February 08, 2021 Feature

Parody Chew Toys and the First Amendment

Jared I. Kagan and Emily R. Hush

©2021. Published in Landslide, Vol. 13, No. 3, January/February 2021, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In March 2020, the Ninth Circuit Court of Appeals held in VIP Products LLC v. Jack Daniel’s Properties, Inc. that a squeaking dog toy resembling a bottle of Jack Daniel’s whiskey is an expressive work entitled to First Amendment protection.1 The court reversed a bench trial verdict that the toy infringed and diluted the JACK DANIEL’S trade dress and remanded for further consideration by the district court. Before the district court may find that the toy infringed Jack Daniel’s famous trade dress, the Ninth Circuit held that the district court must first apply the Second Circuit Court of Appeal’s Rogers test, which will require it to consider whether VIP’s use of the trade dress was artistically relevant to the toy’s expressive character, and whether it explicitly misleads consumers as to the source of the toy. The Rogers test, though, has only been applied to expressive works such as books, songs, video games, and movies; it has never been applied to consumer products like the dog toys here, even if those products were intended as parodies. The Ninth Circuit’s decision expands the scope of First Amendment protection far beyond traditional works of artistic expression and risks disrupting the fine balance between the Lanham Act and free speech.

Background

VIP Products sells Silly Squeaker dog toys, including such gems as Kennel Relax’n, Heinie Sniff’n, and Bad Spaniels. Jack Daniel’s Properties, unamused, demanded that VIP cease selling the chewy bottle parodying its whiskey. VIP refused and filed an action for declaratory relief. Jack Daniel’s counterclaimed for trademark infringement and dilution.

On cross-motions for summary judgment, the district court held that VIP was not entitled to the defense of fair use because the toy “is not an expressive work.”2 The district court also held that the test articulated in Rogers v. Grimaldi3 for balancing the interests between trademark law and the First Amendment did not apply here because the Rogers test applies to artistic expression such as movies, plays, books, and songs and “requires courts to construe trademark law only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”4 Following a four-day bench trial, the district court found in favor of Jack Daniel’s and issued a permanent injunction enjoining VIP from manufacturing and selling the Bad Spaniels toy.5

VIP appealed to the Ninth Circuit, which reversed. The panel explained that, “although surely not the equivalent of the Mona Lisa” (clearly), Bad Spaniels is an expressive work because it “communicates a ‘humorous message’” and was not “rendered non-expressive simply because it is sold commercially.”6 Accordingly, the court held, as a threshold matter, the Rogers test needed to be applied. Under that test, a trademark infringement plaintiff must show that “the defendant’s use of the mark is either (1) ‘not artistically relevant to the underlying work’ or (2) ‘explicitly misleads consumers as to the source or content of the work.’”7 The Ninth Circuit vacated the district court’s finding of infringement and remanded for a determination, in the first instance, of whether Jack Daniel’s can satisfy either element of the Rogers test.

The Ninth Circuit’s decision is an outlier and drastically expands the First Amendment protections available to defendants in trademark infringement cases. Until now, the Ninth Circuit and other courts have reserved the Rogers test for works of artistic expression, and applied the traditional likelihood of confusion factors for trademark infringement to cases involving ordinary commercial products.

The Rogers Two-Step

Ordinarily, the interests protected by the First Amendment and by trademark law get along just fine. Trademark law protects mark owners’ goodwill in their marks and shields consumers from confusion and fraud.8 It focuses on consumer perception, and its touchstone is the likelihood of confusion test.9 The First Amendment rests on the idea that “government has no power to restrict expression because of its message, its ideas, its subject matter, or its content.”10 Its bar on laws abridging the freedom of speech is not absolute, however, and the regulation of trademarks has long been recognized as a permissible limitation on speech. To balance First Amendment rights with the protection of consumers and mark owners, most courts follow the Second Circuit’s two-step Rogers test.

