Protecting the Expressive Use of Trademarks

An amicus curiae brief filed today on behalf of three former clients whose right to use trademarks for purposes of parody we defended on a number of occasions over the past two decades, urges the Supreme Court to uphold the Rogers v. Grimaldi standard as a screen to weed out weak trademark infringement claims brought against expressive users of trademarks engaged in noncommercial speech.


The case arises from one in a line of “Silly Squeakers” dog toys made in the form of various containers of brand-name alcoholic and carbonated beverages, each renamed in punny fashion, often with a somewhat insulting tilt. One of the Silly Squeakers is a chewable “Bad Spaniels” toy in a shape comparable to a bottle of Jack Daniel’s whiskey, replacing references to the percentage of alcohol content with “43% POO  BY VOL” and “100% SMELLY.” After Jack Daniel’s sent a cease and desist letter, VIP Products, which makes the toys, sought a declaratory judgment of noninfringement and nondilution of the Jack Daniel’s trademark. Jack Daniel’s litigated the case, securing along the way a consumer survey from the late Gary Ford. The case went to trial and the judge, walking perfunctorily through the likelihood of confusion factors, found a likelihood of confusion, relying heavily on the Ford study (Sorry to speak ill of the dead, not to speak of a guy whom I knew through our kids, but I have looked at his study, and his survey was just as dishonest as most consumer studies done for trademark owners in parody cases).

One of the main appellate issues in VIP’s appeal was its contention that the trial court should have granted it summary judgment based on the standards created by the Second Circuit in Rogers v. Grimaldi, later adopted by all the appellate courts that have considered it, in a case in which Ginger Rogers complained about the use of her name as the title of a Fellini film about a pair of Italian entertainers who called themselves Ginger and Fred. The Ninth Circuit agreed but, rather than applying the standard in the first instance, it remanded to the trial court.

On remand, Jack Daniel’s argued that it should be allowed to go to trial on whether the Rogers v. Grimaldi standard had been met, while VIP argued that it should get summary judgment. The trial judge granted summary judgment, disapprovingly throwing his arms up in the air and opining that Rogers v. Grimaldi always lets the alleged infringer off the hook, no matter how reprehensible its infringement, and that the Supreme Court was  needed to set things straight.  Taking its cue from this opinion, rather than asking the Ninth Circuit to reverse and allow it to present its claims in an evidentiary hearing, Jack Daniel’s sought summary affirmance so that it could ask the Supreme Court to hold that, by extending Rogers v. Grimaldi beyond inherently expressive products such as movies and songs, to include the use of trademarks on “utilitarian products” such as dog toys, the Ninth Circuit had created a split in the circuits warranting Supreme Court review. In such cases, the petition for certiorari argued,  application of the likelihood of confusion factors provides sufficient protection for parodies.

The Merits Arguments in the Supreme Court

But once the Supreme Court granted review, Jack Daniel’s cynically shifted gears, arguing that the Court should overrule Rogers v. Grimaldi altogether, arguing only briefly at the end that at the very least, the standard should be limited to inherently expressive works. The Solicitor General, representing the United States, similarly argues that Rogers v. Grimaldi was wrongly decided, although it also argues that the district court botched its handling of the likelihood of confusion factors in  the context of a parody defense. Interestingly, the rest of the major groups representing the interests of trademark owners, such as the American Intellectual Property Lawyers Association and the Chamber of Commerce, urge that Rogers v. Grimaldi be preserved but also that it be limited to books, movies and songs.  Along with Jack Daniel’s and the Government, the amici urging reversal take the position that the likelihood of confusion factors provide adequate protection for parody in “ordinary consumer products.”

The amicus brief was informed by experience representing Dan McCall  (on several occasions ), Sky Shatz, and Don Stewart  against a variety of trademark claims, not to speak of the intense litigation that Charles Smith had to endure to defend himself a series of very mean parodies that he created about Wal-Mart and placed on Tshirts as well as a web site.  A consumer study in that case purported to find that half of all consumers thought Wal-Mart was behind this Tshirt and others like it.
An obvious (albeit peculiar) parody, but it took 500 hours of pro bono lawyer time and two pro bono experts to rebut that survey and get summary judgment rejecting Wal-Mart’s trademark claims. Our defense of web site operators such as Hank Mishkoff and Chris Lamparello as well reminded us of the fact that trademark litigation is a very expensive proposition, and if a big company can drag a parodist through that process – or even threaten to subject a parodist to that process – the mere demand letter may be enough to chill free speech. The amicus brief gives several examples of the price that parodists had to pay to defend themselves. I have little doubt that the only reason our stout responses to the demand letters sent to our clients by the likes of the Hillary Clinton campaign, Altria and Volkwagen deterred them from proceeding with trademark litigation is that they knew that our clients would not have to stand down because our pro bono representation would protect the parodists against the financial realities of the private sector trademark litigation.

The brief discusses the differences between the way the First Amendment applies to commercial and noncommercial speech, and justifies Rogers v. Grimaldi as a test that creates a screen that can sift out weak infringement claims against noncommercial speech using trademarks at the pleading stage, or at least on summary judgment without the need for full discovery. We point out that, properly applied, the Rogers v. Grimaldi standard allows plaintiffs with strong claims of likely confusion to survive summary judgment and, indeed, to prevail. Finally we point out that the content of clothing, such as the t-shirts on which our amici print designs, can be noncommercial speech, so the line that Jack Daniel’s asks the Supreme Court to apply in the alternative — barring the use of the Rogers v. Grimaldi standard in any trademark cases involving the use of trademarks on “ordinary commercial products” such as t-shirts, cannot be the right one

Regrettably, the word limits for amicus briefs did not  allow us to discuss Jack Daniel’s dilution theories, which the Ninth Circuit  properly rejected on the ground that the noncommercial speech exception to section 43(c) of the Lanham Act was intended to protect noncommercial speech about trademarks. Ironically, Volkswagen’s threat against amicus Don Stewart’s VW Bug drawing was much discussed as an example of the abusive trademark claims that warranted re-insertion of the noncommercial speech exception into the Trademark Dilution Revision Amendments after the House adopted a bill omitting that provision.

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