurance than the high bar of the Rogers test.
That is not yet the world we live in, and the Court’s opinion provides a healthy dose of comfort on expressive uses of trademarks. For now, though, media companies and creators will have to settle for the decidedly mixed signals on the future of Rogers until the test comes before the Court again.
Read the Supreme Court’s Jack Daniel’s decision
Adrian Perry is a partner at global law firm Covington & Burling and co-chair of its Entertainment and Media Industry group. Rob Hunziker is special counsel focusing on copyrights, trademarks and related intellectual property, and Lucas Daniel Cuatrecasas is an associate handling corporate and intellectual property matters.