In 1986, popular film director Federico Fellini released a film entitled Ginger and Fred, which told the story of two Italian cabaret performers whose success earned them the nicknames “Ginger and Fred.” Ginger Rogers sued, alleging that the film’s title violated her common law rights of publicity and privacy and was a false designation of origin under the Lanham Act. After losing at the summary judgment stage in the district court, Rogers appealed.

The Second Circuit recognized that, although the risk of consumer confusion in the marketplace justifies some regulation, “works of artistic expression” are entitled to more First Amendment protection than ordinary commercial products.11 The court articulated a new test applicable to the use of marks in artistic works: if (1) the use of the mark has at least some artistic relevance to the underlying work, then (2) a likelihood of confusion will not suffice to trigger liability; instead, the plaintiff will have to show that the defendant’s use of its mark is explicitly misleading.12 Fellini’s movie title passed this two-step test, and his protagonists lived to dance another day.

The “Rogers two-step” applies only to the use of marks in works of artistic expression,13 such as movies, songs,14 video games,15 and greeting cards.16 If the defendant has used the mark in such an artistic work, the court will apply Rogers instead of the likelihood of confusion factors. If the mark has been used on an ordinary commercial product like a pair of shoes, the likelihood of confusion test already strikes the proper balance.17

The application of the Rogers two-step depends not on the constitutional nature of the defendant’s speech but on the artistic nature of the work in which the defendant used the mark. Applying Rogers simply because the defendant’s use of the mark may arguably contain some level of expression misses the point. It was in this quagmire that the Ninth Circuit may have lost its way in Jack Daniel’s.

Are Chew Toys Works of Artistic Expression?

In Jack Daniel’s, the district court held that the Bad Spaniels toy was not an “expressive work” because its use of the Jack Daniel’s marks was “at least in part, to promote a somewhat non-expressive, commercial product.”18 The district court explained that “the First Amendment affords no protection to VIP because it is trademark law that regulates misleading commercial speech where another’s trademark is used for source identification in a way likely to cause consumer confusion.”19

In reaching its decision, the court relied on Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC.20 That case involved a line of pooch perfumes, including “Timmy Holedigger,” that allegedly parodied the Tommy Hilfiger trademark. The Tommy Hilfiger court explained that, ordinarily, the Lanham Act is balanced against the First Amendment in cases where the allegedly infringing use is “part of an expressive work.” However, when the mark is being “used at least in part to promote a somewhat nonexpressive, commercial product,” like pet perfume, the First Amendment does not apply; courts instead should take the purported parody into account in analyzing the likelihood of consumer confusion.21 The court applied the likelihood of confusion factors to the Timmy Holedigger fragrance and granted the defendant’s motion for summary judgment, holding that there could be no likelihood of confusion as a matter of law.

The Fourth Circuit Court of Appeals and the Eastern District of Missouri later applied the likelihood of confusion test—without even mentioning the Rogers test—to Chewy Vuiton puppy handbags in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC22 and Buttwiper beer chew toys in Anheuser-Busch, Inc. v. VIP Products, LLC.23 In Louis Vuitton, the Fourth Circuit concluded that the dog toy was a successful parody and that confusion was unlikely. In contrast, the Missouri court found that consumers were likely to be confused by the Buttwiper toy that ragged on Budweiser beer because Budweiser sold its own pet products, like leashes and collars, and had presented evidence of actual consumer confusion.

