Expressive use of marks dodges a bullet in the Supreme Court

Today’s Supreme Court decision in Jack Daniel’s v. VIP Products reverses the appellate decision below in a way that minimizes the possible damage to free speech interests that impelled Public Citizen and others to file amicus briefs in the case. It confines the decision to the narrow issue on which certiorari was granted, rather than addressing the broader effort that Jack Daniel’s and the government undertook in their merits briefing to challenge the viability of the Rogers v. Grimaldi standard. And in reversing the Ninth Circuit’s decision, the Court rested on a bad litigating decision and an unwise marketing posture that is specific to the parodist whose product was challenged as both infringing and diluting the trademarks of the whiskey maker. The unanimous opinion implicitly recognizes the need to protect expression about trademarks and trademark owners while never quite saying that the First Amendment has any role to play in that analysis or, indeed, addressing whether there is an extra-textual form of fair use for infringement claims, in addition to the descriptive fair use set forth in the statute

Here, the Achilles’ heel of the dog toy company’s position was always some ill-advised language in its complaint – alleging that it “both ‘own[s] and ‘use[s]’ the ‘Bad Spaniels’ trademark and trade dress for its durable rubber squeaky novelty dog toy.” And VIP applied to register marks for several of its other parody dog toys, further undermining its objection to the trial court’s determination that “Bad Spaniels” was its trademark for the toy. Although parodists frequently encounter arguments from trademark owners that the parody has been used as a mark, there will, I believe, be little in today’s ruling that will help them make that argument.  Of course, the lack of clarity could make trademark litigation less predictable and more expensive for expressive users.

Having concluded that VIP had used Bad Spaniels as a trademark, to identify the source of a product that it was offering for sale, it was easy to say that the Rogers v. Grimaldi screen protecting expressive uses against weak trademark claims would not apply, and to hold as well that expression for the purpose of selling a product is not within the non-commercial use exception to dilution claims.

The case now goes back for further litigation before the Ninth Circuit where it seems quite likely that VIP Products will again prevail.

The two concurrences also offer useful guidance for the future. Justices Sotomayor and Alito remind us that surveys need to be taken with an especial grain of salt in parody cases, because they often ignore or assume away the parody question. And Justices Gorsuch, Thomas and Barrett remind us that, in future litigation invoking Rogers v. Grimaldi, we need to be mindful of how the rule can be grounded in the language of the statute.

Our brief disagreed with some of our friends in the free speech community who lauded an approach to Rogers v. Grimaldi that appeared to make even a strong showing of likely confusion irrelevant, an approach that they attributed to the Ninth Circuit. Instead, we relied on the Second Circuit’s approach, under which First Amendment interests place a thumb on the scale in evaluating likelihood of confusion, so that when the challenged use expresses something about the trademark holder or its products, a particularly strong showing of likely confusion can overcome the free speech interests.

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