These other cases, which coincidentally also involved dog toys, underscore that the likelihood of confusion test already is equipped to address allegedly infringing commercial products that purport to be parodies. Some parodies may be confusing and others may not, but “the cry of ‘parody!’ does not magically fend off otherwise legitimate claims of trademark infringement or dilution.”24

The Ninth Circuit, however, overlooked this principle in Jack Daniel’s and rejected the Arizona court’s analysis. Instead, the court explained, a work is expressive if it “is communicating ideas or expressing points of view.”25 Because the Bad Spaniels toy “communicates a ‘humorous message,’” the court concluded that it is an expressive work, and remanded the case to the lower court for analysis under the Rogers two-step.26

The Ninth Circuit relied, in part, on Gordon v. Drape Creative, Inc., which held that greeting cards are expressive works under Rogers because they evince an “intent to convey a particularized message.”27 This focus on messages and expression strays from the way in which the Rogers test has always been applied. Part of the Ninth Circuit’s error may be due to the way in which some courts began conflating Rogers’s “works of artistic expression” standard with the term “expressive works.”28 Nevertheless, the Ninth Circuit’s application of Rogers has the potential to render any commercial product that contains humorous elements a “work of artistic expression,” unduly expanding First Amendment protection for allegedly infringing uses of protected marks and unsettling the balance between trademark protection and free speech.

The Genuine Artistic Motive Test

In August 2019, the District Court for the District of Colorado articulated a new version of the Rogers test in Stouffer v. National Geographic Partners, LLC that focuses on the “artistic” nature of the defendant’s use and the defendant’s subjective motives.29 In that case, the creator and star of the PBS TV series Wild America alleged that National Geographic had infringed his mark in its series, Untamed America, America the Wild, Surviving Wild America, and America’s Wild Frontier. National Geographic urged the court to apply Rogers because the case involved the titles of National Geographic’s series. The court acknowledged that the Tenth Circuit Court of Appeals had neither adopted nor rejected Rogers, and decided that the Rogers test needed to be adapted because “it seems intuitively incorrect that the junior user may always lawfully use the senior user’s mark where there is minimal artistic relevance, objectively speaking, and a lack of any overtly misleading claim about source, sponsorship, etc.”30 Thus, the court held, “the appropriate question to ask” is not only whether the defendant’s use was an exercise of artistic expression, but also whether the defendant had “a genuine artistic motive for using the senior user’s mark.”31 To that end, the court articulated some nonexclusive factors to consider in answering the question.

The Stouffer decision is relevant to Jack Daniel’s in two ways. First, Stouffer recognizes that, under Rogers, the proper focus of the inquiry is on artistic expression by looking not only to whether the defendant’s use of the plaintiff’s mark was part of an artistic work (in this case, the title of a television series), but also to whether the defendant had genuine artistic motives. In this respect, Stouffer underscores why the Ninth Circuit erred when it applied Rogers to a commercial product. Whether the court in Stouffer went too far in narrowing Rogers by requiring a subjective inquiry is a question for another day that will be answered by the Tenth Circuit on appeal; briefing was completed in November 2020.32 Second, although Stouffer did not involve parody, the decision analyzed Tenth Circuit parody cases that applied the likelihood of confusion test rather than Rogers, and remarked that “there is no hint [in those cases] that the Tenth Circuit had First Amendment concerns in mind.”33 This observation is consistent with the other parody cases discussed in this article that applied the likelihood of confusion test rather than Rogers.

Conclusion

Most parodies will not qualify as artistic works under Rogers, but that does not mean that saucy humorists are subject to a lower standard of liability. The likelihood of confusion test is the tried and true test for assessing trademark liability in a way that respects the balance between free speech on the one hand and brand protection on the other. Just like any other market participant, would-be comedians are responsible for ensuring that their parodies do not cause consumer confusion.

The Ninth Circuit’s expansion of Rogers to purported parodies in the form of ordinary commercial products threatens brand owners’ goodwill because it allows merchants who simply slap a pun or a joke on their product to claim that this “expression” shields them from liability as long as they do not explicitly mislead the public. Jack Daniel’s filed a petition for certiorari on September 15, 2020, to correct the Ninth Circuit’s error, and was supported by a number of amici, including INTA, various alcohol beverage industry associations, the Intellectual Property Law Association of Chicago, Campari America LLC, Constellation Brands Inc., and Campbell Soup Company. VIP Products’ brief (and those of any amici in support of its position) were due on December 16, 2020 (after this article went to print). In the meantime, hopefully other courts will not follow the Ninth Circuit’s lead.

Endnotes

1. 953 F.3d 1170 (9th Cir. 2020).

2. VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313, at *5 (D. Ariz. Sept. 27, 2016).

3. 875 F.2d 994 (2d Cir. 1989).

4. Jack Daniel’s, 2016 WL 5408313, at *5.

5. VIP Prods., LLC v. Jack Daniel’s Props., Inc., 291 F. Supp. 3d 891 (D. Ariz. 2018).

6. Jack Daniel’s, 953 F.3d at 1175.

7. Id. at 1174; see also Rogers, 875 F.2d at 1174.

8. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 855 (1982); 1 McCarthy on Trademarks and Unfair Competition § 2:1 (5th ed. 2017).

9. 1 McCarthy, supra note 8, §§ 2:22, 23:1.

10. Brown v. Entm’t Merchants Ass’n, 564 U.S. 786, 790–91 (2011).

11. Rogers, 875 F.2d at 997–98.

12. Id. at 999–1000.

13. Id. at 999 (“We believe that in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”); see also Gordon v. Drape Creative, Inc., 909 F.3d 257, 260–61 (9th Cir. 2018) (“We use the Rogers test to balance the competing interests at stake when a trademark owner claims that an expressive work infringes on its trademark rights.”); Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013) (“The Rogers test is reserved for expressive works.”); 1 McCarthy, supra note 8, §§ 31:144.50, 31:153.

14. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).

15. Brown, 724 F.3d 1235.

16. Gordon, 909 F.3d 257.

17. Mattel, 296 F.3d at 901.

18. VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313, at *5–6 (D. Ariz. Sept. 27, 2016) (emphasis added) (denying summary judgment because the likelihood of confusion test is a fact-intensive analysis).

19. Id. at *5.

20. 221 F. Supp. 2d 410 (S.D.N.Y. 2002).

21. Id. at 415 (footnote omitted).

22. 507 F.3d 252, 260–61 (4th Cir. 2007).

23. 666 F. Supp. 2d 974, 984–86 (E.D. Mo. 2008).

24. Id. at 985.

25. VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174–75 (9th Cir. 2020) (remanding for application of the Rogers test).

26. Id.

27. Gordon v. Drape Creative, Inc., 909 F.3d 257, 268 (9th Cir. 2018).

28. See, e.g., id. (referring to “artistic expression,” “artistic works,” and “expressive works”); Brown v. Elec. Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (referring to “expressive works” and in using the language, citing to a U.S. Supreme Court case about the limits of regulation under the First Amendment, Brown v. Entm’t Merchants Ass’n, 564 U.S. 786 (2011)); Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812–13 (2d Cir. 1999) (referring to “expressive works”); Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490 (2d Cir. 1989) (referring to “works of artistic expression,” “artistic works,” and “expressive works”); Tommy Hilfiger Licensing Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002) (referring to “expressive works” and “somewhat nonexpressive commercial products”).

29. 400 F. Supp. 3d 1161, 1172–73 (D. Colo. 2019).

30. Id. at 1179.

31. Id.

32. Stouffer v. Nat’l Geographic Partners, LLC, No. 20-1208 (10th Cir. filed June 8, 2020).

33. Stouffer, 400 F. Supp. 3d at 1173.

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Jared I. Kagan is an associate in Debevoise & Plimpton’s intellectual property and media group. His practice includes litigation and counseling on trademark, false advertising, copyright, and defamation matters.

Emily R. Hush is an associate in Debevoise & Plimpton’s litigation group.

The authors served as co-counsel to amicus International Trademark Association (INTA) in its brief to the Ninth Circuit in support of Jack Daniel’s Properties’ motion for rehearing or rehearing en banc, and INTA’s brief to the U.S. Supreme Court in support of Jack Daniel’s petition for certiorari, in the case discussed in this article.